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 .
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)(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.
Claims 1-5, and 10 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over CN112310558 to Zhou (“Zhou”). As to claim 1, Zhou teaches an inorganic coating slurry for coating a diaphragm (separator) and an inorganic coated diaphragm coated using the slurry (par. [0008]). Zhou discloses a diaphragm (separator) comprising the inorganic coating (par. [0026]), a positive and negative electrode sheet (first and second electrode piece) wherein the diaphragm (separator) is wound together with the positive and negative electrode sheets to form a lithium ion battery (par. [0072]). The diaphragm (separator) comprises a base membrane (base film) and an inorganic coating that covers the diaphragm's surface (par. [0006]). The inorganic coating material comprises tricalcium silicate (3CaOSiO₂) (par. [0010]) which is used in multiple examples of the current application and therefore will inherently be capable of hardening upon reaction with water. The entire surface of the separator is coated with the ceramic material, thereby leading to coating from the winding start edge to the winding end edge, which, regardless of the length of the separator, includes a portion from 0cm from the winding start edge and inward as far as the separator extends (i.e., there is some coating in a region from 0cm to 10-20cm from the winding start edge).
As to claim 2, Zhou teaches that the inorganic coating material comprises tricalcium silicate
(3CaOSiO₂) (par. [0010]). The compound used qualifies as a first oxide (CaO) and a component 1 second
oxide (SiO₂) as described in formula 1 of claim 2. Within the inorganic coating material comprising
tricalcium silicate (3CaO·SiO2), coefficient a is equal to 1, b=0, and c=0 which satisfies the limitations of
claim 2.
As to claim 3, Zhou teaches that the inorganic coating material comprises tricalcium silicate
(3CaOSiO₂) (par. [0010]). The compound used follows formula 1-1 wherein a1=3, b=1 and c=0.
As to claim 4, Zhou teaches that the inorganic coating material comprising tricalcium silicate
(3CaOSiO₂), coefficient a is equal to 1, b=0, and c=0 which satisfies the limitations of claims 2 and 4.
As to claim 5, Zhou teaches that the diaphragm (separator) inorganic coating material comprises
tricalcium silicate (3CaOSiO₂) which satisfies the limitations of claim 5.
As to claim 10, Zhou teaches that the thickness of the substrate diaphragm (base film) is 5-30
µm, and the thickness of the inorganic coating is 1-10 µm (par. [0022]). Satisfying the requirements of
claim 10.
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.
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 7, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou. Zhou is applied as described above. UpMold, cited in the previous Action, is relied upon as evidentiary evidence in rejecting claim 11.
As to claim 7, Zhou teaches that an inorganic coating slurry for coating a diaphragm, comprising,
by weight, 20-40 parts tricalcium silicate (inorganic material) (par. [0010]). Zhou fails to disclose wherein
weight percentage of the inorganic material is 95-100% within the total mass of the coating.
Through experimentation, Zhou could employ a different wt% of the inorganic material whilst
still emphasizing coating uniformity (par. [0027]). Zhou discloses that when tricalcium silicate is used as
the main material for the inorganic coating of the separator, it can absorb moisture inside the battery
and prevent moisture from affecting battery performance (par. [0028]). This quotes leaves room for
modifying the wt% range of the tricalcium silicate within the inorganic coating.
It would have been obvious to one of ordinary skill in the art before the effective filling date to
modify the wt% range of Zhou's inorganic material within the inorganic coating slurry to satisfy the
limitations of claim 7.
As to claim 11, Zhou teaches an inorganic coated membrane, comprising a substrate membrane
and an inorganic coating disposed on at least one surface of the substrate membrane (base film) (par.
[0047]). Zhou fails to disclose what material(s) is/are used as the substrate membrane (base film).
Through experimentation, Zhou could result in employing a polyolefin porous film, a non-woven
fabric, and/or glass fibers as the substrate membrane. Zhou only restricts the substrate membrane to
have a thermal shrinkage rate of not more than 2% at 130°C/30min (par. [0047]).
Evidentiary reference UpMold teaches that liquid crystal polymer glass fiber has a minimum
shrink rate percentage (%) of approx. 0.1 and a maximum of 0.4. Therefore, liquid crystal polymer glass
fiber may be employed as the substrate membrane within Zhou's invention.
It would have been obvious to one of ordinary skill in the art before the effective filling date to
add the use of liquid crystal polymer glass fiber as the substrate membrane within Zhou's invention as it
has a shrink rate percentage within the desired range.
As to claim 12, Zhou teaches that the tricalcium silicate within the inorganic coating readily
reacts with water to form hydrated calcium silicate, which has gel properties. Therefore, when
tricalcium silicate is used as the main material for the inorganic coating of the separator, it can absorb
moisture inside the battery and prevent moisture from affecting battery performance (par. [0028]).
Inherently Zhou's inorganic coating should possess the same heat of hydration and/or compressive
strength as examples 1-5.
"Products of identical chemical composition cannot have mutually exclusive properties." 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. In re Spada,
911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art before the effective filling date to
add the heat of hydration and/or compressive strength property to Zhou's invention description.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou as applied above and further in view of Korean Patent Publication No. KR20170062170 to Park (“Park”). Zhou teaches the Tricalcium silicate coating in a particle form (par. [0026]). Zhou fails to disclose a volume particle diameter Dv10 of 1 µm to 10 µm for the Tricalcium silicate coating particles.
Park teaches a heat-resistant separator for secondary batteries. The separator comprises a heat-
resistant layer formed thereon, and includes inorganic oxide particles (par. [0010]). The above inorganic
oxide particles may include tricalcium silicate (Ca 3 SiO 5) (par. [0014]) wherein the average particle
diameter of the above inorganic oxide particles may be 1 to 100 nm (par. [0015]). Therefore, through experimentation and teachings within the art Zhou could determine a workable volume particle diameter Dv10 range that helps promote lower internal resistance and an increase in electrical performance (par. [0026]). It would have been obvious to one of ordinary skill in the art before the effective filling date to add a volume particle diameter Dv10 of 1 µm to 10 µm to Zhou's coating particles.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective
variable, without producing any new or unexpected results, is within the ambit of a person of ordinary
skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou
(CN112310558A) as applied to claim 1 above, and further in view of Miyazaki (US20150340677A1).
As to claims 8-9, Zhou teaches the use of surfactants (additive) within the inorganic coating
slurry which employs anionic fluorocarbon surfactants (admixture) (par. [0014]) wherein 0.5-3
parts/wt% of the surfactant is used to form the coating (par. [0033]).
Miyazaki also teaches An energy storage device comprises a positive electrode, a negative
electrode, a separator arranged between the positive electrode and the negative electrode, and a
nonaqueous electrolyte (par. [0017]). The separator 430 featured includes a separator substrate layer
431 and an inorganic coating layer 432 (par. [0070]). The inorganic coating layer 432 is an inorganic layer
containing heat-resistant inorganic particles as heat-resistant particles. For example, the inorganic
particles may comprise one or more of SiO₂ (quartz sand) and fine particles of clays such as talc and
montmorillonite (par. [0073]).
It would have been obvious to one of ordinary skill in the art before the effective filling date to
add the separator coating materials of Miyazaki's invention to Zhou's separator as an additive to
promote heat resistance, prevent failure and maintain the strength of the separator (par. [0025],
[0073]).
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou
(CN112310558A) as applied to claim 1 above, and further in view of Kim (US20190288261A1).
As to claim 14, Zhou teaches an inorganic coated separator wound together with the positive
and negative electrode sheets, assembled, baked, injected with electrolyte and formed to form a
lithium-ion battery (par. [0072]). Zhou further discloses within the battery fabrication steps that the
electrolyte comprises an electrolyte salt lithium hexafluorophosphate (LiPF6) (par. [0055]). Zhou opts to
use ethylene carbonate (EC) as the solvent within the electrolyte as opposed to water (par. [0052]).
Kim teaches a separator including a polyolefin-based separator substrate configured to have a
porous structure, a first coating portion including a mixture of inorganic particles and a binder polymer,
and a second coating portion including a material for preventing the generation of hydrofluoric acid
(par. [0017]). The separator is impregnated with an electrolytic solution. To form the electrolytic
solution, 1,000 ppm of distilled water was poured into an electrolytic solution manufactured such that
the ratio of ethylene carbonate (EC) having 1M of lithium hexafluorophosphate (LiPF6) dissolved therein
(par. [0059]).
Therefore, ethylene carbonate (EC) and water can both be used as a solvent within an
electrolyte and can further increase the electrolytic impregnation rate.
It would have been obvious to one of ordinary skill in the art before the effective filling date to
add water to the electrolytic solution as taught by Kim to Zhou's electrolyte to help increase the
electrolytic impregnation rate (par. [0025]).
As to claims 15-16, modified Zhou teaches an inorganic coated separator wound together with
the positive and negative electrode sheets, assembled, baked, injected with electrolyte and formed to
form a lithium-ion battery (par. [0072]). Zhou also discloses the potential use of the fabricated lithium-
ion battery within electric vehicles (powered device) as Zhou's invention introduces a safer power
battery (par. [0004]).
Claims 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou as applied above and further in view of U.S> Patent Application Publication No. 2019/0207191 to Huang (“Huang”). As discussed above, Zhou discloses providing a coating of 3CaO * SiO2 on a separator to prevent unwanted shrinkage of the separator. Zhou is silent regarding a coating comprising the materials listed in claims 17-21. Nonetheless, other ceramic materials were known to be useful alone or in combination in coating separators to prevent unwanted shrinkage. Huang at paragraphs [0013] and [0021]. In particular, regarding claims 17, Huang discloses calcium fluoride as a known coating agent to minimize shrinking. Thus, the person of ordinary skill in the art at the time of invention would have had reason to provide calcium fluoride in addition to the calcium silicate of Hunag. Regarding claims 18, 19, and 21, Huang also discloses that aluminum oxide, in addition to calcium oxide and calcium fluoride, was a coating agent useful to minimize shrinking of the separator. Regarding claim 20, Huang also discloses barium oxide as a ceramic material useful in coatings to minimize shrinkage, thus its use alongside aluminum oxide and/or silicon oxide would have been obvious. Regarding the specific relative amounts of claims 17-21, the Office notes that both Zhou and Huang disclose the purpose for providing the recited coating material – to help minimize separator shrinkage under heat – with Zhou providing an additional benefit of gelation of water. Thus, the person of ordinary skill in the art at the time of invention has a reason for incorporation of the materials and thus fine tuning the amount of each component is considered to be nothing more than the product of routine experimentation to arrive at the disclosed benefits.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou in view of U.S. Patent Application Publication No. 2021/0057701 to Zhang (“Zhang”). Zhou is applied as described above. Zhou discloses lithium ion battery systems utilizing a calcium silicate coated heat resistant separator. Zhang discloses that sodium ion batteries, in addition to lithium ion batteries, can benefit from the use of a calcium silicate coated heat resistant separator. Zhang at paragraphs [0256], [0261] and [0279]. Thus, the person of ordinary skill in the art at the time of invention would have had reason to implement the teachings of Zhou regarding its separator in a battery comprising electrodes and electrolyte allowing functioning as a sodium-ion battery rather than a lithium-ion battery in order to arrive at a sodium ion battery with separator having excellent heat resistance.
Response to Arguments
Applicant's arguments filed December 24, 2025, have been fully considered but they are not persuasive. Applicant argues that Zhou is silent regarding the coating being provided in the partial area of the separator defined as extending from 0 to 10-20 cm from the winding start end of the separator. It appears Applicant bases this argument on an interpretation of the claim limitation that allows the coating to ONLY exist in this partial area. The Office disagrees with that interpretation. The Office finds the claim limitation to require coating to be present in the partial area of the separator defined by 0 to 10-20 cm from the winding start end of the separator, but does not preclude is presence elsewhere. Nor does the claim limitation appear to require the coating to be present throughout the entire region of 0 to 10-20 cm from the winding start end.
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.
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/WYATT P MCCONNELL/Examiner, Art Unit 1727
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