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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/14/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this case applicant’s specification says a ratio of a particle diameter D50 of the particulate polymer binder to a thickness of the coating layer is 1 to 5 and table one with examples makes it clear that this is describing the ratio range as a 1:1 ratio through a 5:1 ratio as the diameter of the particle is larger than the thickness of the coating layer in all of the inventive examples. The current claim 4 states a 1:5 ratio which is not supported by the current specification.
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, 5, and 8-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hideaki (JP 2014017264 A; original provided by the applicants IDS and a machine translated copy has been included in the file wrapper) in view of Linshang ("How to Measure Gloss with A Gloss Meter?", 2020, Linshang technology, https://www.linshangtech.com/tech/how-to-measure-gloss-with-a-gloss-meter-tech1164.html; the PDF version is provided in the file wrapper).
Regarding claim 1, Hideaki teaches a separator for a battery where the separator comprises a porous substrate (Hideaki 0067) and a coating layer on the porous substrate where the coating layer has inorganic particles (Hideaki 0069, insulating fine particles) and an organic binder binding the inorganic particles (0065). Hideaki further teaches that the organic binder can be polyvinyl alcohol (0042), which is an aqueous polymer binder, and that the hot-melt fine particles and swellable fine particles can be in included in the separator and can act as a binder (0054 0041) and would be considered a particulate polymer binder.
Hideaki is silent to a glossiness of the separator taken at specifically a 85o angle, but does teaches that the glossiness of the separator when taken at a 60o angle is between 5 and 50 (Hideaki 0024) which necessarily overlaps with the claimed range if the same material was measured with the same device at an 85o angle instead as shown in Linshang, forming a prima facie case of obviousness in view of overlapping ranges, See MPEP 2144.05.I. Further, Hideaki teaches that when within the glossiness range of 5-60 at 60o, the effect of preventing a short circuit is increased (Hideaki 0024), making it obvious to want to change the glossiness as necessary in view of routine experimentation of a known range in order to provide a predictable result, in this case preventing a short, See MPEP 2144.05.II. As the physical separator is identical as currently claimed and the only difference is a matter of measurement it would be obvious to change the glossiness due to shorting no matter the measurement angle being used.
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Regarding claim 2, Hideaki in view of Linshang teaches claim 1 as described above and is rejected under the same reasoning of overlapping ranges as well as routine experimentation as described above.
Regarding claim 5, Hideaki in view of Linshang teaches claim 1 as described above and Hideaki teaches that the particle size of the swellable fine particles is between 0.1-20 microns (Hideaki 0061) which overlaps with the claimed range and renders it prima facie obvious in view of overlapping ranges, See MPEP 2144.05.I.
Regarding claim 8, Hideaki in view of Linshang teaches claim 1 as described above and Hideaki further teaches that the polymer binder can be polyvinyl alcohol (Hideaki 0042).
Regarding claim 9, Hideaki in view of Linshang teaches claim 1 as described above and Hideaki further teaches that there is no visible thermal shrinkage observed at 150°C when using heat resistant fibrous material for the substrate of a separator (Hideaki 0048, 0045).
Regarding claim 10, Hideaki in view of Linshang teaches claim 1 as described above and Hideaki further teaches that the inorganic particles can be aluminum nitride (Hideaki0032)
Regarding claim 11, Hideaki in view of Linshang teaches claim 1 as described above and Hideaki further teaches that the binder can be ethylene-acrylate copolymers (hideaki0042).
Regarding claim 12, Hideaki in view of Linshang teaches claim 1 as described above and Hideaki further teaches that the surface gloss of the separator is taken at a 60° angle which is a specific value within the range and therefore obvious. The reference separator is also known to be taken at 85o as described in the instant application (Ref in table 1 of the instant application).
Regarding claim 13, Hideaki in view of Linshang teaches claim 1 as described above and Hideaki further teaches that the that it is for use in a secondary battery (0012).
Regarding claim 14, Hideaki in view of Linshang teaches claim 1 as described above and Linshang further teaches that the data can be taken at various angles, such as 85o as described regarding claim 1, in order to improve the quality of the data set received. A simple variation in the measurement method does not change the actual physical properties of the material as claimed and Linshang teaches 85o as an optional angle for measurement rendering the claim obvious (Linshang section 3.3).
Claim(s) 4 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hideaki (JP 2014017264 A; original provided by the applicants IDS and a machine translated copy has been included in the file wrapper) in view of Linshang ("How to Measure Gloss with A Gloss Meter?", 2020, Linshang technology, https://www.linshangtech.com/tech/how-to-measure-gloss-with-a-gloss-meter-tech1164.html; the PDF version is provided in the file wrapper) and further in view of Annaka (US 11258133 B2).
Regarding claim 4, Hideaki in view of Linshang teaches the separator as described regarding claim 1, but is silent to the ratio of particle diameter of the particulate binder to the coating thickness prompting one of ordinary skill to look at related art. In a similar field of endeavor, Annaka teaches a binder composition for a battery comprising particulate polymer binders that connect to a porous membrane. Annaka further teaches that the thickness of the porous membrane can be .01 micrometers to 20 micrometers to ensure strength (Annaka page 25 line 36-40) as well as particle B being between 300 nm to 1000nm, .3 micrometers to 1 micrometer, in diameter in order to properly fill the pores of the porous membrane (Annaka page 4, line 29-34). It would have been obvious in view of overlapping ranges as well as routine experimentation to have the ratio of an average diameter of particle B to a thickness of the membrane be between 1:1 and 1:5 in order to change the strength and filling properties.
It would have been obvious for a person having ordinary skill in the art at the time the invention was effectively filed to use modified Annaka as described above and simply replace the heat-meltable particles and swellable particles acting as a binder with Particles A and B of Annaka as doing so is a simple substitution of one known art for another for the same purpose with an expected result.
Regarding claim 6, Hideaki in view of Linshang teaches claim 1 as described above and Linshang teaches the melting point of the swellable fine particles but is silent to specifically a glass transition temperature of the particulate binder prompting one of ordinary skill to look at related art. In a similar field of endeavor, Annaka teaches a binder composition for a battery comprising particulate polymer binders that connect to a porous membrane. Annaka further teaches that the glass transition temperature of the core portion of Polymer B can be between 0 - 150°C and more specifically between 50 – 80oC (Annaka page 16, lines 4-9) which encompasses the 50 – 70°C limitation and is obvious in view of overlapping ranges as well as routine experimentation of a known range by a person of ordinary skill in the art.
Both the swellable fine particles of Hideaki as well as the Particulate polymer B of Annaka can be comprised of, for example, methyl methacrylate, and both are used for the same purpose, as a binder, which makes it obvious for one of ordinary skill in the art to simply replace the swellable fine particles of modified Hideaki with at least Particle B of Annaka as doing so is a simple substitution of one known art for another for the same purpose with an expected result.
Regarding claim 7, Hideaki in view of Linshang teaches claim 1 as described above and Hideaki teaches the insulating fine particles can take up between 30-95% by volume but is silent to the weight % difference between the particular and aqueous binders prompting one of ordinary skill to look at related art. In a similar field of endeavor, Annaka teaches a binder composition for a battery comprising at least particulate polymer binders that connect to a porous membrane. Annaka further teaches that the inorganic particles are capable of being anywhere within 99.9 mass % and 80 mass % and the rest is a mixture of polymer binders A and B (Annaka page 20 line, 67 – page 21, line 19; parts per mass adjusted to be in mass % which is identical to wt%). Annaka also teaches that a water-soluble polymer (aqueous binder) can be additionally added and can be .1 to 10 parts by mass which encompasses the 0-5 wt% limitation and, if .1 parts were to be added for example, results in a % greater than 0 but does not significantly affect the overall percentages for the inorganic particles and the particulate binders (Annaka page 22, line 55 – polyvinyl alcohol; page 23, line 8-15). It would have been obvious for a person having ordinary skill in the art in view of overlapping ranges and routine experimentation of a known range, to have a mixture that is within the limitation set forth.
It would also have been obvious for a person having ordinary skill in the art at the time the invention was effectively filed to simply substitute the composition of Hideaki with the composition of Annaka as described above as doing so allows simultaneously achieving improvement of porous membrane adhesiveness in electrolyte solution, improvement of porous membrane heat shrinkage resistance in electrolyte solution, and improvement of porous membrane blocking resistance (Annaka page 3, line 5-10). Further adding the small amount of aqueous binder allows the slurry composition for a porous membrane to be thickened in order to adjust the viscosity to an appropriate level for easy application (Annaka page 21, line 39-43).
Response to Arguments
Applicant's arguments filed 08/14/2026 have been fully considered below.
Regarding claim 2, the 112(b) argument is persuasive and the 112(b) rejection previously set forth is withdrawn.
Regarding the argument that the glossiness is not a proper result effective variable, this argument is unpersuasive as Hideki discloses that glossiness is a value that is desired in a certain range as within that range the property of preventing a shortage is obtained (Hideki 0024) making it a variable that achieves a recognized result.
Regarding the argument Hideki does not use both a particulate polymer and an aqueous polymer binder, this argument is unpersuasive as claim 1 as previously presented did not require both a particulate and aqueous binder.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN ROBERT BROWN whose telephone number is (571)272-0640. The examiner can normally be reached M-F, 9-5 ET.
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/SEAN R. BROWN/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
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