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 Species 1 in the reply filed on 11/24/2025 is acknowledged.
Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/24/2025.
Specification
The use of the term Teflon, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1-20 are objected to because of the following informalities: the wherein clause in claim 1 contains several elements in a list and at least one of the elements in the list is itself a list. It is suggested applicant either provide each clause in its own line or utilize a semicolon to separate each clause. Claims 2-20 depend from claim 1 and are objected to for the same reason. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected 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.
Regarding claim 1, the claim recites in the last two lines “the first inner laminating section of the inner separator has a surface friction coefficient of 0.1-0.4.” However, the surface friction coefficient will vary widely depending on the testing method, second material on which it is tested, whether the coefficient of friction is static or dynamic, etc. This renders the instant claim indefinite. Claims 2-20 depend from claim 1 and are rejected for the same reason. A combination of claims 2 and 3 (presuming the material in S2 of claim 2 is the PTFE of claim 3) would remedy the issue; however, applicant is advised of the trademark/trade name issue noted below.
Claim 1 recites the limitation "the first inner laminating section of the inner separator" in the last two lines of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, the limitation will be treated consistent with the explanation in paragraph [0062] of the specification as filed: “the parts of the inner separator B1 that overlap with each other after the winding needle A is drawn out are defined as a first inner laminating section, for example, parts as indicated by arrow P in FIG. 9b.” Claims 2-20 depend from claim 1 and are rejected for the same reason.
Claim 3 contains the trademark/trade name Teflon. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the composition of a component used to determine the second friction coefficient and, accordingly, the identification/description is indefinite.
Regarding claim 4, it is unclear what layers are required and in what order the layers are provided. Additionally, it is noted that in one option, the adhesive layer is both provided on a surface of the base film and an outer surface of the ceramic layer. It is unclear how a single adhesive layer can be provided in both places. For the purpose of this Office action, the adhesive layers will be treated as distinct layers.
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.
Claims 1-11, 15-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over CN 205828578 U (“Zeng” – machine translation cited herein) in view of US 2015/0207122 A1 (“Yoshitomi”).
Regarding claim 1, Zeng discloses a lithium ion battery (Abstract; [0039]). The battery comprises a wound cell and tabs 13, 23 (Figs. 2-5, 8-11). The wound cell is formed by stacking and winding a separator winding start layer 31 (“inner separator”), a first electrode 10, a separator winding second layer 33 (“outer separator”), and a second electrode 20, wherein the first electrode 10 and the second electrode 20 have opposite polarity (Figs. 2-5, 8-11; [0035]).
The separator winding start layer 31 is located at an innermost layer of the wound cell (Figs. 2-5, 8-11). Each of the separator winding start layer 31 and the separator winding second layer 33 has a natural fold-back section 35 (“clamping section”), a first straight section connected with the natural fold-back section 35 and located behind the natural fold-back section 35, and a tail laminating section extending beyond a tail end of the first electrode 10 (Figs. 5, 10-11; [0015], [0053]-[0055]).
The first straight section is located in front of the first electrode 10 (e.g. this portion extends beyond the first electrode at the center of the wound cell. The tail laminating section is a separator end (Figs. 5, 10-11). The natural fold-back section 35, the first straight section, and the tail laminating section of the separator winding start layer 31 are respectively laminated with the natural fold-back section 35, the first straight section, and the tail laminating section of the separator winding second layer 33 (Figs. 5, 10-11).
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Zeng does not expressly disclose a first inner laminating section of the inner separator has a surface friction coefficient of 0.1-0.4.
Yoshitomi discloses a separator for a nonaqueous electrolyte battery, including a porous substrate and an adhesive porous layer that is provided on one side or both sides of the porous substrate and contains an adhesive resin (Abstract). The dynamic coefficient of friction on the surface of the adhesive porous layer provided on one side and/or the other side of the porous substrate is within a range of 0.1 or more and 0.5 or less ([0038], [0029]-[0039]). The separator of Yoshitomi balances process yield, adhesion to electrodes, and electrolyte retention ([0031]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the separator of Yoshitomi for the separators of Zeng to balance process yield, adhesion to electrodes, and electrolyte retention.
Regarding claim 2, modified Zeng discloses the lithium battery of claim 1. The instant claim recites a method of measuring the surface friction coefficient. It is deemed that the separator of modified Zeng inherently meets the structural limitations of the claim in view of the dynamic coefficient of friction of 0.1 or more and 0.5 or less as taught by Yoshitomi. The dynamic coefficient of friction corresponds to the claimed second friction coefficient.
Regarding claim 3, modified Zeng discloses the lithium battery of claim 1. Yoshitomi discloses the dynamic coefficient of friction is a value measured by the method in accordance with JIS K7125 ([0039]). It is deemed that the separator of modified Zeng inherently meets the structural limitations of the claim in view of Yoshitomi.
Regarding claims 4-7, modified Zeng discloses the lithium battery of claim 1. Yoshitoshi further discloses the separator (in the combination, this applies to both separators) comprises a base film and an adhesive porous layer ([0029]). The porous substrate is a composite porous sheet including a microporous membrane and a functional layer laminated thereon. The functional layer is a porous layer made of a heat-resistant resin and an inorganic filler, such as alumina ([0058]). The porous layer is provided as the outermost layer of the separator on both sides of the porous substrate ([0064]). This corresponds to the claims as a functional layer comprising a ceramic (“ceramic layer”) is provided on the microporous membrane (“base film”) and the adhesive layer is provided the functional layer (i.e. provided indirectly on a surface of the microporous membrane).
Regarding claim 8, modified Zeng discloses the lithium battery of claim 1. The instant claim recites dimensions of various portions of the lithium battery. While modified Zeng is silent regarding the dimensions as claimed, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to change the relative size of the portion(s) as claimed because a lithium battery having the claimed relative dimensions would not perform differently. The examiner’s position is supported by MPEP 2144.04(IV)(A). “Where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claims 9 and 20, modified Zeng discloses the lithium battery of claim 1. It is deemed that the dry peeling force and adhesive transfer area ratio are inherent characteristics and/or properties of the specifically disclosed the inner and outer separators. In this respect, MPEP 2112 sets forth the following:
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 10, modified Zeng discloses the lithium battery of claim 1. As shown in Figs. 10-11, the separator winding start layer 31 has a first inner laminating section that is laminated with itself. It is deemed that the wet peeling force is an inherent characteristic and/or property of the specifically disclosed the adhesive surface. See the sections of MPEP 2112 cited above.
Regarding claim 11, modified Zeng discloses the lithium battery of claim 4. Yoshitomi discloses the adhesive porous layer is formed by, for example, phase separation ([0107]-[0108]). An example of a solvent that induces phase separation includes water ([0110]). The separator is therefore considered to be a water-based separator.
Regarding claim 15, modified Zeng discloses the lithium battery of claim 4. Yoshitomi further discloses the thickness of the adhesive porous layer on one side of the porous substrate is 0.5 µm to 5 µm. When the thickness is 0.5 µm or more, this leads to excellent adhesion to electrodes and provides a battery with excellent cycle characteristics. When the thickness is 5 µm or less, this leads to excellent ion permeability and provides a battery with excellent load characteristics ([0068]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the thickness of the layer for the reasons disclosed by Yoshitomi.
Given the composition and thickness of the adhesive porous layer, it is the position of the Office that the packing density would likewise be obvious for the same reasons as the thickness as the packing density is equal to the total density of the layer times thickness.
Regarding claim 16, modified Zeng discloses the lithium battery of claim 4. Yoshitomi further discloses the adhesive porous layer comprises an adhesive resin such as polyvinylidene fluoride, polyvinylidene fluoride copolymers, styrene-butadiene copolymers, homopolymers and copolymers of vinyl nitriles such as acrylonitrile and methacrylonitrile, and polyvinyl alcohols ([0074]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over CN 205828578 U (“Zeng” – machine translation cited herein) in view of US 2015/0207122 A1 (“Yoshitomi”) as applied to claim 11 above, and further in view of US 2023/0344077 A1 (“Qiu”).
Regarding claim 12, modified Zeng discloses the lithium battery of claim 11. Yoshitomi discloses the adhesive porous layer comprises an adhesive resin and may contain an inorganic filler ([0042]). Modified Zeng does not expressly disclose the adhesive layer comprises a binder and a dispersing agent; wherein a content of the adhesive polymer accounts for 92-96%, a content of the binder accounts for 2.5-5.5%, and a content of the dispersing agent accounts for 1.5-2.5%, based on a total mass of the adhesive layer.
Qiu discloses a porous coating on a porous substrate ([0058]). The porous coating provides adhesion between the separator and the electrodes ([0062]). The porous coating layer comprises a thickener (“binder”) and a wetting agent (“dispersing agent”). The thickener and wetting agent are both provided in an amount of 1% to 15% (if inorganic particles are not included) or 1% to 10% (if inorganic particles are included) ([0061], [0072]). The thickener is used to increase a viscosity of a porous coating slurry, so that the porous coating slurry has good stability, preventing agglomeration and sedimentation of particles. The wetting agent is used to make contact between the polymer binder and thickener and water fuller, facilitating dispersion of the polymer binder. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the thickener and wetting agent as taught by Qiu to prevent agglomeration and sedimentation of particles and facilitate dispersion of the polymer binder ([0062]) and optimize the amounts thereof to prevent agglomeration and sedimentation of particles ([0064]) and uniform apply the coating and avoid the risk of short circuit of the battery cell caused by insufficient bonding forces between the porous film and the electrodes ([0073]).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over CN 205828578 U (“Zeng” – machine translation cited herein) in view of US 2015/0207122 A1 (“Yoshitomi”) as applied to claim 4 above, and further in view of JP 2019-121508 A (“Nishiura” – machine translation cited herein).
Regarding claim 17, modified Zeng discloses the lithium battery of claim 4. As discussed above, the functional layer is a porous layer made of a heat-resistant resin and an inorganic filler, such as alumina ([0058]). Modified Zeng does not expressly disclose a content of the ceramic particles accounts for 85-92% of a total amount of the ceramic layer.
Nishiura discloses a separator having a microporous base material (A) and a filler layer (B) disposed so as to be adjacent to one face of the microporous base material (A) (Abstract). The filler layer (b) comprises inorganic particles in an amount more than 85 mass % and not more than 99.97 mass % relative to the total mass of the filler layer. When the amount of inorganic particles is within this range, the dimensional stability of the secondary battery separator is likely to be improved, and furthermore, the electrical resistance of the secondary battery separator is unlikely to increase ([0030]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of the inorganic particles to improve the dimensional stability of the separators while not increasing the electrical resistance of the separators.
Regarding claim 18, modified Zeng discloses the lithium battery of claim 17. Nishiura further discloses examples of the inorganic particles include aluminum oxide, aluminum hydroxide oxide (boehmite), and magnesium oxide ([0028], [0066]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over CN 205828578 U (“Zeng” – machine translation cited herein) in view of US 2015/0207122 A1 (“Yoshitomi”) and JP 2019-121508 A (“Nishiura” – machine translation cited herein) as applied to claim 17 above, and further in view of US 2011/0171535 A1 (“Ohinshi”) and US 2019/0051906 A1 (“Rhee”).
Regarding claim 19, modified Zeng discloses the lithium battery of claim 17. Modified Zeng does not expressly disclose a particle size distribution of the ceramic particles is: D10 particle size being 0.15-0.3 µm, D50 particle size being 0.35-0.45 µm, D90 particle size being 0.6-0.8 µm, and D100 particle size being less than 4.5 µm.
Ohinshi discloses a separator for lithium ion secondary batteries, having an inorganic layer formed from inorganic particles, characterized in that the inorganic particles have a particle diameter distribution in which the 50% cumulative particle diameter D50 is in the range of 200 nm to 430 nm, the 10% cumulative particle diameter D10 is 0.5D50 or more, and the 90% cumulative particle diameter D90 is 2D50 or less (Abstract). This particle size distribution provides a lithium ion secondary battery in which the current density applied to the electrodes during charging and discharging is uniform so that charging and discharging can be efficiently achieved ([0012], [0019]). Ohinshi provides motivation to optimize the D10, D50, and D90 (limiting resistance to the migration of lithium ions, which deteriorates the high-rate discharging characteristics; limiting the occurrence of pinholes or cracks) ([0019]-[0020]).
Rhee discloses a separation membrane for a secondary battery comprising an alumina-containing coating layer (Abstract). The alumina powder preferably has a D100 of 3.5 µm or less. If the D100 value exceeds 3.5 µm, the proportion of coarse alumina particles may increase, thus making it difficult to realize thinning of the obtained alumina-containing coating layer, or the heat resistance of the obtained alumina-containing coating layer may deteriorate ([0059]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize to optimize the D10, D50, D90, and D100 as claimed in view of Ohinshi which teaches the D10, D50, and D90 affect the high-rate discharging characteristics and the occurrence of pinholes or cracks and Rhee which teaches the D100 affects the thickness and the heat resistance characteristics of the layer.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-19 of copending Application No. 18/148966 in view of US 2015/0207122 A1 (“Yoshitomi”). The instant claims represent a patentably indistinct combination of the claims of the reference application and are silent regarding the surface friction coefficient of 0.1-0.4. Yoshitomi discloses a dynamic coefficient of friction on the surface of the adhesive porous layer provided on one side and/or the other side of the porous substrate is within a range of 0.1 or more and 0.5 or less ([0038], [0029]-[0039]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed friction coefficient as Yoshitomi teaches it affects process yield, adhesion to electrodes, and electrolyte retention ([0038]).
This is a provisional nonstatutory double patenting rejection.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-6PM ET.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727