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 without traverse of Group 1, in the reply filed on 02 June 2026 is acknowledged.
Claims 14-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02 June 2026.
Claims 1-13 and 25 are examined below.
Specification
The disclosure is objected to because of the following informalities:
on page 7, [0022], fifth sentence, the or “which”
On page 9, [0027], fifth sentence, the phrase “rate at ion transit” should read “rate of ion transit”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-6, 10, and 12-13 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being clearly anticipated by Misao et al. (JP 2014060118 A).
Regarding Claim 1, Misao et al. teach a battery separator comprising: a nonwoven material (see paragraph [0013], second sentence) comprising at least one inorganic oxide (inorganic thin film is preferably an inorganic oxide; see paragraph [0044]).
Regarding Claim 2, Misao et al. teach the battery separator of claim 1, wherein the at least one inorganic oxide is at least partially located on a first outer surface of the nonwoven material (paragraphs [0041] and [0042] describe the inorganic thin film being formed on at least one main surface, which is at least partially).
Regarding Claim 3, Misao et al. teach the battery separator of claim 2, wherein the at least one inorganic oxide is at least partially located on a second outer surface of the nonwoven material (paragraph [0042] describes both cases of the inorganic film being formed on the second outer surface, or the other main surface).
Regarding Claim 5, Misao et al. teach the battery separator of claim 1, wherein the at least one inorganic oxide is selected from the group consisting of an aluminum oxide, a zinc oxide, and combinations thereof ([0044], sixth sentence teaches both aluminum oxide and zinc oxide as preferred inorganic oxides, and the last sentence says the inorganic oxides can be used alone or in combination of two or more).
Regarding Claim 6, Misao et al. teach the battery separator of claim 2, wherein a thickness of the at least one inorganic oxide is from 5 nanometers to 10 microns ([0043] teaches the inorganic thin film has thickness of 60 to 2000 nm, which is within the range of 10 to 10000 nm). A specific example in the prior art which is within a claimed range anticipates the range. See MPEP 2131.03 I.
Regarding Claim 10, Misao et al. teach the battery separator of claim 1, wherein the nonwoven material comprises thermoplastic fibers (thermoplastic resin fibers [0010]).
Regarding Claim 12, Misao et al. teach the battery separator of claim 10, wherein the thermoplastic fibers are selected from fibers comprising polyethylene terephthalate ([0016]).
Regarding Claim 13, Misao et al. teach the battery separator of claim 1, wherein the nonwoven material comprises fibers selected from a group consisting of melt blown fibers ([0020]).
Claim 25 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being clearly anticipated by Misao et al. (JP 2014060118 A).
Regarding Claim 25, Misao et al. teach a lithium-ion battery comprising the battery separator of claim 1 ([00122] and [00134]), and they teach that its use as an automotive battery is expected ([00135]).
Claim Rejections - 35 USC § 102 or 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 4 and 8-9 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Misao et al. (JP 2014060118 A).
Regarding Claim 4, Misao et al. teach the battery separator of claim 1. It is deemed that the at least one inorganic oxide at least partially impregnating the nonwoven material is an inherent characteristic and/or property of the specifically disclosed nonwoven material. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The disclosed nonwoven material is a porous material designed to enable the electrolyte to impregnate it; thus, the inorganic oxide taught by Misao et al. that coats at least one main surface is expected to at least partially penetrate the nonwoven material, or at least partially impregnate the nonwoven material. Additionally, the nonwoven material of both the claim and Misao et al. are not structurally distinct, and the inorganic oxide used is the same, so the physical behavior of the nonwoven material should be the same.
Regarding Claim 8, Misao et al. teach the battery separator of claim 1, wherein the nonwoven material comprises an average pore size of from 0.2 to 5 microns (0.3 to 30 microns, [0056]) and a porosity of from 30% to 60% (range of 45% to 90% in [0035], and 53% porosity in Example 10, [00131]).
The prior art ranges appear substantially identical to, or are broader than, the claimed ranges. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range). See MPEP 2144.05 I. for information on obviousness of similar and overlapping ranges, amounts and proportions.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Misao et al. (JP 2014060118 A).
Regarding Claim 9, Misao et al. teach the battery separator of claim 8.
It is deemed that the inorganic oxide reducing the porosity of the nonwoven material by less than 20% is an inherent characteristic and/or property of the specifically disclosed battery separator. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In this case, both battery separators from the instant application and the prior art (Misao et al.) are made by the same process. For example, both the instant application and the prior art use physical vapor deposition to deposit/impregnate the nonwoven material with the inorganic oxide material ([0033] of instant specification and [0045] of Miki et al.). The physical and chemical characteristics of the nonwoven material and inorganic oxide thin layer heavily overlap, as depicted in Table 1 below.
Property
Instant Application
Prior Art (Miki et al.)
Thickness—Battery Separator
10-30 µm ([0029])
20 µm ([00116])
Thickness—Inorganic Oxide
5nm-10µm ([0029])
60nm-2µm ([0043])
Average Pore Size
0.2-5µm ([0030])
0.3-30 µm ([0056])
Porosity
30-60% ([0030])
45-90% ([0035])
Nonwoven material type
Thermoplastic fibers, such as polyethylene terephthalate ([0021])
Thermoplastic fibers, such as polyethylene terephthalate ([0010])
Inorganic oxide type(s)
Aluminum oxides, zinc oxides, silicon oxides ([0026])
Aluminum oxide, zinc oxide, silicon oxide ([0044])
Surface preparation
Plasma treatment or corona discharge ([0036])
Plasma treatment or corona treatment ([0040])
Method of depositing
Physical vapor deposition ([0033], [0036])
Physical vapor deposition ([0045])
Table 1 | Comparison of instant application and prior art.
Therefore, it would be expected that the reduction in porosity by 20% or less is inherent to the process of applying the inorganic oxide film because all of the parameters are within the anticipated or obvious bounds in both the instant application and the prior art.
Claim Rejections - 35 USC § 103
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Misao et al. (JP 2014060118 A) in view of Gayden et al. (US 11,621,411 B2).
Regarding Claim 7, Misao et al. teach the battery separator of claim 1.
Misao et al. do not specifically teach that the battery separator comprises from 0.1% to 20% by weight of the at least one inorganic oxide. In example 1, the inorganic thin film was 2.15% the thickness of the nonwoven material (0.43 microns to 20 microns [00116] and [00117]).
This teaching suggests that, as long as the nonwoven material is not significantly more than twice as dense as the ceramic or inorganic oxide layer, it is almost certain that the weight ratio of the separator of Misao et al. falls within the bounds. Additionally, the ceramic or inorganic oxide layer is more likely to be denser than the nonwoven material since the inorganic oxide usually contains a relatively heavier element such as a metal, and the nonwoven material is porous; the inorganic oxide layer of Misao et al. is unlikely to be 9.3 times denser than the nonwoven material.
However, Gayden et al. teach the importance of applying a sufficient amount of inorganic oxide for good insulation or stability without at the same time blocking pores of the separator or adding more weight than necessary or increasing layer thickness more than necessary when manufacturing a separator for a lithium-ion electrochemical cell (column 2, lines 8-16).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to ensure the battery separator of Misao et al. comprises from 0.1% to 20% by weight of the at least one inorganic oxide to maximize insulation while minimizing pore blockage and material waste, as taught by Gayden et al.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Misao et al. (JP 2014060118 A) in view of Johnson et al. (US Patent No. 6,063,899).
Regarding Claim 11, Misao et al. teach the battery separator of claim 10, wherein the thermoplastic fibers comprise an average fiber diameter is between 0.1 microns and 4 microns ([0014], avg lies within min and max).
Misao et al. does not teach that the average fiber length is from 0.3 microns to 5 microns.
However, Johnson et al. teach minute polymer fibers used for making a battery separator, wherein the minute polymer fibers are finely comminuted into fibers about 1.5 microns in length (col. 6, lines 11-13), teaching that fiber length controls the pore size and smaller fibers make smaller pores (col. 6, lines 13-15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the average fiber length of the thermoplastic fibers of the battery separator of Misao et al. to be between 0.3 microns to 5 microns to make smaller pores, as taught by Johnson et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW N KIM whose telephone number is (571)272-9169. The examiner can normally be reached Mon-Fri. 8:00am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW KIM/Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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