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
Claims 1, 4, 5, 6, 7, 9, and 12 have been amended and the 112 (b) rejections previously set forth have been overcome and are withdrawn in light of the applicant’s amendment.
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 2 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 2 includes the limitation of Ga having a value between 16 and 55 GU. The instant specification makes it clear that the reference separator is understood to have a Gc value of 77.2 (REF in table 1). The Ga/Gc range of claim 1 means that Ga has a range of 24-51 GU which is a smaller range than described in claim 2 meaning claim 2 is indefinite as a dependent claim must further limit the independent claim it is dependent upon. For the purposes of examination, the Ga value is between 24-51 GU to be consistent with claim 1.
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) 1-3 and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hideki (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, Hideki teaches a separator having a porous body with insulating fine particles (inorganic particles) and an organic binder (polymer binder) where the glossiness of the separator is between 5 and 50 (0024) which overlaps with the range of the limitation with the reference glossiness being 77.2 GU at an 85o angle. While Hideki teaches that the gloss is taken at a 60o angle, Linshang teaches what glossiness is and the scenarios in which you would use different gloss angles, such as to get more accurate data in the case that you have a high-gloss material instead of a low-gloss or semi-gloss material (Linshang section 3.3, pages 4 and 5 of the provided PDF). In section 3.3, the figures show that, while the material and physical properties stay the same, the GU measured at 85o is higher than the GU measured at 60o. If you were to adjust the measurement angle of Hideki to 85o in order to get a better data set, It would still have been obvious for a person having ordinary skill in the art to optimize the range to fall within a glossiness of 24 – 51 GU for Ga (calculated range for a Ga/Gc of .312-.661 where Gc is 77.2) through routine experimentation of the workable range in order to improve the filling property and orientation of the particles as taught by Hideki (Hideki 0024).
PNG
media_image1.png
380
512
media_image1.png
Greyscale
Regarding claim 2, Hideki in view of Linshang teaches the separator as described regarding claim 1, and because the reference being used has a glossiness of 77.2 GU, 51 and 24 divided by 77.2 respectively results in the same range as described in claim 1 and therefore is rejected under the same reasoning.
Regarding claim 3, Hideki in view of Linshang teaches the separator as described regarding claim 1, and further teaches that the binder can be polyvinyl alcohol (0042) and as PVA is soluble in water it is an aqueous polymeric binder.
Regarding claim 8, Hideki in view of Linshang teaches the separator as described regarding claim 3, and further teaches that the polymer binder can be polyvinyl alcohol (0042).
Regarding claim 9, Hideki in view of Linshang teaches the separator as described regarding claim 1, and 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 (0048, 0045).
Regarding claim 10, Hideki in view of Linshang teaches the separator as described regarding claim 1, and further teaches that the inorganic particles can be aluminum nitride (0032)
Regarding claim 11, Hideki in view of Linshang teaches the separator as described regarding claim 3, and further teaches that the binder can be ethylene-acrylate copolymers (0042).
Regarding claim 12, Hideki in view of Linshang teaches the separator as described regarding claim 1, and 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).
Regarding claim 13, Hideki in view of Linshang teaches the separator as described regarding claim 1, and further teaches that it is for use in a secondary battery (0012).
Regarding claim 14, Hideki in view of Linshang teaches the separator as described regarding claim 1, and 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 (Linshang section 3.3).
Claim(s) 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hideki in view of Linshang as applied to claims 1 and 3 above and further in view of Annaka US 11258133.
Regarding claim 4, Hideki in view of Linshang teaches the separator as described regarding claim 1, but doesn’t teach the ratio of particle diameter of a particulate binder to coating thickness. Annaka teaches that the thickness of the porous membrane can be .01 micrometers to 20 micrometers (page 25 line 36-40). And that particle B can be 300 nm to 1000nm, or .3 micrometers to 1 micrometer in diameter (page 4, line 29-34). It would have been obvious, with routine experimentation and optimization of ranges, to have the ratio of an average diameter of particle B to a thickness of the membrane be between 1:1 and 5:1.
It would also have been obvious for a person having ordinary skill in the art at the time the invention was effectively filed to use the particles A and B of Annaka as binders for the separator of Hideki 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 (page 3, line 5-10). It would also be obvious, with routine experimentation and optimization of ranges, to have the ratio of an average diameter of particle B to a thickness of the membrane be between 1:1 and 5:1.
Regarding claim 5, Hideki in view of Linshang teaches the separator as described regarding claim 3, but doesn’t teach the size of binder particles. Annaka teaches that the diameter of particle B can be 300 nm to 1000nm, or .3 micrometers to 1 micrometer (page 4, line 29-34). While the ranges do not explicitly overlap, they touch at the end and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, see Titanium Metals Corp. of America v. Banner MPEP 2144.05.
It would also have been obvious for a person having ordinary skill in the art at the time the invention was effectively filed to use the particles A and B of Annaka as binders for the separator of Hideki 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 (page 3, line 5-10).
Regarding claim 6, Hideki in view of Linshang teaches the separator as described regarding claim 3, but doesn’t teach the glass transition temperature of the binder. Annaka teaches that the glass transition temperature of the core portion of Polymer B can be 0 - 150°C which encompasses the 50 – 70°C limitation and is obvious in view of the optimization of ranges by a person of ordinary skill in the art.
It would also have been obvious for a person having ordinary skill in the art at the time the invention was effectively filed to use the particles A and B of Annaka as binders for the separator of Hideki 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 (page 3, line 5-10).
Regarding claim 7, Hideki in view of Linshang teaches the separator as described regarding claim 3, but doesn’t teach the wt% of the particles. Annaka 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 (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 (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, with the optimization of ranges, 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 use the particles A and B of Annaka as binders for the separator of Hideki 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 (page 3, line 5-10). As well as further adding the small amount of aqueous binder as doing so allows the slurry composition for a porous membrane to be thickened in order to adjust the viscosity to an appropriate level for easy application (page 21, line 39-43).
Response to Arguments
Applicant's arguments filed 03/04/2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument of Hideki not teaching the reference gloss, Gc;
Applicant claims a separator having a surface gloss, Ga. The way applicant describes their invention of a separator is by using a reference separator and comparing the gloss of the invented separator, Ga, to the gloss of a known separator, Gc, that is separate and different from the actual invention being claimed. Applicant in their specification explains that the reference separator used has a Gc Value of 77.2 Gloss units (REF in table 1). While Hideki is silent to a reference separator as described, as it is simply being used as a way to characterize the actual invention’s value, Ga, it is unnecessary for Hideki to directly teach a Gc value as the Ga value is independent and taught by Hideki as described in claim 2. Due to this distinction between the claimed value, Ga, and a reference value, Gc, the argument that Gc needs to be disclosed by Hideki is found to be unpersuasive.
Regarding applicant’s argument that the range as claimed is not obvious in view of routine experimentation of a workable range due to lack of a result-effective variable;
This argument is unpersuasive because Hideki teaches that changing the glossiness of the separator changes the filling property and orientation of the insulating fine particles (0024). This establishes glossiness as a result-effective variable. Further, Hideki teaches that adhesiveness of both the binder and the fine particles are factors taken into consideration when making a separator meaning that it would be obvious to monitor and optimize the adhesiveness (0042, 0043).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
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, Galen Hauth can be reached at (571)270-5516. 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.
/SEAN R. BROWN/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
Prosecution Insights