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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 9-10 are rejected under 35 U.S.C. 102(a1) as anticipated by Xiaofang WO 201483656 A1.
For Claim 1; Xiaofang teaches of a porous separator for a lithium ion secondary battery (pg 1 line 13) which acts as the substrate for a ceramic layer coating on the surface of the separator (pg 2 line 9 through 11), the coating layer having a network structure whose permeability does not compromise the separator (thus being ‘porous’/permeable, pg 3 lines 27-29, pg 4 12-27). And uses coumarin as an additive that is bonded to inorganic particles (page 4 line 8 through 14, page 8 line 11).
For Claim 9; Xiaofang teaches of a lithium-ion battery (an electrochemical device) comprising a positive and negative electrode (cathode and anode respectively), and separator disposed between the two (pg 6, lines 1-4) with the separator fulfilling all the requirements of claim 1, as described in the rejection of claim 1.
For Claim 10; Xiaofang teaches a positive electrode using LiMn2O4 and LiMnO2 as active materials for a battery (pg 15 line 9, 10). While the applicant uses in paragraph [004] of the specifications “cathode” for what could be reasonably identified as the negative electrode and “anode” for what could be identified as the positive electrode based on the applicant referencing the “anode” as “able to provide lithium ions” and from the active materials associated with the terms, for the purposes of interpretation standard use of the terms will be applied and as such Xiaofang’s inclusion of the materials reads on the applicant’s claim.
Claim 3 is rejected under 35 U.S.C 102(a) as being anticipated by Xiaofang WO 201483656 A1 as evidence provided by Ohguri, “Detection of OH radicals as the effect of Pt particles in the membrane of polymer electrolyte fuel cells”.
As Ohguri elaborates: coumarin can remove radicals, such as those generated from the cycling of a battery, through the 7-position (as shown in the attached figure below). The chemical composition and its properties are considered inseparable [MPEP 2112.01, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)] and since the coumarin described by the applicant is not disclosed to have any uniqueness and therefore the prior art teaches the applicants limitation.
PNG
media_image1.png
92
393
media_image1.png
Greyscale
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 set forth in Graham v. John Deere Co., 383 U.S 1, 148 USPQ 459 (1966), 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.
Claims 2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Xiaofang WO 201483656 A1.
Claim 2 is rejected under 35 U.S.C. 103 for the case of prima facie obviousness on the grounds that the inorganic particles in the applicant’s claim may bond only at positions 3-8 (IUPAC numbering) of a coumarin molecule. This is a limited number of possibilities, so one of ordinary skill in the art would be motivated to bond the particle at no.4 choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
PNG
media_image2.png
397
550
media_image2.png
Greyscale
For Claim 8; Xiaofang teaches a polymer substrate to be used as a separator with a thickness of 10-40 μm (page 11 line 8-9) that is coated with a ceramic layer coating on the surface of the separator on both sides (pg 2 line 9 through 11, 25 through 27). As the applicant’s claimed range overlaps with that of the prior art a prima facie case of obviousness exist [In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)]
Claims 4 through 6 are rejected by Xiaofang WO 201483656 A1 in further view of Ohashi JP2013254634A
For Claim 4; Xiaofang teaches an electrochemical device in a battery comprising a porous separator as a porous polymer substrate (pg 1 line 13), and coating on this substrate that after manufacture is porous (pg 3 lines 27-29, pg 4 12-27). This coating layer includes a polymer binder in the UV resin, coumarin being used as an additive in this resin, and the resin binder being chemically bound to inorganic particles to modify the surface of the inorganic particles (pg 2 line 9 through 11, page 4 line 8 through 14, page 8 line 11). Xiaofang does not teach any functional groups attached to the coumarin to adsorb metal ions that may be present in the battery. Ohashi teaches a battery that contains a separator that uses a polymer resin as a binder on a separator. The binder being used has coumarin as an additive to capture radicals produced in the cycle of the battery (Paragraph 11-13). Ohashi teaches adding functional groups on to the coumarin to allow the coumarin to capture metal ions in the battery as it cycles: Ohashi teaches using alkoxy groups, including hydroxyl, aldehyde, carbonyl, ether, and ester groups (paragraph 11, 12) for this purpose. From the applicant’s own disclosure of these functional groups being capable of capturing ions in the battery cycling process through adsorption (paragraphs 0055-57) the selection of functional groups would inherently be able to also adsorb transition metal ions during the charging and discharging process and thus teaches the claim.
For Claim 5; Ohashi teaches of the functional groups being substituted on the coumarin on all available positions, including position 3 (paragraphs 11-13).
Regarding Claim 6, Xiaofang teaches using additives (UV curing resin), such as coumarin, chemically bonded to inorganic particles (page 4 line 8 through 14, page 8 line 11) applied to the separator. Xiaofang teaches these additives in a weight percent range relative to the inorganic particles of 5% to 50% (UV Curing resin pg 3 lines 2 & 3, Embodiments of device page 18-26, page 13 line 4-6). As such, the applicant’s claimed ranges overlap or lie inside the ranges disclosed by the prior art, and a prima facie case of obviousness exists [Precedent set by In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Xiaofang in further view of Lee CN 102770984 A (translation attached).
Xiaofang teaches all the claimed limitations as set forth above, but does not teach the weight ratio for the inorganic particles to the polymer binder being 95:5 to 70:30. Lee teaches a battery that has a separator/clapboard (paragraph 3) that is covered with a binder to affix inorganic particles to it. The binder has a ratio of inorganic particles to the binder by weight in a range between 99:1 and 50:50 (claim 17). Lee teaches that if the concentration of inorganic particles is less than 50:50 with respect to the binder then the aperture and porosity of the coating on the separator will be compromised, Lee also teaches that is the concentration of the inorganic particles are too high (above 99:1) then the quality of the coating will be compromised. As the range taught in the prior art incorporates the applicant’s range, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the weight of the compound based on the total weight of the inorganic particles of Xiaofang by Lee’s teachings in order to obtain the ideal porosity and quality for the coating of the separator as taught by Lee.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AKIL JALIL MONDIE whose telephone number is (571)270-7804. The examiner can normally be reached 8:30AM - 5:00PM.
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, Niki Bakhtiari can be reached at (571) 272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.J.M./ Examiner, Art Unit 1722
/NIKI BAKHTIARI/ Supervisory Patent Examiner, Art Unit 1722
Prosecution Insights