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 Amendment
Applicant amended claims 1-6; claims 1-6 are pending and considered in the present Office action.
Applicant’s arguments with respect to the rejections of the claims are not persuasive. The rejections of the claims are maintained.
Response to Arguments
Applicant argues the claimed invention solves a particular problem (reduce electrode resistance after pressing, maintain ion permeability) which the prior art does not suggest. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), MPEP 2144, IV.
Applicant argues the instant invention includes “significant technical improvements”; applicant concludes unexpected results because there is a substantial reduction in the electrode resistance after pressing and maintained ion permeability upon compression, which the prior art does not disclose. Applicant’s arguments of unexpected results are not persuasive for the following reasons.
"[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). MPEP 716.02(b). Unexpected results must be commensurate in scope with the claimed invention. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). MPEP 716.02(d).
In this case, applicant discusses Example 1 (inventive separators 1-13), whose area ratio ranges from 3.8% to 32.9%, as having a reduced electrode resistance of 2.69 Ω or less, while comparative examples, whose area ratio ranges from 0.0% to 2.8% results in a resistance of 2.77 Ω to 4.65 Ω. First, applicant’s data is not commensurate in scope of the claimed invention. Applicant has not presented enough examples to represent the entire claimed range, e.g., value of 3.0% and values above 32.9% are not provided. Thus, it is unclear whether the alleged unexpected resistance occurs over the entire claimed range. Second, the claimed end point (area ratio of 3.0%) is not presented for review; thus, applicant has not compared a sufficient number of tests both inside and outside the claimed range to show criticality of the claimed range. Further, applicant discloses a resistance value of 2.69 Ω inside the claimed range and a resistance value of 2.77 Ω outside the claimed range; given how numerically close 2.69 Ω is to 2.77 Ω, it is unclear how a difference of only 0.08 Ω is in fact unexpected and unobvious and of both statistical and practical significance (especially in view of what is expected, as suggested by Ameyama and discussed next).
Expected beneficial results are evidence of obviousness, MPEP 716.02(c). Applicant’s argument that the prior art has not recognized the correlation between the orientation of the pores and the electrode resistance is not persuasive. Ameyama suggests the orientation of the pores (i.e., angle of the pore) does affect ion conductivity and resistance of the layer because the angle and number of pores including said angle effects how quickly the lithium ion is able to diffuse through the later, pages 29-30/55. In other words, without a sufficient number of pores having the aforementioned orientation (angle), diffusion of the lithium ion is inhibited, such that higher resistance is expected in view of the reduced ion diffusion. Thus, the fact that the instant disclosure observes lower resistance with higher pore area (i.e., not less than 3%) is expected provided ions are able to diffuse through the layer quickly, while higher resistance is expected when there is a smaller pore area because ions are unable to diffuse quickly.
In view of the foregoing, applicant’s arguments of unexpected results are insufficient to rebut the prima facie case of obviousness.
Applicant’s argument the prior art does not suggest area ratio of the pores of not less than 3% with respect to all pores because Ahn’s measuring protocol does not suggest proportion and area ratio of the pores is not persuasive.
Ahn’s porous layer is made of two distinct parts, an inner layer having inner pores and a surface layer having surface pores. Each of the inner pores of the inner layer have a maximum and a minimum Feret diameter and each of the surface pores have a maximum and a minimum Feret diameter, with the inner pores having larger maximum and minimum Feret diameters compared to the surface pores ([0026-0027]). In determining the size of the inner pores of the porous layer, Ahn randomly selects 20 inner pores ([0028], Fig. 3) for evaluation, thereby establishing the average maximum Feret diameter and the average minimum Feret diameter of the inner pores of the inner layer of the porous layer. Since the pore-forming particles (used to form the inner pores) are highly uniform in size and uniformly dispersed to enable the formation of a highly uniform pore distribution in the layer ([0046-0047, 0050]), a skilled artisan would understand the features (average max/min Feret diameter) obtained from the snapshot of 20 inner pores extrapolate to the entire inner layer. In view of the foregoing, the snapshot suggests the total pore area of the inner layer is made up of inner pores having the average maximum Feret diameter and minimum Feret diameters and inner pores outside the average max/min Feret values; that is, ~50% (average) of the total pores in the inner layer are the inner pores having the average max/min Feret diameter, while the remaining 50% of the total pores in the inner layer comprise a max/min diameter outside the average. Thus, Ahn suggests the pores that satisfy the max/min Feret diameters represent about ~50% of the total pores of the inner layer, thereby suggesting an area ratio of pores satisfying conditions 1 and 3 is not less than 3% by area with respect to all pores present in the cross section.
Applicant argues Ahn does not teach condition 2 and that it would not be obvious to modifying Ahn with Ameyama for condition 2 because Ameyama does not teach condition 1 and 3 and the area ratio limitation suggested by Ahn. In response to applicant's argument that it would not be obvious to modify Ahn with Ameyama because Ameyama does not suggests condition 1 and 3, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Ameyama suggests when the ratio of holes having the claimed angle is 30% or more (page 30/55) the layer results in excellent heat resistance. Ahn would appreciate that 50% of the inner pores (which is inside the range “30% or more” suggested by Ameyama) have the claimed angle from the standpoint of excellent heat resistance.
Applicant’s argument that Ahn fails to suggest the features of claim 2 (polyolefin base material) is not persuasive. As set forth above, Ahn’s porous layer is made of two distinct parts, an inner layer having inner pores and a surface layer having surface pores. The inner layer comprising the inner pores is the functional layer, while the surface layer comprising the surface pores is the base material. The porous layer, where the two layers are on top of each other, is made of polyethylene (see e.g., abstract [0007, 0039]), a polyolefin material, thereby making both the inner layer (functional layer) and the surface layer (base material) of polyolefin material. Thus, Ahn suggests the functional layer (i.e., inner layer comprising the inner pores) and the polyolefin based material (i.e., surface layer comprising the surface pores) formed on top of each other. Ahn further suggests multiple porous layers such that a first porous layer (comprising inner/surface layers) is the functional layer and the second porous layer (comprising inner surface layers) a polyolefin base material.
Applicant’s comments with respect to the makeup of the polyolefin base material (i.e., “ultra-high molecular weight polyethylene, low molecular weight polyolefin, inorganic filler, etc.,) are moot as these are not limitations in the claim. Further, applicant comments requiring a “separate” polyolefin base material are also unpersuasive because Ahn has recognized the inner and surface layers as separate in view of the different physical features (i.e., pore sizes).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ahn et al. (US 2020/0035972) in view of Ameyama et al. (JP 2016-072197, of record), Ahn and Ameyama.
Regarding Claims 1 and 4, Ahn suggests a nonaqueous electrolyte secondary battery ([0071-0072]) comprising a nonaqueous electrolyte secondary battery functional layer comprising oval shaped pores ([0027]) where a maximum Feret diameter is not less than 0.5 µm (e.g., average length of the major axis of the pore is 40nm to 600nm ([0032]), thereby overlapping with not less than 0.5 µm), and the maximum Feret diameter/a minimum Feret diameter has a value of not less than 1.2 (see e.g., [0037]). Ahn determines the aforementioned values (maximum Feret diameter, minimum Feret diameter, ratio maximum/minimum) by selecting 20 pores in a randomly cross section of the separator [0028]; this random selection represents about the average (50%) of the pores in the separator, hence the pores of Ahn represent at least 3% of the pores with respect to the total pores in the cross section of the separator (see Response to Arguments section for more details).
Ahn does not suggest the angle at which the pores take with respect to an in-plane direction of the nonaqueous electrolyte secondary battery functional layer. However, Ameyama suggest when 30% or more of pores include an angle of 60° - 120° excellent (low) heat resistance, high ion conductivity and output characteristics are obtained, [0082, 0091]. It would be obvious to one having ordinary skill in the art the pores of Ahn are angled with respect to an in plane direction of the functional layer with the expectation of obtaining low heat resistance, high ion conductivity and output characteristics, as suggested by Ameyama.
Regarding Claims 2 and 5, Ahn suggests a nonaqueous electrolyte secondary battery comprising a nonaqueous electrolyte secondary battery laminated separator comprising the functional layer (i.e., inside the porous film, pores of which are detailed in the rejection of claim 1), and a polyolefin base material (e.g., surface of the porous film) formed on top of each other, see e.g., [0034], abstract, etc. See also [0059], for multilayer films, [0067] for other discussions of additional layers on top of the functional layer set forth in the rejection of claim 1, and Response to Arguments section for more details.
Regarding Claims 3, and 6, Ahn suggests a nonaqueous electrolyte secondary battery comprising a nonaqueous electrolyte secondary battery member comprising a positive electrode; a nonaqueous electrolyte secondary battery laminated separator recited in claim 2; and a negative electrode, the positive electrode, the nonaqueous electrolyte secondary battery laminated separator, and the negative electrode being formed on top of each other in this order, see e.g., Fig. 4 and [0071-0072].
Conclusion
THIS ACTION IS MADE FINAL. 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 ANNA KOROVINA whose telephone number is (571)272-9835. The examiner can normally be reached M-Th 7am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at 5712721481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA KOROVINA/ Examiner, Art Unit 1729
/ULA C RUDDOCK/ Supervisory Patent Examiner, Art Unit 1729
