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 .
Claim Status
Claims 1 and 4-7 were amended. Claims 1-7 are currently pending.
Claim Interpretation
A limitation in claim 1 reads “said laminated separator comprising a particle layer on at least one side of said laminated separator.” According to the figures, the laminated separator is made up of a polyolefin-based material, a heat-resistant layer, and a particle layer stacked in various orders. In each of the figures, the particle layer is on a outer-most layer of the separator when included on either side of a polyolefin-based base material. For purpose of examination, the above limitation will be examined as “said laminated separator comprising a particle layer on at least one end side of said laminated separator.”
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 7 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.
The term “long” in claim 7 is a relative term which renders the claim indefinite. The term “long” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The length of the sheet of the separator is indefinite due to the use of the term “long”. For purpose of examination, so long as the separator is shown to be in a sheet form, it will read on this limitation of claim 7.
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.
Claim(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (U.S. 20190334149) in view of Matsui (U.S. 20110311856).
With respect to claims 1 and 3, Li discloses a laminated separator which is a nonaqueous electrolyte secondary battery ([abstract], [0057]), laminated separator having a heat - resistant layer (layer B – insulating inorganic layer) on one surface of a polyolefin- based base material (layer A – porous membrane comprising polypropylene (PP)) (Fig. 3; [16-0017]),
said laminated separator comprising a particle layer (D – thermoplastic resin layer made of polyacrylic acid resin, thus reading on claim 3) on at least one side of said laminated separator (Fig. 3 [0018]),
particles contained in the particle layer containing a thermoplastic resin ([0019]),
the heat-resistant layer (layer B) containing an inorganic filler (alumina) at a proportion 30-60% (30-60% solid content) ([0037]), thus being encompassed by the claimed range of 70%.
Li does not disclose the average particle diameter for the particles within the thermoplastic resin particle layer.
Matsui discloses a separator including a thermoplastic resin ([abstract]) and teaches the particles in the thermoplastic resin have an average particle diameter of 0.5 to 5 micrometers ([0036]), thus encompassing the claimed range of 0.5 to 3 micrometers. Matsui further teaches that average particle diameters outside of this range decreases heat resistance and deteriorate electric properties ([0044]).
It would have been obvious to one having ordinary skill in the art at the time that the application was effectively filed that the particles in the thermoplastic resin layer disclosed by Li had an average particle diameter in the range taught by Matsui in order to avoid a decreases heat resistance and a deterioration of electric properties.
Applicant is reminded that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 2, Li discloses the heat-resistant layer (layer B) contains an aromatic resin (polybenzimidazole) ([0017]).
Claim(s) 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Matsui as applied to claim 1 above, and further in view of Iidani et al. (U.S. 20090186280).
With respect to claims 4-6, modified Li discloses a lithium ion battery member ([abstract]) with the laminated separator as recited in claim 1 (see above rejection of claim 1), but does not disclose the battery is a nonaqueous electrolyte secondary battery comprising a positive electrode, a laminated separator recited in claim 1 (see rejection of claim 1, [0153]), and a negative electrode ([0153]), which are formed in this order ([0153]).
Iidani discloses a battery comprising a separator ([0001]) and teaches the battery is a nonaqueous electrolyte secondary battery ([abstract]), comprising positive electrode, separator, and negative electrode in order ([0045]). Iidani further teaches that these components combined from an electrode laminate for use within the battery ([0045]).
It would have been obvious to one having ordinary skill in the art at the time that the application was effectively filed to include a positive electrode and negative electrode on either side of the separator disclosed by modified Li in order to form the nonaqueous electrolyte secondary battery as taught by Iidani as these components constitute an electrode laminate within the battery.
With respect to claim 7, modified Li discloses laminated separator formed in a sheet form according to claim 1(Fig. 3; see above rejection of claim 1), but does not disclose the separator is wound into a roll.
Iidani discloses a separator for use within a battery (p0001]) and teaches the separator is to be formed into a roll ([0007]). Iidani further teaches this allows for the separator to have close contact with the electrodes ([0007]).
It would have been obvious to one having ordinary skill in the art at the time that the application was effectively filed to form the separator disclosed by modified Li into a roll as taught by Iidani in order for the separator to have close contact with the electrodes.
The winding of the separator to form a roll is an example of a product-by-process limitation. Applicant is reminded that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this instance, the rolled separator being formed via winding imparts no structural difference in the rolled separator itself, and therefore is not a patentable feature.
Response to Arguments
Applicant’s arguments, see pages 4-6 of response, filed 03/18/2026, with respect to claim 1 have been fully considered and are persuasive in light of the amendment. The 35 U.S.C. 103 rejection (relying on Sakurai) of claim 1 has been withdrawn.
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. New prior art of Li in view of Matsui has been relied upon to read on the newly amended claim 1.
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.
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/J.E.B./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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