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, see pp. 5-7, filed April 20, 2026, with respect to the rejection(s) of claim(s) 1-13 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Senoue (US 2020/0243897 A1) and Kim et al. (KR 20210098330 A).
Applicant contends that the examples of the instant specification demonstrate the criticality of the claimed layer thicknesses and ratios (pp. 7-8). However, cited examples 7 and 8 have second layers 40 and 60 µm thick, respectively (Table 2 of the instant specification). These layers are substantially thicker than the layers of Kim (3-20 µm; Kim [0034]) and exceed the total separator thickness described by Senoue (3-40 µm; Senoue [0045]). There is no evidence that the thickness ratio is critical at the thicknesses described in the prior art.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Senoue (US 2020/0243897 A1) in view of Kim et al. (KR 20210098330 A; citations refer to English translation attached to the office action mailed March 10, 2026).
Regarding claim 1, Senoue teaches a battery comprising a first electrode (10), a second electrode (30), and a separator (20a), wherein the first electrode includes a first main surface (10a) and a second main surface (10b) opposite the first main surface, with through holes (10d) penetrating the first electrode from the first face to the second face. The separator coats the inner walls of the through holes, and the second electrode is disposed in the through holes, extending in an axial direction (Senoue Figs. 2A and 6, and [0024]-[0025]). Senoue give an example in which the separator comprises inorganic particles (boehmite) and the holes have a diameter of 250 µm (Senoue Example 1, [0096]-[0105]), which falls within the range of the instant claim.
Senoue does not teach that the separator comprises two layers of inorganic particles, with the particles of the second layer smaller than the first. Kim teaches that forming an electrode-coated lithium-ion battery separator in two layers, with a first layer comprising larger particles and second layer comprising smaller particles, improves battery performance (Kim [0013]-[0014]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to apply the separator of Senoue in two layers as taught by Kim to improve battery performance.
Modified Senoue does not teach that an average diameter of the voids is 1/2 to 1/3 of the thickness of the first layer. However, applicant has indicated that applying a coating by the method of modified Senoue (pulling a slurry comprising ~50 wt% inorganic particles through the openings; Senoue [0099]) results in voids with diameters 1/2 to 1/3 of the thickness of the first layer (Table 1 of the instant specification). The coatings of modified Senoue are therefore assumed to have such voids.
Regarding claim 2, the first electrode of modified Senoue forms a honeycomb core (Senoue Fig. 2A).
Regarding claim 3, the smaller particles (400) can be seen to fill voids between the larger particles (300) (Kim Fig. 3).
Regarding claim 4, modified Senoue teaches that the second particles may have a diameter of 20 nm to 300 nm (Kim [0017]), and that the thickness of each layer is preferably 3 µm to 20µm (Kim [0034]), which is greater than the second particle size.
Regarding claim 5, modified Senoue does not teach that the ratio of the second average particle size to the first layer thickness is 1/300 or less. Modified Senoue teaches that the second particles may have a diameter of 20 nm to 300 nm (Kim [0017]), and that the thickness of each layer is preferably 3 µm to 20µm (Kim [0034]). The acceptable ratio of second particle size to first layer thickness is therefore 1/1000 to 1/10, which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any ratio in the range disclosed by modified Senoue, including values within the range of the instant claim.
Regarding claim 6, modified Senoue teaches that the first particles may have an average diameter of 500 nm to 3 µm (Kim [0017]), which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any particle size in the range disclosed by modified Senoue, including values within the range of the instant claim.
Regarding claim 7, modified Senoue teaches that the thickness of each layer is preferably 3 µm to 20µm (Kim [0034]), which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any thickness in the range disclosed by modified Senoue, including values within the range of the instant claim.
Regarding claim 8, modified Senoue teaches that the thickness of each layer is preferably 3 µm to 20µm (Kim [0034]), which falls within the range of the instant claim.
Regarding claim 9, modified Senoue does not teach that the ratio of the second thickness to the first thickness is 0.5 or less. Modified Senoue teaches that the thickness of each layer is preferably 3 µm to 20µm (Kim [0034]), for a range of possible ratios of 0.15 to 6.7, which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any ratio in the range disclosed by modified Senoue, including values within the range of the instant claim.
Regarding claim 10, the separator layers comprise binders (Senoue [0099] and Kim [0051]).
Regarding claim 11, the inorganic particles comprise boehmite (i.e. aluminum oxide hydroxide) (Senoue [0099]).
Regarding claim 12, the first electrode is columnar (Senoue Example 1, [0097]), and the first and second surfaces are at both ends in an axial direction (Senoue Fig. 2A).
Regarding claim 13, the battery includes an electrolytic solution (LiPF6 in EC/EMD/DMC) (Senoue [0105]).
Regarding claim 14, modified Senoue teaches that the thickness of each layer is preferably 3 µm to 20µm (Kim [0034]), which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any thickness in the range disclosed by modified Senoue, including values within the range of the instant claim.
Modified Senoue does not teach that the ratio of the second thickness to the first thickness is 0.5 or less. Modified Senoue teaches that the thickness of each layer is preferably 3 µm to 20µm (Kim [0034]), for a range of possible ratios of 0.15 to 6.7, which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any ratio in the range disclosed by modified Senoue, including values within the range of the instant claim.
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 JAMES A CORNO JR whose telephone number is (571)270-0745. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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/J.A.C/ Examiner, Art Unit 1722
/ANCA EOFF/ Primary Examiner, Art Unit 1722
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