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 .
Status of Claims and Other Notes
Claims 1–13 are pending.
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 paragraph numbers cited in this Office Action in reference to the instant application are referring to the paragraph numbering of the PG-Pub of the instant application. See US 2024/0243432 A1.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/056,919, filed on 19 November 2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 April 2024 was filed before the mailing of a first Office Action on the merits. The submission complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings were received on 27 February 2024. These drawings are acceptable.
Specification
The disclosure is objected to because of the following informalities:
The use of the term KETJEN BLACK (e.g., [0091]), which is a trade name or a mark used in commerce, has been noted in this application. The term does not include a proper symbol indicating use in commerce such as ™, SM , or ®.
The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claims 7 and 8 are objected to because of the following informalities:
Claim 7 recites the limitation "further comprising which has an inorganic coating layer." The limitation begins two transitional phrases (i.e., "further comprising" and "which has"). Claim 7 should begin with a single transitional phrase.
Claim 8 recites the limitation "wherein the separator having an inorganic layer coated on the surface has which shows a resistance of 0.55 ohm or less." The limitation includes two transitional phrases (i.e., "has" and "which shows") linking "an inorganic layer" with "a resistance." Claim 8 should linked "an inorganic layer" with "a resistance" with a single transitional phrase.
Appropriate correction is required.
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.
Claims 1–13 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "wherein porous substrate comprises polyethylene" in line 4. Claim 1 has previously recited the limitation "a porous substrate" in line 2. It is unclear if "porous substrate" recited in line 4 is further limiting or referencing "a porous substrate" recited in claim 4 because "porous substrate" in line 4 does not include a modifier (e.g., "the" or "said") indicating the term is referencing a previously recited limitation, which provides antecedent basis.
Claims 2–7 are directly dependent from claim 1 and include all the limitations of claim 1. Therefore, claims 2–7 are also 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 8 recites the limitation "an inorganic layer." Claim 7, which claim 8 is directly dependent, recites the limitation "an inorganic coating layer." It is unclear if "an inorganic layer" recited in claim 8 is further limiting or referencing "an inorganic coating layer" recited in claim 7.
Claim 9 is indirectly dependent from claim 1 and includes all the limitations of claim 1. Therefore, claim 9 is also 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 10 recites the limitation "the separator is the same as defined in claim 1" and includes all the limitations of claim 1. Therefore, claim 10 is also 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 11 recites the limitation "the separator for the electrochemical device as defined in claim 1" and includes all the limitations of claim 1. Therefore, claim 11 is also 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 12 recites the limitation "a binder resin." Claim 12 has previously recited the limitation "the separator for the electrochemical device as defined in claim 7" and includes all the limitation of claim 7. Claim 7 recites the limitation "a binder resin." It is unclear if "a binder resin" recited in claim 12 is further limiting or referencing "a binder resin" recited in claim 7 because "a binder resin" in claim 12 does not include a modifier (e.g., "the" or "said") indicating the term is referencing a previously recited limitation, which provides antecedent basis.
Claim 12 recites the limitation "inorganic particles." Claim 12 has previously recited the limitation "the separator for the electrochemical device as defined in claim 7" and includes all the limitation of claim 7. Claim 7 recites the limitation "inorganic particles." It is unclear if "inorganic particles" recited in claim 12 is further limiting or referencing "inorganic particles" recited in claim 7 because "inorganic particles" in claim 12 does not include a modifier (e.g., "the" or "said") indicating the term is referencing a previously recited limitation, which provides antecedent basis.
Claim 12 recites the limitation "at least one surface of the porous substrate." Claim 12 has previously recited the limitation "the separator for the electrochemical device as defined in claim 7" and includes all the limitation of claim 7. Claim 7 recites the limitation "at least one surface of the porous substrate." It is unclear if "at least one surface of the porous substrate" recited in claim 12 is further limiting or referencing "at least one surface of the porous substrate" recited in claim 7 because "at least one surface of the porous substrate" in claim 12 does not include a modifier (e.g., "the" or "said") indicating the term is referencing a previously recited limitation, which provides antecedent basis.
Claim 13 recites the limitation "the slurry comprising … a polymer resin." Claim 12, which claim 13 is directly dependent, recites the limitation "the slurry … comprises a binder resin." It unclear if "a polymer resin" recited in claim 13 is further limiting or referencing "a binder resin" recited in claim 12.
Claim 13 recites the limitation "a dispersion medium." Claim 12, which claim 13 is directly dependent, recites the limitation "a dispersion medium." It is unclear if "a dispersion medium" recited in claim 13 is further limiting or referencing "a dispersion medium" recited in claim 12 because "a dispersion medium" in claim 13 does not include a modifier (e.g., "the" or "said") indicating the term is referencing a previously recited limitation, which provides antecedent basis.
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 1–13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–14 of U.S. Patent No. 11,936,065 B2, hereinafter the reference patent. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the claims of the reference patent.
Regarding claim 1, the reference patent discloses a separator for an electrochemical device comprising:
a porous substrate (C23/L31),
wherein the porous substrate has a porosity of 40% to 70% (C23/L32–33),
wherein porous substrate comprises polyethylene (C23/L36–38),
wherein the polyethylene has an entangle molecular weight of 2,500 g/mol or less (C23/L39–40), and
wherein the porous substrate has two peaks comprising a first peak at 130° C. to less than 145° C. and a second peak at 145° C. to 160° C. upon an initial scanning temperature-rising in a differential scanning calorimetry (DSC) curve (C23/L41–44), and
wherein the second peak appears only upon the initial scanning in DSC analysis and is not identified upon a second or later scanning (C23/L45-47).
Regarding claim 2, the reference patent discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the porous substrate shows has a resistance of 0.5 ohm or less (C23/L49–50).
Regarding claim 3, the reference patent discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the porous substrate has a penetration strength of 490 gf or more (C23/L52–53)
Regarding claim 4, the reference patent discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the porous substrate has an A value of 50% or more as calculated by the following Formula 4 in the DSC curve (C23/L55-60),
wherein ΔH1 represents heat flow upon the initial scanning and ΔH2 represents heat flow upon the second or later scanning: [Formula 4] A (%) = (ΔH1 – ΔH2) / ΔH2 (C23/L55-60).
Regarding claim 2, the reference patent discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the porous substrate has a largest pore diameter of 10 nm to 70 nm (C24/L2–3).
Regarding claim 6, the reference patent discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the porous substrate has a thickness of 5 μm to 14 μm (C24/L5–6).
Regarding claim 7, the reference patent discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device, further comprising
an inorganic coating layer formed on at least one surface of the porous substrate (C24/L11–12),
wherein the inorganic coating layer comprises inorganic particles and a binder resin (C24/L13–14), and
the inorganic particles and the binder resin are present in the inorganic coating layer at a weight ratio of 99.9:0.1 to 90:10 (C24/L14–16).
Regarding claim 8, the reference patent discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the separator having an inorganic layer coated on the surface has which shows a resistance of 0.55 ohm or less (C24/L19–21).
Regarding claim 9, the reference patent discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the inorganic coating layer has a thickness of 2.5 μm or less (C24/L23–24).
Regarding claim 10, the reference patent discloses an electrode assembly for the electrochemical device comprising:
a negative electrode; a positive electrode; and a separator interposed between the negative electrode and the positive electrode (C24/L25–31),
wherein the separator is the same as defined in claim 1 (C24/L32).
Regarding claim 11, the reference patent discloses a method for manufacturing the separator for the electrochemical device as defined in claim 1 (C24/L33–34), which comprises the method comprising:
preparing the porous substrate by carrying out thermal fixing at a temperature of 130° C. or higher (C24/L36–37).
Regarding claim 12, the reference patent discloses a method for manufacturing the separator for the electrochemical device as defined in claim 7, the method comprising:
preparing a slurry for an inorganic coating layer (C24/L41),
wherein the slurry for the inorganic coating layer comprises a binder resin, a dispersion medium and inorganic particles (C24/L42–44);
applying the slurry to at least one surface of the porous substrate (C24/L46), and
drying the porous substrate having the slurry on at least one surface (C24/L47–48),
wherein the porous substrate is prepared by carrying out thermal fixing at a temperature of 130° C. or higher (C24/L49–51).
Regarding claim 13, the reference patent discloses all the claim limitations as set forth above and further discloses a method:
wherein the slurry is prepared in the form of an aqueous slurry comprising: a polymer resin; and the inorganic particles (C24/L53–56),
wherein the inorganic particles are dispersed in a dispersion medium comprising water and/or ethanol (C24/L57–58).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean P Cullen, Ph.D. whose telephone number is (571)270-1251. The examiner can normally be reached Monday to Thursday 6:00 am to 4:00 pm CT, Friday 6:00 am to 12:00 pm CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia A 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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/Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725