DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . If status of the application as subject to 35 U.S.C. 102 and 103 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/26/2026 has been entered.
Status of Claims
Claims 1-10 are pending in the application. Claims 5-8 are withdrawn. Claims 1-4 and 9-10 were rejected in the 3/27/2026 office action. Claims 1-4 and 9-10 are presently examined.
Response to Amendment / Arguments
The 6/26/2026 amendment, in response to the 3/27/2026 office action, has been entered. Applicant’s arguments and claim amendments overcame the 35 U.S.C. 103 rejections; nevertheless, the claims remain rejected under 35 U.S.C. 103 due to additional prior art.
Although the claims are rejected under additional prior art, Applicant’s arguments apply to claim 2. Claim 2 is presently rejected over Deng, which was cited in the 3/27/2026 office action. Claim 2 depends from claim 1.
Applicant argues against Deng, stating that Deng teaches away from the following new claim 1 limitation:
“the MOF layer has a mean square surface roughness (Rq) of 0 nm to 1.0 nm and an arithmetic surface roughness (Ra) of 0 nm to 1.0 nm”
Deng teaches: “Al2O3@NPC possesses a porous structure with a rough surface” (page 1268, bottom of the right column).
Deng is a secondary reference. Frischmann is the primary reference. It would have been obvious for one skilled in the art, possessing the Frischmann reference, to have sought guidance from Deng for doping the MOF, without applying every teaching of Deng to Frischmann.
The above claim 1 limitation is obvious over Lau, as discussed in the claim 1 rejection below. If one skilled in the art did take note of Deng’s teaching of a rough surface, it still would have been obvious to have experimented with Deng’s teachings of a rough surface, and the low surface roughness teachings of Lau, and to have achieved the new claim limitations (0-1.0 nm Rq and 0-1.0 nm Ra).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The claims are in bold font, the prior art is in parentheses.
Claims 1, 3-4, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over US20190326578A1 (Frischmann) in view of —
“Metal–organic frameworks based on rigid ligands as separator membranes in supercapacitor” (Meng), and
“Conformal Ultrathin Film Metal−Organic Framework Analogues: Characterization of Growth, Porosity, and Electronic Transport” (Lau).
With regard to claim 1, Frischmann teaches the following claim limitations:
A separator for a lithium secondary battery (paragraph 6: membrane for Li-ion batteries), the separator comprising:
a porous substrate (paragraphs 7, 10, 34: “membrane support may be a porous polymer”); and
a metal organic framework (MOF) layer (paragraph 83: membrane layer is MOF) formed on one or both surfaces of the porous substrate (paragraph 10: membrane support laminated to membrane layer), wherein the MOF layer comprises one or more MOF molecular films (paragraph 83: membrane layer is referred to as a “layer”, and is thus a film)
Frischmann, however, fails to teach the following claim 1 limitation, which is taught by Meng:
the MOF layer… has an amorphous structure
Meng is directed to a metal organic framework (MOF) in a supercapacitor. Meng is analogous to claim 1 because both batteries and capacitors store electric charge.
Meng experimented with charge–discharge at low current density, which resulted in an amorphous MOF 1a. Meng reports that this amorphous MOF 1a is more porous and has improved ion transport behavior (page 5413, right column).
It would have been obvious, to one of ordinary skill in the art, for Frischmann’s MOF to be amorphous, as taught by Meng, for increased porosity and improved ion transport.
Frischmann, however, fails to teach the following claim 1 limitation, which is taught by Lau:
the MOF layer has a mean square surface roughness (Rq) of 0 nm to 1.0 nm
Lau is directed to metal−organic framework (MOF) for electrochemical devices (abstract), including lithium−sulfur battery separators (page 8977, left column, bottom). Lau discusses using MOFs for separation of electroactive analytes without interfering with electronic transport (page 8977, left column, bottom). Lau teaches 0.741 nm and 0.929 nm MOF roughness Rq (Figures 4(c) & 4(d), page 8981, left column, top). Lau also states that “the film roughness below 1 nm observed for the MOF-based films on Ge substrates highlights the smooth, conformal nature of these ultrathin films” (left column).
It would have been obvious, to one of ordinary skill in the art, for Frischmann’s MOF to have Rq ≤ 1 nm, such as Rq=0.741 nm or Rq=0.929 nm, as taught by Lau, as part of a MOF for separation of electroactive analytes without interfering with electronic transport.
Frischmann also fails to teach the following claim 1 limitation:
the MOF layer has… an arithmetic surface roughness (Ra) of 0 nm to 1.0 nm
Lau teaches Rq=0.741 nm or Rq=0.929 nm (Figures 4(c) & 4(d)); however, Lau fails to teach Ra. “Rq is generally slightly larger than Ra”1, and Rq=0.741 nm or Rq=0.929 nm are substantially lower than 1, so it is expected that Ra would also be < 1. It would have been obvious, to one of ordinary skill in the art, for Frischmann’s MOF to have Ra ≤ 1 nm based on Lau’s teachings of Rq=0.741 nm or Rq=0.929 nm.
With regard to claim 3, modified Frischmann teaches the limitations of claim 1 as described above. Frischmann also teaches the following claim 3 limitation:
a thickness of the MOF layer is 0.5 nm to 20 nm (paragraph 90: membrane layer is 5 nanometers to 20 micrometers thick; i.e. 5 nm to 20,000 nm)
Frischmann’s 5-20,000 nm range overlaps the claimed 0.5-20 nm range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Given that Frischmann’s range substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 3 is an obvious variant of Frischmann’s range.
With regard to claim 4, modified Frischmann teaches the limitations of claim 1 as described above. Frischmann also teaches the following claim 4 limitation:
the porous substrate comprises… polypropylene (paragraph 10: the membrane support can be polypropylene)
With regard to claim 9, modified Frischmann teaches the limitations of claim 1 as described above. Frischmann also teaches the following claim 9 limitations:
A lithium secondary battery (paragraph 6) comprising: a positive electrode (paragraph 17; figure 3: positive electrode 110); a negative electrode (paragraph 17; figure 3: negative electrode 120); the separator of claim 1 (paragraph 17; figure 3: separator 140) between the positive electrode (110) and the negative electrode (120); and an electrolyte solution (paragraph 17; figure 3: electrolyte 130).
With regard to claim 10, modified Frischmann teaches the limitations of claims 1 & 9 as described above. Frischmann fails to teach the following claim 10 limitation, which is taught by Lau:
the lithium secondary battery is a lithium-sulfur secondary battery
Lau teaches that MOF porosity and ability to tailor pore sizes makes it suitable for preventing polysulfide shuttling in a lithium−sulfur battery (p.8977, left column, bottom). It would have been obvious, to one of ordinary skill in the art, for Frischmann’s battery to be a lithium sulfur battery, as taught by Lau, for preventing polysulfide shuttling.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US20190326578A1 (Frischmann) in view of —
“Metal–organic frameworks based on rigid ligands as separator membranes in supercapacitor” (Meng) and
“Conformal Ultrathin Film Metal−Organic Framework Analogues: Characterization of Growth, Porosity, and Electronic Transport” (Lau),
as applied to claim 1, and further in view of
“Amorphous Al2O3 with N-Doped Porous Carbon as Efficient Polysulfide Barrier in Li−S Batteries” (Deng).
Frischmann fails to teach the following claim 2 limitation, which is taught by Deng:
the MOF is doped with one or more hetero elements selected from the group consisting of N, S, and O (abstract: MOF includes N-doped porous carbon)
Deng is directed to a lithium battery with higher electrical conductivity, faster lithium diffusion, and faster charge transfer capability (abstract). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Frischmann’s MOF to include N-doped porous carbon, as taught by Deng, for a lithium battery with higher electrical conductivity, faster lithium diffusion, and faster charge transfer capability.
Conclusion
Prior art not relied upon, but made of record and considered pertinent to applicant's disclosure: “Surface-supported metal–organic framework thin films: fabrication methods, applications, and challenges” (Liu).
Liu teaches forming a MOF by the Langmuir–Blodgett method (page 5735, left column), which is the method taught by the present specification (published application US20230299422A1 paragraphs 42-59) for achieving the claimed 0-1.0 nm Rq and 0-1.0 nm Ra.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.G.W./Examiner, Art Unit 1721
1 https://rapid-mfg.com/blog/ra-vs-rz-vs-rq/
Prosecution Insights