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 .
Election/Restrictions
Claims 9-16 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/31/2025.
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.
The term “high molecular weight” in claims 1-3, 5, and 17 is a relative term which renders the claim indefinite. The term “high molecular weight” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “high molecular weight,” does not provide the meets and bounds of the compound as to what is considered “high.”
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) 1, 3 -8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whear et al. (US20190051846A1), in view of KusaKabe et al.(US2019/0051878A).
As to claim 1, Whear discloses a method for producing a lead-acid battery separator [Abstract] comprising a surface layer forming step which includes:
a coating solution preparation step in which a coating solution comprising a solvent (water [0043]), a conductive material (carbon [0043]) and a
Whear discloses a binder but does not explicitly teach a high molecular weight compound is prepared. In the same field of endeavor Kusakabe discloses a separator for a battery [Abstract] and teaches a binder for a separator may be carboxymethyl cellulose (CMC) [0094] as exemplified in paragraph [0064] example 1. Therefore it would be obvious to person of ordinary skill in the art at the time of the invention to use carboxymethyl cellulose of Kusakabe because the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.) and at the time of the invention carboxymethyl cellulose was known to be used as a binder.
a coating step in which the coating solution obtained in the coating solution preparation step is coated onto at least one side of a separator substrate [Whear 0047], and
a solvent removal step in which the solvent is removed from the coating solution that has been coated onto the separator substrate in the coating step [Whear 0049], wherein the high molecular weight compound (binder of CMC) is present in an amount of 0.1 weight% to 25 weight% with respect to a solid component of the coating solution (1 part by weight or more with respect to 100 parts by weight of the inorganic particles [0095], which overlaps the claimed range and it is noted 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to claim 3, modified Whear discloses the high molecular weight compound is present in an amount of 1.0 weight% to 10.0 weight% with respect to the solid component of the coating solution. (1 part by weight or more with respect to 100 parts by weight of the inorganic particles [Kusakabe, 0095], which overlaps the claimed range and it is noted 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to claim 4, Whear discloses the conductive material includes a carbon material. [0043]
As to claim 5, modified Whear discloses the solvent (water [Whear [0043]) is a solvent which is capable of dissolving the high molecular weight compound. (carboxymethyl cellulose (CMC) is known to be soluble in water)
Regarding to claim 6, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g. add citation). Therefore, the claimed effects and physical properties, i.e. (electrical surface resistance) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to claim 7, Whear discloses a surface layer formed in the surface layer forming step has a thickness of 0.1 µm to 30µm. (coating thickness may be adjusted from sub-micron to several hundred microns. [0048], which overlaps the claimed range and it is noted 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). )
As to claim 8, Whear discloses an intermediate layer forming step in which an intermediate layer is formed between the separator substrate and the surface layer formed in the surface layer forming step. (A three member separator of nonwoven mat (separator substrate), with a customary separator such as polyethylene (intermediate layer), with carbon applied (surface layer) [0061]…the nonwoven mat which is between the carbon containing separator and the positive electrode [0060]
Claim(s) 2, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whear et al. (US20190051846A1), in view of KusaKabe et al.(US2019/0051878A), as applied to claim 1 above, and as evidenced by Millipore Sigma retrieved from https://www.sigmaaldrich.com/US/en/product/sigma/c5013?msockid=3e5f5c3dd15c62dc0bfc4b10d01a63d9 on March 31, 2026.
As to claim 2, modified Whear discloses a binder carboxymethyl cellulose (CMC), as exemplified in paragraph [0064] Example 1 of the instant specification as the high molecular weight compound and as evidence by Millipore Sigma has a viscosity of 3000 cp with 1% water (solvent) or 3000 mPa-s which overlaps the range 3000 mPa-s to 10,000 mPa-s at 20°C when dissolved at 1 weight% with respect to a solvent in which the high molecular weight compound is soluble. (CMC is known to be soluble in water)
It is noted 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). .
As to claim 17, the rejection of claim 2 is incorporated, modified Whear discloses a method for producing a lead-acid battery separator [Abstract] wherein a coating solution comprising a solvent (water [0043]), a conductive material (carbon [0043]).
Whear discloses a binder but does not explicitly teach a high molecular weight compound is prepared. In the same field of endeavor Kusakabe discloses a separator for a battery [Abstract] and teaches a binder for a separator may be carboxymethyl cellulose (CMC) [0094] as exemplified in paragraph [0064] example 1 as ahigh molecular weight. Therefore it would be obvious to person of ordinary skill in the art at the time of the invention to use carboxymethyl cellulose of Kusakabe because the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.) and at the time of the invention carboxymethyl cellulose was known to be used as a binder,
and the high molecular weight compound is contained in an amount of 0.1 weight% to 25 weight% with respect to a solid component of the coating solution (1 part by weight or more with respect to 100 parts by weight of the inorganic particles [Kusakabe, 0095], which overlaps the claimed range and it is noted 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
and has a viscosity of 3000 mPa-s to 10,000 mPa-s at 20°C when dissolved at 1 weight% with respect to a solvent in which the high molecular weight compound is soluble. The high molecular weight compound (carboxymethyl cellulose (CMC)) as evidence by Millipore Sigma has a viscosity of 3000 cp with 1% water (solvent) or 3000 mPa-s which overlaps the range 3000 mPa-s to 10,000 mPa-s at 20°C when dissolved at 1 weight% with respect to a solvent in which the high molecular weight compound is soluble. (CMC is known to be soluble in water)
It is noted 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
Nandi et al. (US2013/0273409A1) Lead acid battery with separator resistance.
Whear et al. (US2018/0366710A1) Lead acid battery with membrane.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BART A HORNSBY whose telephone number is (313)446-6637. The examiner can normally be reached 9:00-6:00 EST.
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, Matthew T Martin can be reached at 571-270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
BART HORNSBY
Examiner
Art Unit 1728
/MATTHEW T MARTIN/ Supervisory Patent Examiner, Art Unit 1728
Prosecution Insights