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 .
Response to Arguments
The following is in response to the applicant’s remarks filed 1/28/26.
The applicant submits that the amendments overcome the previously cited art. It is submitted that Kii does not teach urethane crosslinking and only generally discloses crosslinking a reactive polymer. The product by process rejection is rebutted by stating that the limitation provides structure to the final product. Separately, the applicant submits that that overlapping ranges for Tg of Park are overcome by the unexpected results displayed in examples 1 – 3 vs. comparative examples 1 – 3.
The examiner respectfully disagrees. Kii is not relied upon to teach a urethane crosslinked polymer but is instead relied upon to teach cross-linking during an activation step of the battery. Park is relied upon to teach a urethane cross-linked polymer. The teachings of Park and Kii are both within the same field of endeavor and are pertinent to the problem of Park, and the rejection relying on Park and Kii teaches all the claimed limitations.
Regarding the product by process assertion, the process limitation is that the cross-linking reaction happens during an activation step, not whether the cross-linking reaction happens at all. Then, the distinction to be made is not whether cross-linking provides a structural difference, but if cross-linking during an activation step provides a structural difference as compared to cross linking at a different time.
Regarding the submission of unexpected results, the claims argued are not commensurate in scope with the supplied data, and the results are not sufficiently explained. The evidence must be reasonably commensurate in scope with the claimed invention. See, e.g., In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). For instance, the claimed temperature range is from -15 – 32 C, but the examples in table 1 span values from -10 to 30 C.
Then, the rejection is maintained.
Allowable Subject Matter
Claims 11 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 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 considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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.
Claims 1 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Park, US20140272532A1 and Kii, US20040101757A1.
Regarding claim 1, Park teaches a separator for a secondary battery [0003], comprising:
a porous polymer substrate having a plurality of pores; and porous coating layer on at least one surface of the porous polymer substrate [0010][0058], wherein the porous coating layer comprises a plurality of inorganic particles and a urethane bond-containing crosslinked polymer [0013][0017][0019],
wherein the urethane bond-containing crosslinked polymer is present partially or totally on surfaces of the inorganic particles wherein the inorganic particles are interconnected and fixed (crosslinked urethane polymer mixed with inorganic particles)[0013][0017], and
wherein the urethane bond-containing crosslinked polymer has a glass transition temperature (Tg) of −15 to 32° C (-50 – 60 ° C)[0016]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [MPEP 2144.05 I]
Park does not teach wherein the urethane bond-containing crosslinked polymer is obtained through a crosslinking reaction of at least one crosslinkable polymer during an activation step of the secondary battery.
However, the missing limitation is considered to be a product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Then, the instant application is not patentable over the separator of Park comprising a crosslinked urethane polymer
Alternatively, Kii teaches a method of manufacturing a secondary battery [0002] comprising a separator with a polymer coating (adhesive supported porous film)[0045] wherein the polymer within the polymer coating undergoes a crosslinking step [0047] during an activation step (initial charging)[0013] of the secondary battery. Further, Kii teaches the polymer coated separator which undergoes crosslinking during an activation step results in a separator which possesses excellent characteristics [0047]. Then, it would have been obvious to one of ordinary skill in the art before the filing date to combine the crosslinking step of Kii into the method of Park to create a separator which has excellent characteristics.
Regarding claim 2, combined Park teaches the separator for the secondary battery according to claim 1.
Further, Park teaches wherein the urethane bond-containing crosslinked polymer has a glass transition temperature (Tg) of −10 to 30° C (-50 – 60 ° C)[0016]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [MPEP 2144.05 I].
Regarding claim 3, combined Park teaches the separator for the secondary battery according to claim 1
Park does not teach which has an adhesion to an electrode of 30 gf/25 mm or more and a heat shrinkage of 35% or less.
However, Park teaches a substantially identical polymer wherein Park further teaches the polymer to have improved heat shrinkage (heat resistance and shrinkage ratio)[0054][0067] and adhesion [0131]. Then, the missing limitations are considered to be inherent physical properties present in the polymer of Park.
Regarding claim 4, combined Park teaches the separator for the secondary battery according to claim 1.
Park does not teach crosslinking during an activation step.
However, the missing limitation is considered to be a product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Then, the instant application is not patentable over the separator of Park comprising a crosslinked urethane polymer
Further, Kii teaches wherein the polymer within the polymer coating undergoes a crosslinking step [0047] during an activation step (initial charging)[0013] of the secondary battery.
Regarding claim 5, combined Park teaches the separator for the secondary battery according to claim 1.
Further, Park teaches wherein the porous polymer substrate is a polyolefin-containing porous polymer substrate [0037].
Regarding claim 6, combined Park teaches the separator for the secondary battery according to claim 1.
Further, Park teaches wherein the inorganic particles are at least one of inorganic particles having a dielectric constant of 5 or more, or inorganic particles having lithium-ion transportability (inherent property of the inorganic particles listed)[0022](separator made of materials capable of transporting lithium ions)[0150].
Regarding claim 7, Park teaches a secondary battery comprising:
a cathode, an anode, and a separator interposed between the cathode and the anode [0039], wherein the separator is the same as defined in claim 1.
Regarding claim 8, combined Park teaches the method for manufacturing the secondary battery comprising the separator as defined in claim 1,
Further, Park teaches the method comprising the steps of:
preparing a slurry containing a plurality of inorganic particles, a crosslinkable polymer and a dispersion medium; applying the slurry onto at least one surface of a porous polymer substrate [0188 – 0190], to prepare a preliminary separator having a porous coating layer;
stacking an electrode [0202], comprising a current collector and an electrode active material layer on at least one surface of the current collector, on a top surface of the porous coating layer of the preliminary separator [0202], wherein the electrode active material layer faces the porous coating layer, to prepare a preliminary separator-electrode composite [0202];
preparing the secondary battery comprising the preliminary separator-electrode composite [0202]; and
Park does not teach drying the coating layer, activating the secondary battery, wherein the crosslinkable polymer of the porous coating layer is crosslinked during the step of activating the secondary battery to obtain a urethane bond-containing crosslinked polymer.
However, the missing limitation is considered to be a product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Then, the instant application is not patentable over the separator of Park comprising a crosslinked urethane polymer.
Alternatively, Kii teaches a method of manufacturing a secondary battery [0002] comprising a separator with a polymer coating (adhesive supported porous film)[0045] wherein the polymer within the polymer coating undergoes a crosslinking step [0047] during an activation step (initial charging)[0013] of the secondary battery. Further, Kii teaches the polymer coated separator which undergoes crosslinking during an activation step results in a separator which possesses excellent characteristics [0047]. Then, it would have been obvious to one of ordinary skill in the art before the filing date to combine the crosslinking step of Kii into the method of Park to create a separator which has excellent characteristics.
Regarding claim 9, combined Park teaches the method for manufacturing the secondary battery according to claim 8.
Further, Park teaches wherein the crosslinkable polymer comprises at least one of a hydroxyl group (—OH), or an isocyanate group (—NCO) [0097][0105].
Regarding claim 10, combined Park teaches the method for manufacturing the secondary battery according to claim 8.
Further, Park teaches a polyacrylic polymer containing at least one of a hydroxyl group (—OH), or an isocyanate group (—NCO) [0097][0105].
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Park, US20140272532A1 and Kii, US20040101757A1 as applied to claim 8 above, and further in view of Takano, US20090246635A1.
Regarding claim 13, combined Park teaches the method for manufacturing the secondary battery according to claim 8.
Park does not teach wherein the step of activating the secondary battery comprises an initial charging step and a high-temperature aging step.
However, the missing limitation is considered to be a product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Then, the instant application is not patentable over the separator of Park comprising a crosslinked urethane polymer.
Alternatively, Kii teaches an initial charging step [0013], and
Takano teaches a method of manufacturing a secondary battery [0001] comprising a separator with a polymer coating [0016] wherein the method includes a high temperature aging step [0192]. Further, Takano teaches that the high temperature aging step increases the polymers adhesion [0192]. Then, it would have been obvious to one of ordinary skill in the art before the filing date to combined the high temperature aging step of Takano into the method of combined Park to increase the polymer adhesion strength.
Regarding claim 14, Park teaches the method for manufacturing the secondary battery according to claim 13.
Park does not teach wherein the high-temperature aging step is carried out at a temperature of 50° C. or higher.
However, the missing limitation is considered to be a product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Then, the instant application is not patentable over the separator of Park comprising a crosslinked urethane polymer.
Alternatively, Takano teaches wherein the high-temperature aging step is carried out at a temperature of 50° C. or higher [0199].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Park, US20140272532A1 and Kii, US20040101757A1 and Takano, US20090246635A1 as applied to claim 13 above, and further in view of Yamasaki, US20170040641A1
Regarding claim 15, Park teaches the method for manufacturing the secondary battery according to claim 13.
Park does not teach which further comprises a room-temperature aging step carried out at a temperature of 20-40° C. between the initial charging step and the high-temperature aging step.
However, the missing limitation is considered to be a product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Then, the instant application is not patentable over the separator of Park comprising a crosslinked urethane polymer.
Alternatively, Yamasaki teaches a method of manufacturing a secondary battery [0001] wherein the method includes a high temperature aging step which further comprises a room-temperature aging step carried out at a temperature of 20-40° C. between the initial charging step and the high-temperature aging step (after initial charging at room temperature cell undergoes high temperature aging)[0061][0081]. Further, Yamasaki teaches the method increases the durability of the cell [0061]. Then, it would have been obvious to combine the aging steps of Yamasaki in to the method of combined Park to improve the battery cell durability.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK M GREENE whose telephone number is (571)270-1340. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at (571)270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK MARSHALL GREENE/Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
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