DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claims 1, 4-6, 9 are objected to because of the following informalities:
In claim 1, “at least at a part of R32” in line 16 should be replaced with “at least a part of R32”.
In claims 4-6, “the first repeating unit”, “the second repeating unit” and “the third repeating unit” in lines 2-3 of the claims, respectively, should be replaced with “the first repeating units”, “the second repeating units” and “the third repeating units”, respectively.
In claims 4-6, “a total number of the first to third repeating units” is not clear, as there can only be one total of said repeating units. Suggested correction is to replace “a total number of the first to third repeating units” with “the total number of the first to third repeating units.”
In claim 9, “one or more selected from” should be replaced with “one or more materials selected from”
Appropriate correction is required.
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.
Claims 1-12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite as it is unclear whether the recited “Chemical Formula 1” (in line 7), “Chemical Formula 2” (in line 10) and “Chemical Formula 3” (in line 13) are the same or different from Chemical Formula 1, Chemical Formula 2 and Chemical Formula 3 recited in lines 3-4 of claims 1. Suggested correction is to replace “Chemical Formula 1” (in line 7), “Chemical Formula 2” (in line 10) and “Chemical Formula 3” (in line 13) with “the Chemical Formula 1”, “the Chemical Formula 2” and “the Chemical Formula 3”, respectively.
Claims 1-2 are indefinite as it is unclear whether R32 should contain an unsaturated functional group or any of the functional groups listed in the Markush groups in claim 2. The Markush group listed in claim 2 comprise of two unsaturated functional groups (vinyl and methacrylate) and two saturated groups (oxetanyl and glycidyl). While it is acknowledged that a glycidyl group can be regarded as unsaturated when paired with another functional group, for the purpose of this Office action, it is considered a saturated group. For the purpose of this Office action, claims 1 and 2 have been interpreted as reading “R32 is a functional group.”
Claims 1-3 are indefinite as it is unclear whether the recited “R32” (line 16 of claim 1 and line 2 of claim 2 and line 2 of claim 3) is the same or different than R32 group recited in claim 1 line 14. Suggested correction is to replace “R32” in line 16 of claim 1 and line 2 of claim 2 and line 2 of claim 3 with “the R32 group.”
Claims 4-6 are indefinite because it is not clear whether recitation “a number of the first repeating unit”, “a number of the second repeating unit” and “a number of the third repeating unit”, respectively, intends to recite the total number of said repeating units or any number within the total number of said repeating units. For the purpose of this Office action, these recitations were interpreted as “the number of the first repeating unit”, “the number of the second repeating unit” and “the number of the third repeating unit”, respectively.
Claim 7 is indefinite because it is not clear as it recites “a weight average molecular weight” but does not specify what is the weight of. Further, the claim is indefinite as it does not recite units of said weight average molecular weight. For the purpose of this Office action, this limitation was interpreted as “the weight average molecular weight of the polymer is”.
Additionally, dependent claims 2-12 are rejected as a result of their dependence on indefinite claim 1, as they include all the limitations of claim 1 and they do not resolve the issues identified in rejections set forth above. Additionally, dependent claim 3 is rejected as a result of its dependence on indefinite claim 2, as it includes all the limitations of claim 2 and it does not resolve the issues identified in rejections set forth above.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 8-12 are rejected under 35 U.S.C. 102a(1) and 102a(2) as being anticipated by Yamamoto (US 2012/0329894 A1).
Regarding Claim 1, Yamamoto discloses a dispersant composition (“B Layer”, [0067]-[0069]) for a separator of a non-aqueous electrolyte battery (see 10 in Fig 1 and [0159]-[0161]), comprising a polymer (see ethylene-vinyl acetate-glycidyl methacrylate terpolymer, [0118])]) containing a first repeating unit represented by Chemical Formula 1 (see ethylene-vinyl acetate-glycidyl methacrylate terpolymer [0118] wherein the first repeating unit is an ethylene repeating unit and R1 is a hydrogen); a second repeating unit represented by Chemical Formula 2 (second repeating unit is a vinyl acetate unit wherein R21 is an acetate (CH3COO-) group) and a third repeating unit represented by Chemical Formula 3 (third repeating unit is a glycidyl methacrylate unit wherein R3 is an alkyl with 1 carbon atom, R31 is a –(C=O)O- and R32 contains an unsaturated functional group (a glycidyl functional group).
Regarding Claim 2, Yamamoto discloses all the claim limitations as set forth above and wherein R32 comprises one or more unsaturated functional groups selected from the group consisting of a vinyl group, a (meth)acrylate group, an oxetanyl group, and a glycidyl group, (see ethylene-vinyl acetate-glycidyl methacrylate terpolymer [0118] with R32 comprising a glycidyl functional group).
Regarding Claim 3, Yamamoto discloses all of the claim limitations as set forth above and wherein R32 comprises one or more selected from the group consisting of the following Chemical Formulas wherein, R33 to R37 are each independently a single bond, or a linear or branched alkylene having 1 to 5 carbon atoms (see ethylene-vinyl acetate-glycidyl methacrylate terpolymer [0118] wherein R32 is a glycidyl group containing R34, wherein R34 is a linear alkylene with 1 carbon atom).
PNG
media_image1.png
80
607
media_image1.png
Greyscale
PNG
media_image2.png
109
180
media_image2.png
Greyscale
Regarding Claim 8, Yamamoto discloses all of the claim limitations as set forth above and further comprising an inorganic filler (see inorganic fillers added as additives for the purpose of improving/adjusting forming processability, productivity and other physical properties [par 0128]).
Regarding Claim 9, Yamamoto discloses all of the claim limitations as set forth above, wherein the inorganic filler comprises one or more selected from the group consisting of inorganic oxides, inorganic nitrides, poorly soluble ionic crystal fine particles, covalently bonded crystals, clay, lithium titanium phosphate, and a combination thereof (Yamamoto [0128] discloses kaolin, which reads on clay and calcium carbonate which reads on materials derived from mineral resources).
Regarding Claim 10, Yamamoto discloses a separator of a non-aqueous electrolyte battery (see 10 in Fig 1 and [0159]-[0161]) comprising: a porous substrate (A Layer, [0067]-[0069]) and a heat-resistant porous layer (B Layer, [0067]-[0069], see specifically lines 1-2 of [0069] which states that B layer may be heat-resistant layer) on one surface of the porous substrate (see [0067]-[0068]), wherein the heat-resistant porous layer comprises the dispersant composition for a separator of a non-aqueous electrolyte battery as set forth above.
While Yamamoto does not explicitly disclose the heat porous layer formed on one surface of the porous substrate, said limitation is considered to be product-by-process limitation, and even 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, 227 USPQ 964,966). 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), MPEP 2113). In the instant case, the claimed separator would be the same as the separator of Yamamoto, as regardless of whether the heat-resistant layer of Yamamoto (layer A) is formed on one surface of the porous substrate (layer B), or the two layers are made another way, the separator of Yamamoto comprises two consecutive layers, A and B and therefore is the same as the instant separator.
Regarding Claim 11, Yamamoto discloses all the claim limitations as set forth above and further discloses the separator wherein the porous substrate (as set forth above) comprises one or more resins selected from the group consisting of a polyolefin resin, a polyester resin, a polyacetal resin, a polyamide resin, a polycarbonate resin, a polyimide resin, a polyetheretherketone resin, a polyethersulfone resin, and a combination thereof (polypropylene series resins reads on a polyolefin [0072]).
Regarding Claim 12, Yamamoto discloses all the claim limitation as set forth above, a positive electrode (Fig 1, 21, [0161]) a negative electrode (Fig 1; 22; [0161]) and an electrolyte solution [par 0164].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (US 2012/0329894 A1) as applied to claim 1 above.
Regarding Claim 4, Yamamoto discloses the claim limitations as set forth above.
Yamamoto does not explicitly disclose a ratio of a number of the first repeating unit to a total number of the first to third repeating units in the polymer is 0.01 to 0.5 but discloses that the formation of porous structures within the polymer can be impacted when the ethylene monomer composition (first repeating unit, as set forth above) is varied [0116]. A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II).
In the instant case, the ethylene monomer composition, and therefore, the ratio of a number of the first repeating unit to a total number of the first to third repeating units is a variable that achieves the recognized result of affecting formation of porous structures, as disclosed by Yamamoto, thus making the ratio of a number of the first repeating unit to a total number of the first to third repeating units a result-effective variable.
Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the ethylene monomer composition of Yamamoto via routine experimentation and arrive at the claimed range of 0.01 to 0.5 in order to achieve the desired pore formation within the polymer film.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (US 20120329894 A1) as applied to claim 1 above in view of Brandau (WO 2020126343 A1)
Regarding Claims 5-6, Yamamoto discloses the claim limitations as set forth above, but does not explicitly disclose a ratio of a number of the second repeating unit to a total number of the first to third repeating units in the polymer is 0.4 to 0.95 (as required by claim 5) or a ratio of a number of the third repeating unit to a total number of the first to third repeating units in the polymer is 0.01 to 0.3 (as required by claim 6).
Brandau discloses an effect on the Mooney viscosity in copolymers B and C. Copolymers B and C are ethylene vinyl-acetate glycidyl methacrylate polymers containing different amounts of vinyl acetate (a ratio of a number of the second repeating unit to a total number of the first to third repeating units) and glycidyl methacrylate GMA (a ratio of a number of the third repeating unit to a total number of the first to third repeating units) resulting in different Mooney viscosity numbers (see Table 2, page 39).
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II).
In the instant case, a ratio of a number of the second repeating unit to a total number of the first to third repeating units (vinyl acetate, see Table 2) and a ratio of a number of the third repeating unit to a total number of the first to third repeating units (glycidyl methacrylate, see Table 2) are variables that achieve the recognized results of affecting the Mooney viscosity of a polymer as disclosed by Brandau thus making a ratio of a number of the second repeating unit to a total number of the first to third repeating units and a ratio of a number of the third repeating unit to a total number of the first to third repeating units result-effective variables.
Yamamoto and Brandau are analogous arts to the claimed invention as these references are in the same field of polymer compositions for battery components. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the vinyl acetate and glycidyl methacrylate compositions of the ethylene vinyl-acetate glycidyl methacrylate polymer as taught by Yamamoto via routine experimentation and arrive at the claimed ranges of 0.4 to 0.95 and 0.01 to 0.3, respectively, in order to achieve a Mooney viscosity as taught by Brandau wherein the resulting Mooney viscosity, a metric that measures a polymer’s flow resistance, is set to a range that allows for appropriate flowability of the polymer to ensure formation of pores at high temperatures.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (US 2012/0329894 A1) as applied to claim 1 above in view of Taschner et al (JP 2017/533322 A; US 2017/0335037 A1 used herein for citation and translation purposes).
Regarding Claim 7, Yamamoto discloses the claim limitations as set forth above.
Yamamoto is silent on wherein a weight average molecular weight is 100,000 to 1,000,000.
Taschner teaches an ethylene vinyl-acetate glycidyl methacrylate polymer as an epoxy group-containing ethylene-vinyl acetate copolymer (see abstract) with the epoxy group-containing monomer most preferably a glycidyl methacrylate [0037]. Regarding the epoxy group-containing ethylene-vinyl acetate copolymer, Taschner further teaches a weight average molecular weight is 100,000 to 1,000,000 (weight average molar mass Mw preferably in the range of 100,000 g/mol to 348,080 g/mol [0043]) wherein polymer having this weight average molecular weight exhibits improved Mooney viscosity (Taschner [0041]) thus affecting flowability of the polymer when it undergoes structural changes under high temperatures.
Yamamoto and Taschner are analogous art to the claimed invention as both references teach polymer compositions that exhibit flame-retardants properties (see [0003] in Taschner and [0069] in Yamamoto), therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polymer of Yamamoto such that the weight average molecular weight of the polymer is between 100,000 g/mol to 348,080 g/mol for the purpose of obtaining improved polymer Mooney viscosity and therefore achieve desired flowability of the polymer when it undergoes structural changes under high temperatures.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FIKI V OWHOSO whose telephone number is (571)272-3418. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
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, Basia Ridley can be reached at 5712725453. 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.
/F.V.O./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725