DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Election/Restrictions
Claims 7 – 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 15, 2026.
Applicant's election with traverse of Group I (claims 1 – 6) in the reply filed on June 15, 2026 is acknowledged. The traversal is on the ground(s) that the National Stage case is not subject to US practice and that Unity of Invention is necessarily present because the International Office said so. This is not found persuasive because (1), the Examiner never applied US practice so the first argument is moot and (2) unity of invention requires that the invention makes a contribution over the prior art; i.e. is not anticipated nor obvious (in US parlance) when viewed versus the prior art. X and Y references are a prima facie showing that the invention is either or both. See also the 102 and 103 rejections set forth below, which further support the position that Unity of Invention is not maintained. The requirement is still deemed proper and is therefore made FINAL.
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.
(a)(2) The claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 – 3 and 6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lee et al. (U.S. Patent App. No. 2025/0219162 A1).
The Examiner notes that Lee et al. qualifies as prior art with an effective filing date of April 1, 2022, which is prior art because the presently claimed foreign priority document has not been perfected by the filing of a certified English language translation.
Regarding claim 1, Lee et al. disclose a cell for a secondary battery (Title; Abstract; Figures), comprising: at least one negative electrode; and at least one positive electrode, wherein each negative electrode and positive electrode are stacked alternately with a separator interposed therebetween (ibid: especially Figure 3 and relevant disclosure thereto), wherein at least one separator comprises a plurality of coated portions on at least one surface of the separator spaced apart from one another (Figure 1 and Paragraph 0054), and wherein each coated portion comprises a gas adsorbent (Abstract and Paragraphs 0026 and 0038 – 0042) and an adhesive binder (Paragraphs 0035, 0036 and 0046).
Regarding claim 2, these limitations are met for one of two reasons. First, while Lee et al. prefers the MOF additive for gas absorption, Lee et al. explicitly notes that zeolites are also gas absorbers and, while less effective than MOF, the Examiner notes that this call out would clearly teach to a person of ordinary skill in the art that zeolites could be used, should the trade-off in cost, availability, etc. necessitate not using MOFs. Second, the explicit teaching of using porous metal oxides1 or carbon-based compounds in the citations above read on the claimed “gas absorbent” because the nomenclature “gas absorbent” does not convey any required, specific property characteristic. Applicants’ disclosure provides sufficient evidence that the various metal oxides, silica, etc. recited as additional additives by Lee et al. would necessarily meet any relative aspects of the term ‘gas absorbent’. As such, such a disclosure of adding these particles necessarily meets the claimed limitations absent a specific property requirement attached to the nomenclature ‘gas absorbent’ (i.e. a particle that absorbs 0.00000000001% of the gas is still a ‘gas absorbent’).
Regarding claim 3, Lee et al. meets the claimed binder limitations (Paragraphs 0035, 0036 and 0046).
Regarding claim 6, Lee et al. disclose patterns meeting the claimed limitations (Figure 1).
Claims 1 – 3 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Tsukagoshi et al. (U.S. Patent App. No. 2022/0052420 A1).
Regarding claim 1, Tsukagoshi et al. disclose a cell for a secondary battery (Title; Abstract; Figures), comprising: at least one negative electrode; and at least one positive electrode, wherein each negative electrode and positive electrode are stacked alternately with a separator interposed therebetween (Figure 2 and Paragraphs 0015 - 0019), wherein at least one separator comprises a plurality of coated portions on at least one surface of the separator spaced apart from one another (Figures 2 – 4; Abstract; and Paragraphs 0021 - 0026), and wherein each coated portion comprises a gas adsorbent (carbon fibers, porous metal oxide or porous carbonaceous material: Paragraph 0031)2 and an adhesive binder (at least Paragraph 0032).
Regarding claim 2, these limitations are deemed met given the explicit teaching of using porous metal oxides3 or carbon-based compounds in the citations above, which are taken to read on the claimed “gas absorbent” because the nomenclature “gas absorbent” does not convey any required, specific property characteristic. Applicants’ disclosure provides sufficient evidence that the various metal oxides, silica, etc. recited as additional additives by Tsukagoshi et al. would necessarily meet any relative aspects of the term ‘gas absorbent’. As such, such a disclosure of adding these particles necessarily meets the claimed limitations absent a specific property requirement attached to the nomenclature ‘gas absorbent’ (i.e. a particle that absorbs 0.00000000001% of the gas is still a ‘gas absorbent’).
Regarding claim 3, Tsukagoshi et al. meets the claimed binder limitations (Paragraph 0032).
Claims 1 – 3 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Saeki (U.S. Patent App. No. 2021/0249735 A1).
Regarding claim 1, Saeki disclose a cell for a secondary battery (Title; Abstract; Figures), comprising: at least one negative electrode; and at least one positive electrode, wherein each negative electrode and positive electrode are stacked alternately with a separator interposed therebetween (at least Paragraphs 0146 - 0157), wherein at least one separator comprises a plurality of coated portions on at least one surface of the separator spaced apart from one another (Figures; Abstract; and Paragraphs 0082 - 0121), and wherein each coated portion comprises a gas adsorbent (carbon fibers, silica, porous metal oxide or porous carbonaceous material: Paragraph 0101)4 and an adhesive binder (at least Paragraph 0102).
Regarding claim 2, these limitations are deemed met given the explicit teaching of using porous metal oxides5 or carbon-based compounds in the citations above, which are taken to read on the claimed “gas absorbent” because the nomenclature “gas absorbent” does not convey any required, specific property characteristic. Applicants’ disclosure provides sufficient evidence that the various metal oxides, silica, etc. recited as additional additives by Saeki would necessarily meet any relative aspects of the term ‘gas absorbent’. As such, such a disclosure of adding these particles necessarily meets the claimed limitations absent a specific property requirement attached to the nomenclature ‘gas absorbent’ (i.e. a particle that absorbs 0.00000000001% of the gas is still a ‘gas absorbent’).
Regarding claim 3, Saeki meets the claimed binder limitations (Paragraph 0102).
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 4 – 6 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lee et al. as applied above.
Lee et al. is relied upon as described above.
While Lee et al. provides some guidance to the patterning (Paragraph 0054), Lee et al. fails to explicitly require any of the aspects of claims 4, 5 or 6.
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the type of pattern to apply to the separator surface through routine experimentation, especially given the teaching in the primary reference that patterning is a known and taught way to apply the coating material. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Lee et al. to meet the limitations of claim 4, claim 5 and/or claim 6 as taught by Lee et al., since this is merely routine optimization of the specific pattern shape and layout.
Claims 4 – 6 are rejected under 35 U.S.C. 103(a) as being unpatentable over Tsukagoshi et al. as applied above.
Tsukagoshi et al. is relied upon as described above.
While Tsukagoshi et al. provides some guidance to the patterning (Paragraphs 0027 - 0029), Tsukagoshi et al. fails to explicitly require any of the aspects of claims 4, 5 or 6.
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the type of pattern to apply to the separator surface through routine experimentation, especially given the teaching in the primary reference that patterning is a known and taught way to apply the coating material. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Tsukagoshi et al. to meet the limitations of claim 4, claim 5 and/or claim 6 as taught by Tsukagoshi et al., since this is merely routine optimization of the specific pattern shape and layout.
Claims 4 – 6 are rejected under 35 U.S.C. 103(a) as being unpatentable over Saeki as applied above.
Saeki is relied upon as described above.
While Saeki provides some guidance to the patterning (Paragraphs 0086 - 0087), Saeki fails to explicitly require any of the aspects of claims 4, 5 or 6.
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the type of pattern to apply to the separator surface through routine experimentation, especially given the teaching in the primary reference that patterning is a known and taught way to apply the coating material. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Saeki to meet the limitations of claim 4, claim 5 and/or claim 6 as taught by Saeki, since this is merely routine optimization of the specific pattern shape and layout.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Of specific reference, attention should be called to Tanimoto et al. (‘221 A1), which discloses that metal oxides and other compounds (zeolites, etc.) are art recognized as gas absorbent agents (see Paragraph 0050 and Table 1).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
July 29, 2026
1 The Examiner notes that absent a specific magnitude of ‘porosity’ or ‘absorption’, almost all particles can be taken as ‘porous’ to some extent, especially oxides which can react with moisture, etc. and ‘absorb’ them.
2 Similar to the reasoning set forth in considering claim 2, the specific recitation of the metal oxide and carbon-containing compounds reads on the nomenclature ‘gas absorbent’ because there is no magnitude of what is meant by this nomenclature.
3 The Examiner notes that absent a specific magnitude of ‘porosity’ or ‘absorption’, almost all particles can be taken as ‘porous’ to some extent, especially oxides which can react with moisture, etc. and ‘absorb’ them.
4 Similar to the reasoning set forth in considering claim 2, the specific recitation of the metal oxide and carbon-containing compounds reads on the nomenclature ‘gas absorbent’ because there is no magnitude of what is meant by this nomenclature.
5 The Examiner notes that absent a specific magnitude of ‘porosity’ or ‘absorption’, almost all particles can be taken as ‘porous’ to some extent, especially oxides which can react with moisture, etc. and ‘absorb’ them.
Prosecution Insights