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Claims 8-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 13, 2026.
Applicant's election with traverse of Group I (claims 1-7) in the reply filed on January 13, 2026 is acknowledged. The traversal is on the ground(s) that no undue burden exists to examine all of the claims due to the PCT application having all claims examined. This is not found persuasive because the argument is not commensurate in scope with the restriction practice regarding a 371 application. Undue burden is applied to US restriction practice. Lack of unity (see MPEP 1850) is used for PCT and 371 practice. Thus, the arguments regarding undue burden/US restriction practice cannot be persuasive as applied to 371 restriction practice.
The requirement is still deemed proper and is therefore made FINAL.
Note: The original restriction set forth is proper for the reasons set forth therein. The rejection below further shows why lack of unity exists (since claim 1 does not overcome the prior art). Lastly, all proper rejoinder practice will followed upon discovery of allowability of the elected invention.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed April 5, 2023, May 7, 2025, July 21, 2025, and October 14, 2025 have been placed in the application file and the information referred to therein has been considered as to the merits.
Drawings
The drawings received on April 5, 2023 are acceptable.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0083519 (Kim et al.) in view of JP 6384477 (Shimura).
(Note: Inventor/Assignee for JP 6384477 (which only appears in Japanese) was obtained by referencing related document WO 2014/199979A1, which is cited on the October 14, 2025 IDS.)
As to claim 1, Kim et al. teach a separator comprising:
a polyolefin-based separator substrate (separator [130]) (figs. 1, 2, 5; para 0014, 0043); and
a coating portion (coating layers [135, 137]) formed on at least a part of an outer surface of the separator substrate (separator [130]) (figs. 1, 2, 5; para 0043-0044).
Kim et al. do not teach an uneven portion is provided in the separator substrate, the uneven portion extending along an outer periphery of at least one side of the separator.
However, Shimura teaches an uneven portion (meshing/interlocking structure [26]) is provided in the separator substrate, the uneven portion extending along an outer periphery of at least one side of the separator [22] (fig. 2; para 0027, 0054, 0084). The motivation for having the meshing/interlocking structure [26] (an uneven portion is provided in the separator substrate, the uneven portion extending along an outer periphery of at least one side of the separator) is to improve alignment between the separators and electrodes (para 0023, 0049-0050). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) for having an uneven portion provided in the separator substrate, the uneven portion extending along an outer periphery of at least one side of the separator (as taught by Shimura and applied to Kim et al.) to improve alignment between the separators and electrodes.
As to claim 2, Kim et al. teach wherein a non-coating portion, on which the coating portion is not located, is located on at least one side of an outer periphery of the separator substrate, among outer peripheries of the separator substrate (figs. 1, 2, 5; para 0054),
wherein the coating portion (coating layers [135, 137]) is located at a remaining part of the separator substrate excluding the non-coating portion (figs. 1, 3, 5; para 0045, 0054).
Regarding the limitation wherein the uneven portion is located on the non-coating portion, this limitation has been rendered obvious by the combination with Shimura. See the rejection to claim 1 for full details regarding the rejection, incorporated herein but not reiterated herein for brevity’s sake.
As to claim 3, Shimura, relied upon to render obvious an uneven portion on the periphery (see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake) further teaches the separator comprises a first outer periphery, a separator sheet that is cut, and a second outer periphery perpendicular to the first outer periphery (fig. 9; para 0086),
and wherein the uneven portion is located at an end of the first outer periphery so as to extend in a direction toward a central axis (fig. 9; para 0086).
Regarding the limitations regarding a movement direction of a separator sheet (i.e. a first outer periphery parallel to a movement direction of a separator sheet to be cut to form the separator and a second outer periphery perpendicular to the first outer periphery, and wherein the uneven portion is located at an end of the first outer periphery so as to extend in a direction toward a central axis of the movement direction of the separator sheet), these limitations are process limitations (as they merely define how a separator is to be moved, rather than a structural feature). Thus, the movement direction (and relations thereto) does not further limit the claimed structure, and the claimed structure is met by the prior art.
“[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, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted).
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
As to claim 4, Shimura, relied upon to render obvious an uneven portion on the periphery (see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake) further teaches the separator comprises a first outer periphery, a separator sheet that is cut, and a second outer periphery perpendicular to the first outer periphery (fig. 9; para 0086),
and the uneven portion is formed located at the first outer periphery and the second outer periphery (fig. 9; para 0086).
Regarding the limitations regarding a movement direction of a separator sheet (i.e. the separator comprises a first outer periphery parallel to a movement direction of a separator sheet to be cut to form the separator and a second outer periphery perpendicular to the first outer periphery) these limitations are process limitations (as they merely define how a separator is to be moved, rather than a structural feature). Thus, the movement direction (and relations thereto) does not further limit the claimed structure, and the claimed structure is met by the prior art.
“[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, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted).
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
As to claim 5, Shimura, relied upon to render obvious an uneven portion on the periphery (see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake) further teaches the uneven portion (interlocking structure [26]) has a uniform width (provided with a specific definition, set as 1.5 mm (para 0091)).
As to claim 6, Shimura, relied upon to render obvious an uneven portion on the periphery (see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake) further teaches the uneven portion (interlocking structure [26]) is provided in one of opposite outer surfaces of the separator substrate (figs. 2, 8, 9).
As to claim 7, Shimura, relied upon to render obvious an uneven portion on the periphery (see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake) further teaches the uneven portion (interlocking structure [26]) is provided in each of opposite outer surfaces of the separator substrate (figs. 2, 8, 9).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 2015/0270520 (Stokes et al.) teaches a microporous film (substrate) coated with a non-woven, both of which can be polyolefins (para 0032, 0053). The edges of the microporous membrane (substrate) is embossed to create a patterned area a non-patterned area (para 0064).
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/EUGENIA WANG/Primary Examiner, Art Unit 1759