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 10/08/2025 have been fully considered but they are not persuasive.
Applicant states: “Rather, the present application is directed to an additive that is able to singularly achieve two or more (and according to claim 81, even up to five or more) of the following functions: a lubricating agent, a plasticizing agent, a nucleating agent, a shrinkage reducing agent, and a surfactant. In contrast, Shaffer does not envision such a multi-functional singular additive, but rather describes the incorporation of multiple different additives each acting as different types of agents and achieving different functionalities.”
Examiner respectfully disagrees. Shaffer discloses that each polymer blend may include at least one additive [0039] such as lithium stearate [0407, 0201] which is specifically listed as an additive fulfilling the listed function of the plasticizer function [0039, 0201]. While such a singular use multi-functional additive is not anticipated in the embodiment examples of Shaffer, choosing the listed option of one additive from “at least one” to achieve such predicted results and functions would have been obvious to a person of ordinary skill in the art). The claimed invention maps lithium stearate as a multi-functional additive [0016, 0032, 0067, 0070, 0071, 0072, 0073, 0074 PGPub version], so Shaffer’s inclusion of lithium stearate appears to inherently disclose a singular multi-function additive.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 105 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Independent claim 53 requires that the additive singularly acts as two or more, but dependent claim 105 states that the additive may include both of an ultrahigh molecular weight polysiloxane and at least 1% of a fatty acid salt having a melting point above 200°C. These compounds are structurally different and belong to different structural classes, and their inclusion together contradicts the requirement of claim 53 wherein the additive singularly acts as two or more. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 53-62, 64, 66-71, 73, 77-83 and 103-106 are rejected under 35 U.S.C. 103 as being unpatentable over Shaffer et al. (PGPub 2008/0269366).
Considering Claim 53, Shaffer discloses a battery separator (battery separator [0222, 0229, 0233]), comprising:
a microporous polymeric film (microporous polymer film [0010, 0233]), wherein the microporous polymeric film is a dry-process multilayer film (multilayer film that is dry laminated [0228, 0382]);
an optional coating layer on at least one side of the microporous film (multiple layers wherein one layer is coated/laminated on the other layer [0010, 0197, 0228]), wherein the additive singularly acts as two or more of the following: a lubricating agent, a plasticizing agent, a nucleating agent, a shrinkage reducing agent, and a surfactant (each polymer blend may include at least one additive [0039] such as lithium stearate [0407, 0201] which is specifically listed as fulfilling the plasticizer function [0039, 0201], choosing such an additive for the listed option of one additive to achieve such predicted results and functions would have been obvious to a person of ordinary skill in the art). The claimed invention maps lithium stearate as a multi-functional additive [0016, 0032, 0067, 0070, 0071, 0072, 0073, 0074 PGPub version], so Shaffer’s inclusion of lithium stearate appears to inherently disclose a singular multi-function additive.
Considering Claim 54, Shaffer discloses that the battery separator comprises a coating on a first side of the microporous polymeric film (multiple layers wherein one layer is coated/laminated on one side of the other layer [0010, 0197, 0228]) and the coating layer comprises the additive (multiple polymer blend layers [0010, 0197, 0228], each polymer blend may include an additive [0039]).
Considering Claims 55-57, Shaffer discloses that the battery separator comprises coating layers on first and second sides of the microporous film with additives (multiple layers wherein one layer is coated/laminated on one side of the other layer [0010, 0197, 0228], multiple polymer blend layers [0010, 0197, 0228], each polymer blend may include an additive such as a plasticizer, a lubricant, a nucleating agent, and a surfactant [0039]).
Considering Claim 58, Shaffer discloses that the microporous polymeric film comprises an electrolyte additive (multiple polymer blend layers [0010, 0197, 0228], each polymer blend may include an additive such as a flame retardant [0196]).
Considering Claims 59-61, Shaffer discloses multiple polymer blend layers [0010, 0197, 0228], wherein each polymer blend may include an additive such as a plasticizer, a lubricant, a nucleating agent, and a surfactant [0039]. The additive may also be a wetting agent for improving wettability [0260, 0261]. As these additives are included for property improvement [0261, 0260, 0039], including additives mainly in surface regions proximate to other battery area would have been obvious to a person of ordinary skill in the art.
Considering Claim 62, Shaffer discloses that the microporous polymeric film is a non-woven film (microporous film is nonwoven layer [0228]).
Considering Claim 64, Shaffer discloses that the microporous polymeric film is a dry-process bi-layer film (multilayer film that is dry laminated [0228, 0382], may be an additional layer for two layers [0228]).
Considering Claim 66, Shaffer discloses that the microporous polymeric film comprises a polyolefin (microporous film comprises polyolefins [0014]).
Considering Claim 67, Shaffer discloses that the additive is a lubricating agent (additive is lubricant [0206]).
Considering Claim 68, Shaffer discloses that a lubricant is a known plastics additive known to a person of ordinary skill in the art that may be incorporated [0039, 0196] and may range from about greater than 0 to about 40% [0196]. Choosing within this range for a range of 5,000 to 100,000 ppm to achieve the predicted results of a known plastics additive [0196] would have been obvious to a person of ordinary skill in the art.
Considering Claim 69, Shaffer discloses that the lubricating agent has a melting point of 200 °C or above (lubricant is fatty acid salt [0206] such as lithium stearate [0407]).
Considering Claim 70, Shaffer discloses that the lubricating agent is amphiphilic (lubricant is fatty acid salt [0206] such as lithium stearate [0407]).
Considering Claim 71, Shaffer discloses that the lubricating agent is a fatty acid salt (lubricant is fatty acid salt [0206] such as lithium stearate [0407]).
Considering Claim 73, Shafer discloses that the lubricating agent is selected from lithium stearate (lubricant is fatty acid salt [0206] such as lithium stearate [0407]).
Considering Claim 77, Shaffer discloses that the additive is a plasticizing agent (polymer blend additive is a plasticizer [0201, 0039]).
Considering Claim 78, Shaffer discloses that the additive is a nucleating agent (polymer blend additive is a nucleating agent [0039]).
Considering Claim 79, Shaffer discloses that the additive is a surfactant (polymer blend additive is a surfactant [0039]).
Considering Claim 80, Shaffer discloses that the microporous film comprises lithium stearate [0407], which is classified by the claimed invention as a shrinkage reducing agent [0074 PGPub version].
Considering Claim 81, Shaffer discloses that the additive singularly acts as three or more, four or more, or five or more of the following: a lubricating agent, a plasticizing agent, a nucleating agent, a shrinkage reducing agent, and a surfactant (each polymer blend may include at least one additive [0039] such as lithium stearate [0407, 0201] which is specifically listed as fulfilling the plasticizer function [0039, 0201], choosing such an additive for the listed option of one additive to achieve such predicted results and functions would have been obvious to a person of ordinary skill in the art). The claimed invention maps lithium stearate as a multi-functional additive [0016, 0032, 0067, 0070, 0071, 0072, 0073, 0074 PGPub version], so Shaffer’s inclusion of lithium stearate appears to inherently disclose a singular multi-function additive).
Considering Claim 82, Shaffer discloses a lithium battery comprising the separator of claim 53 (lithium battery [0260, 0266], see claim 53).
Considering Claim 83, Shaffer discloses an electrolyte, wherein the battery exhibits improved wettability for the electrolyte compared to an identical battery separator without the additive added ([0260, 0261]).
Considering Claim 103, Shaffer discloses that the microporous polymeric film comprises a battery separator for a lithium battery (battery separator [0222, 0229, 0233], lithium battery [0260, 0266]) comprising:
at least one microporous separator membrane comprising a plurality of porous or microporous layers, microlayers or nanolayers (microporous polymer film [0010, 0233], multilayer film that is dry laminated [0228, 0382]), wherein
at least one of the individual layers, microlayers, or nanolayers comprises a different or distinct polymer, molecular weight polymer, additive, or agent (layers may be different such as a ceramic layer and a heat resistant layer [0228] with various combinations of additives [0039]).
Considering Claim 104, Shaffer discloses that the additive is selected from the group consisting of a lubricating agent, a plasticizing agent, a nucleating agent, a surfactant, a flame retardant, a wetting agent ([0206, 0201, 0039, 0261]).
Considering Claim 105, Shaffer discloses that the additive comprises at least 1% of a fatty acid salt having a melting point above 200 °C (lubricant is fatty acid salt [0206] such as lithium stearate [0407]).
Considering Claim 106, Shaffer discloses a battery separator (battery separator [0222, 0229, 0233]), comprising:
a microporous polymeric film (microporous polymer film [0010, 0233]), wherein the microporous polymeric film is a dry-process multilayer film (multilayer film that is dry laminated [0228, 0382]);
an optional coating layer on at least one side of the microporous film (multiple layers wherein one layer is coated/laminated on the other layer [0010, 0197, 0228]), wherein the additive comprises at least 1% of a fatty acid salt having a melting point above 200 °C (lubricant is fatty acid salt [0206] such as lithium stearate [0407]).
Claim 75 is rejected under 35 U.S.C. 103 as being unpatentable over Shaffer et al. (PGPub 2008/0269366) and further in view of Suzuki et al. (US Pat No. 5,061,384).
Considering Claim 75, Shaffer discloses that any lubricant known to a person of ordinary skill in the art may be added to the polymer blend [0206]. The microporous polymer film may comprise fibers. However, Shaffer is silent to siloxane or polysiloxane.
Suzuiki discloses a lubricant comprising modified polysiloxane of molecular weight 2500 or greater [Abstract]. The lubricant is heat-resistant and allows polymer synthetic fibers to be processed with lubricity, cohesiveness, and anti-static capability [Column 2 lines 35-50, Column 1 lines 15-35].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the polymer lubricant of Shaffer with the polysiloxane lubricant of Suzuki in order to provide a heat-resistant lubricant that allows polymer synthetic fibers to be processed with lubricity, cohesiveness, and anti-static capability [Column 2 lines 35-50, Column 1 lines 15-35].
Claim 84 is rejected under 35 U.S.C. 103 as being unpatentable over Shaffer et al. (PGPub 2008/0269366) and further in view of Wang et al. (PGPub 2014/0017562).
Considering Claim 84, Shaffer discloses a liquid electrolyte [0260]. However, Shaffer is silent to a liquid solvent such propylene carbonate.
Wang discloses a lithium ion battery [Abstract]. The separator is a conventional separator which uses a microporous polymer film [0023]. The electrolyte solution includes an organic solvent such as propylene carbonate [0023]. These materials, in conjunction with other electrode materials, have a low weight, stable chemical and electrical stability, and provide the battery with a high power density and long lifespan [0025].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the liquid solvent of Shaffer with the propylene carbonate solvent of Wang in order to provide a low weight, stable chemical and electrical stability, and to provide the battery with a high power density and long lifespan [0025].
Allowable Subject Matter
Claims 76 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Suzuki discloses a lubricant comprising modified polysiloxane of molecular weight 2500 or greater [Abstract], which does not read on nor suggest an ultra-high molecular weight polysiloxane that is understood to range from 500,000 to 1,000,000.
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 CHRISTOPHER P DOMONE whose telephone number is (571)270-7582. The examiner can normally be reached M-F 8:00-4:30 PM.
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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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/CHRISTOPHER P DOMONE/ Primary Patent Examiner
Art Unit 1725