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 .
SEPARATOR FOR A SECONDARY BATTERY AND METHOD FOR PRODUCING THE SAME
Examiner: Adam Arciero S.N. 18/093,136 Art Unit: 1727 December 15, 2025
DETAILED ACTION
Applicant’s response filed on November 17, 2025 has been received. Claims 1-2 and 4-20 are currently pending. Claims 1, 4 and 16 have been amended. Claim 3 has been canceled.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Interpretation
Claim 1 recites an intended use for a separator. The courts have held that “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP 2111.02.
Claim Rejections - 35 USC § 102
The claim rejections under 35 USC 102(a)(1) as being anticipated by Choi on claims 1, 6-9, 11-14 and 16-20 are withdrawn because Applicant has amended the claims.
The claim rejections under 35 USC 102(a)(1) as being anticipated by Sakatani on claims 1, 6-7, 12-15 and 18-20 are withdrawn because Applicant has amended the claims.
Claim Rejections - 35 USC § 103
The claim rejections under 35 USC 103(a) as being unpatentable over Choi and Yamamoto on claim 2 is withdrawn because Applicant has amended or canceled the claims.
The claim rejections under 35 USC 103(a) as being unpatentable over Choi on claims 3-5 and 10 are withdrawn because Applicant has amended or canceled the claims.
Claim(s) 1, 4-14 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2022/0311095 A1).
As to Claims 1, 7-8, 18, Choi discloses a secondary battery, comprising: a negative electrode, a positive electrode, and a separator between said electrodes, wherein the separator comprises: a porous substrate and an inorganic particle layer on a surface of said substrate, wherein said inorganic particle layer includes boehmite particles (inorganic particles); needle-shaped ceramic particles, such as boehmite; and a binder (reads on rod-shaped inorganic binder) (Abstract and paragraphs [0017 and 0031]). Choi further teaches wherein the boehmite particles can be hydrophilic boehmite particles (reads on pseudo-boehmite) and wherein the needle-shaped ceramic particles can be boehmite (reads on rod-shaped inorganic binder being boehmite particles) (paragraphs [0031 and 0044-0045]). Choi recognizes wherein hydrophilic boehmite is a suitable choice for a boehmite particle in a separator layer (paragraph [0044]). Choi does not specifically disclose wherein the needle-shaped boehmite particles are hydrophilic (pseudo). However, the courts have held that when there are a finite number of identified, predictable solutions (such as boehmite that can be either amorphous, spherical, plate-shaped, or cubic), with a reasonable expectation of success, it would have been obvious to one of ordinary skill in the art to try the known options, see KSR, MPEP 2143, I, E. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Choi to comprise needle-shaped pseudo boehmite because Choi teaches that a separator having excellent electrolyte impregnation, durability, ion conductivity, air permeability, and shutdown function can be provided (paragraphs [0036 and 0042]).
As to Claim 4, Choi teaches wherein the aspect ratio of the needle-shaped boehmite particles are about 1-100, which overlaps with the claimed range (paragraph [0040]). The courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, see MPEP 2144.05, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Choi to comprise the claimed aspect ratio for the needle-shaped pseudo boehmite because Choi teaches that a separator having excellent electrolyte impregnation, durability, ion conductivity, air permeability, and shutdown function can be provided (paragraphs [0036 and 0042]).
As to Claim 5, Choi teaches wherein the average particle diameter is 1-20 microns and the aspect ratio is 1-100, therefore the average particle diameter and length overlap with the claims (paragraph [0040]). The courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, see MPEP 2144.05, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Choi to comprise the claimed particle diameter and length for the needle-shaped pseudo boehmite because Choi teaches that a separator having excellent electrolyte impregnation, durability, ion conductivity, air permeability, and shutdown function can be provided (paragraphs [0036 and 0042]).
As to Claim 6, Choi discloses wherein the inorganic particles are spherical in shape (paragraph [0030]).
As to Claim 9, Choi discloses wherein the average particle diameter of the inorganic particles is 0.1-1 micron (paragraph [0046]).
As to Claim 10, Choi teaches wherein the needle-shaped particles may be in a range of about 1-30 parts by weight based on 100 parts by weight of the boehmite particles, which encompasses the claimed range (paragraph [0048]). The courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, see MPEP 2144.05, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Choi to comprise the claimed amount of needle-shaped pseudo boehmite because Choi teaches that electrolyte impregnation and ion conductivity is improved (paragraphs [0036 and 0042]).
As to Claim 11, Choi discloses wherein the porous substrate comprises a polyolefin resin having a pore size of about 0.1 to about 10 microns and a porosity of 5-95% (paragraphs [0102 and 0105]).
As to Claims 12-13 and 19-20, Choi discloses the same separator and battery as the claimed invention as discussed above. It is the position of the Office that the separator and battery of Choi intrinsically comprises the claimed peel strength and characteristics, given that the structure and materials of Choi and the claimed invention are the same, see MPEP 2112.
As to Claim 14, Choi discloses wherein the separator comprises an organic binder (Abstract and paragraphs [0060-0061]).
As to Claims 16-17, Choi discloses the claimed method for producing a separator, comprising: dispersing needle-shaped inorganic binder in a solvent and adding inorganic particles and an organic acid (poly(acrylic acid-co-acrylamide-co-2-acrylamido-2-methylpropane sulfonic acid) sodium salt) to produce a coating solution that is then coated onto a surface of a porous substrate to form an inorganic particle layer (paragraph [0147]).
Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2022/0311095 A1) as applied to claims 1, 4-14 and 16-20 above and in further view of Yamamoto et al. (WO 2021230037 A1; using machine translation for citation purposes).
As to Claim 2, Choi does not specifically disclose the claimed polar group.
However, Yamamoto teaches of a separator for a battery, comprising a porous substrate having a surface treatment to provide a polar group on a surface thereof (paragraph [0040]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Choi so that the porous substrate comprises a polar group because Yamamoto teaches that a separator with excelled permeability is provided (paragraphs [0104 and 0106]).
Claim(s) 1, 4-15 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakatani et al. (WO 2015122164 A1; as found in IDS dated 08/29/2023 and using machine translation for citation purposes) in view of Choi et al. (US 2022/0311095 A1).
As to Claims 1, 6, 8, 14-15 and 18, Sakatani discloses a secondary battery, comprising a negative electrode, a positive electrode, and a separator therebetween, wherein the separator comprises a porous substrate and an inorganic particle layer having needle-shaped inorganic particles (rod-shaped inorganic binder) and spherical inorganic particles, comprising: (Abstract, paragraphs [0008-0009 and [0018]). Sakatani may teach the possible use of an organic binder but Sakatani does not require the organic binder to be present (reads on claims 14-15) (paragraph [0016]). Sakatani does not disclose the claimed pseudo-boehmite particles.
However, Choi teaches wherein the boehmite particles can be hydrophilic boehmite particles (reads on pseudo-boehmite) and wherein the needle-shaped ceramic particles can be boehmite (reads on claimed rod-shaped inorganic binder being boehmite) (paragraphs [0031 and 0044-0045]). Choi recognizes wherein hydrophilic boehmite is a suitable choice for a boehmite particle in a separator layer. Choi does not specifically disclose wherein the needle-shaped boehmite particles are hydrophilic (pseudo). However, the courts have held that when there are a finite number of identified, predictable solutions (such as boehmite that can be either hydrophilic, spherical, plate-shaped, or cubic), with a reasonable expectation of success, it would have been obvious to one of ordinary skill in the art to try the known options, see KSR, MPEP 2143, I, E. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Sakatani to comprise needle-shaped pseudo boehmite because Choi teaches that a separator having excellent electrolyte impregnation, durability, ion conductivity, air permeability, and shutdown function can be provided (paragraphs [0036 and 0042]).
As to Claim 4, Choi teaches wherein the aspect ratio of the needle-shaped boehmite particles are about 1-100, which overlaps with the claimed range (paragraph [0040]). The courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, see MPEP 2144.05, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Sakatani to comprise the claimed aspect ratio for the needle-shaped pseudo boehmite because Choi teaches that a separator having excellent electrolyte impregnation, durability, ion conductivity, air permeability, and shutdown function can be provided (paragraphs [0036 and 0042]).
As to Claim 5, Choi teaches wherein the average particle diameter is 1-20 microns and the aspect ratio is 1-100, therefore the average particle diameter and length overlap with the claims (paragraph [0040]). The courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, see MPEP 2144.05, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Sakatani to comprise the claimed particle diameter and length for the needle-shaped pseudo boehmite because Choi teaches that a separator having excellent electrolyte impregnation, durability, ion conductivity, air permeability, and shutdown function can be provided (paragraphs [0036 and 0042]).
As to Claim 7, Sakatani discloses wherein titanium oxide can be used as an inorganic particle (paragraph [0030]).
As to Claim 9, Choi discloses wherein the average particle diameter of the inorganic particles is 0.1-1 micron (paragraph [0046]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Sakatani to comprise the claimed average particle diameter because Choi teaches that electrolyte impregnation and ion conductivity is improved (paragraphs [0036 and 0042]).
As to Claim 10, Choi teaches wherein the needle-shaped particles may be in a range of about 1-30 parts by weight based on 100 parts by weight of the boehmite particles, which encompasses the claimed range (paragraph [0048]). The courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, see MPEP 2144.05, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Sakatani to comprise the claimed amount of needle-shaped pseudo boehmite because Choi teaches that electrolyte impregnation and ion conductivity is improved (paragraphs [0036 and 0042]).
As to Claim 11, Choi discloses wherein the porous substrate comprises a polyolefin resin having a pore size of about 0.1 to about 10 microns and a porosity of 5-95% (paragraphs [0102 and 0105]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Sakatani to comprise the claimed porous substrate with the claimed pore size and porosity because Choi teaches that electrolyte impregnation and ion conductivity is improved (paragraphs [0036 and 0042]).
As to Claims 12-13 and 19-20, Sakatani discloses the same separator and battery as the claimed invention as discussed above. It is the position of the Office that the separator and battery of Sakatani intrinsically comprises the claimed peel strength and characteristics, given that the structure and materials of Sakatani and the claimed invention are the same, see MPEP 2112.
Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakatani et al. (WO 2015122164 A1; as found in IDS dated 08/29/2023 and using machine translation for citation purposes) in view of Choi et al. (US 2022/0311095 A1) as applied to claims 1, 4-15 and 18-20 above and in further view of Yamamoto et al. (WO 2021230037 A1; using machine translation for citation purposes).
As to Claim 2, modified Sakatani does not specifically disclose the claimed polar group.
However, Yamamoto teaches of a separator for a battery, comprising a porous substrate having a surface treatment to provide a polar group on a surface thereof (paragraph [0040]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of modified Sakatani so that the porous substrate comprises a polar group because Yamamoto teaches that a separator with excelled permeability is provided (paragraphs [0104 and 0106]).
Response to Arguments
Applicant's arguments filed November 17, 2025 have been fully considered but they are not persuasive.
Applicant’s principle arguments are:
a) Choi does not disclose the claimed pseudo-boehmite (claims 1 and 16).
b) Choi does not teach the claimed rod-shaped inorganic binder (claims 1 and 16).
In response to Applicant’s arguments, please consider the following comments:
a) The definition for pseudo-boehmite in the original disclosure is indefinite. The term “high moisture content” is a relative term that is not defined in the specification. It is unclear as to what moisture contents read on the claimed particles and what do not. In addition, Choi discloses of hydrophilic boehmite particles or amorphous particles, therefore the hydrophilic boehmite particles intrinsically have crystallinity since they are not amorphous and also intrinsically comprise a water content that reads on definition of the original disclosure of the present invention.
b) Choi teaches wherein the boehmite particles can be hydrophilic boehmite particles (reads on pseudo-boehmite) and wherein the needle-shaped ceramic particles can be boehmite (reads on claimed rod-shaped inorganic binder being boehmite) (paragraphs [0031 and 0044-0045]). The courts have held that when there are a finite number of identified, predictable solutions (such as boehmite that can be either hydrophilic, spherical, plate-shaped, or cubic), with a reasonable expectation of success, it would have been obvious to one of ordinary skill in the art to try the known options, see KSR, MPEP 2143, I, E. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the separator of Choi to comprise needle-shaped pseudo boehmite (reads on the claimed rod-shaped inorganic binder of pseudo-boehmite particles) because Choi teaches that a separator having excellent electrolyte impregnation, durability, ion conductivity, air permeability, and shutdown function can be provided (paragraphs [0036 and 0042]).
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM ARCIERO whose telephone number is (571)270-5116. The examiner can normally be reached Monday-Friday 8:00-5 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM A ARCIERO/Primary Examiner, Art Unit 1727
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