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 .
Status of Claims
Claims 1-5 are pending in the current application.
Claim 1 is amended in the current application.
Claims 4-5 are newly added in the current application.
Response to Arguments
Applicant's arguments filed June 26, 2026 in response to the Non-Final Rejection dated May 8, 2026 have been entered and fully considered, respectively.
Applicant’s requests withdrawal of the rejections under 35 U.S.C. 112(b) set forth in the previous office action.
The rejection under 35 U.S.C. 112(b) set forth in the previous office action is withdrawn due to the present claim amendments.
Applicant argues that neither Ido nor Toray discloses or suggests a combination of a bimodal particle size distribution of negative-electrode active material particles and a surface roughness of a separator.
This is not persuasive for the following reasons. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Ido and Toray are not relied upon alone to anticipate all of the features of the presently claimed invention. Ido is combined with Toray to establish a case of obviousness over the claimed invention. Although the purpose of Ido is to reduce the charge-transfer resistance at low temperatures by controlling the particle size distribution of a carbon material, Ido discloses a carbon material comprising a particle diameter distribution that is bimodal (para. [0047]). The particle size distribution is analyzed on a continuous distribution curve with the horizontal axis as the particle diameter and the vertical axis as the volume-based frequency (para. [0047]). The first peak is present in a first range of 0.01 microns or more to less than 1 micron in particle diameter (para. [0011]) while the second peak is present in a second range of 1 micron or more to 10 microns or less in particle diameter (para. [0011]). Ido’s particle diameter range for the first peak and second peak overlaps the claimed ratio of 7.0 microns to 9.0 microns and 0.8 microns to 1 micron for the first and second peak respectively, and therefore, renders obvious the claimed range (MPEP 2144.05). The abundance ratio (X) is defined by a mathematical formula (X=A/B) in which (A) represents that maximum frequency of appearance of the carbon material (a), (B) represents the maximum frequency of appearance of the carbon material (b), (a) represents the carbon material included in the first range, and (b) represents the carbon material included in the second range (para. [0012]-0013]). (X) is in a range of 0.1 to 0.9 (para. [0012]) which overlaps with, and thereby renders prima facie obvious the claimed range of 0.42 to 0.71 as in claim 1 and the claimed range of 0.42 to 0.61 as of claim 2 (MPEP 2144.05).
Regarding the discussion of Toray, while the surface roughness disclosed in Toray is set so that the protrusion of thermoplastic resin granules from the surface of an inorganic particle layer is not excessively reduced and sufficient adhesiveness is obtained, and that the purpose of Toray is to provide a separator for a secondary battery that can effectively reduce environmental burden and cost while maintaining excellent adhesiveness, Toray discloses a separator for a secondary battery wherein the porous layer has a surface roughness of 0.4 microns or more and 15 microns or less (para. [0014]) which overlaps with, and thereby renders prima facia obvious the claimed range of 1.54 microns or greater and 5.2 microns or less (MPEP 2144.05). Therefore, in view of the combination of references, it would have been obvious, before the effective filing date of the claimed invention, to have modified the separator of Ido to have the surface roughness in a range of 0.4 to 15 microns to prevent short circuit, increase stability, and improve adhesiveness (Toray [0005]) (MPEP 2143).
Applicant argues that the claimed invention as described in reference to FIG. 5 of the specification as originally filed achieves a reduction in battery resistance while suppressing shortening of battery life which are features that are not taught by the references.
This is not persuasive for the following reasons. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPED 716.02 (d). The results shown in FIG. 5 pertain to the relationship of the DC resistance to the surface roughness of the separator and a peak ratio range of 0.12 to 0.71; however, the present claims do not require any features that pertain to the DC resistance. Moreover, the surface roughness of the separator ranges from 1.07 to 3.27 microns in the comparative example, examples 1-4, and reference examples 1-3; however, the claims broadly recite a surface roughness range from 1.54 to 5.2 microns. Therefore, the claims are not sufficiently commensurate in scope with the data provided in FIG. 5. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal of evidence of nonobviousness fails to outweigh the evidence of obviousness.
Additionally, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Moreover, while Toray’s surface roughens is based on their specific porous layer structure and thermoplastic resin granule structure, Toray discloses the surface roughness of the separator being in a range of 0.4 microns or more and 15 microns or less to increase adhesiveness in order increase the capacity and output of lithium-ion batteries (Toray, para. [0005]). Therefore, this reference in combination with the other applied prior art establishes a case of obviousness over the presently claimed invention.
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.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ido et al. (US 2015/0270071 A1, "Ido"), in view of Toray et al. (WO 2020/195988 A1, "Toray").
Regarding claims 1-2 and 4-5, Ido discloses an electrical storage device that is a lithium-ion secondary battery (para. [0064]). The lithium-ion secondary battery includes LiPF6, a counter electrode, a negative foil electrode, and a polyethylene separator (para. [0080-0081]) which respectively corresponds to the claimed non-aqueous electrolyte, positive electrode, negative electrode, and polyethylene resin separator.
The negative electrode comprises a carbon material and a copper foil which respectively correspond to the claimed active material layer and current collector [FIG. 1A]. The carbon material comprises a particle diameter distribution that is bimodal meaning, the carbon material can be broadly divided into two kinds, a carbon material with a larger particle diameter (a), and a carbon material with a smaller particle diameter (b) (para. [0047]). Bimodal also means that when a particle diameter distribution is analyzed, at least two peak portions are found (para. [0044]). This equates to the active material layer including active material particles of different particles sizes formed from carbon as claimed.
Ido further discloses a volume-base distribution curve with a horizontal axis as the particle size and a vertical axis as the volume-based frequency (para. [0047]) wherein a maximum value can be identified that is equivalent to a particle diameter corresponding to a peak (para. [0047]). The first peak is present in a first range of 0.01 microns or more to less than 1 micron in particle diameter (para. [0011]) while the second peak is present in a second range of 1 micron or more to 10 microns or less in particle diameter (para. [0011]). Ido's particle diameter range for the first peak and second peak overlaps the claimed ratio of 7.0 microns to 9.0 microns and 0.8 microns to 1 micron for the first and second peak respectively, and therefore, renders obvious the claimed range (MPEP 2144.05).
The carbon material is further characterized in that the volume average particle diameter distribution has at least a second peak with the highest frequency appearance, and a first peak located on the side of a particle diameter smaller than that of the second peak (para. [0010]).
The abundance ratio (X) is defined by a mathematical formula (X=A/B) in which (A) represents that maximum frequency of appearance of the carbon material (a), (B) represents the maximum frequency of appearance of the carbon material (b), (a) represents the carbon material included in the first range, and (b) represents the carbon material included in the second range (para. [0012]-0013]). (X) is in a range of 0.1 to 0.9 (para. [0012]) which overlaps with, and thereby renders prima facie obvious the claimed range of 0.42 to 0.71 as recited in claim 1 and the claimed range of 0.42 to 0.61 as recited in claim 2 (MPEP 2144.05).
Ido is silent regarding the separator being a porous synthetic resin separator and the separator having a surface roughness of 1.54 microns or greater as recited in claim 1 of the claimed invention, a surface roughness of 2.29 microns or greater as recited in claim 2 of the claimed invention, a surface roughness of 5.2 microns or less as recited in claim 4 of the claimed invention, and a surface roughness of 3.27 microns or less as recited in claim 5 of the claimed invention.
Toray discloses a secondary battery including a polyethylene separator (para. [0024]), a non-aqueous electrolyte, a positive electrode, and a negative electrode where the negative electrode comprises an active material laminated on a current collector (para. [0073]. The separator comprises a porous layer that is laminated on at least one side of a porous substrate (para. [0017]). The active material may include carbonaceous material (para. [0075]). Toray claims a separator for a secondary battery wherein the porous layer has a surface roughness of 0.4 microns or more and 15 microns or less (para. [0014]) which overlaps with, and thereby renders prima facia obvious the claimed range of 1.54 microns or greater as recited in claim 1, the claimed range of 2.29 microns or greater as recited in claim 2, the claimed ranges of 5.2 microns or less as recited in claim 4, and the claimed range of 3.27 or less as recited in claim 5 (MPEP 2144.05).
Ido and Toray each constitute prior art which is analogous to the claimed invention - a secondary battery. Ido discloses the claimed invention except for the separator of the secondary battery having a surface roughness of 1.54 microns or greater as in claim 1 and 2.29 microns or greater as in claim 2. It would have been obvious to one having ordinary skill in the at the time the invention was made to have modified the separator in the lithium-ion secondary battery of Ido to be porous to achieve adhesion on the positive and negative electrodes (Toray, para. [0068]) and for the separator to have a surface roughness of 1.54 microns or greater of and of 2.29 microns or greater to prevent a short circuit, increase stability, and improve adhesiveness (Toray, para. [0005]), (MPEP 2143)).
Regarding claim 3, Ido in view of Toray discloses a lithium-ion secondary battery as disclosed above.
Ido further discloses the claimed invention except a battery case that houses the electrode body and the non-aqueous electrolyte
Toray discloses a secondary battery that is sealed in an exterior material (para. [0077]).
Ido and Toray each constitute prior art which is analogous to the claimed invention - a secondary battery. It would have been further obvious to one having ordinary skill in the art at the time the invention was made to have modified the lithium-ion secondary battery of Ido to have a battery case accommodating the electrode body and the non-aqueous electrolyte to ensure dimensional stability (Toray, para. [0077]).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to the applicant’s disclosure.
Costantino et al. (US 2012/0081838 A1) teaches an electric double layer capacitor comprising a positive and negative electrode that both comprise a carbon material, a separator, and an electrolyte [0107-0111]. The positive and negative electrodes are separated by the separator [0112]. The particle size distribution ranges overlap with the claimed ranges [0116].
Conclusion
THIS ACTION IS MADE FINAL. Applicants are 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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/SANDRA BROWN/Examiner, Art Unit 1782
/AARON AUSTIN/Supervisory Patent Examiner, Art Unit 1782
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