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 .
Response to Arguments
Applicant's arguments filed 7/21/26 have been fully considered but they are not persuasive. The Kim and Jeong reference still combine to teach at least claim 1 although the rejection has been modified due to the amendment. The objection to title has been overcome by the amendment to title.
Applicant’s arguments towards claim 1 are found on page 6 of the Remarks and are in light of the amendment. Applicant posits that the separators of Kim are not in direct contact with another due to the presence of an adhesive layer in Kim that is not necessary or present in the instant invention or claim(s). The Examiner respectfully disagrees. As shown in instant Figure 4, separator 23 has a first surface layer 23B1 and a second surface layer 23B2; these layers are now recited in claim 1 as being those of the adjacent separator’s. The Office construes these surface layers akin to the layers 13 of Kim because Jeong modifies the adhesive to be the same material as that claimed. Therefore, Kim and Jeong teach that the separators are in direct contact with one another via their adhesive layers in the same manner that the instant invention’s separators are in contact with one another via their surface layers.
The remaining arguments are in light of the last limitation of claim 1 that states “wherein, when the non-aqueous electrolyte secondary battery is subjected to a heating test…the adjacent protruding portions of the separators…are adhered to each other after the heating test.” It should be noted that the limitation states “when the.” The Office construes such wording to indicate that the heating test is not a structural element of the claim (affirmed by Applicant in an interview conducted on 9/25/26) and therefore not a product-by-process limitation and so is only given patentable weight insofar as the apparatus’s ability to behave in the manner described in the circumstance that the heating test occurs. It is the Office’s position that this is the case because the structure and materials recited are disclosed. Something which is old does not become patentable upon the discovery of a new property. See MPEP 2112 I.
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, 2, 4, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2022/0393225 A1) in view of Jeong (US 2021/0098847 A1).
Regarding claims 1, 2, and 4, Kim discloses an apparatus comprising: a plurality of separators 12 located between positive and negative electrodes 11 such that the separators protrude further than the electrodes and are bent so as to overlap one another (paragraph 33). Kim discloses that the separator has an ester binder (paragraph 12), multiple layers (paragraph 64), and adhesive layers 13 on both sides of the separators that are in contact with one another (see Figure 1) but not the materials and ratios claimed.
Jeong—in an invention battery separators—discloses: a separator coating layer comprising 65-90% VDF and 1-28% HFP (paragraph 11) for improved adhesiveness, reduced interfacial resistance characteristics and improved air permeability, and improved thermal stability due to interstitial volumes present in the porous coating layer (paragraph 9); and an electrolyte comprising ethylene carbonate (a cyclic carbonate ester) and ethylmethyl carbonate (a chain ester) in a weight ratio of 3:7 (paragraph 127) to improve performance and improve ionic conductivity (paragraph 49). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize the separator coating layer of Jeong as the adhesion layer in Kim and the electrolyte materials of Jeong as the electrolyte of Kim for the respective advantages taught by Jeong.
The Office does not consider the last limitation of claim 1 to be a product-by-process limitation because it is phrased as “when the” as opposed to stating that the process produces the product. It is the Office’s position that Kim and Jeong have the same properties as that of the instant claim because the structure and materials recited are the same. Something which is old does not become patentable upon the discovery of a new property. See MPEP 2112 I.
Regarding claim 8, Jeong discloses poly(vinylidene fluoride-co- hexafluoropropylene) (paragraph 58).
Claims 1, 3, 4, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over McKinney (US 2011/0059343 A1) in view of Jeong (US 2021/0098847 A1).
Regarding claims 1 and 4, McKinney discloses an apparatus comprising: a plurality of separators 200 located between positive and negative electrodes such that the separators protrude further than the electrodes (paragraph 107) and are in contact at their edges (paragraph 121). McKinney discloses that the separators are multiple layers including three layer (paragraphs 71 and 72), that the outermost and innermost layers of the separators are fused to one another when heat is applied (paragraph 121), and a non-aqueous electrolyte (paragraph 80) but not the materials and ratios claimed.
Jeong—in an invention battery separators—discloses: a separator comprising 65-90% VDF and 1-28% HFP (paragraph 11) for improved adhesiveness towards electrode, reduced interfacial resistance characteristics and improved air permeability, and improved thermal stability due to interstitial volumes present in the porous coating layer (paragraph 9); and an electrolyte comprising ethylene carbonate (a cyclic carbonate ester) and ethylmethyl carbonate (a chain ester) in a weight ratio of 3:7 (paragraph 127) to improve performance and improve ionic conductivity (paragraph 49). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize the separator coating layer of Jeong as innermost and outermost layers of McKinney and the electrolyte materials of Jeong as the electrolyte of McKinney for the respective advantages taught by Jeong.
The Office does not consider the last limitation of claim 1 to be a product-by-process limitation because it is phrased as “when the” as opposed to stating that the process produces the product. It is the Office’s position that McKinney and Jeong have the same properties as that of the instant claim because the structure and materials recited are the same. Something which is old does not become patentable upon the discovery of a new property. See MPEP 2112 I. Further, McKinney does disclose that the separators are fused after heat (paragraph 121).
Regarding claim 3, McKinney does not disclose the relative dimension of the protruded part to the thickness but changes in size/proportion are not grounds for patentability. See MPEP 2144.04 IV A. It would have been obvious to one having ordinary skill in the art at the time of invention to size McKinney most appropriate for its context.
Regarding claim 8, Jeong discloses poly(vinylidene fluoride-co- hexafluoropropylene) (paragraph 58).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kim or McKinney and Jeong as applied to claim 1 above, and further in view of Lee (US 2021/0020887 A1).
Jeong discloses the use of EC and PC for its electrolyte (paragraph 98) but not the use of propyl propionate. Lee—in an invention for a battery with a separator having excellent adhesion—discloses an electrolyte of EC:PP=30:70 (paragraph 36) to reduce the electrolyte absorption ratio and prevent pores from being swelled (paragraph 69). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize the electrolyte composition of Lee in the invention of Kim or McKinney and Jeong to ensure a lower electrolyte absorption rate as motivated by Lee.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725
