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 .
This communication is responsive to the claim set and Response to Restriction filed 10/22/2025. Claims 122-163 are pending. Elected claims 122-154 are under consideration in this Office Action. The non-elected claims 155-163 are withdrawn.
Claims 122-154 are rejected for the reasons set forth below.
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 Group I, Claims 122 - 154 in the reply filed on 10/22/2025 is acknowledged. The traversal is on the ground(s) that Claim 156 is amended to include the limitations of Claim 155, thereby providing unity between Groups II and III. This is not found persuasive because the groups lack unity of invention because the groups require the technical feature of the coating composition of Claim 122, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Cheong et al. (US 2014/0370361 A1) or Hideaki et al. (JP2008027839 A), see discussion below.
Applicant further argued that maintaining all of the claims together would not constitute an undue search burden on the Office. This is not found persuasive because the restriction requirement is based on lack of unity not search burdens.
The requirement is still deemed proper and is therefore made FINAL.
DUPLICATE CLAIMS IN SINGLE CLAIM SET
Applicant is advised that should Claim 122 be found allowable, Claim 148 will be objected to under 37 CFR 1.75 as being a substantial duplicate of Claim 122; should Claim 149 be found allowable, claim 150 will be objected to under 37 CFR 1.75 as being a substantial duplicate of Claim 149. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. (See MPEP 706.03(k).)
Claim Rejections - 35 USC § 112
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.
Claim 154 is 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.
Claim 154 recites the coating composition comprises at least seven components selected from a group while the group has only six components. Claim 154 is considered as the coating composition comprises at least six components in this Office Action.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 122-126, 139 -151 are rejected under 35 U.S.C. 103 as being unpatentable over Cheong et al. (US 2014/0370361 A1), as evidenced by Alfa Chemistry tech blog Comprehensive Guide to Polyvinylidene Fluoride (PVDF).
Cheong discloses a positive electrode comprising a current collector and a positive active material layer formed on the current collector [0042]. Cheong discloses the positive active material layer comprises a positive active material comprising a lithiated intercalation compound that reversibly intercalates and deintercalates lithium ions [0042-0043] and a coating layer comprising a coating element (e.g., Al, Si, Ti, Zr) and an oxide of a coating element (e.g., Al2O3, SiO2, TiO2, ZrO2) ([0045]) wherein the oxides would read on the heat resistance particles of the instant claims. Cheong further discloses the positive active material layer comprises a binder and a conductive material wherein the binder is selected from the non-limiting examples of polyvinyl alcohol, carboxylmethyl cellulose, polyvinylpyrrolidone (a lactam polymer), nylon (a lactam polymer), and an acrylated styrene-butadiene rubber ([0046-0047]), therefore Cheong teaches that the binder can be polyvinylpyrrolidone which is one of the claimed binders of the instant Claims 123-126. Cheong furthermore discloses the conductive materials of carbon black, carbon fiber, graphite, metal fiber, and polyphenylene derivative ([0047-0048]), which to one of ordinary skill would act in addition as thickeners, as well as the common thickener of carboxylmethyl cellulose. Moreover, Cheong discloses non-aqueous organic solvents and water are used in the making of the coating [0050, 0053-0058]. Furthermore, Cheong discloses that the coating layer comprising polyvinylidene fluoride ([0016]) which is claimed as an adhesion agent by the instant Claim 141 and a high temperature shutdown agent by the instant Claim 147. According to the Alfa Chemistry tech blog Comprehensive Guide to Polyvinylidene Fluoride, polyvinylidene fluoride has a melting point of 170 – 177, falling within the claimed melting point range of the instant claim 146. The tech blog shows polyvinylidene fluoride has low friction coefficient, thereby reading on a friction reducing agent. Therefore, polyvinylidene fluoride reads on an adhesion agent, a friction reducing agent and a high temperature shutdown agent. Therefore, Cheong discloses the positive active material layer comprises a polymeric binder, a non-aqueous and/or water as a solvent, heat-resistant particles, a thickener, an adhesion agent, a friction reducing agent and a high temperature shutdown agent, as such it would be obvious to one of ordinary skill that Cheong reads on the instant claims 122-126, 139-151.
Claims 122-126, 139--154 are rejected under 35 U.S.C. 103 as being unpatentable over Hideaki et al. (JP2008027839 A).
Regarding claims 122-126, 129-130, and 139-152, Hideaki teaches a porous membrane comprising heat-resistant fine particles (A) and binder (B) (lns159-165), wherein the binders can be a blend of carboxymethyl cellulose, polyvinyl pyrrolidone (PVP), and polyvinylidene fluoride (PVDF) (lns268-278). As discussed at para. 8, polyvinylidene fluoride reads on an adhesion agent, a friction reducing agent and a high temperature shutdown agent. As evidenced by the instant specification, carboxymethyl cellulose reads on a thickener; additionally, Hideaki discloses that the particles (D) having adhesive properties (lns279-280). Hideaki further teaches the porous membrane comprising organic fine particles (C ) having a melting point of 80 to 1300 C which impart shutdown function to the membrane (lns283-288). Relative to the melting point of polyvinylidene fluoride, the organic fine particles (C ) read on a low-temperature shutdown agent. Therefore, Hideaki teaches a composition comprising a binder, heat-resistant particles, a low-temperature shutdown agent, an adhesion agent, a thickener, a friction reducing agent, and a high-temperature shutdown agent, and wherein the binder includes PVP, as such it would be obvious to one of ordinary skill that Hideaki reads on the instant claims 122-126, 129-130, 139-152.
Regarding Claims 129-136 and 138, Hideaki teaches the shutdown particles ( C) having a melting point of 80 to 1300 C which encompass the ranges of the instant claims 131-132. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (See MPEP 2144.05 I). Hideaki further teaches the size of the particles ( C) being 0.1 to 20 microns (lns487-491), encompass the claimed particle sizes of the instant claims 134-135. Hideaki furthermore teaches that polyethylene or polyethylene wax is preferred constituent material for the particles ( C) (lns318-328). Hideaki furthermore teaches the particles ( C) may form a core-shell structure with the heat-resistant inorganic particles with the inorganic particles as core structure the organic particles being shell (lns331-337).
Regarding Claims 153-154, Hideaki discloses the porous membrane further comprising particles (D) wherein the constituent materials for the particles (D) include crosslinked acrylic resins (lns476-479). a crosslinked resin comprises crosslinkers used in making the crosslinked resin, therefore, Hideaki inherently discloses the porous membrane comprising a crosslinker.
Claims 127-128 are rejected under 35 U.S.C. 103 as being unpatentable over Hideaki et al. (JP2008027839 A), as applied to Claim 122 above, and in further view of Jeon (US20160204409 A1).
The disclosure of Hideaki on the instant Claim 122 is incorporated herein by reference.
Hideaki teaches the binders for the porous membrane can be carboxymethyl cellulose, polyvinyl pyrrolidone (PVP), and polyvinylidene fluoride (PVDF) but is silent on the binders can include polyvinylcaprolactam or polyvinyl-valerolactam.
However, Jeon teaches a porous membrane comprising polylactam polymers and ceramic particles such as silicon oxide (SiO2), aluminum oxide (Al2O3), boehmite (Al(O)OH), zirconium oxide, titanium dioxide (TiO2), barium sulfate (BaSO4), and oxides of transition metals (claim 1 and claim 11). Jeon further teaches the polylactam polymers can be polyvinylpyrrolidone (PVP), polyvinylvalerolactam, or polyvinylcaprolactam (PVCap).
It would have been obvious to one ordinary skilled artisan, before the effective filing date of the instant application, to incorporate polyvinylvalerolactam, or polyvinylcaprolactam into the coating composition of Hideaki because Hideaki teaches polyvinyl pyrrolidone being one of the binder polymers for a porous membrane for a separator for a lithium secondary battery (ab) and Jeon teaches that polyvinylpyrrolidone (PVP), polyvinylvalerolactam, and polyvinylcaprolactam are candidate binder polymers for a porous membrane ([0028]) for a separator for a lithium ion secondary battery (ab.). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose ( see MPEP 2144.06(I)).
Claim 137 is rejected under 35 U.S.C. 103 as being unpatentable over Hideaki et al. (JP2008027839 A), as applied to Claim 122 above, and in further view of Zhao et al. (CN105140453 A).
The disclosures of Hideaki on the instant Claims 129, 133 and 136 are incorporated herein by reference.
As discussed above, Hideaki teaches the porous membrane composition comprising a low-temperature shutdown particles (C ) wherein polyethylene or polyethylene wax is preferred constituent material for the particles ( C). Hideaki further teaches that the particles ( C) may form a core-shell structure with the heat-resistant inorganic particles (B) with the inorganic particles being core structure the organic particles ( C) being shell (lns331-337).
The difference between Hideaki and the instant Claim 37 is that Hideaki is silent on the organic particles coating the heat-resistant inorganic particles (B) in the form of a latex.
However, Zhao teaches a thermal shutdown function ceramic composite having a core-shell structure (ab.) wherein the constituent material of the core structure is selected from aluminum oxide, titanium dioxide, silicon dioxide, zirconium dioxide, tin dioxide, magnesium oxide, zinc oxide, barium sulfate, boron nitride, aluminum nitride, and magnesium nitride (claim 5) which read on the inorganic particles (B) of Hideaki; and wherein the constituent material of the shell structure is preferably polyethylene (claim 3), the same shell material taught by Hideaki. Therefore, Zhao teaches a substantially similar core-shell structure of that taught by Hideaki. Zhao exemplifies using polyethylene emulsion to make the shell structure (Example 1), therefore, Zhao teaches using polyethylene latex to coat the inorganic particles. One ordinary skilled artisan would have been motivated to use the core-shell structure taught by Zhao for the core-shell composite of heat-resistant particles and low temperature shutdown particles of Hideaki because Zhao teaches a similar core-shell composite for making separator for lithium battery (lns88-94).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 122-132 and 138-154 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 10-12 and 14 of U.S. Patent No. 11437684 B2 (‘684). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘684 claims: a coating composition comprising:
a polymeric binder comprises water as the solvent, an aqueous solvent, or a non-aqueous solvent;
heat-resistant particles; and
at least one component selected from the group consisting of a cross-linker, a low-temperature shutdown agent, an adhesion agent, a thickener, a friction reducing agent, and a high-temperature shutdown agent;
wherein the polymeric binder comprises a polylactam, and wherein
the polylactam can be a homopolymer or a co-polymer of vinyl alcohol, vinyl acetate, acrylic acid, polyvinylpyrrolidone (PVP), polyvinylvalerolactam, and polyvinylcaprolactam (PVCap),
Therefore, Claim 1 of ‘684 claims the limitations of the instant claims 122-128, 142 and 148-154.
Claim 10 of ‘684 claims the low-temperature shutdown agent comprises at least one of polyethylene (PE) and polyvinyl pyrrolidone (PVP). Melting point is an inherent property of a polymer. Therefore, Claim 10 of ‘684 claims the limitations of the instant claims 129-132 and 138.
Claim 11 of ‘684 claims the adhesion agent comprises a thermoplastic fluoropolymer. Therefore, Claim 11 of ‘684 covers the limitations of the instant claims 139-140.
Claim 12 of ‘684 claims the friction reducing agent is at least one selected from a metallic stearate, a siloxane, a silicone resin, a fluororesin, a wax, and an aliphatic amide. Claim 12 of ‘684 covers the limitations of the instant claims 143-144.
Claim 14 of ‘684 claims the high-temperature shutdown agent is selected from polyvinylpyrrolidone (PVP) or polyvinylidene difluoride (PVDF). Melting point is an inherent property of a polymer. Therefore, Claim 14 of ‘684 covers the limitations of the instant claims 145-147. Further PVDF is an adhesion agent, therefore, Claim 14 of ‘684 covers the limitations of the instant claims 139-141.
Claims 122-132 and 138-154 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 10-12 and 14 of U.S. Patent No. 11879070 B2 (‘070). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘070 claims a separator comprising a coating composition, the limitations of the coating composition read on the limitations of the instant claims 122, 124, 129, 142, 143, 148-154.
Claims 2-4 of ‘070 claims the limitations of the instant claims 122-128, 142, 143, 148-154.
Claim 6 and 20 of ‘070 claims the limitations of the instant claims 129-132 and 138.
Claims 7, 21 and 24 of ‘070 claims the limitations of the instant claims 139-141.
Claims 8 and 22 of ‘070 claims the limitations of the instant claims 143-144.
Claims 9 and 23-24 of ‘070 claims the limitations of the instant claims 145-147.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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