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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 3, 2026, has been entered.
Applicants’ submission includes an amendment, in which the Specification and claim 1 have been amended, claim 6 has been canceled, and new claim 14 has been added.
Claims 1-5 and 7-14 are presently pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was filed on June 16, 2023.
Withdrawn Rejection
The 35 U.S.C. 103 rejection of claims 1-13 as being unpatentable over Mio et al. (U. S. Patent Publication No. 2013/0040209, Applicants' submitted art) in view of Yamada et al. (U. S. Patent Publication No. 2015/0270522, Applicants' submitted art) and Saeki et al. (U.S. Patent Publication No. 2019/0067748), stated in the previous Final Rejection, has been withdrawn in view of Applicants’ amendment to claim 1.
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.
Claim 5 is 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.
Claim 5 is indefinite for reciting the limitation “wherein the substrate layer has a porosity of 48% or more”, which, as an open-ended percentage range, conflicts with the limitation “substrate layer has a porosity of 44% or more and 60% or less”, as is now recited in claim 1 (from which claim 5 depends).
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1, 3-5, and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Mio et al. (U. S. Patent Publication No. 2013/0040209, Applicants' submitted art) in view of Saeki et al. (U.S. Patent Publication No. 2019/0067748).
Regarding claims 1, 3, and 11, Mio et al. teach a lithium secondary battery (“nonaqueous electrolyte energy storage device”; “lithium ion secondary battery”) comprising a non-aqueous electrolyte solution using a cyclic sulfone compound, represented by:
PNG
media_image1.png
159
250
media_image1.png
Greyscale
,
where R1, R2, R3, and R4 can each independently represent hydrogen. See paragraph [0079] of Mio et al. Exemplary cyclic sulfone compounds include 2,4-dimethyl-1,3-dithietane-1,1,3,3-tetraoxide, 2,4-diethyl-1,3-dithietane-1,1,3,3-tetraoxide, 2,4-dipropyl-1,3-dithietane-1,1,3,3-tetraoxide, and 2,4-dibutyl-1,3-dithietane-1,1,3,3-tetraoxide (“2,4-dialkyl-1,3-dithietane-1,1,3,3-tetraoxide”). See Synthesis Examples 1, 3, 17, and 18 of Mio et al.
Further regarding claim 1, and also regarding claims 4, 7, and 8, Mio et al. teach that the aforementioned nonaqueous electrolyte solution additionally comprises ethylene carbonate as a non-aqueous solvent and LiPF6 as an electrolyte, along with the aforementioned cyclic sulfone compound, wherein the cyclic sulfone compound is present in the non-aqueous electrolyte solution in an amount of 0.5% by mass. See paragraphs [0354]-[0357] of Mio et al., as well as Example 3 in Table 1, Example 18 in Table 2, and Examples 33-35 in Table 3.
Further regarding claim 1, and also regarding claims 9 and 10, Mio et al. teach a lithium secondary battery comprising a negative electrode, a positive electrode, the aforementioned non-aqueous solution, and a separator provided between the negative electrode and the positive electrode. The negative electrode comprises a negative electrode active material, examples of which include lithium metal, a graphite material (natural or artificial graphite); the positive electrode comprises a positive electrode active material, examples of which include LiCoO2, LiMnO2, LiMn2O4, LiNiO2, LiNixCo(1-x)O2 (0 < x < 1), and LiFePO4 (“lithium-transition metal composite oxides…”; “spinel-type crystal structure”; “polyanion compounds”), and examples of the separator include a porous film and a polymer electrolyte, wherein the porous film may be a porous polymer film, e.g., including polyolefins and polyesters, and also a multilayer film of a porous polyethylene film and a porous polypropylene film (“separator including a porous substrate layer”). See paragraphs [0224]-[0240] of Mio et al.
Regarding claims 12 and 13, Mio et al. teach that the aforementioned lithium secondary battery may be employed in a variety of applications, including notebook and mobile computers, mobile telephones (“electronic devices”), and automobiles. See paragraph [0248] of Mio et al.
Mio et al. do not teach or suggest the limitations of Applicants’ claims regarding (a) the substrate layer being a microporous membrane and having a porosity of (i) 44% or more and 60% or less, (ii) 48% or more, or (iii) 44% or more and 55% or less, as respectively recited in claims 1, 5, and 14, and (b) the separator exhibiting an air permeability of 50 sec/100 cm3 or more and 300 sec/100 cm3 or less, as recited in claim 1.
Regarding claims 1, 5, and 14, Saeki et al. teach a nonaqueous electrolyte battery comprising a positive electrode, a negative electrode, a separator, and a nonaqueous electrolytic solution, wherein the separator may be in the form of a microporous membrane, or a nonwoven fabric composed of a material, which is stable in a nonaqueous electrolyte in a battery and stable electrically, such as a polyolefin (e.g. polyethylene (PE), polypropylene (PP)), polyester, polyimide, polyamide, and polyurethane. Additionally, the separator desirably exhibits a porosity of 30% or more and 80% or less, and also exhibits an air permeability ranging from 10 sec/100 cc (sec/100 cm3) to 500 sec/100 cc, more preferably from 20 sec/100 cc to 450 sec/100 cc, and further preferably from 30 sec/100 cc to 450 sec/100 cc. See paragraphs [0023], [0124], [0161], and [0164] of Saeki et al.
It is noted that the air permeability ranges disclosed in Saeki et al. encompass the range of 50 sec/100 cm3 or more and sec/100 cm3 or less recited in Applicants' claim 1, and that the porosity percentage range disclosed in Saeki et al. encompasses the porosities of the substrate layer recited in Applicants’ claims 1, 5, and 14.
"A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prime facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also MPEP 2144.05(1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants' invention to modify the lithium ion secondary battery ("nonaqueous electrolyte energy storage device") disclosed in Mio et al. by incorporating therein a separator having an air permeability of, for example, of 30 sec/100 cc (sec/100 cm3) to 450 sec/100 cc, as suggested by Saeki et al., in an endeavor to secure the holding amount of a nonaqueous electrolyte, and to improve the ion permeability, to secure the strength of the separator and the prevention of internal short circuit thereof, to reduce the self-discharge of the nonaqueous electrolyte battery, and to obtain better charge and discharge characteristics of said battery. See paragraphs [0161] and [0164] of Saeki et al.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mio et al. (U. S. Patent Publication No. 2013/0040209, Applicants' submitted art) in view of Saeki et al. (U.S. Patent Publication No. 2019/0067748) as applied to claim 1 above, and further in view of Yamada et al. (U. S. Patent Publication No. 2015/0270522, Applicants' submitted art).
Mio et al. and Saeki et al. are relied upon for their combined teachings with respect to claim 1, as discussed above. However, neither Mio et al. nor Saeki et al. teach or suggest the limitations of claim 2 regarding the presence of an inorganic layer layered on the substrate layer.
Regarding claim 2, Yamada et al. teach a separator for an electrochemical element, e.g., a lithium ion secondary battery (paragraph [0120]), comprising a substrate and inorganic particles on the outer and inner surfaces thereof (paragraphs [0060], [0172]; "inorganic layer layered on the substrate layer"). Said substrate has a porosity of 55% or more, and preferably 58% or more, from the viewpoint of maintenance of ion permeability and of the discharge capacity at a high rate (paragraph [0062]), and the separator has a porosity of 45 to 70% (paragraph [0118]).
The separator includes a nonwoven fabric membrane comprising sheath-core composite fibers in which a sheath portion comprises a polyolefin-based resin and a core portion comprises a polyester-based resin. See paragraph [0137] of Yamada et al.
Note that Mio et al., in paragraph [0239] therein, teaches the feasibility in the separator comprising a porous polymer film, where polyolefins and polyesters are disclosed as exemplary polymers for said porous polymer film.
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants' invention to modify the combined teachings of Mio et al. in view of Saeki et al. by incorporating therein the separator disclosed by Yamada et al., in an endeavor to obtain a lithium ion secondary battery ("nonaqueous electrolyte energy storage device") exhibiting a high discharge capacity rate and suppressed short-circuiting, as provided by the separator. See paragraph [0022] of Yamada et al.
Response to Arguments
In response to Applicants’ argument that Yamada et al. fail to teach or suggest that the substrate layer is a microporous membrane having a porosity of 44% or more and 60% or less, or of a porosity of 44% or more and 55% or less, the Examiner respectfully submits that, as stated above, the rejection of Applicants’ claims as being obvious over Mio et al. in view of Yamada et al. and Saeki et al. has been withdrawn. However, as also discussed in the above rejection of Mio et al. in view of Saeki et al., the combined teachings of Mio et al. and Saeki et al. are considered to read upon Applicants’ claims in their present form regarding the aforementioned substrate layer. Saeki et al. teach a substrate layer that is a microporous membrane exhibiting both a porosity and an air permeability respectively reading upon that instantly claimed.
In response to Applicants’ arguments regarding the advantages of the claimed invention obtained from the presence of a cyclic disulfone compound in the nonaqueous electrolyte, the porosity of the substrate layer, and the air permeability of the substrate layer being unexpected from the cited references of record, the Examiner respectfully submits that, as also stated above, Saeki et al. teach a separator having both a porosity and an air permeability comparable to that respectively claimed, and further teach benefits stemming from both the porosity and the air permeability of the separator (paragraphs [0161] and [0164] of Saeki et al.) that provide motivation to combine the teachings of Saeki et al. with Mio et al., which teaches a cyclic sulfone compound reading upon that recited in Applicants’ claims.
Although the benefits stemming from the porosity and air permeability of the separator disclosed in Saeki et al. appear different from Applicants’ unexpected suppression of direct-current resistance associated with a charge-discharge cycle, due to the claimed specific combination of cyclic disulfone compound, porosity of the separator, and air permeability of the separator, it is considered that because the combined teachings of Mio et al. and Saeki et al. read upon Applicants’ claims in their present form, the skilled artisan would reasonably expect the combined teachings of these references to result in the suppression of direct-current resistance associated with a charge-discharge cycle in a manner comparable to that argued by Applicants, absent the showing of convincing evidence to the contrary.
“The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005); In re Lintner, 458 F.2d 1013, 173 USPQ 560. See also MPEP 2144 (IV).
For these reasons, Applicants’ arguments traversing the cited references of record have been considered, but are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung, can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Patricia L. Hailey/Primary Examiner, Art Unit 1732
Prosecution Insights