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 .
Response to Amendment, Claim Status, and Other Notes
The amendment filed 8 September 2025 has been entered. Claims 3 and 4 have been canceled. Claims 1, 2, 5, and 6 are pending in the application.
The paragraph numbers cited in this Office Action in reference to the Instant Application are referring to the paragraph numbering of the PGPub of the Instant Application. See US 2023/0207964 A1.
Claim Rejections - 35 USC § 102 or 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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Takada et al. (JP 2017/103201 A; see attached machine translation) or, in the alternative, under 35 U.S.C. 103 as obvious over Takada et al. (JP 2017/103201 A; see attached machine translation).
Regarding Claim 1, Takada discloses a nonaqueous electrolyte secondary battery separator (see laminated separator for a non-aqueous electrolyte secondary battery, [0040]) comprising:
a polyolefin porous film (see porous film, [0022], [0040]; note [0022] discloses the porous film is polyolefin-based); and
a heat-resistant porous layer (see porous layer, [0040]; [0043]–[0044] discloses that the porous layer is heat resistant) formed on one surface or both surfaces of the polyolefin porous film ([0041]),
the heat-resistant porous layer containing a heat-resistant resin (see aromatic polyamides, [0043])
wherein the heat-resistant resin contains a para-aramid (see para-oriented aromatic polyamide… sometimes referred to as “para-aramid”, [0044]).
Regarding the limitation the nonaqueous electrolyte secondary battery separator having an absolute value of a ratio of change in thickness between before and after a heat-shock cycle test in a range of not more than 1.40%,
the ratio of change in thickness being defined by Formula (1) below,
ratio of change in thickness (%) = {(D0 – D1) / D0} × 100 …(1)
where D0 is a thickness (µm) of the nonaqueous electrolyte secondary battery separator before the heat-shock cycle test, and D1 is a thickness (µm) of the nonaqueous electrolyte secondary battery separator after the heat-shock cycle test,
the heat-shock cycle test being performed under conditions in which: a high temperature is 85 °C; a low temperature is −40 °C; a maintenance time of the high temperature is 30 minutes; a maintenance time of the low temperature is 30 minutes; a temperature transition time between the high temperature and the low temperature is one minute; and number of cycles is 150 cycles, it is submitted that such limitations are simply measurements of, and thus descriptions of, inherent properties of the Instant nonaqueous electrolyte secondary battery separator.
Applicant discloses (Instant Specification [0027]–[0028]) that the absolute value of the ratio of change in thickness of the nonaqueous electrolyte secondary battery separator mainly depends on the heat-resistant resin of the heat-resistant porous layer’s ability to permeate the surface of the porous film on which it has been formed, as upon permeation, the heat-resistant resin fixes a crystal orientation of polyolefin of the porous film and densifies a crystal structure of the porous film at the interface, which reduces the change in structure of the porous film after repeated temperature changes. Applicant further discloses (Instant Specification [0073]) methods (a) and (b) for suitably controlling the degree of permeation of the heat-resistant resin, of which the heat-resistant porous layer is made. Specifically, Applicant discloses (Instant Specification [0074]) that method (a) entails controlling a tension applied to the porous film to fall within a suitable range, (i) after a coating solution is applied to the porous film, so that a coating layer is formed, and (ii) before the solvent contained in the coating layer is removed by drying, so that the porous layer is formed. Furthermore, Applicant discloses (Instant Specification [0076]–[0077]) that the tension which is applied to the porous film before drying the coating layer is preferably between 0.080 N/mm and 0.120 N/mm. Finally, Applicant discloses (Instant Specification [0079]) that it is possible to further reduce the absolute value of the ratio of change in thickness of the nonaqueous electrolyte secondary battery separator by forming the porous layer on each of both surfaces of the porous film.
Applicant discloses (Instant Specification [0112]–[0119], Tables 1–3) for instance Example 1 which exhibits a thickness change ratio as claimed of 0.99%. It can be reasonably interpreted, given the above, that the thickness change ratio of 0.99% of Example 1 is a result of:
(Instant Specification [0112]–[0115]) the identity of the heat-resistant porous layer, disclosed to comprise poly(paraphenylene terephthalamide) (PPTA), a type of aramid, as the heat-resistant resin, and alumina A as an inorganic filler,
(Instant Specification [0117]) the application of method (a) to Example 1 during its production, specifically controlling the tension applied to the porous film to fall within a range of 0.080 N/mm and 0.120 N/mm during a water cleaning step (i) after a coating solution is applied to the porous film so that a coating layer is formed, and (ii) before the solvent contained in the coating layer is removed by drying, so that the porous layer is formed (note the applied tensions are shown in Table 2, labeled as Water cleaning MID and Water cleaning OUT, and are disclosed to be 0.092 and 0.116 N/mm, respectively, for Example 1),
(Instant Specification [0119]) and the formation of the porous layer on each of both surfaces of the porous film.
In comparison, Takada discloses:
the heat-resistant porous layer can contain poly(paraphenylene terephthalamide) as the heat-resistant resin (Takada [0045]), and α-alumina, i.e. alumina A, as an inorganic filler (Takada [0046]–[0049]),
a step during the preparation of the non-aqueous electrolyte secondary battery separator of applying the coating liquid, i.e. coating solution, for forming the heat-resistant porous layer while the porous film is being drawn out at a tension of 120 N/m, i.e. 0.120 N/mm (Takada [0123]); one of ordinary skill in the art would expect this step to result in 0.120 N/mm of tension being applied both after coating and before drying (i.e. the porous film is still drawn out at a tension of 0.120 N/mm once the coating solution has been applied as it moves down the line),
(Takada [0041]) and that the heat-resistant porous layer can be formed on both surfaces of the porous film.
MPEP 2112.01.I states that 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.
It is submitted that the nonaqueous electrolyte secondary battery separator of Takada is substantially identical to the nonaqueous electrolyte secondary battery separator of Example 1 of the Instant Application, as set forth above, such that it would inherently possess the same properties, exhibit the same results, and thus anticipate the claimed limitation, i.e. have an absolute value of a ratio of change in thickness between before and after a heat-shock cycle test in a range of not more than 1.40%,
the ratio of change in thickness being defined by Formula (1) below,
ratio of change in thickness (%) = {(D0 – D1) / D0} × 100 …(1)
where D0 is a thickness (µm) of the nonaqueous electrolyte secondary battery separator before the heat-shock cycle test, and D1 is a thickness (µm) of the nonaqueous electrolyte secondary battery separator after the heat-shock cycle test,
the heat-shock cycle test being performed under conditions in which: a high temperature is 85 °C; a low temperature is −40 °C; a maintenance time of the high temperature is 30 minutes; a maintenance time of the low temperature is 30 minutes; a temperature transition time between the high temperature and the low temperature is one minute; and number of cycles is 150 cycles.
Assuming, arguendo, that the property recited in the claimed limitation is not anticipated, as there is no evidence on the record that any differences between the instantly claimed nonaqueous electrolyte secondary battery separator and that of Takada are critical, and as the conditions of the prior art significantly overlap the relevant conditions disclosed in the Instant Specification, it is submitted that prior to the effective filing date, one having ordinary skill in the art would have found the nonaqueous electrolyte secondary battery separator of Takada and that of the Instant Application to be obvious variants of one another.
Regarding Claim 2, Takada discloses the nonaqueous electrolyte secondary battery separator of Claim 1. Takada further discloses ([0041]) wherein the heat-resistant porous layer is formed on each of the both surfaces of the polyolefin porous film.
Regarding Claim 5, Takada discloses the nonaqueous electrolyte secondary battery separator of Claim 1. Takada further discloses a nonaqueous electrolyte secondary battery member (see nonaqueous electrolyte secondary battery member, [0071]) comprising:
a positive electrode (see positive electrode, [0071]),
the nonaqueous electrolyte secondary battery separator according to Claim 1 (see laminated separator for a nonaqueous electrolyte secondary battery, [0071]), and
a negative electrode (see negative electrode, [0071]),
the positive electrode, the nonaqueous electrolyte secondary battery separator, and the negative electrode being disposed in this order ([0071]).
Regarding Claim 6, Takada discloses the nonaqueous electrolyte secondary battery separator of Claim 1. Takada further discloses a nonaqueous electrolyte secondary battery (see non-aqueous electrolyte secondary battery, [0071]) comprising the nonaqueous electrolyte secondary battery separator according to Claim 1 (see laminated separator for a non-aqueous electrolyte secondary battery, [0071]).
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA MARIE FEHR, Ph.D. whose telephone number is (571)270-0860. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM EST.
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725