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 with traverse of claims 1-13 and 16 in the reply filed on 11/13/2025 is acknowledged. The traversal is on the ground(s) that there is no serious burden for examination since the search required for the non-elected group would likely be co-extensive with that required for the elected group, and because both the elected and non-elected groups share a common background of the invention. This is not found persuasive because as stated in the Requirement for Restriction, the inventions have acquired a separate status in the art in view of their different classification and divergent subject matter (method of making a separator vs the structure of the separator product), and this requires different fields of search for each invention.
The requirement is still deemed proper and is therefore made FINAL.
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) 1-2, 9-11, and 16 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Foreign Publication WO2014104687A1, hereafter Kim (supplied by applicant, used attached machine translation).
Regarding claim 1, Kim discloses a separator for a secondary battery (page 7, 2nd paragraph, "an organic-inorganic porous separation membrane"; page 6, 2nd paragraph, "a secondary battery including the organic/inorganic porous separation membrane"), the separator comprising:
a porous polymer substrate (page 7, 2nd paragraph, "porous polyolefin substrate and an active layer...organic-inorganic hybrid composite") and a ceramic layer (page 7, 2nd paragraph, active layer with inorganic particles; page 12, 2nd paragraph, inorganic particles are hollow silica particles) provided on at least one surface of the porous polymer substrate (abstract, active layer coated on the surface of the substrate),
wherein
the ceramic layer includes a ceramic composite (page 7, 2nd paragraph, "organic-inorganic composite"),
the ceramic composite comprises:
a hollow portion (page 12, 2nd paragraph, inorganic particles are hollow silica particles);
a ceramic shell surrounding the hollow portion (page 12, 2nd paragraph, inorganic particles are hollow silica particles); and
a doping material dispersed in the ceramic shell (page 7, 2nd paragraph, "the active sites of inorganic particles on the surface of the substrate are modified with a fatty acid of C6 to C36, an oxidized wax, or an acrylic acid-based polymer"), and
the hollow portion is in a vacuum state (page 13, 1st paragraph, "The above-mentioned hollow silica particles contain air or vacuum").
Regarding claim 2, Kim discloses wherein the ceramic shell includes SiO2 (page 12, 2nd paragraph, inorganic particles are hollow silica particles).
Regarding claim 9, Kim discloses wherein an average particle size of the ceramic material is 10 nm to 5 µm (page 12, 1st paragraph, particle diameter of 0.0001-10 µm).
Regarding claim 10, Kim discloses wherein an average thickness of the ceramic layer is 5 to 10 µm (page 27, 2nd to last paragraph, 0.1-100µm thickness of active layer).
Regarding claim 11, Kim discloses wherein the porous polymer substrate includes polyethylene (PE) or polypropylene (PP) (page 8, 2nd paragraph, porous polyolefin substrate is polyethylene separator or polypropylene separator).
Regarding claim 16, Kim discloses a secondary battery (page 6, 2nd paragraph, secondary battery) comprising: a positive electrode (abstract, cathode); a negative electrode (abstract, anode); and a separator for a secondary battery according to claim 1 (see above rejection of claim 1).
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) 3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Publication WO2014104687A1, hereafter Kim (supplied by applicant, used attached machine translation).
Regarding claim 3, Kim is silent on wherein an average thickness of the ceramic shell is 1 nm to 1 µm.
As the density of the ceramic particles is/are variable(s) that can be modified, among others, by adjusting the thickness of the ceramic shell, with the density of the ceramic particles increasing as the thickness of the ceramic shell is increased, the thickness of the ceramic shell 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 thickness of the ceramic shell 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 thickness of the ceramic shell in the invention of Kim to obtain the desired density of the hollow silica particles (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 5, Kim discloses herein a content of the doping material is 0.5 to 40 weight percentage (wt%) based on a total weight of the ceramic shell (page 18 "the content of inorganic particles in the organic-inorganic hybrid composite is preferably 60 to 99.5 wt% relative to the total weight of the composite" - thus, the doping material is present at 0.5 to 40 wt%), which overlaps with the claimed range of 5 to 10 wt%. 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) 4, 6, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Publication WO2014104687A1, hereafter Kim (supplied by applicant, used attached machine translation) as stated above for claim 1, and further in view of Published Application US20150017511A1, hereafter Schmitz.
Regarding claim 4, Kim is silent on wherein the doping material includes at least one selected from the group consisting of polyurethane (PU) and polytetrafluoroethylene (PTFE).
In the analogous art of battery separators, Schmitz discloses wherein the doping material includes at least one selected from the group consisting of polyurethane (PU) and polytetrafluoroethylene (PTFE) ([0080] PTFE, polyurethane).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to modify the invention of Kim to include a binder in the ceramic shell material such as PTFE or polyurethane, as disclosed by Schmitz, as a selection of a known material based on its suitability for the intended purpose (MPEP 2144.07).
Regarding claim 6, Kim is silent on wherein the ceramic shell further includes at least one curable resin selected from the group consisting of a polyester resin and a polyimide resin.
In the analogous art of battery separators, Schmitz discloses wherein the ceramic layer further includes at least one curable resin selected from the group consisting of a polyester resin and a polyimide resin ([0089] 1.5 to 20% by weight of polyester or polyimide binder).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to modify the invention of Kim to use 1.5% by weight to 20% by weight of a polyester or polyimide resin binder as disclosed by Schmitz as a selection of a known material based on its suitability for the intended purpose (MPEP 2144.07).
Regarding claim 7, modified Kim further discloses wherein a content of the curable resin is 1 to 15 weight percentage (wt%) based on a total weight of the ceramic layer (Schmitz, [0089] 1.5 to 20% by weight of polyester or polyimide binder).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Publication WO2014104687A1, hereafter Kim (supplied by applicant, used attached machine translation) as applied to claim 1 above, and further in view of Published Application US20210280943A1, hereafter Hong ’943.
Regarding claim 8, Kim discloses all of the claim limitations as set forth above, and further discloses the known problem of coated materials easily peeling off from the substrate in an organic-inorganic composite membrane (page 4, 1st paragraph).
Kim does not explicitly disclose wherein the ceramic composite has a flexural strength of 10 to 20 MPa.
In the analogous art of composite battery separators, Hong ‘943 discloses it is known to control the flexural strength (bending strength) of a composite separator ([0072]), and that peel strength tends to be inversely related to bending strength ([0044]).
As the rigidity and peel strength of the ceramic composite is/are variable(s) that can be modified, among others, by adjusting the flexural strength, with the rigidity of the composite increasing as the flexural strength is increased, the peel strength decreasing as the flexural strength is increased, and the peel strength increasing as the flexural strength is decreased, the flexural strength of the ceramic composite 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 flexural strength of the ceramic composite 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 flexural strength of the ceramic composite in the invention of Kim to obtain the desired balance of rigidity and peel strength of the coating of the ceramic composite (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).
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Publication WO2014104687A1, hereafter Kim (supplied by applicant, used attached machine translation) as stated above for claim 1, and further in view of Published Application US20130224554A1, hereafter Hong.
Regarding claim 12, Kim is silent on wherein the ceramic layer further includes a binder having a content of 1 to 5 weight percentage (wt%) based on a total weight of the ceramic layer.
In the analogous art of battery separators, Hong discloses wherein the ceramic layer further includes a binder having a content of 1 to 5 weight percentage (wt%) based on a total weight of the ceramic layer ([0052] 5 to 10 parts by weight of the organic binder; [0048] organic binder may be a polyvinylidene fluoride-hexafluoropropylene copolymer).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to modify the invention of Kim to use 5 parts by weight of a PVDF based organic binder as a selection of a known material based on its suitability for the intended purpose (MPEP 2144.07).
Regarding claim 13, modified Kim discloses wherein the binder includes polyvinylidene fluoride (PVDF) (Hong, [0048] organic binder may be a polyvinylidene fluoride-hexafluoropropylene copolymer).
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.
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, 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.
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.
/T.G.H./Examiner, Art Unit 1754
/SUSAN D LEONG/ Supervisory Patent Examiner, Art Unit 1754