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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/280780 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims a separator for a lead-acid battery comprising a substrate and a crack-containing layer (conductive layer, which has cracks) which is laminated on at least one surface of the substrate and which contains an electrically conductive material (first conductive material).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/280780 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims a separator wherein the electrically conductive material is a carbon material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/280780 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims a separator wherein the layer (conductive layer) has a thickness of 0.1 mm to 30 mm.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/280780 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims a lead-acid battery comprising a positive electrode, a negative electrode, and the separator of claim 1 (corresponding to reference claim 1) between the positive electrode and the negative electrode.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 4-6, and 8-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitation "the layer" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it is understood that the “layer” recited in claim 2 is the crack-containing layer recited in claim 1.
Claim 4 recites the limitation "the layer" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it is understood that the “layer” recited in claim 4 is the crack-containing layer recited in claim 1. Claims 5-6 are similarly rejected as they incorporate all of the limitations of claim 4.
Regarding claim 5, the instant claim recites the phrase “a crack which maintains electrical conductivity of the crack-containing layer.” This renders the claim indefinite, because it would be unclear to one of ordinary skill in the art how a crack would fail to interrupt the electrical conductivity of the crack-containing layer. Further, it is unclear how the structure of a crack which maintains electrical conductivity of the crack-containing layer is to be distinguished from that of a crack which does not maintain the electrical conductivity of the crack-containing layer. The description of these cracks in para [0016]-[0021] of the instant specification fails to clarify this issue. In view of para [0016] of the instant specification, it is understood for examination purposes that a crack having a width in the range of 0.3 mm or less is considered to be a crack that maintains the electrical conductivity of the crack-containing layer. Claim 6 is similarly rejected as it incorporates all of the limitations of claim 5.
Claim 8 recites the limitation "the layer" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it is understood that the “layer” recited in claim 8 is the crack-containing layer recited in claim 1.
Claim 9 recites the limitation "the layer" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it is understood that the “layer” recited in claim 8 is the crack-containing layer recited in claim 1.
Claim 10 recites the limitation "the layer" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it is understood that the “layer” recited in claim 10 is the crack-containing layer recited in claim 1.
Claim 11 recites the limitation "the layer" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it is understood that the “layer” recited in claim 11 is the crack-containing layer recited in claim 1.
Claim 12 recites the limitation "the layer" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it is understood that the “layer” recited in claim 12 is the crack-containing layer recited in claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 7-11, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsubayashi (JP 2017035867A, as read via machine translation).
As to Claim 1, Matsubayashi et al. discloses a separator for a lead-acid battery comprising a substrate (polyolefin microporous film), and a crack-containing layer (porous layer) which is laminated on at least one surface of the substrate ([0007]-[0008]. The porous layer of Matsubayashi et al. comprises grooves, shown in Fig. 1, and as such reads on the claimed crack-containing layer, see [0008]). Matsubayashi et al.’s crack-containing layer further comprises an electrically-conductive material (see e.g., inorganic microparticles that may be metal, a conductive oxide, carbon black, or graphite in [0021]-[0022]). Note that while the electrically-conductive material in the crack-containing layer of Matsubayashi et al. is coated with an insulating layer, the crack-containing layer can still reasonably be interpreted as containing an electrically conductive material.
As to Claim 2, Matsubayashi et al. discloses a separator comprising a crack-containing layer (porous layer) that has a crack (groove, [0008] and Fig. 1). The crack-containing layer of Matsubayashi et al. is 0.5 mm to 50 mm thick ([0034]) while the cracks (grooves 10) extend to a depth of 1 mm to 6 mm ([0047], Fig. 2), implying that in some embodiments the cracks are continuous from a surface of the layer to a boundary between the crack-containing layer and the substrate (i.e., the cracks do not extend all of the way through the crack-containing layer, but instead stop at a boundary point between the crack-containing layer and the substrate).
As to Claim 3, Matsubayashi et al. discloses a separator comprising a crack-containing layer (porous layer) that has cracks (grooves, [0008] and Fig. 1). These cracks/grooves by definition form an empty space in the crack-containing layer, and thereby form electrical insulation.
As to Claim 4, Matsubayashi et al. discloses a separator comprising a crack-containing layer (porous layer) that has cracks (grooves) having a width of 0.5 mm to 3 mm, which lies within and thereby anticipates the claimed range of 0.5 mm to 100 mm ([0008] and Fig. 1). The crack-containing layer of Matsubayashi et al. is 0.5 mm to 50 mm thick ([0034]) while the cracks (grooves) extend to a depth of 1 mm to 6 mm ([0047]), implying that in some embodiments the cracks are continuous from a surface of the layer to a boundary between the crack-containing layer and the substrate (i.e., the cracks do not extend all of the way through the crack-containing layer, but instead stop at a boundary point between the crack-containing layer and the substrate).
As to Claim 7, the crack-containing layer (porous layer) of Matsubayashi et al. comprises an electrically conductive material (see e.g. inorganic microparticles that may be carbon black or graphite, which are conductive carbon materials in [0021]-[0022]) that is a carbon material.
As to Claim 8, the crack-containing layer (porous layer) of Matsubayashi et al. contains an ionic surfactant (i.e., alkylbenzene sulfonate, [0032]).
As to Claim 9, the crack-containing layer (porous layer) of Matsubayashi et al. contains an acrylic copolymer resin (i.e., ethylene-acrylic acid copolymers, [0029]).
As to Claim 10, the crack-containing layer (porous layer) of Matsubayashi et al. contains an organic binder that binds particles and thereby reads on the claimed thickener ([0027]).
As to Claim 11, the crack-containing layer (porous layer) of Matsubayashi et al. contains all three of an ionic surfactant (i.e., alkylbenzene sulfonate, [0032]), an acrylic copolymer resin (i.e., ethylene-acrylic acid copolymers, [0029]), and an organic binder that binds particles and thereby reads on the claimed thickener ([0027]).
As to Claim 15, Matsubayashi et al. teaches a separator comprising a crack-containing layer (porous layer) that is applied to both sides of the separator, and as such discloses a separator in which the crack-containing layer faces the negative electrode ([0036]). Additionally, Matsubayashi et al.’s separator is interposed between the positive and negative electrodes, and therefore is in contact with the negative electrode ([0069]).
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:
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.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Matsubayashi (JP 2017035867A, as read via machine translation).
As to Claim 12, Matsubayashi et al. discloses a separator comprising a crack-containing layer (porous layer) that has a thickness of 0.5 mm to 50 mm thick (see e.g., [0034]), which substantially overlaps and thereby renders obvious the instantly-claimed range of 0.1 mm to 30 mm (see MPEP § 2144.05).
Claim(s) 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Matsubayashi (JP 2017035867A) as applied to claim 4 above, and further in view of Toniazzo (Toniazzo, V. (2005). Journal of Power Sources, 144(2), 365-372).
As to Claim 5, Matsubayashi et al. discloses a separator comprising a crack-containing layer (porous layer) that comprises cracks (grooves, [0008] and Fig. 1). However, Matsubayashi et al. does not disclose cracks that maintain the electrical conductivity of the crack-containing layer because Matsubayashi et al.’s cracks are 0.5 mm to 50 mm thick ([0034]) rather than 0.3 mm or less and as such do not maintain the electrical conductivity of the crack-containing layer (see the rejection of claim 5 under 35 USC § 112(b) above).
Toniazzo, also working in the field of separators for batteries, teaches a separator comprising small pores having a size in the range of 0.02 mm to 0.10 mm that can reasonably be considered to be cracks (pg. 367, col. 1, paras 2-3 and Fig.5). Toniazzo further teaches that these small pores limit electrolyte drainage and can prevent dendritic growth (pg. 367, col. 1, para 2). As Toniazzo’s small pores have a size that lies within the range of 0.3 mm or less, they read on the instantly-claimed cracks which maintain the electrical conductivity of the crack-containing layer (see the rejection of claim 5 under 35 USC § 112(b) above).
It would therefore have been obvious to one of ordinary skill in the art prior to the filing date of the claimed invention to modify the crack-containing layer of Matsubayashi et al. by adding cracks which maintain the electrical conductivity of the crack-containing layer. Said artisan would have been motivated to add these cracks in order to limit electrolyte drainage and prevent dendritic growth, as taught by Toniazzo.
As to Claim 6, Matsubayashi et al. discloses a separator comprising a crack-containing layer (porous layer) that comprises cracks (grooves, [0008] and Fig. 1). The cracks in the crack-containing layer of Matsubayashi et al. are 0.5 mm to 50 mm thick ([0034]) which lies outside the range of 0.3 mm or less and as such does not meet the limitation that the crack is “observed with a scanning electron microscope, but not observed with an optical microscope, when a cracked layer surface is observed at a 500-fold magnification” (see the rejection of claim 6 under 35 USC § 112(b) above).
Toniazzo, also working in the field of separators for batteries, teaches a separator comprising small pores having a size in the range of 0.02 mm to 0.10 mm that can reasonably be considered to be cracks (pg. 367, col. 1, paras 2-3 and Fig.5). Toniazzo further teaches that these small pores limit electrolyte drainage and can prevent dendritic growth (pg. 367, col. 1, para 2). As Toniazzo’s small pores have a size that lies within the range of 0.3 mm or less, they read on the instantly-claimed cracks that are observed with a scanning electron microscope, but are not observed with an optical microscope when observed at a 500-fold magnification (see the rejection of claim 6 under 35 USC § 112(b) above).
It would therefore have been obvious to one of ordinary skill in the art prior to the filing date of the claimed invention to modify the crack-containing layer of Matsubayashi et al. by adding cracks that are observed with a scanning electron microscope, but are not observed with an optical microscope when observed at a 500-fold magnification. Said artisan would have been motivated to add these cracks in order to limit electrolyte drainage and prevent dendritic growth, as taught by Toniazzo.
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over as applied to claim 4 above, and further in view of Whear (US 2018/0366710).
As to Claim 13, Matsubayashi et al. discloses a battery separator that includes a porous polyolefin substrate ([0008]), but does not disclose a separator comprising ribs that are at least one selected from the group of serrated ribs, slanted ribs, broken ribs, straight ribs, embossments, protrusions, and/or combinations thereof.
Whear et al., also working in the field of battery separators, teaches a porous polyolefin separator (100) that comprises a plurality of ribs (104) that can reasonably be described as being serrated ([0016], [0045], Fig. 1C). Whear et al. also teaches the use of broken ribs and slant (angled) ribs ([0011]). Whear et al. additionally teaches that these serrated ribs improve the performance of the separator by reducing dendrite formation and growth ([0007]).
It would therefore have been obvious to one of ordinary skill in the art prior to the filing date of the claimed invention to modify Matsubayashi et al.’s separator by including serrated ribs on the separator substrate. Said artisan would have been motivated to make such a modification in order to prevent dendrite formation and growth on the separator, as taught by Whear et al..
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Whear (US 2018/0366710) in view of Matsubayashi (JP 2017035867A, as read via machine translation).
As to Claim 14, Whear et al. discloses a lead-acid battery in which a polyolefin separator (100) is disposed between a positive electrode (204) and a negative electrode (202, [0050], Fig. 2A). However, Whear et al. is silent as to whether the separator comprises a crack-containing layer which is laminated on at least one surface of the substrate and which contains an electrically conductive material.
Matsubayashi et al., also working in the field of battery separators, teaches a battery separator comprising a substrate (polyolefin microporous film), and a crack-containing layer (porous layer) which is laminated on at least one surface of the substrate ([0007]-[0008], and [0016]. The porous layer of Matsubayashi et al. comprises grooves, shown in Fig. 1, and as such reads on the claimed crack-containing layer, see [0008]). The crack-containing layer of Matsubayashi et al. contains an electrically conductive material ([0021]-[0022]. Note that while the electrically-conductive material in the crack-containing layer of Matsubayashi et al. is coated with an insulating layer, the crack-containing layer can still reasonably be interpreted as containing an electrically conductive material). Matsubayashi et al. additionally teaches that this separator design suppresses warping and exhibits good performance when used in an electricity storage device ([0007]).
It would therefore have been obvious to use the separator taught by Matsubayashi et al., which comprises a crack-containing layer which is laminated on at least one surface of the substrate and which contains an electrically conductive material, as the separator in Whear et al.’s lead-acid battery. Said artisan would have been motivated to replace Whear et al.’s separator with Matsubayashi et al.’s separator because Matsubayashi et al. teaches that this separator comprising a crack-containing layer advantageously suppresses warping and exhibits good performance when used in an electricity storage device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Minami (JP 2012209197A, as read via machine translation) discloses a separator with a crack-containing layer.
Iwata (US 2020/0335760) discloses a separator with a crack-containing layer.
Whear et al. ‘529 (US 2015/0318529) discloses a battery separator with a conductive carbon coating.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALBERT HILTON whose telephone number is (571)272-4068. The examiner can normally be reached Monday - Friday 8:00 AM - 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barton Jeffery can be reached at (571)-272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.M.H./Examiner, Art Unit 1723
/TONG GUO/Supervisory Patent Examiner, Art Unit 1723