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 .
Summary
Applicant’s arguments and claim amendments submitted December 24, 2025 have been entered into the file. Currently, claims 5 and 10 are cancelled and claims 1, 3, and 13 are amended, resulting in claims 1-4, 6-9, and 11-17 pending for examination.
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.
Claims 1-4, 6-9, 11-13, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yim (Yim, J.H. Mechanically robust poly(3,4-ethylenedioxythiophene)-SiO2 hybrid conductive film prepared by simultaneous vapor phase polymerization. Composites Science and Technology. 86, 45-51 (2013)) in view of Li (Li, Y. et al. Engineering stable electrode-separator interfaces with ultrathin conductive polymer layer for high-energy-density Li-S batteries. Energy Storage Materials. 23, 261-268 (2019)).
Regarding claims 1 and 17, Yim teaches a method for manufacturing a conductive film on a substrate comprising:
Applying an oxidizing agent to a substrate (FTS spin coated on PET, Yim pg. 46 right column)
Performing gas phase polymerization (Yim pg. 47 left column) of a mixture including a conductive monomer (EDOT, 3,4-ethylenedioxythiophene) and an inorganic precursor (TEOS, tetraethyl orthosilicate) on the substrate, such that a coating layer including a conductive polymer resin and an inorganic material is formed on the substrate (poly(3,4-ethylenedioxythiophene)-SiO2 film, Yim abstract).
Yim further teaches that there are multiple known conductive polymers including polythiophene, polyaniline, and polypyrrole and that poly(3,4-ethylenedioxythiophene) layers formed using gas phase polymerization are known to be used in electronic devices (Yim pg. 45 left column).
Yim does not teach the substrate being a porous substrate.
Li teaches applying an oxidizing agent (FeCl3, Li pg. 267 left column Section 4.1) to a porous substrate having pores such that the pores are maintained (Li Fig. 1a, Fe3+/Celgard separator) and forming a coating comprising a conductive polymer resin on the substrate using gas phase polymerization (Li pg. 267 Section 4.1), resulting in a coated separator (polypyrrole/Celgard separator, Fig. 1). Li further teaches the use of this separator in a lithium metal secondary battery (Li Fig. 6), wherein the lithium metal secondary battery comprises a negative electrode made of lithium metal (Li anode), a positive electrode (sulfur cathode), and the separator (PPy-Celgard separator) made using the above described method of Li interposed between the positive electrode and the negative electrode.
Since Yim and Li both teach substrates coated with a conductive polymer resin using gas phase polymerization after application of an oxidizing agent, Li teaches that it is known and suitable to use these coated substrates as separators in lithium metal secondary batteries, and Yim teaches that PEDOT layers formed using gas polymerization are known to be used in electronic devices, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the PET substrate of Yim for the Celgard separator (porous substrate) of Li in order to achieve a method capable of obtaining a separator suitable for use in a lithium metal secondary battery, as taught in Li, due to the Celgard separator having a porous structure. The ordinary artisan would recognize that a separator for a secondary battery must have a porous structure in order to allow for ion transport.
Since Li teaches that it is known to use separators comprising a porous substrate and a conductive polymer coating in lithium metal secondary batteries, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to fabricate a lithium metal secondary battery comprising a negative electrode made of lithium metal, a positive electrode, and a separator formed using the method of Yim in view of Li, wherein the separator is between the positive and negative electrode, in order to obtain a battery with suitable performance for a desired electrical application.
Li does not expressly teach an embodiment wherein the conductive polymer resin is poly(pyrrole) and the conductive monomer is pyrrole.
As mentioned above, Yim further teaches that polypyrrole is a known and studied conductive polymer (Yim pg. 45 left column) and Li teaches the formation of a polypyrrole resin layer on a porous substrate using gas phase polymerization to form a separator for use in a lithium metal battery (Li Fig. 6). Li further teaches that the polypyrrole coating enhances lithium ion conductivity (Li pg. 264 left column) and results in improved battery performance (Li conclusion).
Since Yim and Li both teach that polypyrrole is a known conductive polymer and Li teaches that it is known and suitable to form a conductive layer comprising polypyrrole on a porous substrate to form a separator for lithium metal batteries to achieve improved battery performance, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the EDOT monomer in the method of Yim for pyrrole, thus resulting in a polypyrrole resin, in order to achieve the predictable result of a method capable of fabricating a separator with improved conductivity and battery performance.
Regarding claim 2, Yim in view of Li teaches all features of claim 1, as described above. Yim further teaches the oxidizing agent including ferric (III) p-toluenesulfonate (FTS, Yim pg. 46 right column).
Regarding claims 3 and 4, Yim in view of Li teaches all features of claim 1, as described above. The modified method of Yim further teaches the porous substrate being a polyolefin-based polymer resin and a polyethylene resin or a polypropylene resin (Celgard 2300 membrane Li pg. 263 left column first paragraph).
Regarding claim 6, Yim in view of Li teaches all features of claim 1, as described above. Yim further teaches the inorganic material being SiO2 (poly(3,4-ethylenedioxythiophen)-SiO2 film, Yim abstract).
Regarding claim 7, Yim in view of Li teaches all features of claim 1, as described above. Yim further teaches the coating layer having a thickness of 10 nm or more and 200 nm or less (66.9 nm Table 2, row 5).
Regarding claim 8, Yim in view of Li teaches all features of claim 1, as described above. Yim further teaches the gas phase polymerization being performed in an inert gas atmosphere (nitrogen gas atmosphere, Yim pg. 47 left column).
Regarding claim 9, Yim in view of Li teaches all features of claim 1, as described above. Yim further teaches the temperature at which the gas phase polymerization is performed being 80°C (Yim pg. 47 left column).
Regarding claim 11, Yim in view of Li teaches all features of claim 1, as described above. Yim further teaches the inorganic precursor being tetraethyl orthosilicate (TEOS, tetraethyl orthosilicate, Yim pg. 47 left column).
Regarding claim 12, Yim in view of Li teaches all features of claim 1, as described above. Yim further teaches the time of the gas phase polymerization being 10 minutes (Yim pg. 47 left column).
Regarding claim 13, Yim in view of Li teaches all features of claim 1, as described above. Yim further teaches the method further comprising washing the porous substrate after performing the gas phase polymerization (immersed in distilled water to remove un-reacted oxidant and monomers, Yim pg. 47 left column).
Regarding claim 15, Yim in view of Li teaches all features of claims 1 and 13, as described above. Yim further teaches the method further comprising drying the porous substrate after washing (dried at room temperature, Yim pg. 47 left column).
Regarding claim 16, Yim in view of Li teaches all features of claims 1, 13, and 15, as described above. Yim is silent regarding the drying time.
However, as described above for instant claim 1, Li teaches applying an oxidizing agent to a porous substrate and forming a coating comprising a conductive polymer resin on the substrate using gas phase polymerization, resulting in a coated separator. Li further teaches the separator being dried for a time within the claimed range of 12 hours or more and 36 hours or less (dried overnight, Li pg. 267 left column Section 4.1).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention that the drying time being “overnight”, as taught by Li, falls within the claimed range of 12 to 36 hours, as it would be less than 24 hours and more than 12 hours in order to cover the overnight time period. Additionally, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to choose a drying time, including times within the claimed range of 12 to 36 hours, that ensures a sufficient amount of drying.
Since Yim and Li both teach substrates coated with a conductive polymer resin using gas phase polymerization after application of an oxidizing agent and Li teaches that a drying time within the range of 12 to 36 hours is suitable, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to perform the drying step of Yim overnight, as taught by Li, in order to achieve the predictable result of a dried separator.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yim in view of Li, as applied to claim 1 above, and in further view of Suzuki (US 4731311 A) and Kobayakawa (US 20100033905 A1).
Regarding claim 14, Yim in view of Li teaches all features of claim 1, as described above. Yim teaches the washing being performed with distilled water (Yim pg. 47 left column). Yim further teaches that the washing is performed in order to remove unreacted oxidizing agent (oxidant) and monomers (Yim pg. 47 left column). Yim does not teach the washing being performed with ethanol and is silent regarding the washing time.
Kobayakawa teaches a method of synthesizing a conductive polymer using 3,4-ethylenedioxythiophene as a conductive monomer and iron (III) p-toluenesulfonate as an oxidizing agent, as used in Yim, wherein after the synthesis, the solution is washed with water and then ethanol to remove unreacted monomer and oxidizing agent (oxidant) (Kobayakawa [75-76]). Kobayakawa teaches that the washing solvent is capable of dissolving the monomer and oxidant without dissolving the conductive polymer and that the washing solvent can be water, alcohol solvents, or combinations of these solvents (Kobayakawa [42]).
Since Kobayakawa teaches that ethanol is a suitable solvent for removing unreacted oxidizing agent and monomer when using 3,4-ethylenedioxythiophene as a conductive monomer and iron (III) p-toluenesulfonate as an oxidizing agent, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add a washing step using ethanol in the method of Yim in order to achieve the predictable result of removing unreacted oxidizing agent and monomer.
Suzuki teaches a method comprising applying an oxidizing agent (FeCl3) to a porous substrate (porous polyethylene film) and performing a gas phase polymerization of a mixture including a conductive monomer (pyrrole) on the porous substrate such that a coating layer including conductive polymer resin is formed on the porous substrate (Suzuki col. 12 lines 14-29). Suzuki further teaches a 30 minute washing step to remove unreacted oxidizing agent and monomer (Suzuki col. 12 lines 34-35) and that it is important to completely remove the oxidizing agent in order to improve electrical conductivity (Suzuki col. 7 lines 5-19).
Since Yim and Suzuki both teach methods comprising forming a conductive polymer resin coating layer on a substrate using gas phase polymerization after application of an oxidizing agent to the substrate and Suzuki teaches that a 30 min washing step after polymerization is suitable, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to performing the washing step of Yim for 30 minutes in order to achieve the predictable result of removing unreacted oxidizing agent and monomer.
Response to Arguments
Response – Specification Objections
The objection to the specification due to improper language usage in the abstract is overcome by applicant’s amendments to the abstract in the response received on December 24, 2025. The objection to the specification is withdrawn.
Response – Claim Objections
The objection to claims 13 due to informalities is overcome by applicant’s amendments to claim 13 in the response received on December 24, 2025. The objection to claim 13 is withdrawn.
Response – Claim Rejections 35 USC § 112
The rejections of claims 3-4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention are overcome by applicant’s amendment to claim 3 in the response received December 24, 2025. These rejections of claims 3-4 are withdrawn.
Response – Claim Rejections 35 USC § 103
Applicant’s arguments filed December 24, 2025 have been fully considered and are not persuasive.
On page 7 of the response, Applicant appears to allege that the purpose of the claimed invention is different than that of Yim. Applicant states that Yim “neither discloses nor suggests any structure suitable for lithium batteries or for suppressing lithium dendrite growth”. On page 8 of the response, applicant further states that Yim does not disclose or teach the use of a porous substrate or the use of poly(pyrrole).
On page 8 of the response, Applicant states that Li does disclose suppression of lithium dendrites, but differs from the present invention due to Li not teaching a step of simultaneously gas-phase polymerizing a monomer and an inorganic precursor.
On page 8 of the response, Applicant states that “Accordingly, even if Yim and Li are combined, it would not have been obvious to arrive at the presently claimed invention”.
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986)
In response to Applicant's argument that the purpose of Yim is different than that of the claimed invention, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the method of Yim in view of Li results in a structure capable of performing the intended use, as described above for instant claim 1.
On pages 8-9 of the response, Applicant alleges unexpected results and directs the Examiner to paragraphs [0056], [0067], [0078], [0088]-[0092], [0123]-[0126], Examples and Comparative Examples, and Figure 5 to support this allegation.
On page of the response, Applicant appears to allege that the method of the claimed invention differs from that of Yim since Yim uses a polymerization temperature of 80°C, while the instant specification uses a temperature of 25°C for polymerization of pyrrole. On page 9 of the response, Applicant correlates Comparative Example 1 of the instant specification to Li and states that this example had dendrite growth.
It is noted that it is the burden of Applicant to provide evidence that establishes that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. See MPEP 716.02(b)(I). Applicants have the burden of explaining proffered data. See MPEP 716.02(b)(II). It is further noted that in order to establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d) II. Additionally, the claims must be commensurate in scope with the proffered data to provide a nexus between the claims and the data establishing evidence of unexpected results. See MPEP 716.02(d).
The presented data are not commensurate in scope with claim 1. For example, the Examples and Comparative Examples in the instant specification include specific oxidizing agents, polymerization times, and polymerization temperatures, all of which are not claimed.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the polymerization temperature being 25°C and suppression of lithium dendrite growth) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
It is noted that instant claim 9 claims the temperature of the gas phase polymerization being 20°C or more and 150°C or less.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
He (US 5591482 A): appears to disclose a method of manufacturing comprising the steps of applying an oxidizing agent to a porous substrate and performing gas phase polymerization (abstract).
Zhang (US 20210143511 A1): appears to disclose a separator for a secondary battery comprising a coating layer that includes an inorganic material that forms heat-resistant particles (abstract, claims 957-959).
Ko (Ko, Y. S. and Yim, J.H. Synergistic enhancement of electrical and mechanical properties of polypyrrole thin films by hybridization of SiO2 with vapor phase polymerization. Polymer. 93, 167-173 (2016)): appears to disclose a method of manufacturing a conductive polymer resin coating on a substrate using gas phase polymerization, wherein the polymerization temperature is 30°C (abstract, pg. 168).
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/J.S.C./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789