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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 06/01/2023 and 02/20/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 14-15 are objected to because of the following informalities: claims 14-15 contain the phrase “secondary battery (5)” and thus contains a reference numeral within the claim and thus should read “secondary battery”. Appropriate correction is required.
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 1-15 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.
Regarding claims 1-5, and 8-13, the phrase “optionally” renders the claim indefinite as it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP 2173.05(d). Claims 10-11 further goes on to positively describe what mass ratio and average particle diameter of the second organic particle but does not describe the material as optional, therefore it is unclear if such is positively required. For the purpose of examination optional limitations are not positively required and claim 10-11 are deemed to be not positively required as they are optional limitations of the independent claim 1. Dependent claims 6-7 and 14-15 are rejected for depending upon 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.
Claims 1-4, 6-9, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yoon et al. (US 2016/0149185 A1) in view of Masahiro (JPWO2018043200 A1).
Regarding claim 1, Yoon discloses a separator, comprising:
A porous separator substrate (abstract porous polymer film); and
A pressure sensitive coating applied onto at least one surface of the separator substrate, wherein the pressure sensitive coating comprises a first organic particle at a mass percent of 40-90 wt%, a pressure sensitive binder polymer at a mass percent of 10-20 wt% ([0066] porous coating layer may include either inorganic particles or organic particles or both; abstract porous coating layer provided on the porous polymer film; [0012] porous coating layer includes at least one type of particles of inorganic particles and organic particles and binder polymer and formed on both surfaces of the porous polymer film; the materials of the binder polymer and coating are polymer materials [0022-0026] and are considered to be pressure sensitive as the materials overlap with that of claims 6 and 9 as polymer materials can be sensitive to certain pressures; [0075] composition ratio of the particles to the binder can be between 50:50 to 99:1 based on weight and thus the organic particles can be held at a higher weight than the binder and thus overlaps the claimed range); and
Wherein the binder polymer comprises a binder polymer (abstract).
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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Yoon is silent wherein the binder polymer also comprises a plasticizer.
Masahiro discloses a resin composition for a lithium ion battery binder material for separators and is analogous with the instant invention as being within the same field of endeavor of separators for batteries. Masahiro discloses wherein a coating for a separator comprises a polymer material and an aqueous resin medium wherein aqueous resin composition used can be a plastisol/plasticizer ([0012, 0029-0030,0033-0034]) to improve adhesion of the porous material and electrode constituting the separator ([0008]).
Therefore, it would have been obvious in view of a skilled artisan to substitute the binder polymer of Yoon for the aqueous resin binder composition comprising a polymer and an aqueous medium that can be selected to be a plasticizer/plastisol as taught by Masahiro as a simple substitution of one polymer binder for another to improve adhesion of the separator material. The resulting modification would render obvious all the claim limitations of claim 1 as the binder material can be substituted for another with reasonable expectation of success. 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.). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Regarding claim 2, modified Yoon discloses all the claim limitations of claim 1. Masahiro further discloses wherein the mass ratio between the binder polymer and the plasticizer comprised in the pressure sensitive binder polymer is (4 to 19):1 ([0012] first polymer is 60% or more by mass, second polymer can be 2-40% by weight with the rest being the aqueous medium and thus overlaps with the claimed range as the medium can be 20 wt% and thus binder polymer can be 80 wt % and thus would be a ratio of 4:1 and fall within the claimed range or likewise the medium be 10 wt% and thus binder polymer can be 90 wt % and thus would be a ratio of 9:1). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, modified Yoon discloses all the claim limitations of claim 1. Masahiro further discloses wherein the binder polymer is of a core-shell structure, a core and a shell of the core-shell structure each comprise the binder polymer and the plasticizer, a mass ratio between the binder polymer and the plasticizer in the core is (2-5):1 and a mass ratio between the binder polymer and the plasticizer in the shell is (6 to 10):1 (Claims 1-2, core shell structure of the binder resin having the binder be 2-40 mass%; [0012] first polymer is 60% or more by mass, second polymer can be 2-40% by weight with the rest being the aqueous medium and thus overlaps with the claimed range as each ratio of the core and shell can be adjusted given the broad scope of the ranges taught by Masahiro, see claims 1-2). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, modified Yoon discloses all the claim limitations of claim 1. Masahiro further discloses wherein the plasticizer/plastisol can be added and mixed with the with binder polymer and thus would read on the “grafted” limitation as grafted is deemed to be a product by process limitation as the resulting product is a binder polymer that is mixed with the plastisol/plasticizer material. The product-by-limitations of claim 4 is not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claim 4 as written does not distinguish the product of the instant application from the product of the prior art.
Regarding claim 6, modified Yoon discloses all the claim limitations of claim 1. Masahiro further discloses wherein the binder polymer comprises a copolymer ([0015-0016] meth methacrylate can be used reading as the first monomer, along with a list from [0018] reading as the second monomer, and materials such as 2-hydroxyethyl (meth)acrylate as listed in [0020] and used as the third monomer and [0028] comprises alcohols used in the solvent such as polyalkylene glycols such as polyethylene glycol as the dispersant). A skilled artisan would have found it obvious to select the polymer materials as taught by Masahiro for the binder polymer copolymer and thus would have rendered obvious the structure of the binder polymer according to claim 6. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Examiner notes the limitations as to how the copolymer is formed. These limitations are deemed to be a product by process limitation and is not given patentable weight as to the method of forming the copolymer. The product-by-limitations of claim 6 are not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claim 6 as written does not distinguish the product of the instant application from the product of the prior art.
Regarding claim 7, modified Yoon discloses all the claim limitations of claim 1. Masahiro further discloses wherein the aqueous medium can be alcohol that contain ketones such as an alkyl ether of polyalkylene glycol ([0028]). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Regarding claim 8, modified Yoon discloses all the claim limitations of claim 1. Masahiro further discloses wherein the average thickness of the pressure sensitive coating is 2-20 micrometers ([0104] thickness of the porous coating layer can be 0.01 to 20 micrometers). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 9, modified Yoon discloses all the claim limitations of claim 1. Yoon further discloses wherein the average particle diameter of the first organic particle is 5-30 micrometers ([0027] average grain diameter of the organic particles can be 0.001 -10 micrometers). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 12, modified Yoon discloses all the claim limitations of claim 1. Yoon further discloses wherein a porosity of the separator is 10-95%, a pore diameter of the separator is 20-60 nm and a thickness of the separator substrate is 3-12 micrometers ([0021] thickness of the porous polymer film maybe 5-50 micrometers, pore size 0.01-50 micrometers and porosity of 10-95%). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 13, modified Yoon discloses all the claim limitations of claim 1. Yoon further teaches a method comprising:
S1) adding a first organic particle and a dispersant into a solvent to form a first polymer solution ([0092] slurry is formed by adding an organic particles with a solvent and then further adding the binder polymer to form a slurry);
S2) adding a pressure sensitive binder polymer into the first polymer solution obtained in step S1 and mixing to form a second polymer solution ([0092] slurry is formed by adding an organic particles with a solvent and then further adding the binder polymer to form a slurry);
S4) coating at least one surface of the porous separator substrate with the second polymer solution and drying to obtain a separator ([0076-0087]; [0092-0094] coating the slurry onto the porous substrate and [0096-0102] drying), wherein
the separator comprises a pressure sensitive coating applied onto at least one surface of the separator substrate, wherein the pressure sensitive coating comprises a first organic particle at a mass percent of 40-90 wt%, a pressure sensitive binder polymer at a mass percent of 10-20 wt% ([0066] porous coating layer may include either inorganic particles or organic particles or both; abstract porous coating layer provided on the porous polymer film; [0012] porous coating layer includes at least one type of particles of inorganic particles and organic particles and binder polymer and formed on both surfaces of the porous polymer film; the materials of the binder polymer and coating are polymer materials [0022-0026] and are considered to be pressure sensitive as the materials overlap with that of claims 6 and 9 as polymer materials can be sensitive to certain pressures; [0075] composition ratio of the particles to the binder can be between 50:50 to 99:1 based on weight and thus the organic particles can be held at a higher weight than the binder and thus overlaps the claimed range); and
Wherein the binder polymer comprises a binder polymer (abstract).
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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Yoon is silent wherein the binder polymer also comprises a plasticizer.
Masahiro discloses a resin composition for a lithium ion battery binder material for separators and is analogous with the instant invention as being within the same field of endeavor of separators for batteries. Masahiro discloses wherein a coating for a separator comprises a polymer material and an aqueous resin medium wherein aqueous resin composition used can be a plastisol/plasticizer ([0012, 0029-0030,0033-0034]) to improve adhesion of the porous material and electrode constituting the separator ([0008]).
Therefore, it would have been obvious in view of a skilled artisan to substitute the binder polymer of Yoon for the aqueous resin binder composition comprising a polymer and an aqueous medium that can be selected to be a plasticizer/plastisol as taught by Masahiro as a simple substitution of one polymer binder for another to improve adhesion of the separator material. The resulting modification would render obvious all the claim limitations of claim 13 as the binder material can be substituted for another with reasonable expectation of success. 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.). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Regarding claim 14, modified Yoon discloses the separator according to claim 1. Yoon further discloses a secondary battery ([0029] secondary battery) comprising the separator of claim 1, a positive electrode plate, a negative electrode plate, wherein the separator is located between the positive and negative electrode plates, and an electrolyte solution ([0028] electrochemical device comprising a cathode, and anode, a separator and [0114 an electrolyte).
Regarding claim 15, modified Yoon discloses all the claim limitations of claim 14. Yoon further discloses an electrical device having the secondary battery of claim 14 (abstract electrochemical device comprising the battery).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yoon et al. (US 2016/0149185 A1) in view of Masahiro (JPWO2018043200 A1) as applied to claim 1 above, and further in view of Yeou et al. (US 2013/0323569 A1).
Regarding claim 5, modified Yoon discloses all the claim limitations of claim 1. Yoon and Masahiro is silent with respect to wherein an average particle diameter of the pressure sensitive binder polymer is 0.5-3.0 micrometers.
Yeou discloses a separator for a rechargeable battery and is analogous with the instant invention as being within the same field of endeavor of separators for battery cells. Yeou discloses wherein a separator comprises as polymer binder and wherein the binder polymer can have an average particle diameter of 0.01-0.5 micrometers to improve the heat resistance and safety of the separator ([0056]).
Therefore, it would have been obvious in view of a skilled artisan to modify the size of the average particle diameter of the binder polymer to be 0.5 micrometers in order to improve the heat resistance and safety of the separator within the battery as taught by Yeou. The size of an article is not a matter of invention. See In re Rose, 105 USPQ 237 (CCPA 1955) (see MPEP § 2144.04).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yoon et al. (US 2016/0149185 A1) in view of Masahiro (JPWO2018043200 A1) as applied to claim 1 above, and further in view of Kim et al. (US 2019/0280274 A1).
Regarding claims 10-11, modified Yoon discloses all the claim limitations of claim 1. Examiner notes that claims 10-11 contain optional limitations according to claim 1, however, examiner notes that Kim teaches and renders obvious the limitations of claims 10-11.
Kim discloses a coating layer for a separator and is analogous with the instant invention. Kim discloses the use of two organic particles and wherein the one particle diameter can be between 0.3-0.7 micrometers ([0040]) and wherein the mass ration of the first and second organic particles can be 3:1 ([0124] second organic particles 75 parts by weight while first organic particles is provided at 25 parts by weight).
Therefore, it would have been obvious in view of a skilled artisan to provide multiple organic particles within the coating of the separator material wherein the weight ratio of the first and second organic particles can be 3:1 and wherein the second organic particle has a diameter of 0.3-0.7 micrometers as taught by Kim. The resulting modification would have been obvious as Kim is analogous with the instant invention and can have multiple particle materials of the coating layer as the coating layers are very similar to each other and thus a skilled artisan would have been motivated to make the coating layer contain multiple organic particles through the disclosures of Yoon and Kim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim et al. (US 2019/0280274 A1)- discloses a separator including a substrate and a coating layer wherein the coating layer comprises first and second organic particles.
Lee et al. (US 2019/0237734 A1)-discloses a separator including a substrate and coating layer wherein the coating layer comprises first and second organic particles and a binder and wherein the organic particles contain a core-shell structure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adam J Francis whose telephone number is (571)272-1021. The examiner can normally be reached M-Th: 7 am-4 pm EST.
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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.
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/ADAM J FRANCIS/Primary Examiner, Art Unit 1728