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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) claims 1-13, drawn to a separator.
Group II, claim(s) 14-17, drawn to a method of manufacturing.
Group III, claim(s) 17-20, drawn to a battery.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the battery separator having filter and separator materials, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Published Application US20190245180A1, hereafter Okugawa.
Okugawa discloses a separator arrangement for a battery ([0019] separator 130; [0018] secondary battery 100) comprising a separator and filter material (Fig 1B [0019] porous layer 134 on surface of first layer 132)
Groups I and III lack unity of invention because even though the inventions of these groups require the technical feature of: a separator arrangement for a battery, comprising a porous separator with a separator porosity, and a porous filter with a filter porosity less than the separator porosity, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Published Application US20190245180A1, hereafter Okugawa.
Okugawa discloses a separator arrangement for a battery ([0019] separator 130; [0018] secondary battery 100) comprising a porous separator ([0019] porous layer 134) with a separator porosity (Fig 1B [0019] first layer 132 of porous polyolefin), and a porous filter (Fig 1B [0019] first layer 132 of porous polyolefin, porous layer 134 on surface of first layer 132) with a filter porosity less than the separator porosity ([0027] first layer 132 porosity between 20 % and 80 %; [0068] porous layer 134 porosity between 20 % and 90 %).
Groups II and III lack unity of invention because even though the inventions of these groups require the technical feature of the battery separator having filter and separator materials, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Published Application US20190245180A1, hereafter Okugawa.
Okugawa discloses a separator arrangement for a battery ([0019] separator 130; [0018] secondary battery 100) comprising a separator and filter material (Fig 1B [0019] porous layer 134 on surface of first layer 132)
During a telephone conversation with Christian Drago on 8/29/2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claims 2-13 are objected to because of the following informalities:
Claims 2-13 recite "separator arrangement" which should be amended to read "the separator arrangement" in order to improve claim limitation consistency.
Claims 5-9 and 11-12 recite "the separator" which should be amended to read "the porous separator" in order to improve claim limitation consistency.
Claims 5-8, 10-11, and 13 recite "the filter" which should be amended to read "the porous filter" in order to improve claim limitation consistency.
Appropriate correction is required.
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.
Claim(s) 1, 10, 11, and 13 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Published Application US20190245180A1, hereafter Okugawa.
Regarding claim 1, Okugawa discloses a separator arrangement for a battery ([0019] separator 130; [0018] secondary battery 100), comprising
a porous separator (Fig 1B [0019] porous layer 134) with a separator porosity, and
a porous filter (Fig 1B [0019] first layer 132 of porous polyolefin) with a filter porosity less than the separator porosity (Fig 1B [0019] porous layer 134 on surface of first layer 132; [0027] first layer 132 porosity less than 55%; [0068] porous layer 134 porosity between 30 % and 80 %) (MPEP 2131.03 for anticipation of overlapping ranges).
Regarding claim 10, Okugawa discloses wherein a diameter of the pores of the filter (132) is between 0.02 µm and 0.7 µm ([0027] first layer 132 is 0.01-0.3 µm) (MPEP 2131.03 for anticipation of overlapping ranges).
Regarding claim 11, Okugawa discloses wherein a thickness of the separator (134) is less than 10 µm ([0065] thickness of porous layer 134 is 2-10 µm), and
wherein a thickness of the filter (132) is equal to or more than 10 µm ([0024] thickness of first layer 132 is 4-40µm) (MPEP 2131.03 for anticipation of overlapping ranges).
Regarding claim 13, Okugawa discloses wherein the filter (132) is made of polypropylene ([0022] porous polyolefin is homopolymer obtained by polymerizing propylene).
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.
Claim(s) 2-7, 9, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published Application US20190245180A1, hereafter Okugawa.
Regarding claim 2, Okugawa discloses wherein the separator (134) porosity is between 30% and 80% ([0068]), which overlaps with the claimed range of 50% or more, and wherein the filter (132) porosity is less than 55% ([0027]), which overlaps with the claimed range of less than 50%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 (I)).
Regarding claim 3, Okugawa discloses wherein the separator (134) porosity is between 20% and 90% ([0068]), which overlaps with the claimed range of 60% or more, and wherein the filter (132) porosity is between 20% and 80% ([0027]), which overlaps with the claimed range of less than 60%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 (I)).
Regarding claim 4, Okugawa discloses wherein the separator (134) porosity is between 20% and 90% ([0068]), which overlaps with the claimed range of 70% or more, and wherein the filter (132) porosity is between 20% and 80% ([0027]), which overlaps with the claimed range of less than 30%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 (I)).
Regarding claims 5-7, Okugawa discloses the porosities of the separator (134) ([0068]) and filter (132) ([0027]). Okugawa further discloses the porosities of these two layers relate to higher ion permeabilities and improved shutdown function of the separator ([0027], [0068]).
Okugawa is silent on wherein the separator comprises more than 2000, 3000, or 4800 pores per cm2, and wherein the filter comprises less than 2000, 1500, or 1200 pores per cm2, or any specific amount of pores per cm2 in any part of the separator.
The examiner notes that the number of pores per cm2 relates directly to porosity.
As the ion permeability and porosity of the separator is/are variable(s) that can be modified, among others, by adjusting the pores per cm2 in the separator and filter layers, with ion permeability and porosity of the separator increasing as number of pores per cm2 is increased, the pores per cm2 in the separator and filter layers would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the present invention. As such, without showing unexpected results, the claimed pores per cm2 in the separator and filter layers cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the present invention, would have optimized, by routine experimentation, the pores per cm2 in the separator and filter layers in the invention of Okugawa to obtain the desired ion permeability, porosity, and shutdown function of the separator (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 9, Okugawa discloses the porosity of the separator (134) ([0068]).
Okugawa is silent on wherein a diameter of the pores of the separator is between 5 µm and 95 µm. Okugawa further discloses the porosity of the separator (134) relates to higher ion permeabilities and improved shutdown function of the separator ([0068]).
The examiner notes that the diameter of the pores relates directly to porosity.
As the ion permeability and porosity of the separator is/are variable(s) that can be modified, among others, by adjusting the diameter of the pores of the separator layer, with ion permeability and porosity of the separator increasing as the diameter of the pores of the separator layer is increased, the diameter of the pores of the separator layer would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the present invention. As such, without showing unexpected results, the claimed diameter of the pores of the separator layer cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the present invention, would have optimized, by routine experimentation, the diameter of the pores of the separator layer in the invention of Okugawa to obtain the desired ion permeability, porosity, and shutdown function of the separator (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 12, Okugawa discloses wherein a thickness of the separator (134) is between 0.5 µm and 15 µm ([0065]), which overlaps with the claimed range of between 6 µm and 8 µm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 (I)).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published Application US20190245180A1, hereafter Okugawa, as stated above for claim 1, and further in view of Published Application US20180261820A1, hereafter Liao.
Regarding claim 8, the examiner notes that as defined by applicant on page 5 of the present specification, the term ‘uniform size’, when applied to the pores of the separator and filter layers, means at least 95% of the pores of the separator are within 10% of a given diameter. The examiner also thus understands “non-uniform” to simply mean this definition is not true for the filter pores.
In the analogous art of battery separators, Liao discloses that uniformity of pore diameters may be useful in maintaining relatively consistent structural stability throughout the bulk of the layer, and that in addition, the ability to control the pore size to within a relatively narrow range can allow one to incorporate a large number of pores that are large enough to allow for fluid penetration (e.g., electrolyte penetration, or penetration of a liquid component of the electrolyte) while maintaining sufficiently small pores to preserve the structural stability of the porous material ([0074]).
As the structural stability and ion permeability is/are variable(s) that can be modified, among others, by adjusting the pore sizes of the separator and filter layers, with structural stability decreasing and ion permeability increasing as pore size of the separator and filter layers is increased, the pore sizes of the separator and filter layers would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the present invention. As such, without showing unexpected results, the claimed pore size uniformity cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the present invention, would have optimized, by routine experimentation, the pore sizes of the separator and filter layers in the invention of Okugawa to obtain the desired balance between structural stability and ion permeability of the separator layers, as suggested by Liao (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY HEMINGWAY whose telephone number is (571)272-0235. The examiner can normally be reached M-Th 6-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at (571) 270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.G.H./Examiner, Art Unit 1754
/SUSAN D LEONG/Supervisory Patent Examiner, Art Unit 1754