DETAILED ACTION
This Office Action is in response to the Amendment filed on 03/10/2026.
In the filed response, Claims 1, 5-7, 10-13, and 20 have been amended, where Claim 1 is an independent claim.
Accordingly, Claims 1-20 have been examined and are pending. This Action is made FINAL.
Terminal Disclaimer
1. The terminal disclaimer filed on 03/10/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18382198 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Information Disclosure Statement
2. The information disclosure statement (IDS) was submitted on 12/30/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Arguments
3. Applicant’s arguments, see pgs. filed 03/10/2026, with respect to the prior art rejections of the instant claims under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the prior art rejections have been withdrawn. However, upon further consideration of the amended claims, new grounds of rejections are made under 35 U.S.C. 112(b). Please see office action below for details.
4. Applicant’s remarks and amendments addressing the objections to the drawings are acknowledged. As such, the objections are withdrawn.
5. Applicant’s remarks and amendments addressing the objection to the specification (title) are acknowledged. As such, the objection is withdrawn.
6. Applicant’s remarks and amendments addressing the interpretation of claims 5-7 under 35 U.S.C. 112(f) are acknowledged. As such, the claim interpretation of these claims is withdrawn.
7. As to the claim objections, Applicant’s remarks and amendments are acknowledged. As such, the objections are withdrawn. However, with respect to the limitation “black spots black spots” in claim 10 (see F. on pg. 13 of Applicant’s remarks), this objection is maintained for the reason given below.
8. Applicant’s remarks and amendments addressing the rejection of the claims under 35 U.S.C. 112(b) are acknowledged. As such, the claim rejections are withdrawn.
9. The Examiner is available to discuss the matters of this office action to help move the Instant Application forward. Please refer to the conclusion to this office action regarding scheduling interviews.
10. Accordingly, Claims 1-20 have been examined and are pending.
Claim Objections
11. Claim 1 is objected to because of the following informalities: it appears the amended limitation “wherein black spots penetrating…” should read as “wherein the black spots penetrating…”, since “black spots” was first referenced on line 1. Please check and update accordingly. Appropriate correction is required.
12. Claim 10 is objected to because of the following informalities: it appears there should be a comma that follows the limitation “in the second selecting of the black spots”. In other words, it is believed this should read as “in the second selecting of the black spots, black spots and foreign materials...” Please check and update accordingly. Appropriate correction is required.
Claim Rejections - 35 USC § 112
13. 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 1-20 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 claim 1, claim 1 recites the limitation “removing a foreign material from a surface of the separator, wherein black spots penetrating an inside of the separator remain after the removing” (Emphasis added). The foregoing shows that black spots penetrate an inside of the separator and remain after removing a foreign material (FM). However after further consideration in light of the filed specification, this could also be understood as a metal component (i.e. a FM) penetrating an inside of the separator which remains (or is maintained) after the removing. For e.g., ¶0011 disclose “the black spots formed by a metal oxide penetrating the inside of the separator may remain”. This is also similarly shown in ¶0056 and ¶0060. The specification further shows there is a clear relationship between metal FM and the black spots, where the FM act to cause the black spots, i.e. short-circuits (e.g. ¶0004), however, this does not appear to be disclosed anywhere in the claim; hence, the aforementioned features are not clearly defined. For these reasons, the metes and bounds of the claim cannot be unequivocally ascertained.
Regarding claims 2-20, claims 2-20 all depend on claim 1 and therefore include all of its features. Thus, claims 2-20 are also rejected under 35 U.S.C. 112(b) for the same reasons presented above.
Regarding claim 1, the limitation “removing a foreign material from a surface of the separator, wherein black spots penetrating an inside of the separator remain after the removing” (Emphasis added) also appears to suggest some FM may have been missed during the removing step, which can be construed as the FM that causes the black spots to form in the separator as understood from the filed specification. As such, claim 1 is further rejected under 35 U.S.C. 112(b).
Regarding claims 2-20, claims 2-20 all depend on claim 1 and therefore include all of its features. Thus, claims 2-20 are also rejected under 35 U.S.C. 112(b) for the same reasons presented above.
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 RICHARD A HANSELL JR. whose telephone number is (571)270-0615. The examiner can normally be reached Mon - Fri 10 am- 7 pm.
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, Jamie Atala can be reached at 571-272-7384. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A HANSELL JR./Primary Examiner, Art Unit 2486
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