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 . 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.
Election/Restrictions
Applicant's election with traverse of claims 1-14 in the reply filed on June 26, 2026 is acknowledged. Applicant alleges that the claims “are directed to a single inventive concept.” This is not found persuasive because Groups I and II are directed to separate statutory categories of invention, namely a product and a method, that possess different classifications and require separate searches. Furthermore, the identified species are drawn to independent and unrelated products. Specifically, a battery provides electrical power to a circuit via a contained electrochemical reaction. A fuel cell also provides electrical power to a circuit, but requires the input of a fuel, typically hydrogen, and produces an exhaust, typically water vapor. A gas separator removes a target gas from a mixture without any chemical reaction. Lastly, a hemodialysis machine filters waste materials from blood. Any assertion that these four distinct products are directed to a single inventive concept is unreasonable.
Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, while 18-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 26, 2026.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claims 1, 2, 7, 8, 10-12, and 14 are rejected under 35 U.S.C. § 102(a)(1) & (a)(2) as being anticipated by Yin et al. (US 2023/0155253 A1), hereinafter “Yin.”
Regarding claim 1, Yin discloses a product comprising:
a porous first layer having a first porosity, in this case an interior polyethylene (PE); and
a porous skin layer having a second porosity that is relatively lower than the first porosity, in this case the thinner outer layer with lower porosity than the interior PE layer (¶ [0071]-[0072]).
The limitation “wherein the skin layer is a self-formed layer” is a product-by-process limitation. Applicant is reminded that “‘even 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) (citations omitted).” M.P.E.P. § 2113 I. Here, Yin discloses all of the positively-recited structural limitations presented in the claim. The claimed product is therefore anticipated regardless of its method of construction.
Regarding claim 2, the limitation “wherein the first and skin layers have physical characteristics of simultaneous formation via curing” is a product-by-process limitation. Applicant is reminded that “‘even 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) (citations omitted).” M.P.E.P. § 2113 I. Here, Yin discloses all of the positively-recited structural limitations presented in the claim. The claimed product is therefore anticipated regardless of its method of construction.
Regarding claim 7, the limitation “wherein the pores of the first and skin layers have physical characteristics of a previously-present porogen” is a product-by-process limitation. Applicant is reminded that “‘even 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) (citations omitted).” M.P.E.P. § 2113 I. Here, Yin discloses all of the positively-recited structural limitations presented in the claim. The claimed product is therefore anticipated regardless of its method of construction.
Regarding claim 8, Yin further discloses that the first porosity is in the range of 40% to 90%, in this case 45.1% and 43.2% (Table 3).
Regarding claim 10, Yin further discloses that the second porosity is sufficient to prevent passage of lithium dendrites through the skin layer, in this case the lower porosity helps to block dendrites (¶ [0073]).
Regarding claim 11, Yin is silent as to the prevention of polysulfide passage through the skin layer. However, Yin discloses the same structure in terms of layers and porosities as set forth in the rejection of claim 1, above. Furthermore, Yin teaches the same pore sizes of the layers as set forth in the rejection of claim 9, below. The resulting structure would therefore be capable of preventing the passage of polysulfides. See M.P.E.P. § 2112.
Regarding claim 12, Yin further discloses a cathode and anode disposed on opposite sides of the layers (¶ [0059]-[0060], Figs. 4A-4F, 5A-5B, & 6A-C).
Regarding claim 14, Yin further discloses that the layers are a battery separator (e.g., ¶ [0043]).
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 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Yin.
Regarding claim 9, Yin further teaches that the skin layer pore size is less than 2 μm, in this case 0.01 micron to 1.0 micron (¶ 0056]). A prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. M.P.E.P. § 2144.05.
Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being unpatentable over Yin as applied to claim 1, above, and further in view of Xiao et al. (US 2019/0267599 A1), hereinafter “Xiao.”
Regarding claim 3, Yin further discloses a variety of layer arrangements (¶ [0072], Figs. 4A-4F, 5A-5B, & 6A-C). Likewise, Xiao teaches multi-layered separator structures (¶ [0099]-[0101], Fig. 1). Furthermore, “mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” M.P.E.P. § 2144.04 VI. B. Here, one having ordinary skill in the art would have understood that providing additional porous layers and skin layers would have helped to block dendrites (see Yin, ¶ [0073]) as well as improved separatory safety and robustness (see Xiao, ¶ [0341]), thereby facilitating improved separator operation and safety. Therefore, it would have been obvious to have provided a porous second layer and a second skin layer in order to have facilitated improved separator operation and safety.
Regarding claim 4, Yin further discloses a variety of layer arrangements (¶ [0072], Figs. 4A-4F, 5A-5B, & 6A-C). Likewise, Xiao teaches multi-layered separator structures (¶ [0099]-[0101], Fig. 1). Furthermore, “mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” M.P.E.P. § 2144.04 VI. B. Here, one having ordinary skill in the art would have understood that providing additional porous layers and skin layers would have helped to block dendrites (see Yin, ¶ [0073]) as well as improved separatory safety and robustness (see Xiao, ¶ [0341]), thereby facilitating improved separator operation and safety. Therefore, it would have been obvious to have provided a porous third layer and a third skin layer in order to have facilitated improved separator operation and safety.
Claims 5 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable over Yin as applied to claim 1, above, and further in view of Song et al. (US 2024/0047826 A1), hereinafter “Song.”
Regarding claim Regarding claim 5, Yin does not disclose that the skin layer’s thickness is less than one quarter of that of the first layer. However, Song teaches a separator skin layer with a thickness that is 0.1% to 90% of the separator’s total thickness (¶ [0181]). A prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. M.P.E.P. § 2144.05. Additionally, a claimed device is not patentably distinct from a prior art device where the only difference is a recitation of relative dimensions. See M.P.E.P. § 2144.04 IV. A. Here, one having ordinary skill in the art would have understood that providing a skin layer with a thickness less than one quarter of that of the first layer would still provide the desired separator characteristics, including dendrite suppression (Song, ¶ [0181]), thereby facilitating improved separator operation and safety. Therefore, it would have been obvious to have made the skin layer thickness to be less than one quarter of that of the first layer in order to have facilitated improved separator operation and safety.
Regarding claim 6, Yin does not disclose that the skin layer’s thickness is less than one tenth of that of the first layer. However, Song teaches a separator skin layer with a thickness that is 0.1% to 90% of the separator’s total thickness (¶ [0181]). A prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. M.P.E.P. § 2144.05. Additionally, a claimed device is not patentably distinct from a prior art device where the only difference is a recitation of relative dimensions. See M.P.E.P. § 2144.04 IV. A. Here, one having ordinary skill in the art would have understood that providing a skin layer with a thickness less than one tenth of that of the first layer would still provide the desired separator characteristics, including dendrite suppression (Song, ¶ [0181]), thereby facilitating improved separator operation and safety. Therefore, it would have been obvious to have made the skin layer thickness to be less than one tenth of that of the first layer in order to have facilitated improved separator operation and safety.
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Yin as applied to claim 12, above, and further in view of Kim et al. (US 2020/0136102 A1), hereinafter “Kim.”
Regarding claim 13, Yin does not disclose the three-dimensional features. However, Kim teaches a battery comprising a positive electrode with 3d structures (¶ [0077], Fig. 4, ref. no. 22a) that extend in a perpendicular direction from the separator, in this case the portions of the separator (¶ [0076], Fig. 4, ref. no. 240a) that are parallel to the current collectors (¶ [0076], Fig. 4, ref. nos. 210a 230a). One having ordinary skill in the art would have realized that such a positive electrode or cathode structure would have yielded the predictable result of a functioning battery. Therefore, it would have been obvious to have provided a cathode with a three-dimensional structure in order to have yielded a functioning battery.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT J CHMIELECKI whose telephone number is (571)272-7641. The examiner can normally be reached M-F 9 am to 5 pm.
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/SCOTT J. CHMIELECKI/Primary Examiner, Art Unit 1729
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