DETAILED ACTION
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 .
Election/Restrictions
Applicant's election with traverse of Group I claims 1-10 in the reply filed on 11/17/2025 is acknowledged. The traversal is on the ground(s) that amended claim 11 includes the limitations of claim 1. This is not found persuasive because the share technical feature of claim 1 is not a special technical feature as it does not make a contribution over the prior art in view of Noumi et al. (US 20110135988 A1) in view of Wei et al. (US 8795565 B2).
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/17/2025.
Claim Status
Claim 11 is amended.
Claims 11-20 are withdrawn.
Claims 1-10 have been considered on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/08/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 5 and 10 are 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 contains the limitation “wherein the compound with one or more epoxy groups is a polyethylene oxide (PEO)/ polyethylene glycol(PEG) having two or more epoxy groups”. It is unclear if the compound with one or more epoxy groups is a. polyethylene oxide (PEG) or a polyethylene oxide (PEO) having two or more epoxy groups, b. a polyethylene glycol (PEG) having two or more epoxy groups or a polyethylene oxide (PEO) having two or more epoxy groups, or c. a combination. Appropriate correction is required.
Claim 10 contains the limitation “and an optional coating”. It is unclear whether the limitations following the phrase are required as part of the claimed invention. Appropriate correction is required.
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) 1-2, 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Noumi et al. (US 20110135988 A1) hereinafter "Noumi", cited on the IDS filed 01/08/2024, in view of Wei et al. (US 8795565 B2) hereinafter "Wei".
Regarding claim 1, Noumi teaches a membrane comprising a porous layer that comprises the following: a polyolefin ([0020]-[0026]; [0041] porous polyolefin resin); and a product formed by reacting a compound with one or more carboxy groups and a compound with one or more epoxy groups, wherein the product may be a reaction network, a three-dimensional reaction network, or a cross-linked network ([0020]-[0026]; [0044]; [0047]-[0049]; [0074]). Noumi teaches a polyolefin porous substrate is formed by extrusion with paraffin, stretching, and removal of the paraffin with decane ([0108]-[0109]).
Noumi does not teach where a porous layer is formed by a dry process porous layer.
However, Wei teaches a porous membrane formed by a dry process, that can be used in a battery separator, wherein the porous membrane can be a polyolefin (column 2 lines 7-15 and lines 36-45; column 3 lines 15-43; Example 4; claim 2). The instant specification defines a dry-process as “one that does not involve the use of solvents or oils, particularly during a casting or extrusion step” (instant specification p. 4).
Both Noumi and Wei teach porous polyolefin films for use in battery separators. A person of ordinary skill in the art would have recognized that the polyolefin film of Noumi could be substituted for the dry process polyolefin film taught by Wei. One of ordinary skill in the art would have done this with a reasonable expectation of success.
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have substituted the porous polyolefin layer taught by Noumi with the porous polyolefin layer taught by Wei to achieve the predictable result of a dry-process porous layer comprising a polyolefin.
Regarding claim 2, modified Noumi teaches the membrane of claim 1. Modified Noumi further teaches wherein the membrane is a monolayer, bilayer, trilayer, or multilayer membrane (Noumi [0072], [0092]; Wei column 5-7 examples 2-3, 6-7, column 4 lines 13-23).
Regarding claim 8, modified Noumi teaches the membrane of claim 1. Modified Noumi teaches wherein the polyolefin is a polyethylene polymer (column 6 lines 35-45 Example 4; column 3 lines 15-43).
Regarding claim 9, modified Noumi teaches the membrane of claim 1. Modified Noumi teaches wherein the polyolefin is a polypropylene polymer (column 6 lines 35-45 Example 4; column 3 lines 15-43).
Claim(s) 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Noumi (US 20110135988 A1) in view of Wei (US 8795565 B2), as applied above, in further view of Matsui et al. (US 20110311856) hereinafter “Matsui” and Uetani et al. (US 20060257727 A1) hereinafter “Uetani”.
Regarding claims 3-4, modified Noumi teaches the membrane of claim 1.
Modified Noumi does not teach wherein the compound with one or more epoxy groups has from 1 to 10 or 1 to 5 epoxy groups.
However, Uetani teaches a porous polyolefin film supporting a reactive polymer where the reactive polymer may contain an epoxy group, for example, the reactive polymer may be glycidyl(meth)acrylate ([abstract]; [0017]; [0021]; [0032]; [0048]). Uetani teaches where the reactive polymer is obtained by reacting a crosslinkable polymer with a polycarboxylic acid so that it is partially crosslinked ([0042]) where the polycarboxylic acid is an organic compound having two or more carboxyl groups in the molecule more preferably 2 to 4 carboxyl groups ([0043]-[0047]). Uetani further teaches that low proportions of insoluble matter leads to substantial dissolution/diffusion when immersed in an electrolyte solution ([0059]). Uetani teaches that crosslinking with a polycarboxylic acid increases insoluble content, thereby avoiding the reactive polymer dissolving in an electrolytic solution and diffusing thereinto when it is immersed therein ([0060]). The polycarboxylic acid crosslinking agents taught by Uetani are art recognized as suitable for crosslinking epoxy group-containing reactive polymers used in separator membranes.
Further, Matsui teaches the use of polyethylene glycol (PEG) with terminal epoxy groups as a crosslinking agent in polyolefin-based porous separators (Abstract; [0009]-[0013]; [0029]-[0030]). Matsui teaches where polyethylene glycol (PEG) with an epoxy group at both ends (i.e. linear PEG with 2 epoxy groups) is preferred as the crosslinking agent ([0048]) and is reactive with carboxyl groups ([0030]).
Noumi teaches wherein a reactive polymer may have carboxyl groups and epoxy groups ([0044]-[0048]; [0057]-[0058]; [0026]). The polycarboxylic acid crosslinking agents taught by Uetani are art recognized as suitable for crosslinking epoxy group-containing reactive polymers used in separator membranes. Matsui teaches a crosslinking agent, linear PEG with 2 epoxy groups, that is reactive with carboxyl groups ([0048]; [0030]). Therefore, epoxy-functional PEG is recognized by the art as a suitable crosslinker for carboxyl-functional polymers included in separator membranes.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention, to modify the membrane taught by modified Noumi by crosslinking the reactive polymer with a crosslinking agent, such as linear PEG with 2 epoxy groups, that is reactive with carboxyl groups as taught by Matsui.
One of ordinary skill in the art would be motivated to crosslink the reactive polymer taught by Noumi with the crosslinking agents of Uetani and Matsui to increase solid content and prevent undesired dissolution/diffusion in an electrolyte (Uetani [0059]-[0060]). One of ordinary skill in the art would be motivated to control the degree of crosslinking in order to achieve an optimal content of insoluble matter in the separator and employing a combination of the crosslinking agents taught by Uetani and Matsui and would allow for greater control over the degree of crosslinking.
Further, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP §2144.05).
Regarding claim 5, modified Noumi teaches the membrane of claim 1.
Modified Noumi does not teach wherein the compound with one or more epoxy groups is a polyethylene oxide (PEO)/ polyethylene glycol(PEG) having two or more epoxy groups.
However, Uetani teaches a porous polyolefin film supporting a reactive polymer where the reactive polymer may contain an epoxy group, for example, the reactive polymer may be glycidyl(meth)acrylate ([abstract]; [0017]; [0021]; [0032]; [0048]). Uetani teaches where the reactive polymer is obtained by reacting a crosslinkable polymer with a polycarboxylic acid so that it is partially crosslinked ([0042]) where the polycarboxylic acid is an organic compound having two or more carboxyl groups in the molecule more preferably 2 to 4 carboxyl groups ([0043]-[0047]). Uetani further teaches that low proportions of insoluble matter leads to substantial dissolution/diffusion when immersed in an electrolyte solution ([0059]). Uetani teaches that crosslinking with a polycarboxylic acid increases insoluble content, thereby avoiding the reactive polymer dissolving in an electrolytic solution and diffusing thereinto when it is immersed therein ([0060]). The polycarboxylic acid crosslinking agents taught by Uetani are art recognized as suitable for crosslinking epoxy group-containing reactive polymers used in separator membranes.
Further, Matsui teaches the use of polyethylene glycol (PEG) with terminal epoxy groups as a crosslinking agent in polyolefin-based porous separators (Abstract; [0009]-[0013]; [0029]-[0030]). Matsui teaches where polyethylene glycol (PEG) with an epoxy group at both ends (i.e. linear PEG with 2 epoxy groups) is preferred as the crosslinking agent ([0048]) and is reactive with carboxyl groups ([0030]).
Noumi teaches wherein a reactive polymer may have carboxyl groups and epoxy groups ([0044]-[0048]; [0057]-[0058]; [0026]). The polycarboxylic acid crosslinking agents taught by Uetani are art recognized as suitable for crosslinking epoxy group-containing reactive polymers used in separator membranes. Matsui teaches a crosslinking agent, linear PEG with 2 epoxy groups, that is reactive with carboxyl groups ([0048]; [0030]). Therefore, epoxy-functional PEG is recognized by the art as a suitable crosslinker for carboxyl-functional polymers included in separator membranes.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention, to modify the membrane taught by modified Noumi by crosslinking the reactive polymer with a crosslinking agent, such as linear PEG with 2 epoxy groups, that is reactive with carboxyl groups as taught by Matsui.
One of ordinary skill in the art would be motivated to crosslink the reactive polymer taught by Noumi with the crosslinking agents of Uetani and Matsui to increase solid content and prevent undesired dissolution/diffusion in an electrolyte (Uetani [0059]-[0060]). One of ordinary skill in the art would be motivated to control the degree of crosslinking in order to achieve an optimal content of insoluble matter in the separator and employing a combination of the crosslinking agents taught by Uetani and Matsui and would allow for greater control over the degree of crosslinking.
Claim(s) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Noumi (US 20110135988 A1) in view of Wei (US 8795565 B2), as applied above, in further view of Uetani et al. (US 20060257727 A1) hereinafter “Uetani”.
Regarding claims 6-7, modified Noumi teaches the membrane of claim 1. Noumi teaches a reactive polymer with both carboxyl and epoxy groups ([0026]; [0057]-[0058]; [0044]).
Modified Noumi does not teach wherein the compound with one or more carboxy groups has from 1 to 10 nor from 1 to 5 carboxy groups.
However, Uetani teaches a porous polyolefin film supporting a reactive polymer where the reactive polymer may contain an epoxy group, for example, the reactive polymer may be glycidyl(meth)acrylate ([abstract]; [0017]; [0021]; [0032]; [0048]). Uetani teaches where the reactive polymer is obtained by reacting a crosslinkable polymer with a polycarboxylic acid so that it is partially crosslinked ([0042]) where the polycarboxylic acid is an organic compound having two or more carboxyl groups in the molecule more preferably 2 to 4 carboxyl groups ([0043]-[0047]). Uetani further teaches that low proportions of insoluble matter leads to substantial dissolution/diffusion when immersed in an electrolyte solution ([0059]). Uetani teaches that crosslinking with a polycarboxylic acid increases insoluble content, thereby avoiding the reactive polymer dissolving in an electrolytic solution and diffusing thereinto when it is immersed therein ([0060]).
The polycarboxylic acid crosslinking agents taught by Uetani are art recognized as suitable for crosslinking epoxy group-containing reactive polymers used in separator membranes.
Therefore, it would have been obvious to one of ordinary skill in the art to modify the membrane taught by modified Noumi by crosslinking the reactive polymer with a polycarboxylic acid having 2 to 4 carboxyl groups as taught by Uetani.
One of ordinary skill in the art would be motivated to crosslink the reactive polymer taught by Noumi with a polycarboxylic acid having 2 to 4 carboxyl groups as taught by Uetani to increase solid content and prevent undesired dissolution/diffusion in an electrolyte ([0059]-[0060]). One of ordinary skill in the art would be motivated to control the degree of crosslinking in order to achieve an optimal content of insoluble matter in the separator. Further, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP §2144.05).
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Noumi (US 20110135988 A1) in view of Wei (US 8795565 B2), as applied above, in further view of Zhang et al. (US 20140045033 A1) hereinafter “Zhang”.
Regarding claim 10, modified Noumi teaches a battery separator comprising a membrane according to claim 1 (Noumi [abstract], [0020]-[0026], [0074]; Wei column 2 lines 35-45).
Modified Noumi does not teach an optional coating, wherein the coating may be a ceramic coating, a polymer coating, an adhesive coating, a shutdown coating, or combinations thereof.
However, Zhang teaches ceramic and/or polymeric coatings for porous polyolefin membranes ([0019]-[0020]; [0032]; [0084]; [0021]). Zhang teaches that ceramic coatings can provide improved safety and high temperature performance for porous polyolefin membranes used as a battery separator ([0052]; [0065]; [0093]-[0095]).
It would have been obvious to one of ordinary skill in the art to further modify the battery separator taught by modified Noumi by incorporating a ceramic coating as taught by Zhang.
One of ordinary skill in the art would be motivated to further modify the battery separator taught by modified Noumi by incorporating a ceramic coating as taught by Zhang to increase the safety of the separator ([0052]; [0065]; [0093]-[0095]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yamada (EP 2720295 A1) teaches a membrane comprising a porous layer ([0044]-[0046]) that comprises the following: a polyolefin ([0086]); and a product formed by reacting a compound with one or more carboxy groups and a compound with one or more epoxy groups, wherein the product may be a reaction network, a three-dimensional reaction network, or a cross-linked network ([0009]; [0027]; [0030]; [0034]; [0037]). Cited on the IDS filed 01/08/2024.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICITY B. ALBAN whose telephone number is (703)756-5398. The examiner can normally be reached Monday-Friday 7:30-5:00.
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, Matthew Martin can be reached at 571-270-7871. 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.
/F.B.A./Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728