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 .
Specification
The disclosure is objected to because of the following informalities:
Paragraph 0008, 0048 and 0051, the molecular weight values should include units (g/mol).
Appropriate correction is required.
Claim Objections
Claims 2, 7, and 9 are objected to because of the following informalities:
In claim 2, line 2, the molecular weight values should include units (g/mol).
In claim 7, line 2, “anode;” should read “an anode”.
In claim 7, line 3, “cathode” should read “a cathode”.
In claim 9, line 2, the molecular weight should include units (g/mol).
Appropriate correction is required.
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 1, 4, 6—8, 11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1—2, 3, 4, 6—7, and 9—10 of copending Application No. 18436675 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the co-pending application recites a separator for an electrochemical device, comprising: a porous polymer substrate; and a porous coating layer formed on at least one surface of the porous polymer substrate, wherein the porous coating layer contains an acrylic acid-based binder, an acrylamide-based binder, and inorganic particles, the porous coating layer contains 90% by weight to 96% by weight of the inorganic particles based on the total weight of the porous coating layer, and a weight ratio of the acrylic acid-based binder and the acrylamide-based binder is 3:7 to 7:3.
Claim 1 of the reference application also recites a separator for an electrochemical device, comprising: a porous polymer substrate; and a porous coating layer formed on at least one surface of the porous polymer substrate, wherein the porous coating layer includes an acrylic polymer binder, a copolymer binder, and inorganic particles. With claim 3 of the reference application recites copolymer binder consisting of polyacrylamide. With claim 6 of the reference application recites the porous coating layer includes 90% by weight to 95% by weight of the inorganic particles based on a total weight of the porous coating layer. With claim 4 of the reference application recites the copolymer binder is obtained by copolymerizing polyacrylic acid and polyacrylamide in a ratio of 8:2 to 5:5.
With respect to claims 4 and 11, claim 2 of the reference application recites the acrylic polymer binder includes, a repeating unit including (meth)acrylic acid.
With respect to claims 6 and 13, claim 7 of the reference application recites the acrylic polymer binder is greater than a content of the copolymer binder (examiner notes claim 4 of the reference application recites the copolymer binder consist of polyacrylamide) on a weight basis of the porous coating layer.
Claim 7 of the co-pending application recites an electrochemical device comprising: anode; cathode; and a separator disposed between the anode and the cathode, wherein the separator includes a porous polymer substrate, and a porous coating layer formed on at least one surface of the porous polymer substrate, the porous coating layer contains an acrylic acid-based binder, an acrylamide-based binder, and inorganic particles, the porous coating layer contains 90% by weight to 96% by weight of the inorganic particles based on the total weight of the porous coating layer, and a weight ratio of the acrylic acid-based binder and the acrylamide-based binder is 3:7 to 7:3.
Claim 9 of the reference application recites an electrochemical device comprising: a positive electrode; a negative electrode; and a separator disposed between the positive electrode and the negative electrode, wherein the separator is the separator for an electrochemical device wherein the separator content recited in claims 1, 3, 4, and 6 of the reference application as noted above.
With respect to claim 8, claim 10 of the reference application recites the electrochemical device according to claim 9 of the reference application as noted above, further comprising: electrolyte containing a solvent in which ethylene carbonate (EC) and ethyl methyl carbonate (EMC) are mixed in a weight ratio of 3:7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18436675 in view of Kim, et al. (US 2022/0059903 A1).
Regarding claims 2 and 9, claim 1 of the reference application recites a copolymer binder (examiner notes claim 3 of the reference application recites the copolymer binder can consist of polyacrylic acid and polyacrylamide) has a weight average molecular weight of 40,000 to 80,000.
However, claim 1 of the reference application does note recite the weight average molecular weight range within claims 9 and 12 of the co-applicant.
Kim, et al. (US 2022/0059903 A1) teaches an electrochemical device comprising: a separator disposed between an anode and a cathode (paragraph 0083), wherein the separator includes a porous polymer substrate (paragraph 0080), and a porous coating layer formed on at least one surface of the porous polymer substrate (paragraph 0080), the porous coating layer contains an acrylic acid-based binder (paragraph 0078), an acrylamide-based binder (paragraph 0078), and inorganic particles (paragraph 0079), the porous coating layer contains 90% by weight to 96% by weight of the inorganic particles based on the total weight of the porous coating layer (paragraph 0079) and the acrylamide-based binder has a weight average molecular weight of 300,000 to 2,000,000 g/mol (paragraph 0047).
The reference applicant and Kim, et al. both correspond to a coating layer for a separator of an electrochemical device. The reference application teaches a combination of material of an electrochemical device and thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to include the average molecular weight range of acrylic-based binder and acrylamide-based binder per Kim, et al. since both have an electrochemical device comprising: a positive electrode; a negative electrode; and a separator disposed between the positive electrode and the negative electrode, wherein the separator is a porous substrate with a coating layer.
This is a provisional nonstatutory double patenting rejection.
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.
Claim(s) 1—6, 9—13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim, et al. (US 2022/0059903 A1).
Regarding claim 1, Kim, et al. teaches a separator for an electrochemical device (paragraph 0009), comprising: a porous polymer substrate (paragraph 0010); and a porous coating layer formed on at least one surface of the porous polymer substrate (paragraph 0010), wherein the porous coating layer contains an acrylic acid-based binder (paragraph 0011), an acrylamide-based binder (paragraph 0011), and inorganic particles (paragraph 0010), the porous coating layer contains 90% by weight to 96% by weight of the inorganic particles based on the total weight of the porous coating layer (paragraph 0031, 0079).
However, Kim, et al. teaches a weight ratio of the acrylic acid-based binder and the acrylamide-based binder that partially overlaps within the claim 3:7 to 7:3 (paragraph 0036; examiner notes prior art teaches 1:98 to 50:49). Because Kim, et al. teach the same species as the applicant, thus the examiner contends that it would have been obvious to one of ordinary skill in the art at the time the invention was filed to include an equivalent weight ratio range of the acrylic acid-based binder and the acrylamide-based binder.
With respect to claims 2 and 9, Kim, et al. teaches the acrylamide-based binder has a weight average molecular weight of 300,000 to 2,000,000 g/mol (paragraph 0047).
With respect to claims 3 and 10, Kim, et al. teaches the porous coating layer is formed by coating a coating slurry containing the acrylic acid-based binder (paragraph 0040—0042), the acrylamide-based binder (paragraph 0038—0039, inorganic particles (paragraph 0057), a dispersant (paragraph 0042—0043; examiner notes that applicant specify a dispersant maybe a polyacrylic acid-based polymer where the prior art mentions acrylate monomer as the third polymer unit), and a dispersion medium (paragraph 0055), on the porous polymer substrate (paragraph 0061), and pH of the coating slurry is 5 or more (paragraph 0060).
With respect to claims 4 and 11, Kim, et al. teaches the acrylic acid-based binder includes a repeating unit including one or more monomers selected from the group consisting of methacrylic acid (paragraph 0011).
With respect to claims 5 and 12, Kim, et al. teaches the acrylamide-based binder includes a repeating unit including methacrylamide (paragraph 0011).
With respect to claims 6 and 13, Kim, et al. teaches a content of the acrylic acid-based binder in the porous coating layer is greater than or equal to a content of the acrylamide-based binder (paragraph 0036; examiner notes prior art satisfy the mention range 50:49).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim, et al. (US 2022/0059903 A1).
Regarding claim 7, Kim, et al. teaches an electrochemical device comprising: an anode (paragraph 0081); a cathode (paragraph 0082); and a separator disposed between the anode and the cathode (paragraph 0083), wherein the separator includes a porous polymer substrate (paragraph 0080), and a porous coating layer formed on at least one surface of the porous polymer substrate (paragraph 0080), the porous coating layer contains an acrylic acid-based binder (paragraph 0078), an acrylamide-based binder (paragraph 0078), and inorganic particles (paragraph 0079), the porous coating layer contains 90% by weight to 96% by weight of the inorganic particles based on the total weight of the porous coating layer (paragraph 0079).
However, Kim, et al. teaches a weight ratio of the acrylic acid-based binder and the acrylamide-based binder that partially overlaps within the claim 3:7 to 7:3 (paragraph 0036; examiner notes Kim, et al. teaches 1:98 to 50:49). Because Kim, et al. teach the same species as the applicant, thus the examiner contends that it would have been obvious to one of ordinary skill in the art at the time the invention was filed to include an equivalent weight ratio range of the acrylic acid-based binder and the acrylamide-based binder.
Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range does not substantially deviate from the claimed range. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)(anticipation found even where prior art range was not identical to claimed ranges); see also MPEP 2144.05 and MPEP 2131.03.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kim, et al. (US 2022/0059903 A1) in further view of Mizawa, et al. (US 2014/0178732 A1).
Kim, et al. render obvious the features of claim 7 and further teaches an electrolyte containing a solvent in which ethylene carbonate (EC), ethyl methyl carbonate (EMC), and dimethyl carbonate (DMC) are mixed (paragraph 0084). However, Kim, et al. do not teach a weight ratio within the claimed dimension.
Mizawa, et al. teaches a secondary battery comprises an electrolyte containing a solvent in which ethylene carbonate (EC), ethyl methyl carbonate (EMC), and dimethyl carbonate (DMC) are mixed in a weight ratio of 20:5:75 (paragraph 0114). Kim, et al. teach a combination of material of a secondary battery and thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to include the solvent EC:EMC:DMC weight ratio of an electrolyte per Mizawa, et al. since both teach a secondary battery comprising an anode, a cathode, an electrolyte containing EC, EMC, and DMC and a separator with porous substrate interposed between the anode and cathode.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kim, et al. (US 2019/0165349 A1) teaches a composition separator for a secondary battery comprising a porous substrate and a coating layer (abstract). Specifically, Kim, et al. teaches a separator for an electrochemical device (paragraph 0015), comprising: a porous polymer substrate (paragraph 0015); and a porous coating layer formed on both surface of the porous polymer substrate (paragraph 0117), wherein the porous coating layer contains an acrylic acid-based binder (paragraph 0016), an acrylamide-based binder (paragraph 0016), and inorganic particles (paragraph 0015), the porous coating layer contains 90% by weight to 96% by weight of the inorganic particles based on the total weight of the porous coating layer (paragraph 0044) and a weight ratio of the acrylic acid-based binder and the acrylamide-based binder is 10:40 to 60:30 (paragraph 0017) which meet claim 1 dimensions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELVIN MITCHELL FRAZIER whose telephone number is (571)270-5955. The examiner can normally be reached Monday- Friday 8:00 am - 5:00 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, Maria Veronica D Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.M.F./Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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