DETAILED ACTION
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 (i.e., claims 1-8) in the reply filed on 02/11/26 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/26/23, 10/28/24, 05/09/25, 08/12/25 was considered by the examiner.
Drawings
The drawings were received on 05/26/23.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-6 and 8 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yamada et al 2015/0270522.
As to claims 1, 4, 8:
Yamada et al disclose that it is known in the art to make a battery separator including a porous substrate/base; a porous coating layer formed on the porous substrate/base comprising a polymer binder resin (0025; 0049-0050); plate-shaped (0032) inorganic particles (0032; 0041; 0045) and an ionic dispersant (0048; 0053) (Abstract; 0023-0026; 0028; 0032; 0041; 0048; see Examples 1-1/1-2), wherein the inorganic particles may be kaolin clay, synthetic kaolinite or kaolinite; and/or calcined kaolin (thereby, including -OH) (0046-0047; see Examples 1-1/1-2).
Examiner’s note: as to the specific Mohs hardness (as recited in claim 1) and the specific ratio of the packing density to the porous coating layer to the density of the plate-shaped particle (as recited in claim 8) (if so also intended): MPEP 2112.01 [R-3] Composition, Product, and Apparatus Claims: I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT. 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). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971); Northam Warren Corp. v. D. F. Newfield Co., 7 F. Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934). Further, accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed characteristics (i.e. the specific Mohs hardness (as recited in claim 1) and the specific ratio of the packing density to the porous coating layer to the density of the plate-shaped particle), are necessarily present in the prior art material. “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 [R-3] Composition, Product, and Apparatus Claims. See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) “From the standpoint of patent law, a compound and all its properties are inseparable.”
As to claims 2, 6:
Yamada et al disclose anionic surfactants such as quaternary ammonium salt surfactants as a dispersant (0053-0054); and the content of the dispersant being 1 mass percent (0248; see Examples 1-1/1-2).
As to claim 5:
Yamada et al disclose that the content of the inorganic particles contained in the slurry is preferably up to 70 mass % (0051). Note that at least the end points constitute a valid data point, and thus, it anticipates the claim as the end point represents a specific disclosure of a discrete embodiment of the invention disclosed by the prior art which amounts to a complete description and, therefore, an anticipation of the claimed range. See Ex Parte Lee 31 USPQ2d 1105. In this case, an end point of the inorganic particle mass percent is 70 40 %. As such, there is disclosed a specific representation of a discrete embodiment for such particular element, characteristic or property. Therefore, the claimed requirement is met.
All in all, A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC, PROPERTY OR FUNCTION Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims. Refer to MPEP 2112 Requirements of Rejection Based on Inherency; Burden of Proof.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al 2015/0270522 as applied to claim 1 above, and further in view of Hu et al 2019/0237732.
Yamada et al are applied, argued and incorporated herein for the reasons expressed supra. However, the preceding reference does not expressly disclose the specific ionic dispersant.
In this respect, in the same field of endeavor, Hu et al disclose that it is known in the art to use sodium polyacrylate as a dispersant to make a separator layer (Abstract; title; 0035; 0042-0043; 0077; 0148; 0169; 0175).
In view of the above, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to use the sodium polyacrylate of Hu et al as the dispersant in the coating layer of Yamada et al as Hu et al teaches that the specifically disclosed dispersant assists in dispersing inorganic particles within the layer and in providing a heat-resistant separator layer. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al 2015/0270522 as applied to claim 1 above, and further in view of Lee et al 2017/0133653.
Yamada et al are applied, argued and incorporated herein for the reasons expressed supra. However, the preceding reference does not expressly disclose the specific aspect ratio of the inorganic particles.
In this respect, in the same field of endeavor, Lee et al disclose that it is known in the art to make a battery separator comprising a porous substrate and a heat resistance layer thereon including a binder, and sphere-shaped filler and a plate-shaped fillers having an aspect ratio of about 2-10 (Abstract; 0006-0007; 0050-0051; Figures 2-3). Note that at least the end points constitute a valid data point, and thus, it anticipates the claim as the end point represents a specific disclosure of a discrete embodiment of the invention disclosed by the prior art which amounts to a complete description and, therefore, an anticipation of the claimed range. See Ex Parte Lee 31 USPQ2d 1105. In this case, an end point of the aspect ratio is 10. As such, there is disclosed a specific representation of a discrete embodiment for such particular element, characteristic or property. Therefore, the claimed requirement is met.
In view of the above, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to use the inorganic particles of Lee et al having the specific aspect ratio as the inorganic particles in Yamada et al as Lee et al teaches that the specifically disclosed inorganic particles assist in providing a heat resistance separator layer while maintaining ion conductivity continuously to enable charge/discharge of the battery. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752
Prosecution Insights