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 .
Response to Amendment
The amendment received 6/23/2026 (“Amendment”) has been entered.
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant argues Lee's active layer is not an ordinary coating film. Lee teaches that the separator's function depends on preserving a porous inorganic-particle/binder architecture in which pore size, porosity, inorganic-particle size, inorganic-particle content, and the mixing ratio of inorganic particles to binder polymer affect separator performance. Lee states that if the inorganic-particle content is too low, the binder polymer content is sufficiently high to decrease interstitial volumes, pore size, and porosity, thereby degrading battery quality. Lee also states that if the inorganic-particle content is too high, the polymer content is too low to provide sufficient adhesion among inorganic particles, thereby degrading mechanical properties. Thus, Lee teaches that the binder polymer is not merely an interchangeable film-forming component, but a component selected and proportioned to fix inorganic particles while preserving the pore architecture required for electrolyte uptake and ion transport. Wood, by contrast, is broadly directed to aqueous fluoropolymer hybrid compositions made by seeded emulsion polymerization and having improved film-formation properties. Wood teaches such fluoropolymer hybrid coating compositions, that teaching does not provide a reasoned basis to substitute Wood's film-forming composition for the binder architecture of Lee's porous battery separator. Remarks p. 5-7. Examiner has carefully considered the arguments submitted by Applicant regarding the asserted combination of Wood and Lee and disagrees with the Applicant. The Examiner notes that the prior art does not teach away from the proposed combination. Nothing in Wood or Lee disparages, discourages, or leads a skilled artisan in a direction contrary to combining their teachings, nor would such a combination destroy the intended purpose of either disclosure. Because the combined references collectively teach every limitation of the claimed invention, and doing so would have been an obvious design choice to achieve the predictable, claimed results, the art remains fully valid. Specifically, Applicant argues- the separator's function depends on preserving a porous inorganic-particle/binder architecture in which pore size, porosity, inorganic-particle size, inorganic-particle content, and the mixing ratio of inorganic particles to binder polymer affect separator performance. In response to this argument, Examiner notes, the claims do not require any of these parameters; specifically the claimed limitations do not require specific pore size, porosity, particle size and content. It is noted, claims 3, 6, and 8 have limitations directed to weight % and ratio, however, the ranges appear very broad and are considered to be obvious to a skilled artisan to achieve these parameters in view of Wood and Lee. The specification also does not illustrate that the claimed ranges recited in the claims achieve superior results, thus the Examiner maintains the rejection of the claims over the combination of Wood and Lee.
In response to applicant's argument that Lee identifies the relevant performance concerns as maintaining a pore structure that permits electrolyte infiltration and lithium-ion movement, while preserving adhesion and mechanical integrity in the inorganic-particle active layer. Wood's broadly disclosed improvements-low MFFT, low VOC, coating stability, weatherability, dirt resistance, and film formation-do not address whether Wood's composition would preserve Lee's separator pore structure or improve Lee's electrolyte uptake and lithium-ion conductivity, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Remarks p. 5-7 Examiner disagrees. This argument misconstrues the standard for patentability under 35 U.S.C. 103, prior art references do not need to contain an explicit instruction or bodily incorporation teaching to be combined. Rather, the proper inquiry is whether the combined teachings of the prior art—viewed through the lens of a person having ordinary skill in the art—render the claimed invention obvious by addressing known limitations and technical goals. Because the combined references disclose every claimed limitation and reflect known, obvious design choices, the rejection under 35 U.S.C. 103 is maintained.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20090111025A1 (Lee) further in view of US20110118403A1 (Wood).
Regarding claim 1, Lee teaches an organic/inorganic composite porous separator [abs], a monolayer coating for a separator, said coating comprising a hybrid fluoro-acrylic polymer resin and inorganic particles [0018, 0033, 0038], said hybrid fluoro- acrylic polymer resin comprising a fluoropolymer and an acrylic polymer, the fluoropolymer being chosen from the group consisting of polyvinylidene fluoride homopolymers and copolymers based on polyvinylidene fluoride [0047]. Lee is silent with respect at least one comonomer compatible with the vinylidene fluoride. Wood discloses a fluoropolymer hybrid composition and film that is analogous with the instant invention and to Lee as being related to fluoropolymer films. Wood discloses wherein the fluoropolymer hybrid composition is formed by polymerizing at least two different monomers compositions in the presences of a fluoropolymer seed dispersion wherein the monomers can be an acrylic based monomer and can form a crosslinking effect [0026,0029-0031,0036] fluoropolymer can be produced through conventional emulsion polymerization and can form a crosslinking effect). Wood discloses wherein the fluoropolymer can be vinylidene fluoride [0023]. Wood discloses wherein the fluoropolymer based coating and films are used for their outstanding chemical resistance, formability, resistance properties and weatherability properties ([0002]).
Therefore, it would have been obvious in view of a skilled artisan to substitute the adhesive fluoropolymer film of Lee for the adhesive fluoropolymer film of Wood as a simple substitution of one fluoropolymer film for another with reasonable expectation of success as a Lee already discloses wherein a fluoropolymer film is applied to the separator thus to substitute the fluoropolymer film of Lee for the fluoropolymer of Wood is expected to function similarly without any expectation of errors. A skilled artis an would have been motivated to make the
substitution as the composite material of Wood is analogous with the composite material of Lee as both disclose fluoropolymer films that can have acrylic monomer units, thus the modification is a simple substitution of one fluoropolymer composite film for another and would render all the claim limitations of claim 1 as obvious. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. V. Teleflex Inc., 550 U.S. , 82 USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143, B.).
Regarding claim 2, modified Lee discloses wherein said comonomers compatible with vinylidene fluoride are chosen from the group consisting of: vinyl fluoride, tetrafluoroethylene, hexafluoropropylene [Wood-0023].
Regarding claim 3, modified Lee teaches wherein said fluoropolymer is a polyvinylidene fluoride-hexafluoropropylene copolymer having a percentage by weight of hexafluoropropylene monomer units of from 2% to 23%, relative to the weight of the copolymer [0023-wood].
Regarding claim 4, modified Lee teaches wherein said fluoropolymer comprises monomer units bearing at least one of the following functions: carboxylic acid, carboxylic acid anhydride, carboxylic acid ester, epoxy groups, amide, hydroxyl, carbonyl, mercapto, sulfide, oxazoline, phenolic, ester, ether, siloxane, sulfonic, sulfuric, phosphoric or phosphonic [Wood-0032].
Regarding claim 5, modified Lee teaches wherein the acrylic polymer part contains a monomer chosen from the group consisting of methyl acrylate, ethyl acrylate, propyl acrylate, n-butyl acrylate, isobutyl acrylate, t-butyl acrylate, n-dodecyl acrylate, amyl acrylate, isoamyl acrylate, hexyl acrylate, 2-ethylhexyl acrylate, diacetone acrylamide, lauryl acrylate, n-octyl acrylate, and combinations thereof [Wood- 0031-033].
Regarding claim 6, Lee in view of Wood teaches in the hybrid fluoro-acrylic polymer resin, the fluoropolymer acrylic polymer mass ratio varies from 95/5 to 5/95. Wood discloses wherein the fluoropolymer seed comprises a vinylidene fluoride polymer comprising at least 50 weight percent VDF (Wood [0023] fluoropolymers can be used as the seed include vinylidene fluoride and can be provided between 50 to 100 parts by weight of the vinylidene fluoride homopolymer). Wood further teaches in para 0036-0037- the first and second monomer compositions, third, fourth or more monomer compositions may be added in a sequenced manner. One or more of the vinyl monomer compositions may also contain functional monomers capable of undergoing subsequent reactions to effect crosslinking or post-synthesis modification reactions. One or more of the monomer compositions may also contain fluorine-containing monomers such as fluoro(meth)acrylates or trifluoroethyl methacrylate for improved chemical resistance. The total quantity of monomer mixture should be 20 to 300 parts by weight, preferably 40 to 200, most preferably 60 to 150, per 100 parts by weight of fluoropolymer. If the total monomer quantity is less than 20 parts by weight per 100 parts by weight of seed particles, many properties are compromised including good adhesion to substrates, good mechanical properties, and the ability to form films at low temperatures. When the total monomer quantity is more than 100 parts by weight per 100 parts by weight of seed particles, and especially more than 200 parts by weight, the weathering resistance of the final material are decreased, as well as some other beneficial properties such as stain resistance.
Regarding claim 7, Lee teaches wherein said inorganic particles are chosen from the group consisting of: BaTiO3, Pb(Zr,Ti)03 , hafnia (HfO (HfO2) , or mixtures thereof [0038-0040].
Regarding claim 8, Lee teaches the coating comprising from 50 to 99 percent by weight of inorganic particles [0043].
Regarding claim 9, Lee teaches wherein the ratio of the solids of the hybrid fluoro-acrylic polymer to the inorganic particles is from 0.5 to 30 parts by weight of solids of the hybrid fluoro-acrylic polymer per 70 to 99.5 parts by weight of inorganic particles [0043].
Regarding claim 10, Lee teaches wherein the thickness of said coating over at least one side of the separator is from 0.5 to 10 micrometres [0051].
Regarding claim 11, Lee teaches a separator for an electrochemical device, said device selected from the group consisting of chosen from the group: Li-ion battery, capacitor, electrical double-layer capacitor, and membrane-electrode assembly (MEA) for a fuel cell, said separator comprising a porous support and at least one monolayer coating according to claim 1 [0002-0003].
Regarding claim 12, Lee teaches a process for preparing a coated separator, comprising the following steps: a) coating, via the aqueous route, at least one side of the separator with a monolayer coating according to claim 1 by dip coating [0065] , wherein the hybrid fluoro-acrylic polymer resin and inorganic particles are in an aqueous medium during coating, b) drying said coated separator [0064] at a temperature of from 25 to 85°C, to form a dry adhesive layer on the separator [0079].
Regarding claim 13, Lee teaches an electrochemical device chosen from the group consisting of: Li-ion battery, capacitor, electrical double-layer capacitor, and membrane- electrode assembly (MEA) for a fuel cell, said electrochemical device comprising a separator according to Claim 11 [0002-0003].
Regarding claim 14, Lee teaches an Li-ion secondary battery comprising an anode, a cathode and a separator, wherein said separator is in accordance with Claim 11 [0084-0090].
Conclusion
THIS ACTION IS MADE FINAL. 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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/S.G./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
