DETAILED ACTION
Notice of Pre-AIA or AIA Status
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 Group II in the reply filed on 13 May 2026 is acknowledged. The traversal is on the ground(s) that the groups identified are both drawn to a separator. This is not found persuasive because a coated separator could be formed using dry coating, instead of through the use of a dispersed coating solution, as claimed.
Examiner acknowledges that the claims relating to the separator have been cancelled. However, the initial requirement is still deemed proper and is therefore made FINAL.
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.
Claims 17, 21-28, 31-38 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (JP 2008066094 A), hereinafter Sato, in view of Yamada et al. (US 20140234538 A1), hereinafter Yamada.
Regarding claim 1, Sato teaches a method for producing a separator, the method comprising:
dispersing a sheet-shaped inorganic binder, in this case flake-like particles (B) that may act as a binder [0023], in a solvent to produce a dispersion [0088];
adding inorganic particles (C) to the dispersion to produce a coating solution [0088]; and
coating one or both surfaces of a porous substrate with the coating solution to form an inorganic particle layer [0084].
Sato is silent as to dispersing an organic acid in the solvent. However, Yamada teaches a method for producing a laminated porous film, for use as a separator for a battery, comprising inorganic metal oxide particles and a volatile acid [0110], which may be an organic acid, such as formic acid, acetic acid, propionic acid, and acrylic acid [0117].
Sato and Yamada are both considered to be analogous to the claimed invention because they are in the same field of secondary battery separators comprising inorganic particle coating layers. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the dispersion of Sato to include the organic volatile acid of Yamada. Doing so would have improved the dispersibility of the metal oxide and produced a separator with a preferable peeling strength without deteriorating the properties of the battery [Yamada 0124].
Examiner acknowledges that the combination of Sato and Yamada is silent as to the order in which the components are added to the solvent, for instance adding the sheet-shaped inorganic binder and organic acid first and then adding the inorganic particles after. However, selection of any order of mixing ingredients is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04.IV.C.
Regarding claim 21, modified Sato teaches the method for producing a separator of claim 17. Sato is silent as to the pH of the dispersion being 3 to 6. However, Yamada further teaches the pH of the solution being 1 to 5, which overlaps with 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).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the pH of the distribution of Sato to be 1 to 5, as taught by Yamada. Doing so would have improved the dispersibility of the metal oxide, sufficiently secured the stability of the coating solution, and allowed the laminated porous film to have a satisfactory peeling strength, while restraining the acid from corroding the coating machine [Yamada 0125].
Regarding claims 22-23 and 35, modified Sato teaches the method for producing a separator of claim 17. Sato further teaches the liquid composition having a solid content of flake-like particles (B) and inorganic particles (C) of 10-40 wt%, with the remainder being solvent [0089]. Sato is silent as to the wt% content of each component in the liquid composition and as to the parts by weight content of the sheet-shaped inorganic binder in relation to the inorganic particles. However, Sato teaches the total volume of the separator components as comprising 0.5-30% flake-like particles (B) by volume [0046] and 30-95% combined inorganic particles by volume, in this case both flake-like particles (B) and inorganic particles (C) [0045]. Therefore, the composition may include inorganic particles (C) in a range of 0-94.5% by volume. In the case where the flake-like particles (B) and inorganic particles (C) have the same specific gravity, such as being different shaped particles of the same compound, the % by volume directly corresponds to the parts by weight. Therefore, the inorganic particle layer comprises 0.5-30 parts by weight of the sheet shaped inorganic binder (B) with respect to 0-94.5 parts by weight of the inorganic particles (C). After calibrating to be with respect to 100 parts by weight of the inorganic particles (C), this is equivalent to 0.529-31.746 parts by weight of the sheet shaped inorganic binder (B) with respect to 0-100 parts by weight of the inorganic particles (C), which overlaps with the claimed ratio of 1 to 20 parts by weight of sheet-shaped inorganic binder with respect to 100 parts by weight of the inorganic particles, as required by claim 35. Applying this ratio to the taught combined inorganic particle wt% content results in a range of virtually 0.005 to 40 wt% of flake-like particles (B), which overlaps with the claimed 0.1 to 10 wt% of claim 22 and the claimed 0.1 to 5 wt% of claim 23, and a range of 0 to 40 wt% of inorganic particles (C), which overlaps with the claimed 1 to 20 wt% of claim 23.
Additionally, examples 1-10 of Sato teach liquid compositions comprising 20-30 g of flake-like particles (B) and 1000 g of inorganic particles (C) [0115-0134], which provide a ratio of (B) to (C) of 1:33.33-50, or 2:66.66-100, which overlaps with the claimed 1 to 20 parts by weight of sheet-shaped inorganic binder with respect to 100 parts by weight of the inorganic particles of claim 35. Applying this ratio to the taught inorganic particle content results in a range of 0.196 to 1.165 wt% of flake-like particles (B), which overlaps with the claimed 0.1 to 10 wt% of claim 22 and the claimed 0.1 to 5 wt% of claim 23, and a range of 9.709 to 39.216 wt% of inorganic particles (C), which overlaps with the claimed 1 to 20 wt% of claim 23.
Further, Yamada teaches the coating solution comprising 0.001 to 1 wt% of the organic acid [0022], which overlaps with the claimed 0.05 to 1 wt% of claim 22 and the claimed 0.1 to 1 wt % of claim 23. It would have been obvious to someone of ordinary skill in the art to select a wt% for each component within the claimed ranges. 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).
Examiner further notes that the present wording of claims 22 and 23 regarding comprising “a remainder of the solvent” could be interpreted to mean that the remainder of a finite amount of solvent is included, rather than that the remainder of the solution consists of the solvent. Therefore, a solution comprising components other than inorganic particles, sheet-shaped binder, organic acid, and solvent could still possibly read on the claimed limitations.
Regarding claims 24 and 25, modified Sato teaches the method for producing a separator of claim 17. Modified Sato is silent as to the separator having a peel strength between the porous substrate and the inorganic particle layer of 40 gf/25 mm or more, as required by claim 24, or 80 gf/25 mm, as required by claim 25. However, Yamada teaches a laminated porous film with a peel-off strength between the inorganic particle coating layer and the porous substrate of 1 N/15 mm, which is equivalent to 169.88 gf/25 mm [0032].
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the separator of Sato with the peel strength of Yamada. Doing so would have significantly reduced the possibility of the fall-off of the metal oxide of the coating layer [Yamada 0143].
Further, modified Sato teaches a method for producing a separator with a substantially identical composition to the claimed invention. Therefore, one of ordinary skill in the art would expect the resulting separator to also have a peel strength between the porous substrate and the inorganic particle layer of 40 gf/25 mm or more, as required by claim 24, and 80 gf/25 mm or more, as required by claim 25. 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). Further, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 26 and 27, modified Sato teaches the method for producing a separator of claim 17. Sato further teaches the separator having a heat shrinkage rate of 5% or less [0025] and a Gurley permeability of 10-300 seconds [0083]. Sato is silent as to the heat shrinkage rate being measured at 170°C and as to a ΔGurley permeability comparing the permeability of the separator to the permeability of the porous substrate. However, modified Sato teaches a method for producing a separator with a substantially identical composition to the claimed invention. Therefore, one of ordinary skill in the art would expect the resulting separator to also have a heat shrinkage rate at 170°C of 5% or less, as required by claim 26, and 3% or less, as required by claim 27, as well as a ΔGurley permeability of 50 sec/100 cc or less, as required by claim 26. 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). Further, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 28 and 32-33, modified Sato teaches the method for producing a separator of claim 17. Sato further teaches the sheet-shaped inorganic binder and inorganic particles being fine oxide particles such as iron oxide, BaTiO2, ZrO, alumina-silica composite oxide, and tin-indium oxide (ITO), nitride fine particles such as aluminum nitride and silicon nitride, or metal fine particles, as required by claim 32,
fine oxide particles such as SiO2, Al2O3, TiO2, SnO2, as also required by claim 28, and boehmite particles, as also required by claim 33 [0034].
Regarding claim 31, modified Sato teaches the method for producing a separator of claim 17. Sato further teaches the inorganic particles being spherical [0037].
Regarding claim 34, modified Sato teaches the method for producing a separator of claim 17. Sato is silent as to the inorganic particles specifically having an average diameter of 0.001 to 20 µm. However, Sato teaches the inorganic particles having an average diameter of 0.001 to 15 µm, which lies within the claimed range. Therefore, it would have been obvious for someone of ordinary skill in the art to select an average diameter in 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).
Regarding claims 36 and 37, modified Sato teaches the method for producing a separator of claim 17. Sato further teaches the porous substrate comprising a polyolefin based-resin, as required by claim 36, such as polypropylene [0027], as required by claim 37. Sato is silent as to the porous substrate specifically having an average diameter of pores of 0.01 to 20 µm and a porosity of 5 to 95%. However, Sato teaches the porous substrate having an average diameter of pores, in this case a void aperture, of 5 µm or more [0091] and a porosity of 20 to 70% [0082], which lie within the claimed ranges. Therefore, it would have been obvious for someone of ordinary skill in the art to select an average pore diameter and a porosity in the claimed ranges. 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).
Regarding claim 38, modified Sato teaches the method for producing a separator of claim 17. Sato is silent as to a thickness ratio of the porous substrate to the inorganic particle layer being 1-10:1. However, Sato teaches the thickness of the substrate being 5 to 20 µm [0086] and the thickness of the finished separator being more preferably 5 μm or more and preferably 50 μm or less [0081]. Assuming a coating layer on both sides, this is equivalent to an inorganic particle layer thickness of 0-22.5 μm and a thickness ratio of the porous substrate to the inorganic particle layer of 1-20:0-4.5, which overlaps with the claimed range. Therefore, it would have been obvious for someone of ordinary skill in the art to select a thickness ratio of the porous substrate to the inorganic particle layer in 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).
Claims 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Sato in view of Yamada, as applied above regarding claim 28, further in view of Peng et al. (US 20110311855 A1), hereinafter Peng.
Regarding claim 29, modified Sato teaches the method for producing a separator of claim 28. Sato teaches the sheet-shaped inorganic binder (B) including boehmite, zeolite, silica, and alumina [0034]. Sato is silent as to the sheet-shaped inorganic binder being pseudo-boehmite particles. However, Peng teaches a separator comprising a layer of polymer particles flanked by two layers of inorganic particles [0052] comprising silica, pseudo-boehmite, boehmite, a boron-containing compound, borax, alumina, zeolite, synthetic zeolite, and/or ceramic [0030]. Therefore, pseudo-boehmite, boron-containing compounds, borax, synthetic zeolite, and ceramic are taught as being art recognized equivalents of boehmite, zeolite, silica, and alumina.
Sato and Peng are both considered to be analogous to the claimed invention because they are in the same field of inorganic particle coated polymer separators. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the inorganic particles (B) of Sato to be the art recognized equivalent pseudo-boehmite taught by Peng. See MPEP 2144.06.II. Further, the selection of a known material, in this case pseudo-boehmite, based on its suitability for its intended use, in this case as inorganic particles in separator coating, supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 30, modified Sato teaches the method for producing a separator of claim 29. Sato is silent as to the pseudo-boehmite particles, in this case the flake-like particles (B), specifically have a thickness of 1 to 10 nm and an average diameter of 5 to 200 nm. However, Sato teaches the flake-like particles (B) having an aspect ratio of the maximum length of the flake-like particle to the thickness of the flake-like particles of 30-70 [0033] and an average diameter of 0.001 µm or more and preferably 1 µm or less [0036]. The taught average diameter is equivalent to 1 to 1000 nm, which overlaps with the claimed range, and the thickness can be calculated by dividing the maximum length of the particle, in this case the average diameter, by the aspect ratio, which yields a thickness range of .0143 to 33.333 nm, which also overlaps with the claimed range. Therefore, it would have been obvious for someone of ordinary skill in the art to select a thickness and an average diameter in the claimed ranges. 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUSTIN KENWOOD VAN KIRK whose telephone number is (703)756-4717. The examiner can normally be reached Monday-Friday 9am-5pm EST.
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/DUSTIN VAN KIRK/Examiner, Art Unit 1722
/ANCA EOFF/Primary Examiner, Art Unit 1722
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