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 without traverse of claims 1 and 4-13 in the reply filed on 03/03/2026 is acknowledged.
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.
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) 1, 4 and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sung (US20220393304A1) and in view of Katayama (WO2020256138A1; US20220411600A1 as an English equivalent).
Regarding claim 1, Sung discloses a separator “polyolefin microporous membrane” having a film thickness of 15 µm [0005, 0057-0060, 0084-0086, Sung’s disclosed example anticipates the applicants claimed range of 1-30 µm].
In regards to the claimed limitation of “and a withstand voltage reduction rate of 1.0% or greater and 17.0% or less due to pressing”. Sung teaches that the separator may have a high dielectric breakdown (“withstand voltage”) voltage [0035, Sung]. The separator should have a ratio of the dielectric breakdown voltage after compression to the dielectric breakdown voltage before compression is 70% or more.
The examiner notes that if the separator after compression has a breakdown voltage of 70% or more. Then that would mean that the breakdown “reduction rate” is 0-30%.
In regards to the claimed limitation “pressing under condition of a temperature of 60 oC pressure of 3.4 MPa, and a compression time of 1 sec.” The examiner notes that Sung’s examples are subjected to harsher conditions than those listed above. Sung’s separators are subjected to temperatures at 80oC and 10MPa [0099, Sung]. Despite these harsher conditions Sung has two examples where the ratio is 85.5% and 88.8%. In these two examples the “reduction rate” of the separator before and after compression would be 14.5% and 11.2%. If the separator has a “reduction rate” that anticipates the applicant’s claimed range under harsher conditions, then it would inherently anticipate the applicant’s claimed range under milder conditions as the separator would be less damaged.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999), see MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003), see MPEP 2112.II.
Sung is explicitly silent to if the air permeability of the separator is 500 sec/100 cm3 or less.
However, Katayama discloses examples of polyolefin microporous membrane Gurley value (“air permeability”) ranging from 50-180 sec/100 cm3 [0054, table 4.1-4.6, Katayama’s disclosed examples anticipate the applicants claimed range of less than 500 sec/100 cm3].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Sung such that the air permeability was with the range of 50-180 sec/100 cm3. Doing so would ensuring membrane permeability and maintaining the output characteristics of electrochemical devices [0054, Katayama].
Regarding claim 4, Sung discloses the polyolefin microporous membrane, wherein the polyolefin microporous membrane before compression has a porosity of 40% [0086, Sung’s disclosed range anticipates the applicants claimed range of 40-80%].
Sung as presently modified is silent to the basis weight equivalent puncture strength of 55 gf/(g/m2) or more and 150 gf/(g/m2) or less.
However, Katayama discloses a separator with a basis weight-equivalent puncture strength ranging from 70-154 gf/(g/m2) [0046, table 4.1-4.6, Katayama].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Sung such that the separator possessed a basis weight-equivalent puncture strength ranging from 70-154 gf/(g/m2). Doing so would provide a provide a separator capable of having satisfactory impact safety while inhibiting heat shrinkage [0046, Katayama].
Regarding claim 8, Sung discloses a separator comprising: the polyolefin microporous membrane (110) [0047, fig. 1-3, Sung]; and an inorganic porous layer (122/123) arranged on at least one side of the polyolefin microporous membrane [0047-0049, fig. 1-3, Sung].
Regarding claim 9, Sung discloses a separator comprising: the polyolefin microporous membrane; and an electrode adhesive portion (121, “thermoplastic resin layer”) arranged on at least one side of the polyolefin microporous membrane [0047, fig. 1-3, Sung].
Regarding claim 10, Sung discloses a separator comprising: the polyolefin microporous membrane; and at least one layer selected from the group consisting of a multifunctional layer (120), an inorganic porous layer (122), and a thermoplastic resin layer (121), arranged on at least one side of the polyolefin microporous membrane [0047, fig. 1-3, Sung].
Regarding claim 11-13, Sung discloses a nonaqueous secondary cell comprising the separator [0077-0079, Sung].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Sung as applied to claim 1 above, and further in view of Sekiguchi (US20180205057A1).
Regarding claim 5, modified Sung discloses the polyolefin microporous membrane, wherein an average of dynamic friction coefficients on both surfaces of the polyolefin microporous membrane is 0.2 or less and discloses examples with a dynamic friction coefficient ranging from 0.12-0.2 [0055, table 1, Sekiguchi’s dynamic friction coefficient anticipates the applicant’s claimed range 0f 0.01-0.4].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Sung such that the dynamic friction coefficient was 0.2 or less. Doing so would allow for the battery winding performance to become good [0055, Sekiguchi].
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Sung as applied to claim 1 above, and further in view of Uchida (WO2021006357A1; US20220285790A1 as an English equivalent).
Regarding claim 6, modified Sung is silent to the melt flow index of the separator.
However, Uchida discloses the polyolefin microporous membrane, wherein the polyolefin microporous membrane has a melt flow index (MI) value of 0.02 g/10 min or more and 0.50 g/10 min or less [0137, Uchida melt index anticipates the applicant’s claimed range of 0.01-0.5 g/10min].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Sung such that the melt index (MI) was between 0.02-0.5 g/10 min. Doing so would limit the viscosity of the material during formation and help reduce defective products [0137, Uchida].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Sung as applied to claim 1 above, and further in view of Kim (US20210242481A1).
Regarding claim 7, modified Sung is silent to the MD/TD tensile strength ratio of the separator.
However, Kim discloses the polyolefin microporous membrane according to claim 1,wherein a ratio (MD/TD tensile strength ratio) of a tensile strength in longitudinal direction (MD) to a tensile strength in width direction (TD) of the polyolefin microporous membrane may be equal to each other, or the higher of the MD tensile strength and the TD tensile strength may be 1.5 times or less the lower thereof [0062-0065, Table 1, Kim’s disclose overlaps with the applicants claimed MD/TD ratio range of 0.7-1.3].
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 (see MPEP 2144.05).
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Kim such that the MD/TD tensile strength ratio was equal to each other, or the higher of the MD tensile strength and the TD tensile strength may be 1.5 times or less the lower thereof. Doing so can provide a separator with sufficient mechanical durability [0065, Kim].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUINTIN DALE ELLIOTT whose telephone number is (703)756-5423. The examiner can normally be reached M-F 8:30-6pm (MST).
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724
/STEWART A FRASER/Primary Examiner, Art Unit 1724
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