DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-4 and 6-14 are pending. Claim 5 has been canceled.
The foreign priority application No. 10-2020-0120881 filed in the Republic of Korea on September 15, 2021 has been received and it is acknowledged.
The Office Action introduces new grounds of rejection for claim 10. Therefore, the Office Action is made non-final. The examiner apologizes for any inconvenience this may cause.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 depends on claim 9 and recites the limitation “wherein the inorganic particles comprise composite particles coated with a coupling compound”.
However, claim 9 depends on claim 1, which requires that “the inorganic particles comprise composite particles having a surface at least partially coated with a coupling compound”
Therefore, claim 10 fails to further limit the subject matter of claim 9.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
Claims 1-3, 6, 8, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2015/0086714) in view of Han et al. (WO 2020/256313, with citations from the English equivalent US 2022/0069419).
With regard to claims 1-3 Yu et al. teach a separator comprising a porous substrate and a porous coating layer formed on at least one surface of the porous substrate, wherein the porous coating layer comprises first and second inorganic particles coated with coupling agents and a binder polymer (abstract, par.0010).
The porous substrate may be made of a polyolefin-based polymer (par.0029), and it is equivalent to the “porous polymer substrate” in claim 1.
The first and second inorganic particles coated with coupling agents are equivalent to the “inorganic particles comprising composite particles having a surface at least partially coated with a coupling compound” in claim 1.
Yu et al. teach that the coupling agents include a silane-based coupling agent, (par.0037), but fail to teach the coupling agents in claim 1.
Han et al. teach a coated separator for a secondary battery including a separator substrate and a coating layer present on at least one surface of the separator substrate. The coating layer includes an inorganic material and a coupling agent (abstract).
Han et al. further teach that the coupling agent may be a titanium-based or a silane-based coupling agent (par.0035), and the titanium-based coupling agent may be isopropyl trioleyl titanate (par.0037).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use isopropyl trioleyl titanate as the coupling agent in the porous coating layer of Yu et al., because porous coating layer is functionally equivalent to silane-based coupling agents used in a coating layer for a battery separator.
Isopropyl trioleyl titanate is a “coupling compound comprising a functional group capable of being bound to each of the inorganic particles and the binder polymer, and the functional group is an ester group” in claim 1.
Yu et al. further teach that the binder polymer may be polyethylene-co-vinyl acetate (par.0016). The specification of the instant application defines polyethylene-co-vinyl acetate as “an amorphous or semi-crystalline polymer having a glass transition temperature (Tg) of 60oC or lower” in claim 1 (see page 4 of the specification).
Therefore, the porous coating layer of Yu et al. is equivalent to the “inorganic coating layer” in claim 1.
Polyethylene-co-vinyl acetate is a binder polymer of Chemical Formula 1 in claim 2, wherein R1-R4 are -H, m and n are integers.
Polyethylene-co-vinyl acetate also meets the limitations of claim 3.
Yu et al. teach that the separator is used in an electrochemical device (par.0023)
Therefore, the separator of Yu modified by Han is equivalent to the separator for an electrochemical device in claims 1-3 of the instant application.
With regard to claim 6, Yu et al. further teach that the weight ratio of the mixture of first inorganic particles and the second inorganic particles: the binder polymer preferably ranges from 80:20 to 90:10 (par.0017). The content of first inorganic particles and the second inorganic particles is within the claimed range.
Yu et al. teach a porous coating layer (par.0010), and meets the limitations for “the inorganic coating layer has a porous structure formed from the interstitial volumes between the inorganic particles”.
With regard to claim 8, Yu et al. further teach the binder polymer may be polymethyl methacrylate, and the binder polymers may be used in combination (par.0010).
Polymethyl methacrylate is a crystalline polymer, as evidenced in par.0031 of Maruyama et al. (US 2003/0169574).
Yu et al. and Han et al. fail to specifically teach that the binder polymer comprises a combination of polyethylene-co-vinyl acetate and polymethyl methacrylate.
However, it would have been obvious to one of ordinary skill in the art to use a combination of polyethylene-co-vinyl acetate and polymethyl methacrylate as the binder polymer in the porous coating layer of Yu et al., because the polymers are both used for the same purpose.
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.) (MPEP 2144.06.I. COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE).
With regard to claim 12, Yu et al. teach that the porous coating layer may include functional particles, such as an HF scavenger (par.0011). The HF scavenger may be Al(OH)3 (par.0028).
Claims 4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2015/0086714) in view of Han et al. (WO 2020/256313, with citations from the English equivalent US 2022/0069419) as applied to claim 1 and in further view of Suzuki et al. (US 2017/0025716).
With regard to claims 4 and 13, Yu modified by Han teach the separator of claim 1 (see paragraph 8 above), but fail to teach the molecular weight of the binder polymer.
Suzuki et al. teach a laminated porous film including a porous base material layer and a filler layer (B) containing inorganic particles as a main component (abstract, par.0010, par.0043). The filler layer (B) comprises an organic binder (par.0047).
Suzuki et al. teach that it is possible to adjust the molecular weight of the organic binder as necessary for obtaining slurry viscosity that is suitable for coating (par.0077).
Suzuki et al. further teach that the laminated porous film is used as battery separator (par.0011).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to optimize the molecular weight of the binder in the porous coating layer of Yu modified by Han in order to obtain the desired viscosity of the slurry that forms the porous coating layer on at least one surface of the porous polymeric substrate.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2015/0086714) in view of Han et al. (WO 2020/256313, with citations from the English equivalent US 2022/0069419) as applied to claim 1 and in further view of Lee et al. (WO 2016/175605, with machine translation made of record on October 27, 2025).
With regard to claim 7, Yu modified by Han teach the separator of claim 1 (see paragraph 8 above), but fail to teach that the porous coating layer has a top portion and a bottom portion, with the binder polymer in higher concentration at the top portion.
Lee et al. teach a separator for an electrochemical element (abstract). The separator comprises a porous polymer substrate and a layer formed on at least one surface of the porous polymer substrate, wherein the layer comprises polymer binders and inorganic particles (claims 1 and 4).
Lee et al. further teach that the binder polymer is distributed in a concentration gradient in the thickness direction of the separator, and more binder polymer is distributed on the surface of the separator where adhesion with the electrode occurs (2nd paragraph on page 10 of the translation). The separator has excellent adhesion to the electrode (2nd paragraph on page 24 of the translation).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to obtain the porous coating layer of Yu modified by Han with a binder concentration gradient (higher concentration of binder at the top portion than at the bottom portion) in order to have improved adhesion to the electrode.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2015/0086714) in view of Han et al. (WO 2020/256313, with citations from the English equivalent US 2022/0069419) as applied to claim 1 and in further view of Lee et al. (WO 2019/240501, with citations from the English language equivalent US 2021/0020887).
With regard to claim 9, Yu modified by Han teach the separator of claim 1 (see paragraph 8 above), but fail to teach the method of making the separator.
Lee et al. teach a separator for an electrochemical device, the separator comprising a porous substrate and an inorganic coating layer formed on at least one surface of the porous substrate. The inorganic coating layer includes a binder resin and inorganic particles. The separator has excellent adhesion with an electrode (abstract, par.0009).
Lee et al. further teach that the inorganic coating layer has binder content increasing toward the surface portion thereof (par.0079).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to make the porous coating layer of Yu et al. with a binder content increasing toward the surface portion of the layer, in order to improve the adhesion of the separator with the electrode.
Lee et al. teach that the separator in made by a process comprising the steps of:
-applying the slurry for the inorganic coating layer onto a porous substrate; and
-solidifying the binder resin to form the inorganic coating layer, wherein the binder is drying under the condition of a relative humidity of about 40-60% and phase separation of the binder occurs (par.0079).
Therefore, the process of making the binder of Yu modified by Lee is equivalent to the method in claim 9 of the instant application.
With regard to claim 10, Yu et al. teach that the inorganic particles are coated with coupling agent (abstract, par.0010).
With regard to claim 11, Yu et al., Han et al., and Lee et al. do not specifically teach that the entire surface of the inorganic particles is coated with the coupling agent.
However, there are only two possibilities: only a portion of the surface of the inorganic particles is coated with the coupling agent or the entire surface of the inorganic particles is coated with the coupling agent.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have the entire surface of the inorganic particles of Yu modified by Han and Lee coated with the coupling agent.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2015/0086714) in view of Han et al. (WO 2020/256313, with citations from the English equivalent US 2022/0069419) as applied to claim 1 and in further view of Suzuki et al. (US 2017/0025716) and Lee et al. (WO 2016/175605, with machine translation made of record on October 27, 2025).
With regard to claim 14, Yu modified by Han teach the separator of claim 1 (see paragraph 8 above), but fail to teach the molecular weight of the binder polymer.
Suzuki et al. teach a laminated porous film including a porous base material layer and a filler layer (B) containing inorganic particles as a main component (abstract, par.0010, par.0043). The filler layer (B) comprises an organic binder (par.0047).
Suzuki et al. teach that it is possible to adjust the molecular weight of the organic binder as necessary for obtaining slurry viscosity that is suitable for coating (par.0077).
Suzuki et al. further teach that the laminated porous film is used as battery separator (par.0011).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to optimize the molecular weight of the binder in the porous coating layer of Yu modified by Han in order to obtain the desired viscosity of the slurry that forms the porous coating layer on at least one surface of the porous polymeric substrate.
Yu et al., Han et al., and Suzuki et al. fail to teach that the porous coating layer has a top portion and a bottom portion, with the binder polymer in higher concentration at the top portion.
Lee et al. teach a separator for an electrochemical element (abstract). The separator comprises a porous polymer substrate and a layer formed on at least one surface of the porous polymer substrate, wherein the layer comprises polymer binders and inorganic particles (claims 1 and 4).
Lee et al. further teach that the binder polymer is distributed in a concentration gradient in the thickness direction of the separator, and more binder polymer is distributed on the surface of the separator where adhesion with the electrode occurs (2nd paragraph on page 10 of the translation). The separator has excellent adhesion to the electrode (2nd paragraph on page 24 of the translation).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to obtain the porous coating layer of Yu modified by Han and Suzuki with a binder concentration gradient (higher concentration of binder at the top portion than at the bottom portion) in order to have improved adhesion to the electrode.
The limitation of claim 14 “the electrode adhesive portion is formed by a humidification phase separation process in which a slurry for forming the inorganic coating layer including a solvent, the binder polymer, and the inorganic particles is applied to a surface of a porous polymer substrate and dried under humification conditions” is a product-by-process limitation.
Even though the claim is directed to a process, the patentability is given by the product itself.
"[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113.I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS)
Therefore, the separator of Yu modified by Han, Suzuki and Lee is equivalent to the separator in claim 14.
Response to Arguments
Applicant’s arguments with respect to claims 1-4 and 6-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner would like to note that:
-the rejection of claims 1-3, 5, and 6 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yu et al. (US 2015/0086714) is withdrawn after the applicant’s amendment to claim 1 and the cancelation of claim 5;
-the rejection of claim 4 under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2015/0086714) in view of Suzuki et al. (US 2017/0025716) is withdrawn after the applicant’s amendment to claim 1;
-the rejection of claim 7 under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2015/0086714) in view of Lee et al. (WO 2016/175605, with machine translation made of record on October 27, 2025) is withdrawn after the applicant’s amendment to claim 1;
-the rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2015/0086714) is withdrawn after the applicant’s amendment to claim 1; and
-the rejection of claims 9-11 under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2015/0086714) in view of Lee et al. (WO 2019/240501, with citations from the English language equivalent US 2021/0020887) is withdrawn after the applicant’s amendment to claim 1.
However, new grounds of rejection for claims 1-4 and 6-14 are shown in paragraphs 5-12 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kim et al. (WO 2021/034060 with citations from the English equivalent US 20/0294078) teach a separator including heat resistant particles in a heat-resistant coating layer. The heat-resistant particles include a particle-shaped inorganic material and fluorine (F) doped to a surface of the inorganic particles (abstract). Kim et al. further teach that a composition for the heat-resistant coating layer may comprise isopropyl trioleyl titanate as dispersion agent (par.0089-0090).
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/ANCA EOFF/Primary Examiner, Art Unit 1722