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 .
Remarks
Claim 1 has been amended, claims 2-4 are as previously presented. Claims 1-4 are presently examined.
Status of objections and rejections
The rejection below has been modified as necessitated by the applicants amendments.
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.
Claim(s) 1-4 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katsunori (WO2018221670A1) and in view of Nishijima (US6534214B1 as cited in the IDS filed 02/23/2023).
Regarding claim 1, Katsunori discloses a lithium ion secondary battery [0011, Katsunori] comprising; a positive electrode mixture layer (10) [0030, fig. 2, Katsunori]; a negative electrode mixture layer (11) [0030, fig. 2, Katsunori]; and an electrolyte layer (7, “separation membrane”) between the positive electrode mixture layer and the negative electrode mixture layer [0030, fig. 2, Katsunori], wherein the positive electrode mixture layer comprises a positive electrode active material [0033-0034, Katsunori], a first lithium salt [0087, 0094, 0121, Katsunori], and a first solvent [0121, Katsunori], wherein the negative electrode mixture layer comprises a negative electrode active material [0048, Katsunori], a second lithium salt [0087, 0094, 0123, Katsunori], and a second solvent [0123, Katsunori]; wherein the separation membrane comprises a polymer having lithium ion conductivity [0055, 0068-0070, Katsunori], a third lithium salt [0087, 0094-0095, Katsunori], and a third solvents [0095-0113, Katsunori], and wherein the separation membrane comprises the third solvent is in an amount of 40% by weight or less [0113, Katsunori teaches that the content of the solvent may be 40% by mass or less as a matter of improving conductivity. This anticipates the applicant’s claimed range], and wherein a content of the polymer having lithium ion conductivity is 60 mass% or less based on a total weight of the separation membrane [0069, Katsunori’s range of the polymer overlaps with the applicant’s endpoint range of 60% by weight or more].
In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range), see MPEP 2144.05.I
Katsunori is silent to the second solvent being different than the first solvent.
However, Nishijima teaches of a lithium secondary battery with a positive electrode containing a first electrolyte, a negative electrode containing a second electrolyte, and a third electrolyte in between the two [abstract, Nishijima]. Nishijima notes that one should use a solvent with the positive electrode which is not easily oxidized by the positive electrode [col 3 line 55-60, Nishijima]. Additionally, for the negative electrode one should use a solvent which is not easily reduced by the negative electrode [col 3 line 60-65, Nishijima]. Furthermore, Nishijima notes that the third solvent disposed between the first two should be one of high lithium-ion conductivity [col 3 line 65 – col 4 line 2, Nishijima]. Finally, for the three electrolytes one may use a lithium salt as the solute [col 4 line 6-12, Nishijima].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Katsunori such that different solvents were used with the positive and negative electrode, specifically the solvent for the positive electrode should be one that does not readily oxidize and the solvent for the negative electrode should be one that does not readily reduce. Doing so prevents degradation of the solvent used in the electrolyte [col 3 line 55-65 and col 6 line 57- col 7 line 2, Nishijima].
Regarding claim 2, modified Katsunori discloses the lithium ion secondary battery, wherein the separation membrane comprises the third solvent is in an amount of 35% by weight or less [0113, Katsunori].
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 (see MPEP 2144.05).
Regarding claim 3, modified Katsunori discloses the lithium ion secondary battery, wherein the third solvent is an ionic liquid [0101, 0112, 0150, Katsunori].
Regarding claim 4 and 17, modified Katsunori discloses the lithium ion secondary battery, wherein the separation membrane further comprises inorganic oxide particles [0055, 0072, Katsunori].
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive. See below for details.
Applicant argues that Katsunori teaching of a polymer content of 60 weight % or less results in allowable subject matter for the independent claim 1. However, the examiner notes that independent claim 1 and the teachings of Katsunori both share overlapping end points of a polymer with a weight% of 60%.
In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
In the interest of compact prosecution, the examiner notes that similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), see MPEP 2144.05.I.
The examiner maintains their rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20200144609A1 (Takuya, filed 03/23/26). Gel polymer separation membrane
CN111342123A (Cui). Gel polymer separation membrane with >40%polymer
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 QUINTIN DALE ELLIOTT whose telephone number is (703)756-5423. The examiner can normally be reached M-F 8:30-6pm (MST).
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724
/STEWART A FRASER/Primary Examiner, Art Unit 1724
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