DETAILED ACTION
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.
Regarding the limitation(s) “oil-based separator” in claim 13, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, this is a process limitation in that it is directed how the coating is formed:
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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”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for specific additives, does not reasonably provide enablement for any and all possible additives that could be used. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
The test of enablement is whether one skilled in the art could make and use the claimed invention coupled with information known in the art without undue experimentation (See United States v. Theketronic Inc., 8 USPQ2d 1217 (Fed. Cir. 1988)). Whether undue experimentation is required is not based upon a single factor but rather a conclusion reached by weighing many factors (See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400 and MPEP 2164.01.)
(A) The breadth of the claims;
The pending claims (at least the independent claims) are broad. There are trillions of possible combinations of additives (perhaps, even an infinite number) that would potentially read on the claimed breadth, given the lack of specific material compositions. E.g. Uranium-235 and Uranium-238 could be the first and second additives, but Applicant’s specification provides no teaching or suggestion of using these isotopes of Uranium as the claimed “additives”.
(B) The nature of the invention;
Separators are not a very complex type of invention, per se, as secondary batteries have been known for many years. However, there are many different formulations for coatings including two or more additives and the Examiner acknowledges that chemical variations do not always yield predictable results.
(C) The state of the prior art;
The secondary battery art is in a relatively crowded art since secondary batteries have been made for many years.
(D) The level of one of ordinary skill;
The level of ordinary skill in the art is probably a research chemist or engineer having a minimum of four+ years of experience.
(E) The level of predictability in the art;
The art is relatively predictable – a good separator coating will exhibit known and expected ion migration properties, etc.. However, it is unclear in the art whether any and all additives would provide such a separator, and the present specification does not provide any illumination to this question.
(F) The amount of direction provided by the inventor;
As noted above, there is almost no direction provided by the inventor as to what materials constitute proper separator versus embodiments having two ‘additives’ that would fail to be within the disclosed improvement. The specific embodiments teach a first and second additive of PVDF, wherein one is added as microspheres; however, the Examiner deems that there is sufficient guidance and teaching to support that at least one additive is PVDF and the other is organic microspheres.
(G) The existence of working examples; and
The specification provides some working embodiments as discussed above.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Millions of experiments are required in order to determine what will and will not work. It is the Examiner's contention that the interaction of the various components are likely within the skill level of a POSITA, so the interactions among the components may, or may not, present an undue burden. However, without specific limitations on exact additives or what additional components may (or may not) be necessary, the Examiner notes that the breadth of the claim scope is immense relative to what is taught in the as-filed specification.
Given the above analysis of the factors, which courts have determined, are critical in asserting whether a claimed invention is enabled, it must be considered that a skilled artisan would have to conduct undue and excessive experimentation in order to practice the claimed invention. Applicant is advised to positively set forth specific comparative shielding structures with definite structural limitations or to present specific arguments on the record as to why a POSITA would view the claimed limitations as enabling.
This rejection can be overcome by amending claim 1 to positively recite that “one of the first and second additives is polyvinylidene fluoride (PVDF) and the other is an organic microsphere”.
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 pre-AIA the applicant regards as the invention.
First, claims 1 – 20 recite limitations in an “adhesive layer hole” (claim 3 also further limits this), yet there is no recitation of an ‘adhesive layer’, so it is unclear what is meant by ‘adhesive layer hole’? The Examiner believes this is talking about the coating layer and, if this is correct, this rejection can be overcome by either replacing all recitations of ‘adhesive layer’ with ‘coating layer’ or amending claim 1 to clarify that the coating layer is an adhesive layer.
Second, the term “partially or rarely dissolved” in claims 4 and 5 is a relative term which renders the claim indefinite. The terms “partially dissolved” and “rarely dissolved” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. I.e. it is unclear what range of dissolution qualifies as ‘partially’ or ‘rarely’ and what one artisan might consider as ‘partially dissolved’ would be different than what another might consider as such. Of particular concern is the term ‘rarely’ and the Examiner deems that amending this clause to delete ‘or rarely’ and the comma after ‘solvent’, so that it recites: “the organic microspheres are partially dissolved in an organic solvent to form a mesh structure” would be sufficiently definite.
Third, the term ‘long-chain’ in claim 6 is a relative term which renders the claim indefinite. The term ‘long-chain’ is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. I.e. how ‘long’ must a chain be to be considered a ‘long-chain’? For the purpose of evaluating the prior art, this claim has been interpreted as simply reciting “in a grid shape”, which is deemed definite.
Fourth, regarding claims 17, 18 and 20, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention, similar to the phrase ‘such as’. See MPEP § 2173.05(d). For the purpose of evaluating the prior art, none of these additional limitations after ‘preferably’ are deemed required and are deemed optional. These rejections can be overcome by removing the ‘preferably’ type language and replacing it with ‘wherein’ (as an example) or deleting the entire clause beginning after ‘preferably’ and adding them as separate dependent claims
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 – 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kojima et al. (U.S. Patent No. 9,987,597 B2) in view of the Admitted Prior Art (APA).
Regarding claim 1, Kojima et al. disclose a separator (col. 15, lines 14 – 19), wherein the separator comprises a coating (Title; Abstract; ‘skin layer’); the coating comprises a first additive and a second additive (spherical bodies and linear joining parts), and the coating comprising a plurality of holes (taken as ‘adhesive layer holes) (Title; Abstract; examples; and col. 10, lines 12 – 21), the pore diameters ranging from 0.01 µm to 10 µm (ibid).
Kojima et al. fails to disclose the mass ratio of the first additive (spherical bodies) to the second additive (linear parts) ranges from 1:9 to 9:1, nor whether the coating layer is an ‘adhesive layer’ applied to a body of a separator.
Regarding the amount of the spherical and linear components (i.e. mass ratio of the two additives), 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 mass ratio of the first and second additive through routine experimentation, especially given the teaching in Kojima et al. regarding the desire to have a matrix formed from the spherical parts being connected to each other by the linear parts, much like Applicants’ own invention. 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).
In addition, the APA teaches that it is known in the art to form a separator body comprising PE, PP, or layered bodies like PP/PE/PP, having a coating layer comprising an adhesive material like PVDF (which is the same material used by Kojima et al. – e.g. see examples and col. 4, lines 20 – 27) and particles (
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). While the APA talks about ceramic particles, Kojima et al. uses spherical PVDF ‘particles’ to form the porous structure of the coating layer.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Kojima et al. to utilize a coating layer meeting the claimed limitations as taught by both Kojima et al. and the APA, as such coating layers are known to be formed on separator bodies and serve to provide a porous separator having good porosity characteristics (Kojima et al. citations above).
Regarding claim 2, optimization of the ratio would have been obvious for the same reasons as set forth above.
Regarding claim 3, Kojima et al. teaches that uniformity of pore holes is desired (col. 2, lines 27 – 42 and col. 3, lines 57 – 67). While the exact range and percentage is not explicitly taught, they Examiner deems that these would be routine optimizations for a person of ordinary skill in the art given the known teaching to desire fairly uniform pore sizes.
Regarding claims 4 and 5, the spherical bodies taught above read on the claimed limitations for the reasons set forth above (PVDF). In addition, Kojima et al. teach molecular weight ranges (col. 4, lines 52 – 64) as being a known optimizable parameter and the melting temperature is directly correlated to molecular weight (higher MW, higher Tm). As such, the Examiner deems these two parameters (at least) are also simply routine optimization within the knowledge of a person of ordinary skill in the art. See also below for the ‘mesh-like’ aspect.
Regarding claim 6, Kojima et al. disclose the first additive (linear joining parts) connect to the second additives (spherical parts) to form a grid/mesh like network, thereby meeting the claimed limitations.
Regarding claim 7, as noted above, Kojima et al. teach that the molecular weight (which is correlated to the melting temperature) is a known, optimizable parameter. As such, 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 melting point range and weight-average molecular weight range through routine experimentation, especially given the teaching in Kojima et al. regarding the desire to control the molecular weight (and, hence, also the melting point range) to ensure good processing characteristics and network/mesh-like formation. 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 8 – 12, the APA disclose base layers meeting the claimed material and structural limitations (having the coating layer thereon). Kojima et al. disclose skin layers having thickness ranges of 0.5 to 10 microns (at least col. 5, lines 1 – 3). While Kojima et al. disclose having a second ‘support layer’ in the embodiments primarily described in their disclosure (filters), the Examiner notes that Kojima et al. teach that this ‘support layer’ is only necessary to provide mechanical stability to the skin layer (col. 5, lines 4 – 15), which would be unnecessary when used as a coating on a separator base body. Regarding the thickness of the base, 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 base layer thickness through routine experimentation, especially given the teaching in Kojima et al. the thickness values as low as 20 microns are sufficient to provide mechanical stability to the skin layer (col. 5, lines 1 – 3). 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 claim 13, this is process limitation on how the coating is formed (via a generally organic solvent), which appears to be met by the methodology of Kojima et al. dissolving the PVDF in an organic solvent (see at least columns 12 – 14).
Regarding claims 14 and 15, while no values are reported in Kojima et al., the APA clearly indicates that electrostatic values (
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) should be minimized to avoid static electricity. Similarly, a skilled artisan would appreciate that ‘self-discharge’ should be minimized and, while no values are reported, a skilled artisan would be well versed in minimizing these parameters (i.e. near 0 V and near 0 mV/hr) to ensure the battery does not short circuit.
Claims 16 – 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kojima et al. in view of the APA as applied above, and further in view of Kang et al. (U.S. Patent App. No. 2022/0123306 A1).
Kojima et al. and the APA are relied upon as described above.
Regarding claims 16 – 20, while Kojima et al. briefly mentions the use as a battery separator, their primary disclosure is directed to the use of these coating films as filters. As such, Kojima et al. fails to teach the specific battery structure, as recited in claims 16 – 20 (noting that the limitations after ‘preferably’ are taken as optional and, as such, are not addressed/required1).
However, Kang et al. teach a lithium ion secondary battery using a separator similar to that taught in the APA (Kang et al., Paragraphs 0112 – 0113 and 0141), as well as a positive electrode comprising a positive electrode current collector, a positive electrode tab, and a positive electrode coating comprising at least a positive electrode active material, a positive electrode conductive agent, and a positive electrode binder (Paragraphs 0099 – 0107 and 0138). Similarly, Kang et al. teaches a negative electrode comprising a negative electrode current collector, a negative electrode tab, and a negative electrode coating comprising at least a negative electrode active material, a negative electrode conductive agent, a negative electrode binder, and a negative electrode dispersing agent (Paragraphs 0038 – 0098, 0139; but especially noting Paragraphs 0039, 0089, and 0139). All of these are conventional structural/materials in a lithium ion secondary battery in order for the battery to function.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Kojima et al. in view of the APA to use the ‘battery separator’ in a lithium ion secondary battery meeting the claimed battery structure limitations as taught by Kang et al., since these limitations are conventional aspects of lithium ion secondary batteries and a skilled artisan would readily appreciate that these aspects are conventional and necessary to produce a battery that functions as a secondary battery.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: while no claim has been indicated as allowable, the Examiner notes that Applicants’ embodiment of a separator according to claim 1, wherein all of the following are added:
“One of the first and second additives is polyvinylidene fluoride (PVDF) and the other is an organic microsphere added as separate additives”
The subject matter of claim 6 (though without the relative terms “long-chain”)
Amendments to address the ‘adhesive layer’ aspect rejected under 35 U.S.C. 112, above (one example, if the Examiner has ‘guessed’ correctly, is to simply amend claim 1 to recite “… wherein the separator comprises an adhesive layer coating, the coating …” or to replace recitations of ‘adhesive layer’ in claims 1 and 3 with ‘coating layer’).
The Examiner notes that while the applied art above uses a single source of PVDF to form the mesh-like structure, there is no guidance in the prior art to form this structure using distinct additives added separately during the coating formation, while also optimizing the blending ratio and pore diameter range as claimed.
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
June 5, 2026
1 While not addressed as not required, the Examiner notes that almost all of these “optional” limitations are simple, routine optimizations well within the knowledge of a person of ordinary skill in the art….
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