DETAILED ACTION
Application 18/087713, “SEPARATOR, LITHIUM-ION BATTERY, BATTERY MODULE, BATTERY PACK, AND ELECTRICAL DEVICE”, was filed with the USPTO on 12/22/22 and is the Continuation of a PCT application filed on 8/12/21.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action on the merits is in response to communication filed on 6/3/26.
Response to Arguments
Applicant’s arguments filed on 6/3/26 have been fully considered, but are not persuasive. Applicant presents the following arguments.
The claimed invention is nonobvious over Wood at least because Wood fails to teach an embodiment satisfying the presently claimed range of 5≤D2/D1≤10, noting that the Wood Example 1 embodiment at paragraph [0052] suggests a D2/D1 ratio of 14.2, which lies outside the claimed range. In response, firstly, the prior art is not required to teach an example lying within the claimed range in order to demonstrate a claimed invention’s obviousness. The broad disclosure may be relied on, even if the preferred embodiments do not lie within the claimed range (MPEP 2123). Secondly, it has been held that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close” (MPEP 2144.05), and that “The prior art reference (or references when combined) need not teach or suggest all the claim limitations. However, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. The “mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness” (MPEP 2141 III). Here, the difference between the upper limit of the claimed D2/D1 range [10] and the D2/D1 value of the Wood Example 1 [14.2] is not found to be patentably significant because both ratios provide a desirable coating for a separator in the context of claim 1, as worded. Moreover, there is no evidence of record which demonstrates the range of claim 1 [5≤D2/D1≤10] provides substantially different function than the exemplary suggestion of Wood D2/D1 = 14.2.
The broadly disclosed particle size ranges of Wood at paragraph [0048] sets forth general definitions of nano-particles and micro-particles rather than suggestion of why to select a particular size, thus the disclosure does not actually suggest a broad range which overlaps the claimed range. Moreover, any range suggested by the paragraph [0048] is significantly broader than the claimed range, weight against a prima facie case of obviousness. In response, this argument is not found persuasive because the paragraph [0048] range presents a disclosed range for nano-particles and micro-particles which is clearly intended to suggest a portion of the possible values which is useful for the Wood invention. Specifically, “nano-particles” is disclosed to be less than or equal to 100 nanometers, while “micro-particles” is disclosed to be 100 nanometers to 2 microns. A broader but conventional definition of nanoparticles could be particles of 1 nm to 999 nm in size, while microparticles could be 1 micron to 999 microns in size, such that the particles are best characterized in either nanometers or micrometers without use of decimals or numbers greater than 1000. Clearly, Wood intended to set forth narrower definitions for both terms and the disclosure would be understood by the skilled artisan to identify suitable, if not preferable, size magnitudes for the particles. As to the argument that any range suggested by paragraph [0048] is significantly broader than the claimed range, the Office acknowledges that the range suggested by paragraph [0048] is substantially broader than the claimed range, and thus relies on the Example 1 in combination with paragraph [0048] to reach the conclusion that the claimed range is obvious over the suggestion of Wood. The paragraph [0048] disclosure clarifies that the Example 1, while close to the claimed invention, is not limiting and that deviations from those values can be adopted.
Wood does not recognize the mean particle size ratio between nano-particles and micro-particles as an obvious to optimize result effective variable. In response, Wood paragraph [0047] does teach that the weight ratio of nanoparticles to microparticles can be optimized to maximize adhesion. Further, at least the Examples 1 and 5 suggest that different sizes for the two particle types can be utilized. Furthermore, paragraph [0024] identifies pore size in the porous layer as an important factor, with the ratio of microparticles to nanoparticles influencing the pore size. The skilled artisan is not an automaton, and would have thus been able to conclude that experimentation within the broadly disclosed particle size ranges may yield different, or even improved, properties at least by providing different pore sizes in the porous layer due to geometrical considerations related to combining differently sized particles. This is not found to be a conclusion based on impermissible hindsight at least because Wood expressly discloses a range of possible particle sizes, provides examples with differing particle sizes, and teaches manipulating the differently sized particles relative to one another to produce desirable results.
Applicant’s Table 1 demonstrates unexpected results [superior storage performance] associated with the claimed invention. In response, the evidence of unexpected results is not found to be persuasive at least because it fails to provide counter examples which are as close to the claimed invention as the prior art. Specifically, Wood at least teaches a D2/D1 ratio of 14.2. Applicant’s Table 1 does not include any examples with a D2/D1 ratio higher than 10 (applicant’s inventive Examples 1-1 and other examples) but lower than 25 (applicant’s Example 1-4). It is noted that the Comparative Examples C3 and C4 utilized D2/D1 values of 66.7 and 1.67, respectively, which are relatively far from the 14.2 ratio of Wood Example 1.
Applicant’s other arguments are moot in view of the new ground(s) of rejection and indication of allowability of new claim 21, necessitated by amendment.
Allowable Subject Matter
Claim 21 is allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding independent claim 21, the closest prior art includes Wood (US 2021/0005862) which is applied in the rejection of claim 1 herein below.
As described in the rejection of claim 1, Wood teaches a separator comprising the features of claim 1, other than the additional requirement that the inorganic particles comprise H2SiO3 or H4SiO4. Therefore, claim 21 is not rejected over Wood.
In a search for the new limitation, no reference was found which is combinable with Wood to cure the deficiency with respect to claim 21, or which independently teaches claim 21 without Wood. Accordingly, claim 21 is found to be allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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.
(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.
Claims 20 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Wood (US 2021/0005862).
Regarding claim 20, Wood teaches a separator (paragraph [0002], Wood claim 1) comprising: a base film (“base polymer membrane”, paragraph [0002]) and an organic-inorganic hybrid layer located on at least one surface of the base film (“porous layers containing inorganic materials”, paragraph [0002]; paragraph [0016]), wherein the organic-inorganic hybrid layer comprises inorganic particles and an organic binder (abstract; paragraph [0052]); the inorganic particles are made of first inorganic particles with a microscale median diameter (“100 nanometers to 2 microns”, paragraph [0048]; e.g. “20 nm”, paragraph [0052]) and second inorganic particles with a nanoscale median diameter (“less than or equal to 100 nanometers”, paragraph [0048]; e.g. “1.4 microns”, paragraph [0052]), a ratio of a median diameter value D1 of the first inorganic particles in μm to a median diameter value D2 of the second inorganic particles in nm satisfies 2≤D2/D1≤55 (paragraph [0052], where 20 [nm] / 1.4 [microns] = 14.2), and the first inorganic particles or the second inorganic particles are selected from (SiOx)(H2O)y or (Mc+)b(SiOz)a−, wherein, 0≤x≤2, 0≤y≤2, y is an integer, z=3 or 4, a=2 or 4, b×c=a, and M comprises calcium (“silica” paragraph [0016], understood to refer to SiO2, readable on invention when x = 2 and y = 0).
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 of this title, 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.
Claims 1-3, 5-8, 11 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wood (US 2021/0005862) and Uemura (US 2013/0260207). Supporting evidence is provided by Shon (US 2015/0064560).
Regarding claim 1 and 5, Wood teaches a separator (paragraph [0002], Wood claim 1) comprising: a base film (“base polymer membrane”, paragraph [0002]) and an organic-inorganic hybrid layer located on at least one surface of the base film (“porous layers containing inorganic materials”, paragraph [0002]; paragraph [0016]), wherein the organic-inorganic hybrid layer comprises inorganic particles and an organic binder (abstract; paragraph [0052]); the inorganic particles are made of first inorganic particles with a microscale median diameter (“100 nanometers to 2 microns”, paragraph [0048]; e.g. “20 nm”, paragraph [0052]) and second inorganic particles with a nanoscale median diameter (“less than or equal to 100 nanometers”, paragraph [0048]; e.g. “1.4 microns”, paragraph [0052]), and the first inorganic particles or the second inorganic particles are selected from (SiOx)(H2O)y or (Mc+)b(SiOz)a−, wherein, 0≤x≤2, 0≤y≤2, y is an integer, z=3 or 4, a=2 or 4, b×c=a, and M comprises calcium (“silica” paragraph [0016], understood to refer to SiO2, readable on invention when x = 2 and y = 0).
Claim 1 as amended on 6/3/26 further requires wherein a ratio of a median diameter value D1 of the first inorganic particles in μm to a median diameter value D2 of the second inorganic particles in nm satisfies 5≤D2/D1≤10, a range which is not expressly taught by Wood.
However, it has been held that “a change in form, proportions, or degree “will not sustain a patent… It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions” (MPEP 2144.05 II). See also “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP 2144.04 IVA).
Here, although Wood does not expressly teach the claimed range, Wood does teach intentional mixing of microscale particles [having size of 100 nm to 2 microns] and nanoscale particles [having size of 100 nm or less] at a controlled ratio (abstract, paragraph [0024, 0047-0048]) and at a range of ratios which overlaps overlap the claimed range. This broadly defined range overlaps the claimed range because it includes embodiments lying within the claimed range (e.g. a D2 of 10 to 20 nm together with a D1 of 2 microns would yield the claimed range).
Additionally, Wood teaches an exemplary embodiment which is close to, but does not lie within, the claimed range (paragraph [0052], where 20 [nm] / 1.4 [microns] = 14.2). As further described in MPEP 2144.05, a prima facie case of obviousness exists which the range/value suggestion by the prior art does not overlap the claimed range, but is close enough that substantially the same properties are expected. Here, the exemplary D2/D1 value of 14.2 is found to be close to the claimed range because there is no evidence tending to show that substantially different results are achieved for the 5 to 10 D2/D1 range, compared to the 14.2 value.
Therefore, notwithstanding Wood’s failure to provide an example within the claimed range, the range is nevertheless found to be obvious because Wood teaches a separator functionally similar to that claimed, the broad disclosure of Wood suggests an overlapping range, and/or an example disclosed by Wood is found to be close enough to the claimed invention that similar function is expected.
Regarding claim 2, The cited art remains as applied to claim 1. Wood appears to illustrate inorganic particles protruding from a surface of the organic-inorganic hybrid layer at Fig. 6.
Regarding claim 3, The cited art remains as applied to claim 1. Wood further teaches wherein: the median diameter value D1 of the first inorganic particles in μm is 1 to 5 (e.g. “1.4 microns”, paragraph [0052]).
Regarding claim 5, The cited art remains as applied to claim 1. It is noted that Wood further teaches wherein the first and/or second inorganic particles are SiO2 (“silica” paragraph [0016], understood to refer to SiO2).
Regarding claim 6, The cited art remains as applied to claim 1. Wood further teaches wherein: in the organic-inorganic hybrid layer, a mass m1 of the first inorganic particles and a mass m2 of the second inorganic particles satisfy 0.5≤m1/m2≤4 (paragraph [0047] teaches the inorganic particles being 20% to 50% nanoparticles, with the balance [80% to 50%] being microparticles, i.e. 1 ≤ m1/m2 ≤ 4).
Regarding claim 7 and 8, The cited art remains as applied to claim 1. Wood further teaches wherein: in the organic-inorganic hybrid layer, a ratio A1/A2 of a mass percent A1 of the organic binder to a mass percent A2 of the inorganic particles lies within the range of (0.1 to 25): 100, and wherein in the organic-inorganic hybrid layer, a mass percent of the inorganic particles is within the range of 80% to 99.9%, a mass percent of the organic binder is within the range of 0.1% to 20%, based on a total mass of the organic-inorganic hybrid layer (“binder systems at 6 wt% [implying 94% inorganic materials]”, paragraph [0052]).
Regarding claim 11, The cited art remains as applied to claim 1. Wood further teaches wherein: the front side and reverse side of the base film each are coated with the organic-inorganic hybrid layer, and a mass percent of inorganic particles in the organic-inorganic hybrid layer on the front side of the base film is not less than a mass percent of inorganic particles in the organic-inorganic hybrid layer on the reverse side of the base film (paragraphs [0016, 0049] suggest that the same coating may be applied to both sides of the separator; thus, the mass percent of inorganic particles on the front side is not less than the mass percent of inorganic particle on the reverse side); and the organic-inorganic hybrid layer on the front side of the base film is in contact with a positive electrode, and the organic-inorganic hybrid layer on the reverse side of the base film is in contact with a negative electrode (this recitation describes an intended use rather than a structural feature of the claimed separator).
Regarding claim 14, The cited art remains as applied to claim 1. Wood further teaches the separator as a subcomponent of a lithium-ion battery (paragraph [0002]).
Claims 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wood (US 2021/0005862) and Tanaka (JP 2015-076289).
Regarding claim 2, The cited art remains as applied to claim 1. Wood appears to illustrate inorganic particles protruding from a surface of the organic-inorganic hybrid layer at Fig. 6, but does not explicitly state that a part of the first inorganic particles and/or the second inorganic particles protrude from a surface of the organic-inorganic hybrid layer.
In the battery art, Tanaka teaches an organic-inorganic layer comprising inorganic particles disposed on a base film, wherein a part of the first inorganic particles and/or the second inorganic particles protrude from a surface of the organic-inorganic hybrid layer (see Fig. 4) for the benefit of enhancing a holding function of the separator (T040).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the organic-inorganic layer of Wood such that a part of the first inorganic particles and/or the second inorganic particles protrude from a surface of the organic-inorganic hybrid layer for the benefit of enhancing a holding function of the separator as taught by Tanaka.
Claims 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wood (US 2021/0005862) and Adachi (US 2023/0065518).
Regarding claim 4, The cited art remains as applied to claim 1. Wood does not appear to teach wherein: the organic binder is at least one of an alkali metal salt of carboxylic acid containing a hydroxyl and/or a carboxyl, or an alkali metal salt of sulfonic acid containing a hydroxyl and/or a carboxyl, and further optionally at least one of sodium carboxymethyl cellulose (CMC-Na), polyacrylic acid sodium (PAA-Na), sodium polystyrene sulfonate (PSS-Na), or sodium alginate (SA).
In the battery art, Adachi teaches organic binders for battery separators (paragraphs [0002-0003]), wherein the organic binder is at least one of an alkali metal salt of carboxylic acid containing a hydroxyl and/or a carboxyl (paragraphs [0021, 0092]) and/or sodium carboxymethyl cellulose (paragraph [0359]), with the binders providing excellent adherence properties (paragraph [0030]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to utilize an organic binder wherein the organic binder is at least one of an alkali metal salt of carboxylic acid containing a hydroxyl and/or a carboxyl and/or sodium carboxymethyl cellulose, since such binders may provide excellent adherence properties as taught by Adachi.
Regarding claim 9, The cited art remains as applied to claim 1. Wood teaches an exemplary base film thickness of 12 μm (paragraph [0052]), but does not appear to teach wherein: a thickness d1 of the organic-inorganic hybrid layer is 20% to 50% of a total thickness d of the separator, and the total thickness d of the separator is 6 to 25 μm.
However, it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP 2144.04 IVA).
Moreover, in the battery art, Adachi teaches an embodiment wherein a thickness d1 of the organic-inorganic hybrid layer is 20% to 50% of a total thickness d of the separator, and the total thickness d of the separator is 6 to 25 μm (paragraph [0372] teaches 12 μm thick base film with 2.5 μm thick organic-inorganic hybrid layer, values lying within the claimed range; see also paragraph [0003] clarifying that the “porous membrane layer” of Adachi is analogous to the claimed organic-inorganic hybrid layer).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the Wood separator such that a thickness d1 of the organic-inorganic hybrid layer is 20% to 50% of a total thickness d of the separator, and the total thickness d of the separator is 6 to 25 μm, since this relative scale is suitable for producing a composite layered separator with appropriately sized base film and organic-inorganic hybrid layer and as taught by Adachi.
Claims 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wood (US 2021/0005862) and Lee (US 2007/0082261).
Regarding claim 10, The cited art remains as applied to claim 1. Wood does not appear to teach wherein: a front side of the base film comprises a front coating region and a front blank region, and an areal ratio between the front coating region and the front blank region is (1 to 3): 1; and a reverse side of the base film comprises a reverse coating region and a reverse blank region, and an areal ratio between the reverse coating region and the reverse blank region is (0.5 to 1): 1, and the front coating region and the reverse coating region are surface-coated with the organic-inorganic hybrid layer.
In the battery art, Lee teaches that a coating (Fig. 1A item 40,40’) on a separator base layer (Fig. 1A item 30,30’) may be configured to coat an area of 50% or less of the base layer for the benefit of facilitating ion conductivity (paragraph [0065]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to modify the invention of Wood such that the organic-inorganic hybrid layer coats 50% or less of the base film for the benefit of improving ionic conductivity as taught by Lee. The claimed ranges for the areal ratio of the front and reverse coating regions each include 50% coverage; therefore, the claimed invention is prima facie obvious.
Claims 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wood (US 2021/0005862), Lee (US 2007/0082261) and Roumi (US 2013/0224632).
Regarding claims 12, the cited art remains as applied to claim 10 or 1, respectively [claim 1 includes the majority of the features of independent claim 19]. Wood does not appear to teach wherein: on a plane perpendicular to a thickness direction of the base film, a projection of the front blank region and a projection of the reverse coating region overlap with each other, and a projection of the reverse blank region and a projection of the front coating region overlap with each other; and the front coating region and the reverse coating region are surface-coated with the organic-inorganic hybrid layer.
In the battery art, Roumi teaches a separator comprising two mechanically supporting coating layers disposed on an inner membrane (Fig. 3, paragraph [0206]). Roumi further teaches that the coating layers may include coating regions and blank regions [apertures] therein, such that blank regions of one layer overlap with the coating region of the opposite layer (Fig. 1). Roumi further teaches that such a structure provides various advantages such as excellent ion transport properties, dendrite control, and structural favorability (abstract).
It would have been obvious to configure the separator such that the claimed coating-blank overlap arrangement is present for the benefit of providing desirable properties such as excellent ion transport properties, dendrite control, and/or structural favorability as taught by Roumi.
Claims 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wood (US 2021/0005862), Xiao (US 2021/0194095), Yeh (USP 11,575,180) and Ryu (USP 10,056,589).
Regarding claim 13, The cited art remains as applied to claim 1. Wood further teaches that the inventive separators possess “low shrinkage” (paragraph [0002]), but is silent as to characterizing the shrinkage of the separator relative to a base film alone, and therefore does not teach wherein a thermal shrinkage rate of the separator is 70% to 75% lower than a thermal shrinkage rate of the base film.
In the battery art:
Xiao teaches that a desirable separator may be configured to have 30 to 75% lower high temperature shrinkage compared to a purely polymeric membrane (paragraph [0022]);
Yeh teaches a separator provided with a heat resistant layer may have a heat shrinkage of 15%, whereas a Comparative separator without a heat resistant layer may have a heat shrinkage of >50% (Table 1), noting that (50-15)/50 = 70%;
Ryu teaches a composite separator which has a thermal shrinkage value of 3 compared to an uncoated fabric separator having a thermal shrinkage value of 10, noting that (10-3)-3 = 70%.
Claim 13 is found to be obvious over the cited art because the claim merely sets forth a known desirable goal (thermal shrinkage reduced compared to an uncoated separator to a particular desirable range), without specifying any specific structure not taught by the cited art which facilitates the known desirable property, and the prior art demonstrates that the claimed property has been achieved using comparable techniques including coating a base membrane with an inorganic layer. Absent any evidence that the Wood separator i) would not possess the claimed property, and ii) could not be modified to yield the claimed property in view of the cited secondary references, the claimed invention is found to be obvious.
Claims 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wood (US 2021/0005862) and Cho (US 2021/0305658).
Regarding claim 15-17, The cited art remains as applied to claim 14. Wood teaches the separator as a subcomponent of a lithium-ion battery, but does not expressly teach the battery as a subcomponent of an electrical device, which comprises a battery pack, which comprises a battery module, which comprises the lithium-ion battery.
In the battery art, Cho teaches that a lithium battery may be a subcomponent of an electrical device, which comprises a battery pack, which comprises a battery module, which comprises the lithium-ion battery (paragraph [0116]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to utilize the lithium-ion battery of Wood as a subcomponent of an electrical device, which comprises a battery pack, which comprises a battery module, which comprises the lithium-ion battery, for the benefit of making practical use of the battery as taught by Cho.
Relevant or Related Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, though not necessarily pertinent to applicant’s invention as claimed.
Kim (US 2015/0004467) partially coated separator;
Okuno (US 2015/0004464) separator comprising first and second particles of different sizes;
Pan (USP 9698399) separator comprising particles of different shapes and sizes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH R SMITH whose telephone number is (571)270-7005. The examiner can normally be reached Mon-Fri: 9 AM-5 PM (EST).
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/JEREMIAH R SMITH/Primary Examiner, Art Unit 1723
