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 .
This communication is responsive to the claims filed 03/23/2026. Claims 1-15 are pending.
Claims 1-15 are rejected for the reasons set forth below.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 03/23/2026. In particular, claim 1 has been amended to insert the limitation of thixotropy index (TI-2).
The text of those sections of Title 35 U.S. Code not included in this action can be found in a previous Office Action.
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.
Claims 1-4, 6-13 and 15 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Matsumoto et al. (US201 l/0143183 A).
Regarding Claims 1 and 7, Matsumoto teaches a separator for batteries comprising a heat
resistant porous layer obtained from a composition which comprises inorganic particles ([0025]), a resin
binder([0030]), a thickener ([0032]) and solvent ([00045]). Attention is drawn to Example 1, the composition comprising boehmite having the aspect ratio of 10, self-crosslinking acrylic resin as a resin binder, and an aqueous solution of an N-vinylacetamide copolymer as a thickener.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients 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. Therefore, the claimed effects and physical properties, i.e. the claimed viscosity and the thixotropy index (TI) and the TI-2, 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.
Regarding Claim 2, the Example 1 composition has 1 part by mass of N-vinylacetamide copolymer per 100 parts by mass of boehmite, therefore, the mass ratio of filler to thickener is 100:1, falling within the claimed 0.1 to 500.
Regarding Claims 3-4, the Example 1 thickener is N-vinylacetamide polymer.
Regarding Claim 6, the Example 1 composition comprising water.
Regarding Claim 8, boehmite of Example 1 has the aspect ratio of 10.
Regarding Claims 9-13, Matsumoto teaches a lithium-ion secondary battery ([0071-0073])
comprising a separator ([0002-0010]), wherein the separator comprises a resin porous film serving as a
base and the composition discussed in Claim 1 ([0019]). Matsumoto teaches a laminate electrode
comprising the separator ([0079]).
Regarding Claim 15, the example 1 composition comprising ammonium polyacrylate ([0086]).
Claim Rejections - 35 USC§ 103
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (US201 l/0143183 A), as applied to Claim 1 above.
The disclosure of Matsumoto on Claim 1 is incorporated herein by reference.
Matsumoto further teaches the thickener can be a vinylpyrrolidone-vinylacetamide copolymer ([0034]).
8. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (US201 l/0143183 A), as applied to Claim 1 above, and in further view of Katayama et al. (US2009/0067119 A1).
The disclosure of Matsumoto on Claim 1 is incorporated herein by reference.
The Example 1 composition of Matsumoto comprising plate-like boehmite having the aspect ratio of 10. Katayama teaches a separator for an electrochemical device comprising fillers (ab.), Katayama further teaches flakes of fillers are preferred and representative examples of flakes include plate-like boehmite ([0053]). the exemplary plate-like boehmite fillers of Matsumoto are likely flakes. In addition, the preferred boehmite fillers of Katayama are plate-like boehmites (average particle diameter: 1 um; aspect ratio: 10) ([0126]), which are highly match the plate-like boehmite (D50: 1 μm, aspect ratio: 10) of Matsumoto Example 1. Therefore, one ordinary skilled artisan would have been motivated to use the Plate-like boehmite taught by Katayama for the composition of Matsumoto because Katayama teaches the plate-like boehmites are suitable for a separator for an electrochemical device and having highly similar physical characteristics to the plate-like boehmites of Matsumoto.
9. Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kenji (JP2020145123 A).
Regarding Claims 1 and 7, Kenji teaches a coating composition comprising a filler, a binder, a
thickener, and water ([0085-86]); wherein the filler has an aspect ratio of 4.8 and the binder is butyl
acrylate -acrylic acid polymer (Id.). Kenji further teaches viscosity of the coating composition can be
adjusted by the content of the thickener ([0055]).
Kenji is silent on the claimed viscosity and thixotropy index (TI) and TI-2, however, the TI and TI-2 are determined by the viscosities of the coating composition as measured at the shear rates of 0.01/s, 0.1/s and 10000/s. The shear viscosities, and the resulted TI and TI-2, are functions of the composition and the processing conditions. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients for the same utility.
Regarding Claim 2, Kenji discloses that the coating composition contains poly-N-vinylacetamide 3% by mass or less and inorganic particles 90% by mass or more ([0017]), therefore, the
mass ratio of the filler to the thickener is 30 or more.
Regarding Claims 3-5, Kenji teaches thickeners include poly N-vinylacetamide and
polyvinylpyrrolidone ([0054]).
Regarding Claim 6, Kenji teaches the composition contains water ([0086]).
Regarding Claim 8, Kenji exemplifies the aspect ratio of the filler being 4.8 ([0086]).
Regarding Claims 9-13, Kenji teaches a separator comprising a polyolefin microporous film
(reading on a base material) and an inorganic particle layer (ab.), wherein the inorganic particle layer is
obtained from the coating composition ([0084-0085]). Kenji further teaches a lithium-ion secondary
battery comprising the separator ([0069]). Kenji furthermore teaches the separator separating the positive
electrode and the negative electrode of an electrochemical device ([0022]).
Claims 1-4 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over
Nobuaki et al. (JP2019160707 A).
Regarding Claims 1 and 7, Nobuaki teaches a composition comprising a water-soluble resin (A),
a thickener (B), a water-insoluble resin binder and fine particles (ab.) wherein the fine particles have an
aspect ratio of 5 or more to 100 or less ([0080]) and specific examples of such fine particles include
inorganic fine particles such as SiO2, Al2O3, etc. Nobuaki further teaches the composition comprising a
solvent ([0022]). Nobuaki furthermore teaches the binder can be (meth)acrylate polymer styrene or
butadiene rubber ([0071]).
Nobuaki is silent on the claimed viscosity and thixotropy index (TI) and TI-2, however, the TI and TI-2 are determined by the viscosities of the coating composition as measured at the shear rates of 0.01/s, 0.1/s and 10000/s. The shear viscosities, and the resulted TI and TI-2, are functions of the composition and the processing conditions. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients for the same utility.
Regarding Claim 2, [0015] of Nobuaki discloses that the content of the water-soluble resin
thickener (B) is 0.01 to 0.5 parts by mass per 100 parts by mass of the fine particles, i.e., the mass ratio of
filler/thickener is 200 -10,000: 1. the mass ratio of filler/thickener in Example 2 is 166.7: l; the mass ratio
of filler/thickener in Example 3 is 100: 1.
Regarding Claims 3-4, Nobuaki teaches the thickener is poly-N-vinylacetamide (ab.)
Regarding Claim 6, Nobuaki teaches the composition contains water ([0109]).
Regarding Claim 8, Nobuaki teaches the fine particles have an aspect ratio of 5 or more to 100 or
less ([0080]).
Regarding Claims 9-13, Nobuaki teaches that a separator is formed by applying the coating
composition to a substrate ([0107]). Nobuaki further teaches a secondary battery comprising an electrode
which comprises a porous layer comprising the coating composition and an electrode mixture layer
([0127]).
Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered but they are not persuasive.
Applicant’s argument (1): compositions of the instant application enable a coating film with a smooth surface and the production efficiency of the secondary battery can be improved.
Examiner’s answer: Applicant seemed arguing the instant application achieved unexpected results. However, the showing of unexpected results must be commensurate in scope with the claims. See MPEP 716.02(d). The instant Claim 1 claims extremely broad structural limitations. For example, the instant claim 1 claims a filler having an aspect ratio of 2 or more, which can be any flake filler, while the data tested only flake boehmite and flake alumina. In addition, the data do not support the claimed composition achieved superior results, for example, the composition comprising thickener PNVA-1 or PNVA-2 shows better surface smoothness then the composition comprising thickener PNVA-3, CMC-Na or PVP, therefore, it cannot be concluded that a composition comprising a thickener enables the coating film with a smooth surface. As discussed above, the references above, individually, discloses a composition having the same structural limitations and for the same use. The claimed properties would naturally arise and be achieved.
Applicant’s argument (2): none of Kenji, Nobuaki, Matsumoto and Yuichi discloses the claimed properties, particularly, TI and TI-2.
Examiner’s answer: Kenji, Nobuaki, and Matsumoto discloses a composition having the same structural limitations of the composition of instant Claim 1, as discussed above, the claimed properties would naturally arise and be achieved. Yuichi is an evidence reference which indicates that high viscosity and low viscosity at different shear rates can be achieved by adding thickener into a battery separator coating composition. Yuichi discloses the claimed properties or not is not relevant to the rejections.
Conclusion
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 HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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