DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
3. In response to the amendment received on 3/10/2026:
Claims 1, 3-8, and 10-14 are pending in the current application. Claims 1 and 4 have been amended, Claims 3 and 9 are cancelled, and Claims 13-14 are newly added.
The cores of the previous prior art-based rejections have been overcome in light of the amendment. All changes made to the rejection are necessitated by the amendment.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
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.
5. Claim 1 recites “a ratio of the halogen atom in the first fire retardant of 60 mass% or more”. This limitation lacks a relative “whole” which would allow the ratio to have meaning. To advance prosecution, the limitation will be interpreted in the same way that the second fire retardant is claimed, i.e. “a ratio of the halogen atom relative to the first fire retardant_of 60 mass% or more”. Claims 3-8 and 10-14 are rejected as being dependent on a rejected base claim.
6. Claim 14 recites the limitation "the cyclic compound contained in the first fire retardant" in line 2. There is insufficient antecedent basis for this limitation in the claim. In the interest of compact prosecution, the limitation will be interpreted as “the cyclic structure contained in the first fire retardant”.
Claim Rejections - 35 USC § 103
7. Claims 1, 3, 5, and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee US PG Publication 2023/0051902 in view of Arai JPH10172615.
Regarding Claims 1 and 10-13, Lee discloses a secondary battery comprising a fist electrode (positive electrode) 10, a second electrode (negative electrode) 20 (meeting Claim 11), and a separator 30 interposed between the first and second electrodes (Fig 1, para 0026), wherein the first electrode comprises a first electrode active material layer (positive electrode active material layer) 13, the first active material layer includes a first electrode active material and a first fire retardant (flame retardant) that is gasified at high temperature in the battery, such fire retardant including a halogen atom (paras 0030, 0034, e.g. octabromodiphenyl ether), the first fire retardant includes a cyclic structure to which the halogen atom is bonded, and a ratio of the halogen atom in the first fire retardant is 60 mass% or more (octabromodiphenyl ether is 79.8% Br) (see entire disclosure and especially Figs 1-2 and paras 0023, 0030-0036).
Lee discloses e.g. a phosphoric acid compound can be used as the first fire retardant (e.g. phosphoric acid ammonium or ammonium phosphate, paras 0033, 0035) but fails to specifically disclose wherein the separator includes a second fire retardant, and the second retardant includes the phosphoric acid compound or a cyclic structure to which a halogen atom is bonded and a ratio of the halogen atom relative to the second fire retardant is 60 mass% or more and fails to disclose e.g. wherein the first electrode is a negative electrode and the second electrode is a positive electrode (pertaining to Claim 12). However, in the same field of endeavor of batteries using flame retardants for safety, Arai discloses a secondary battery comprising a first electrode (positive electrode layer 2 on current collector 1), a second electrode (negative electrolyte layer 4 disposed on current collector 3), and a separator (solid polymer electrolyte layer 5) interposed between the first and second electrodes, (para 0010, Fig.) wherein the first electrode includes first active material layer 2, the first active material layer includes a first electrode active material, and a first fire retardant including a halogen atom such as tetrabromobisphenol A (para 0024-0025) which is a cyclic structure to which the halogen atom is bonded, and Arai further discloses wherein the separator can also have a fire retardant, which can be a second fire retardant material such as tetrabromobisphenol A (para 0049), a cyclic structure to which the halogen atom is bonded (the Office notes that there is no requirement in the claims that the second fire retardant is a different material from the first fire retardant), and Arai teaches that such a fire retardant is used in any or all of the components of the battery as the fire retardant material (such as positive electrode, negative electrode, and/or separator, pertaining to Claim 12) to generate a volatile, non-flammable substance at high temperatures which improves safety when the battery temperature becomes abnormally high due to overcharge or the like (see entire disclosure and especially Fig and paras 0008-0010, 0015-0016, 0047-0050). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to also include the flame/fire retardant of Lee in the separator of Lee and to further assign the first electrode as the negative electrode (such that it contains the first fire retardant) because Arai teaches that these materials are beneficially used in all three types of structures in a battery in order to improve safety. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
In the invention of Lee modified by Arai, since Arai teaches that the same flame/fire retardant material can be used in the separator as what is used in the positive electrode (meeting Claim 13), the skilled artisan would have found it obvious to use any of the flame retardants of Lee in the separator of Lee modified by Arai, such as using octabromodiphenyl ether, or using a phosphoric acid compound such as phosphoric acid ammonium (ammonium phosphate, paras 0033, 0035, meeting Claim 10) because these are taught by Lee to use in the positive electrode as the fire retardant. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding Claim 3, Lee teaches in para 0032 that the first fire retardant compound decomposes in a range of about 80 °C to 200 °C, a range that overlaps the claimed range. 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claim 5, Lee modified by Arai does not specifically discloses wherein the second fire retardant is included in a base material layer in the separator. However, since the separator of Arai is made of only one “base material” layer and this is the layer that Arai advises for inclusion of the second fire retardant, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to include the second fire retardant in a base material layer of the separator of Lee and Arai in order to provide the advantage taught by both Arai and Lee, since the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.). Further, the mere rearrangement of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04).
Regarding Claim 14, Lee modified by Arai does not specifically disclose wherein the second fire retardant contains a different cyclic compound than the cyclic compound contained in the first fire retardant. However, since Lee teaches a number of different options for the fire retardant, including more than one cyclic compound to which a halogen atom is bonded, such as tetrabromobisphenol A (para 0049 of Arai), then it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the battery of Lee and Arai such that the second fire retardant contains a different cyclic compound than the cyclic compound contained in the first fire retardant since Lee teaches multiple options, including tetrabromobisphenol A, and Arai teaches that this same compound can be used effectively in the separator. Although tetrabromobisphenol A has a ratio of the halogen atom relative to the second fire retardant of 58 mass%, the skilled artisan would find this material to be close enough to 60% to give the same result, particularly since there does not appear to be any criticality in this lower limit (in view of the instant disclosure). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
8. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lee US PG Publication 2023/0051902 in view of Arai JPH10172615, as applied to Claim 1, and further in view of Jang US PG Publication 2022/0190346.
Regarding Claim 4, Lee modified by Arai discloses the claimed secondary battery as described in the rejection of Claim 1, which is incorporated herein in its entirety. Lee discloses tetrabromobisphenol A as one alternate example of a usable first fire retardant octabromodiphenyl ether (para 0034), tetrabromobisphenol A being the same material disclosed by Arai as discussed above, but Lee modified by Arai fails to specifically disclose wherein the first fire retardant includes at least one selected from the group consisting of ethylene-1,2-bispentabromophenyl,ethylenebistetrabromophthalimide, hexabromocyclododecane, 2,4,6- tribromophenol, and 1,6,7,8,9,14,15,16,17,17,18,18-dodecachloro pentacyclo (12.2.1.16'9.02,1 octadeca-7,15-diene. However, in the same field of endeavor of secondary battery design including fire retardant safety features, Jang discloses several functionally equivalent fire retardants including e.g. tetrabromobisphenol A and hexabromocyclododecane (see e.g. para 0075-0077). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use e.g. hexabromocyclododecane as the first fire retardant of Lee and Arai since Jang teaches that this material is functionally equivalent to tetrabromobisphenol A which is also functionally equivalent to other first fire retardants taught by Lee such as octabromodiphenyl ether. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
9. Claim 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee US PG Publication 2023/0051902 in view of Arai JPH10172615, as applied to Claim 1, and further in view of Kagami US PG Publication 2018/0019458.
Regarding Claims 6-8, Lee modified by Arai discloses the claimed secondary battery as described in the rejection of Claim 1, which is incorporated herein in its entirety. Lee teaches that the fire retardant layer of the positive electrode can be mixed in with the active material or can be formed as a distinct second functional layer (para 0046) and teaches that the separator itself can have a separate functional layer (para 0099) but Lee modified by Arai fails to specifically disclose wherein a surface layer of one side or both sides of the separator include(s) a fire retardant layer including the second fire retardant (Claim 6) or wherein the fire retardant layer is disposed at least a surface layer of the separator facing the second electrode (Claim 7), wherein the fire retardant layer has a thickness of 0.5 microns to 4 microns (Claim 8). However, in the same field of endeavor of secondary battery design including fire retardant safety features, Kagami discloses a beneficial battery design wherein the battery comprises an anode (can be called second electrode) 22, cathode (can be called first electrode) 21, and the separator 23, wherein a flame retardant layer 26 containing phosphoric acid flame retardant is disposed on a surface layer of the separator 23 facing second electrode 22 (meeting Claims 6 and 7) and containing second flame retardant material melamine polyphosphate in a layer having a thickness of 1 micron to 30 microns, inclusive (overlapping the layer thickness range of Claim 8) with the clear benefit that the portion of the flame retardant layer can intrude into the anode layer 22 in order to provide protection against thermal runaway with inhibiting movement of lithium ions even when the secondary battery is exposed in a high temperature environment, the discharge capacity is made less likely to be decreased even charge and discharge operations are performed repeatedly, and defects such as ignition or explosion of the secondary battery are made less likely to occur, and discharge capacity characteristics, cycle characteristics, etc. are secured and superior safety is also achieved (see entire disclosure and especially Figs 3-4 and paras 0139-0147, 0163-0169). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the battery of Lee modified by Arai such that a surface layer of one side or both sides of the separator include(s) a first retardant layer including the second fire retardant or wherein the fire retardant layer is disposed at at least a surface layer of the separator facing the second electrode, wherein the fire retardant layer has a thickness of 0.5 microns to 4 microns because Kagami teaches that such an arrangement provides protection against thermal runaway with inhibiting movement of lithium ions even when the secondary battery is exposed in a high temperature environment, the discharge capacity is made less likely to be decreased even charge and discharge operations are performed repeatedly, and defects such as ignition or explosion of the secondary battery are made less likely to occur, and discharge capacity characteristics, cycle characteristics, etc. are secured and superior safety is also achieved. Regarding the obviousness of the claimed thickness range, 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Response to Arguments
10. Applicant's arguments with respect to the claims are based on the claims as amended. The amended claims have been addressed in the new rejection above.
Conclusion
11. 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 extension fee 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 date of this final action.
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/LISA S PARK/Primary Examiner, Art Unit 1729
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