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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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)(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, and 6-9 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Machida et al. (US 2024/0234959 A1, hereinafter Machida).
Re Claim 1. Machida teaches a nonaqueous electrolyte secondary battery separator comprising
a mixed layer (Layer (A), para. 48 & 49) which contains a heat-resistant resin (para. 58) and a porous base material that includes a porous film containing a polyolefin-based resin as a main component (Layer (A), para. 48 & 49),
when attenuated total reflection infrared spectroscopy (ATR-IR) is carried out with respect to an opposite surface of the nonaqueous electrolyte secondary battery separator, a peak indicating the polyolefin-based resin and a peak indicating the heat-resistant resin being observed, and a ratio (A/B) between an intensity (A) of the peak indicating the heat-resistant resin and an intensity (B) of the peak indicating the polyolefin-based resin being not less than 0.02.
Regarding “when attenuated total reflection infrared spectroscopy (ATR-IR) is carried out…”: Machida does not explicitly discloses that a peak indicating the polyolefin-based resin and a peak indicating the heat-resistant resin being observed, and a ratio (A/B) between an intensity (A) of the peak indicating the heat-resistant resin and an intensity (B) of the peak indicating the polyolefin-based resin being not less than 0.02.
However, since Machida and the claimed separator employ substantially similar materials, it is reasonable to believe that the claimed properties (a peak indicating the polyolefin-based resin and a peak indicating the heat-resistant resin being observed, and a ratio (A/B) between an intensity (A) of the peak indicating the heat-resistant resin and an intensity (B) of the peak indicating the polyolefin-based resin being not less than 0.02) would have naturally flowed following the teachings of Machida. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
Re Claim 2. Machida does not explicitly discloses that the peak indicating the heat-resistant resin is a peak present in 1,620 cm-1 to 1,700 cm-1; and the peak indicating the polyolefin-based resin is a peak present in 1,400 cm-1 to 1,500 cm-1.
However, since Machida and the claimed separator employ substantially similar materials, it is reasonable to believe that the claimed properties (the heat-resistant resin is a peak present in 1,620 cm-1 to 1,700 cm-1; and the peak indicating the polyolefin-based resin is a peak present in 1,400 cm-1 to 1,500 cm-1) would have naturally flowed following the teachings of Machida. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
Re Claim 6. Machida teaches wherein an air permeability of the nonaqueous electrolyte secondary battery separator is not more than 300 sec/100 mL (para. 71).
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2131.03.
Re Claim 7. Machida teaches wherein the heat-resistant resin is an aramid resin (para. 58).
Re Claim 8. Machida teaches a nonaqueous electrolyte secondary battery member (para. 194 & 229) comprising:
a positive electrode (para. 193);
a nonaqueous electrolyte secondary battery separator recited in claim 1 (see rejection of claim 1, para. 193); and
a negative electrode (para. 193),
the positive electrode, the nonaqueous electrolyte secondary battery separator, and the negative electrode being disposed in this order (see rejection of claim 1, para. 230).
Re Claim 9. Machida teaches a nonaqueous electrolyte secondary battery (para. 194 & 229) comprising a nonaqueous electrolyte secondary battery separator recited in claim 1 (see rejection of claim 1, para. 193).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Machida as applied to claim 1 above, and further in view of Iwata (US 2020/0335753 A1).
Re Claim 3. Machida teaches wherein a heat-resistant layer (Layer (B), para. 85) which is formed on the mixed layer (para. 85), but fails to specifically teach that the heat-resistant layer contains the heat-resistant resin.
The invention of Iwata encompasses nonaqueous electrolyte secondary battery porous layer. Iwata teaches that the heat-resistant layer contains the heat-resistant resin (para. 153-158).
In view of Iwata, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Machida to include the heat-resistant resin in the heat-resistant layer, since Iwata teaches the advantage of using it, which is to ensure safety of the battery (para. 35).
Re Claim 4. The combination teaches wherein the heat-resistant layer further contains a filler (Machida, para. 89).
Re Claim 5. The combination teaches wherein an amount of the filler contained in the heat-resistant layer is not less than 85% by weight and not more than 98% by weight, relative to a total weight of the heat-resistant layer (Machida, para. 104).
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). "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
The rejections above rely on the references for all the teachings expressed in the text of the references and/or one of ordinary skill in the art would have reasonably understood from the texts. Only specific portions of the texts have been pointed out to emphasize certain aspects of the prior art, however, each reference as a whole should be reviewed in responding to the rejection, since other sections of the same reference and/or various combinations of the cited references may be relied on in future rejections in view of amendments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN E YOON whose telephone number is (571)270-5932. The examiner can normally be reached Monday-Friday 9 AM- 5 PM.
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/KEVIN E YOON/Primary Examiner, Art Unit 1735
11/12/2025