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 .
Claim Status
Claims 1 and 2 have been amended; support for claim 1 is found in original claim 3 and the instant specification, the amendment to claim 2 was minor editorial amendment.
Claim 3 has been cancelled.
Claims 1-2 and 4-10 are currently pending and have been examined on the merits in this office action.
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.
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 1-2, 4-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ueki et al. (US 2014/0272534 A1).
Regarding claim 1, Ueki discloses a separator for an electrochemical device ([0002] secondary batteries for use in vehicles), comprising
a porous substrate ([0003,0013] porous separator 40; Figure 1), and
a porous coating layer formed on at least one surface of the porous substrate ([0005] porous heat resistant layer formed on the surface of the separator),
wherein the porous coating layer comprises a binder polymer and an inorganic filler ([0033] porous heat resistant layer 42 contains an inorganic filler 44 and a binder 46),
wherein the BET surface area of the inorganic filler ranges from 10-20 m2/g ([0046] filler particles 44 have a BET specific surface area between 1-20 m2/g), and wherein the porous coating layer satisfies the following Formula 1: 20 ≤ (amount of inorganic filler (wt%) x BET of inorganic filler (m2/g) )/ amount of binder polymer (wt% )≤ 30, where the amount of binder polymer and the amount of inorganic filler are based on 100 wt% of a total weight of the porous coating layer ([0046,0054, 0056] organic filler particles 44 have a BET of 1-20 m2/g; inorganic particles account for at least 50 mass% of the porous heat resistant layer and wherein the binder is a polymer and accounts for not more than 40 mass% of the porous heat resistant layer). Ueki discloses ranges for the inorganic filler, BET of the inorganic filler and amount of binder polymer used in the porous coating layer and while Ueki fails to explicitly compare the values within a set formula according to Formula 1 as claimed, a skilled artisan would have found it obvious to try and select within the range that would read on the claimed invention. For example a skilled artisan can select the mass% of the inorganic particles to be 70, a BET of the inorganic particles to be 10 m2/g and a binder percentage of 30 mass% to obtain a corresponding resulting value of 23.33 which is between 20 and 30 and be within the claimed range and thus would have been obvious for a skilled artisan to select values within the ranges taught by Ueki thus rendering obvious all the claim limitations of claim 1.
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). A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.).
Regarding claim 2, Ueki discloses all the claim limitations of claim 1. Ueki discloses in the rejection of claim 1 wherein a skilled artisan can select the mass% of the inorganic particles to be 70, a BET of the inorganic particles to be 10 m2/g and a binder percentage of 30 mass% to obtain a corresponding resulting value of 23.33 which is between 23 and 38 and be within the claimed range and thus would have been obvious for a skilled artisan to select values within the ranges taught by Ueki thus rendering obvious all the claim limitations of claim 2.
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). A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.).
Regarding claim 4, Ueki discloses all the claim limitations of claim 1. Ueki further discloses wherein the amount of inorganic filler is 50-80 wt% and wherein the amount of binder polymer is 20-50 wt% based on 100 wt% of the total weight of the porous coating layer ([0056] inorganic filler is provided at least 50 mass% and binder is provided at most 40 mass% and thus overlaps with the claimed invention). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 5, Ueki discloses all the claim limitations of claim 1. Ueki further discloses wherein the binder polymer is at least one of polymethyl methacrylate ([0054] the binder polymer is one that disperses or dissolves in the aqueous solvent and can be acrylic resins that can be obtained by polymerizing one type of monomer such as methyl methacrylate as well as other examples to form a polymer binder; thus Ueki would disclose a polymethyl methacrylate as the binder as well as other examples and would render obvious the claimed binder polymer).
Regarding claim 6, Ueki discloses all the claim limitations of claim 1. Applicant’s instant invention describes wherein the substrate is a polyolefin resin such as polyethylene or polypropylene or the like (see applicant’s PG Pub [0041-0042]) and wherein the porous coating layer is the coating layer of claim 1 containing a binder polymer and inorganic filler according to Formula 1. Ueki further discloses wherein the separator 40 is formed of a polyolefin resin material such as polyethylene or polypropylene and wherein the porous heat resistant layer 42 is formed on the separator ([0069-0070]). Ueki is silent with respect to an adhesion/ peel strength between the porous substrate and the porous coating layer being 200 gf/15 mm or more, however, this is deemed to be an inherent adhesion strength between the polyolefin separator material 40 and the porous heat resistant layer 42 as the materials of the separator and heat resistant layers are the same material used by applicant in the porous substrate and coating layers and thus would have been expected to produce expected results. While the prior art does not explicitly teach the adhesion/peel strength, these properties are considered inherent in the prior art barring any differences shown by objective evidence between the separator and porous heat resistant layer disclosed in the prior art and the applicant. As the separator and porous heat resistant layers taught by the prior art and the applicant are identical within the scope of claim 6, the separator and porous heat resistant layer inherently teaches that adhesion/peel strength. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) MPEP 2112.01.
Regarding claim 7, Ueki discloses the separator of claim 1. Ueki further discloses an electrode assembly comprising two electrodes having a polarity opposite to teach other and the separator of claim 1 being interposed between the two electrodes (Figure 1; electrode assembly 80 having a separator 40 in between the positive electrode 20 and the negative electrode 10).
Regarding claims 9-10, Ueki discloses the electrode assembly of claim 7 and wherein an electrochemical device such as a lithium secondary battery comprises the electrode assembly of claim 7 ([0029] separator is employed in a lithium secondary battery).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ueki et al. (US 2014/0272534 A1) as applied to claim 7 above, and further in view of Cho et al. (US 2021/0305658 A1).
Regarding claim 8, Ueki discloses all the claim limitations of claim 7. Ueki discloses wherein the separator is provided between electrodes, however, is silent with respect to the adhesion strength between the electrode and separator.
Cho discloses a composite separator for a lithium battery and is analogous with the instant invention as being within the same field of endeavor of battery cells. Cho discloses a coating layer of a separator is provided and has a peel strength between the coating layer of the separator and the electrode be between 10-30 gf/mm ([0078]). Cho further discloses when the peel strength between the coating layer and the porous substrate is too low, the adhesion force is reduced and can be detached from each other rather easily and when the peel strength is excessively increased the coating layer becomes to hard and results in cracks ([0078]).
Therefore, it would have been obvious in view of a skilled artisan to modify the peel strength between the separator and electrode of Ueki to have a value such as between 10-30 gf/mm as taught by Cho in order to provide sufficient adhesion while preventing cracking from occurring. The resulting modification would have arrange that would correspond to and would fall within the range of 100 gf/25 mm (4 gf/mm) or more and thus the combination would render obvious all the claim limitations of claim 8.
Response to Arguments
Applicant's arguments filed 03/17/2026 have been fully considered but they are not persuasive. Applicant argues that the amended claims overcome the rejection of record as Ueki fails to disclose wherein a BET surface area of inorganic filler is between 10-20 m2/g as claimed as Ueki only discloses samples 1-13 having a range of 1.1-8.9 m2/g and thus would not read on the Formula 1 as claimed. This is not persuasive as Ueki discloses wherein a range of the BET surface area of the inorganic filler is between 1.0-20 m2/g, see [0046] and thus Ueki would have rendered obvious the claimed range of 10-20 m2/g as Ueki discloses an overlapping range. Applicant further argues that Ueki’s examples only discloses values outside of the range and argues that the BET specific surface area as claimed as well as Formula 1 provides superior adhesion and is unexpected, however, fails to provide evidence and a showing of unexpected results in the remarks and thus is not persuasive. Examiner notes that the range of the inorganic filler taught by Ueki would render obvious the claimed range and would read on the resulting Formula I in view of the disclosure of Ueki. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lee et al. (US 2014/0322586 A1)-discloses a separator for a secondary battery having inorganic particles within a range of BET surface areas.
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 Adam J Francis whose telephone number is (571)272-1021. The examiner can normally be reached M-Th: 7 am-4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew 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.
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/ADAM J FRANCIS/Primary Examiner, Art Unit 1728
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