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
Applicant’s election without traverse of Group I, claims 1-8 in the reply filed on March 13, 2026 is acknowledged.
Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 13, 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on July 11, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
The information disclosure statement (IDS) submitted on April 16, 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
The information disclosure statement (IDS) submitted on November 19, 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
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.
Claims 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (JP-2020145123-A, English translation provided for citations, hereinafter referred to as “Tanaka”) in view of Suzuki et al. (US20180301679, hereinafter referred to as “Suzuki”).
As to Claim 1: Tanaka teaches a coating layer for a separator comprising a filler which may be boehmite powder and a resin binder which may be a butyl acrylate-acrylic acid copolymer (i.e., an acrylate polymer) ([0086]). Tanaka further teaches that the composition may comprise a thickener which may be N-vinylacetamide ([0053]) which reads on the claimed thickener according to the instant specification para. [0009]. Tanaka further teaches that the composition may comprise a dispersion medium which may be water ([0060]-[0061]) which reads on the claimed solvent according to the instant specification para. [0021].
Tanaka is silent towards the viscosity of the composition measured at a shear rate of 0.01/s and the thixotropy index of the composition. However, Tanaka does explicitly contemplate controlling the viscosity of the composition ([0052] and [0055]).
Suzuki teaches a related coating material comprising a filler, binder, and a solvent suitable for application to a separator or electrodes ([0007]). Suzuki further teaches that the difference in viscosity at low and high shear rates (i.e., such as the claimed 0.01 s-1 and 10000 s-1) or thixotropic index control the handing, storage, and coating properties of the coating composition (see [0025]-[0026] of Suzuki). Although Suzuki measures the thixotropy index of a composition at a ratio of viscosities at different shear rates (0.1 s-1 and 10000 s-1 as opposed to the instantly claimed 0.01 s-1 and 10000 s-1), a person having ordinary skill in the art would be motivated based on the disclosure of Suzuki to optimize the difference in viscosity at low and high shear rates (i.e., 0.01 s-1 and 10000 s-1) or thixotropic index for separator/electrode coating compositions, such as that of Tanaka, such that the composition exhibits lower viscosity as the shear rate becomes higher to, inter alia, improve the handling, storability, and application of said coating material ([0025]-[0028]). As such, it would have been considered to be a result effective variable by a person having ordinary skill in the art at the time of the invention. Tanaka and Suzuki are analogous art as they are concerned with the same field of endeavor, namely, coating compositions for separators for electrodes. It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the viscosity at 0.01 s-1, 10000 s-1, and the ratio thereof (i.e., the thixotropy index) of Tanaka through routine experimentation, and the motivation to have done so would have been that Suzuki teaches that it is recognized within the art that the thixotropy index (i.e., the quotient of viscosity at a low shear rate by a viscosity at a high shear rate) can be tuned such that the composition exhibits suppressed sedimentation of fillers (high viscosity at low shear rates) while also providing facile and even coat application (low viscosity at high shear rates) ([0028]).
As to Claim 2: Tanaka and Suzuki teach the composition of claim 1 (supra).
Tanaka further teaches an exemplary coating liquid comprising inorganic particles ([0083]) (i.e., filler) in an amount of 95.75 mass% and poly-N-vinylacetamide (i.e., a thickener) in an amount of 1.25 mass% ([0086]), which corresponds to a filler/thickener ratio of 76.7, which is within the claimed range.
As to Claim 3: Tanaka and Suzuki teach the composition of claim 1 (supra).
Tanaka further teaches that the composition may comprise a thickener which may be poly-N-vinylacetamide ([0053]), which is construed to be a species within the claimed “poly-N-vinylcarboxylic acid amide” genus.
As to Claim 4: Tanaka and Suzuki teach the composition of claim 1 (supra).
Tanaka further teaches that the composition may comprise a thickener which may be poly-N-vinylacetamide ([0053]).
As to Claim 5: Tanaka and Suzuki teach the composition of claim 1 (supra).
Tanaka further teaches that the composition may comprise a thickener which may be polyvinylpyrrolidone ([0053]).
As to Claim 6: Tanaka and Suzuki teach the composition of claim 1 (supra).
Tanaka further teaches that the composition may comprise a dispersion medium which may be water ([0060]-[0061]).
As to Claim 7: Tanaka and Suzuki teach the composition of claim 1 (supra).
Tanaka is silent towards the thixotropy index of the composition. However, Tanaka does contemplate controlling the viscosity of the composition ([0052] and [0055]).
Suzuki teaches a related coating material comprising a filler, binder, and a solvent suitable for application to a separator or electrodes ([0007]). Suzuki further teaches that the difference in viscosity at low and high shear rates (i.e., such as the claimed 0.01 s-1 and 10000 s-1) or thixotropic index control the handing, storage, and coating properties of the coating composition (see [0025]-[0026] of Suzuki). Although Suzuki measures the thixotropy index of a composition at a ratio of viscosities at different shear rates (0.1 s-1 and 10000 s-1 as opposed to the instantly claimed 0.01 s-1 and 10000 s-1), a person having ordinary skill in the art would be motivated based on the disclosure of Suzuki to optimize the difference in viscosity at low and high shear rates (i.e., 0.01 s-1 and 10000 s-1) or thixotropic index for separator/electrode coating compositions, such as that of Tanaka, such that the composition exhibits lower viscosity as the shear rate becomes higher to, inter alia, improve the handling, storability, and application of said coating material ([0025]-[0028]). As such, it would have been considered to be a result effective variable by a person having ordinary skill in the art at the time of the invention. Tanaka and Suzuki are analogous art as they are concerned with the same field of endeavor, namely, coating compositions for separators for electrodes. It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the viscosity at 0.01 s-1, 10000 s-1, and the ratio thereof (i.e., the thixotropy index) of Tanaka through routine experimentation, and the motivation to have done so would have been that Suzuki teaches that it is recognized within the art that the thixotropy index (i.e., the quotient of viscosity at a low shear rate by a viscosity at a high shear rate) can be tuned such that the composition exhibits suppressed sedimentation of fillers (high viscosity at low shear rates) while also providing facile and even coat application (low viscosity at high shear rates) ([0028]).
As to Claim 8: Tanaka and Suzuki teach the composition of claim 1 (supra).
Tanaka teaches a coating layer for a separator comprising a filler which may be boehmite powder and further teaches exemplary embodiments wherein said boehmite powder has an aspect ratio of 1.0 ([0088]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/031,057 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Both applications claim substantially the same or overlapping coating compositions comprising a filler, binder, a thickener, and a solvent. Both applications claim the same species of binder and filler and recite the same ranges for a thixotropy index (TI). The thixotropy index (TI-2) recited by the reference application is construed to fall within the broader TI recited in the instant claims. The reference application claims an encompassing range for a filler/thickener ratio. While the reference application claims wherein the aspect ratio of the filler is 2 or more and the instant claims recite wherein the aspect ratio of the filler is 1 or more and less than two, the claims are found to not be patentably distinct as a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap but are merely close (see MPEP 2144.05).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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