DETAILED ACTION
Claim Analysis
The present application contains one active independent claim(s) (claim 1) and nineteen active dependent claims (claims 2 - 20). Claim 1 is rejected under Double Patenting and both 102(a)(1)/(a)(2) and 103 below (Paragraphs 5, 7 and 10).
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the PARENT claims of copending Application No. 18/062,373 (U.S. Patent App. No. 2023/0178797 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because App ‘373 claims substantially the same invention as set forth below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, App ‘373 claims a separator (claims 6 - 9), comprising: nanowires or nanofibers (claim 9) comprising one or more of Al2O3, AIO(OH), Al(OH)3, MgO, AIFxOy (where 2*y+1*x=3), and/or MgFx1Oy1 (where 2*y1+1*x1=2) (claim 9), wherein: a thickness of the separator is about 30 mm or less (claim 7).
App ‘373 fails to explicitly claim “the separator is mechanically stable up to a temperature of about 500 °C or greater”.
However, the Examiner takes Official Notice that a skilled artisan would desire stability to high temperatures, including temperatures up to 500 °C or greater and that this would be a routine optimization for a skilled artisan1. The Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the mechanical stability through a given temperature range through routine experimentation, especially given the teaching in the supplied evidentiary art regarding the desire to insure stability to temperatures as high as 500 °C or greater. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 2 and 3, the claimed thickness values are encompassed by prior art disclosure cited above.
Regarding claim 4, the Examiner takes Official Notice that a skilled artisan would desire porosity values meeting the claimed limitations and that this would be a routine optimization for a skilled artisan2. The Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as claimed porosity values through routine experimentation, especially given the teaching in the supplied evidentiary art regarding the desire to insure encompassing porosity. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 5 – 7, these limitations are met in the citations above (e.g. claim 1).
Regarding claims 8 - 11, the Examiner takes Official Notice that electrolytes containing Cl or F are art recognized functional equivalents3. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, a wide range of electrolytes are recognized as functional equivalents in the field of known electrolytes for lithium ion secondary batteries, including those containing Cl, F, S, N, ionic liquids, etc. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 12, the Examiner takes Official Notice that ionic liquids meeting the claimed limitations are art recognized functional equivalents4. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, a wide range of electrolytes are recognized as functional equivalents in the field of known electrolytes for lithium ion secondary batteries, including those containing Cl, F, S, N, ionic liquids, etc. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claims 13 and 14, these limitations are disclosed in the claimed limitations discussed above (e.g. claim 1).
Regarding claims 15 – 18, App ‘373 discloses the claimed active materials broadly (claim 5). The Examiner takes Official Notice that these active materials are all art recognized functional equivalents5. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, a wide range of cathode active materials are recognized as functional equivalents in the field of known active materials for lithium ion secondary batteries, including those containing Co, Ni, etc. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claims 19 and 20, the Examiner takes Official Notice that a skilled artisan would desire cathode areal capacity loading values meeting the claimed limitations and that this would be a routine optimization for a skilled artisan6. The Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as claimed cathode areal capacity loading values through routine experimentation, especially given the teaching in the supplied evidentiary art regarding the desire to insure overlapping values (i.e. as high as possible). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim Rejections - 35 USC § 102
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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 – 11 and 13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yushin et al. (U.S. Patent App. No. 2019/0198837 A1).
Regarding claim 1, Yushin et al. claims a separator (Title; Abstract; Figures; and at least Paragraphs 0019 and 0053), comprising: nanowires or nanofibers (ibid) comprising one or more of Al2O3, AIO(OH), Al(OH)3, MgO, AIFxOy (where 2*y+1*x=3), and/or MgFx1Oy1 (where 2*y1+1*x1=2) (ibid), wherein: a thickness of the separator is about 30 mm or less (at least Paragraph 0063), wherein it is taught that the separator can possess (mechanical) stability up to 500 °C or greater (Paragraph 0049).
Regarding claims 2 and 3, the claimed thickness values are encompassed by prior art disclosure cited above (Paragraph 0063).
Regarding claim 4, Yushin et al. discloses encompassing porosity values (at least Paragraphs 0044, 0053 and 0087).
Regarding claim 5, Yushin et al. discloses the claimed limitations (Paragraphs 0037 – 0038).
Regarding claims 6 – 11 and 13, Yushin et al. disclose the claimed electrolytes (Paragraphs 0037 – 0040), including the use of ionic liquids therein (ibid).
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 11 and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yushin et al. (‘837 A1) as applied above in Paragraph No. 7.
Yushin et al. is relied upon as described above.
While the Examiner maintains that Yushin et al. anticipates the claimed limitations for the reasons set forth above, the Examiner acknowledges that Yushin et al. discloses a wide range for the stability values and fails to explicitly require each and every embodiment possessing a mechanical stability of about 500 °C or greater.
However, the Examiner notes that Yushin et al. teaches that a skilled artisan would desire stability to high temperatures, including temperatures up to about 500 °C or greater and that this would be a routine optimization for a skilled artisan. The Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the mechanical stability through a given temperature range through routine experimentation, especially given the teaching in Yushin et al. regarding the desire to insure stability to temperatures as high as 500 °C or greater. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 2 – 11 and 13 are rejected for the reasons set forth above.
Claims 12 and 14 – 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yushin et al. (‘837 A1) as applied above in Paragraph No.s 7 or 10, and further in view of Yushin et al. (U.S. Patent App. No. 2020/0343580 A1) and as evidenced by Lv et al. (U.S. Patent App. No. 2023/0335793 A1) and Abe et al. (U.S. Patent App. No. 2023/0129659 A1).
Yushin et al. (‘837 A1) is relied upon as described above in either Paragraph No. 7 or Paragraph No. 10.
Regarding claim 12, Yushin et al. (‘837 A1) fails to disclose the claimed cation. However, the Examiner notes that ionic liquids meeting the claimed limitations are art recognized functional equivalents as evidenced by one or both of Lv et al. (at least claim 4) and/or Abe et al. (at least Paragraph 0264). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, a wide range of electrolytes are recognized as functional equivalents in the field of known electrolytes for lithium ion secondary batteries, including those containing the claimed ionic liquid and the claimed cation. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 14, Yushin et al. (‘837 A1) fails to claim melt-infusion of the electrolyte. However, melt-infusion is a known equivalent means to impregnate the electrolyte into a separator as taught by Yushin et al. (‘590 A1) (at least Paragraph 0028). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, impregnating the separator with the electrolyte is desired and using melt-infusion or other means are functional equivalents in the field of known means for achieving said impregnation of electrolyte into a separator for a Li ion secondary battery. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claims 15 – 18, Yushin et al. (‘837 A1) fails to explicitly disclose the claimed active materials. However, the Examiner notes that these active materials are all art recognized functional equivalents in the prior art, as evidenced by Lv et al. (at least Paragraph 0058) and/or Abe et al. (at least Paragraphs 0104 – 0107 and 0118). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, a wide range of cathode active materials are recognized as functional equivalents in the field of known active materials for lithium ion secondary batteries, including those containing Co, Ni, etc. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950). The Examiner notes that Abe et al. explicitly teaches the high-Ni content for these types of ‘high Nickel’ active materials meeting the limitations of claim 16.
Regarding claims 19 and 20, Yushin et al. (‘837 A1) fails to disclose the claimed cathode areal capacity loading values. However, the Examiner notes that a skilled artisan would desire cathode areal capacity loading values meeting the claimed limitations and that this would be a routine optimization for a skilled artisan as taught by Yushin et al. (‘580 A1) (Title and at least Paragraph 0141). The Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as claimed cathode areal capacity loading values through routine experimentation, especially given the teaching in Yushin et al. (‘580 A1) regarding the desire to insure overlapping values (i.e. as high as possible). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
December 13, 2025
1 For support of this position of Official Notice, see cited art applied below to Yushin et al. (U.S. Patent App. No. 2019/0198837 A1) which discloses a similar separator as claimed in both this Application and the parent Application wherein it is taught in Paragraph 0049 that stability up to 500 °C or greater is recognized as desired in the art.
2 For support of this position of Official Notice, see cited art applied below to Yushin et al. (U.S. Patent App. No. 2019/0198837 A1) which discloses a similar separator as claimed in both this Application and the parent Application wherein it is taught in Paragraphs 0044, 0053 and 0087 that encompassing porosity is recognized as desired in the art.
3 For support of this position of Official Notice, see cited art applied below to Yushin et al. (U.S. Patent App. No. 2019/0198837 A1) which discloses a similar separator as claimed in both this Application and the parent Application wherein it is taught in Paragraphs 0037 - 40 that encompassing electrolytes are recognized as equivalents in the art.
4 For support of this position of Official Notice, see cited art applied below to Lv et al. (at least claim 4) and/or Abe et al. (at least Paragraph 0264), both of which disclose the claimed cation as conventional in the art of ionic liquids used in Li ion secondary batteries.
5 For support of this position of Official Notice, see cited art applied below to Lv et al. (at least Paragraph 0058) and/or Abe et al. (at least Paragraphs 0104 – 0107 and 0118), both of which disclose the claimed cathode active materials as conventional in the art of active materials used in Li ion secondary batteries.
6 For support of this position of Official Notice, see cited art applied below to Yushin et al. (U.S. Patent App. No. 2020/0343580 A1) which discloses a similar separator as claimed in both this Application and the parent Application wherein it is taught in the Abstract and at least Paragraph 0141 that encompassing cathode areal capacity loading values are recognized as desired in the art.