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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-4 & 7-40 are pending in the application. Claims 19-35 & 37-40 are withdrawn. Claims 1-4, 7-18, & 36 are presently examined. Claims 1-18 & 36 were rejected in the 6/23/2026 office action. Applicant cancelled claims 5-6 and incorporated these claim limitations into claim 1.
Response to Amendment / Arguments
The 7/17/2026 amendment, in response to the 6/23/2026 office action, has been entered. Applicant’s claim amendments overcame the objection. Applicant's arguments, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive.
Applicant's argues (Remarks pp.10-11) that US20060078791Al (Hennige) fails to teach the following limitations of claim 1, which previously were in claims 5-6 (claim 36 was amended similarly):
“a titanium oxide film and/or a titanium hydroxide film deposited on a surface of the porous film and inner walls of the porous structures by chemical solution deposition by first applying a precursor solution on the porous film and applying a reactive solution thereafter to react with the precursor solution”
In the 6/23/2026 office action, Examiner presented Hennige paragraph 138, which teaches chemical solution deposition (previously claim 5).
Regarding applying the precursor solution then the reactive solution (previously claim 6), Examiner presented MPEP § 2113:
“‘[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”
The recitation, of how the separator is made, does not limit the scope of the claims for patent examination purposes, except to the extent that these processes affect the separator. The present specification fails to teach how the methods of these claims affect the final separator. Presumably, Hennige’s separator has the properties of a separator made from this method.
Applicant failed to address either of these arguments of former claims 5-6, so presumably both are conclusive. Applicant failed to show how the presently-claimed separator differs from Hennige’s separator. Instead of responding to Examiner’s arguments, Applicant merely demanded that the claims —
“SHALL NOT be rejected under 35 U.S.C 102(a)(1) and 102(a)(2) being anticipated by US20060078791Al (Hennige)” Remarks pp.10-11
This demand won’t overcome the 35 U.S.C 102(a)(1) and 102(a)(2) rejections. Only a showing of how the claimed separator differs from Hennige’s separator, and not merely the method in the product-by-process limitation, will overcome the 35 U.S.C 102(a)(1) and 102(a)(2) rejections.
Claims 11-14 & 16-18 were rejected under 35 U.S.C. 103 as being unpatentable over US20060078791A1 (Hennige), as applied to claim 1, in view of US20210218113A1 (Jin). Jin teaches a tackifier (paragraph 40: separator includes an acrylonitrile-acrylate copolymer binder), which Hennige fails to teach.
Applicant argues (Remarks pp.11-12) that Jin teaches a hydrophilic blocking layer (paragraphs 6-7), and that this hydrophilic blocking layer, if applied to Hennige, would prevent Hennige’s TiO2 from being “deposited on a surface of the porous film and inner walls of the porous structures”. Examiner is not persuaded by this argument for the following reasons:
First, as discussed in the Claim Interpretation section below, “on” is interpreted broadly. Even if Jin’s hydrophilic blocking layer is applied to Hennige’s separator, and if this hydrophilic blocking layer prevented Hennige’s TiO2 from entering into the pores and forming a deposition adjoining walls of the pores, this TiO2 would still be “on” the walls of the pores according to the broadest reasonable interpretation of “on”. Note that the claims don’t state that the titanium oxide film and/or the titanium hydroxide film are inside of the pores. The claim only states “on”, which could be “on” a layer that is above those pores.
Second, Jin’s tackifier teaching was applied to Hennige, not Jin’s hydrophilic blocking layer teaching. One skilled in the art would not have been compelled to apply all teachings of Jin to Hennige merely because the tackifier teaching was applied.
Third, Jin’s hydrophilic blocking layer is used in Jin’s separator for preventing polyvinylidene fluoride from blocking separator pores. Hennige doesn’t use polyvinylidene fluoride; therefore, there would have been no reason for one skilled in the art to have also applied Jin’s hydrophilic blocking layer teaching to Hennige.
Applicant next argues (Remarks pp.12-13) that Hennige’s “TiO2 film CANNOT be formed rapidly on the surface of the porous film and inner walls of the porous structures”. It is unclear how this argument overcomes the prior art because the present claims don’t require rapid formation.
Applicant next argues (Remarks p.13) that rapid formation in the present specification is evidence of unexpected results. MPEP 716.02(d) provides the law for unexpected results:
“the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”
The present claims are not “commensurate in scope” with evidence of unexpected results based on rapid formation because the claims don’t require rapid formation.
Claim Interpretation
Claim 1 states “the porous substrate and the inorganic layer have a plurality of porous structures communicated with each other”. Examiner interprets this “communicated with each other” to mean that the porous substrate and the inorganic layer are near each other, so that fluid can be exchanged between pores of the different structures.
Claim 1 states:
“a titanium oxide film and/or a titanium hydroxide film deposited on a surface of the porous film and inner walls of the porous structures”
The phrase “on a surface” is interpreted broadly. Without further clarification, “on” is not limited to touching the surface. “On” could mean above. For example, a film “on” an outer surface of the separator is interpreted to be “on” structures within the separator, including on inner walls of pores. Words such as “touch”, “physical contact”, or “adjoin” and/or guidance from drawings could require a narrower interpretation of this claim limitation.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The claims are in bold font, the prior art is in parentheses.
Claims 1-4, 7-10, 15, & 36 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US20060078791A1 (Hennige).
Hennige teaches the following claim 1 limitations:
A high thermal-stability separator (paragraph 20: separator), comprising:
a porous film comprising a porous substrate (paragraph 20: perforate support) and an inorganic layer (paragraph 20: porous ceramic material),
wherein the inorganic layer comprises a plurality of inorganic particles (paragraphs 31 & 71: ceramic material contains particles) and a binder (paragraphs 71 & 77: ceramic particles dispersed in a sol) formed on at least one surface of the porous substrate (paragraph 20), and
the porous substrate (paragraphs 35-37: perforate support pores) and the inorganic layer (paragraph 20: porous ceramic material) have a plurality of porous structures communicated with each other (Hennige’s perforate support and ceramic material are both in the same separator, so their pores would communicate with each other. See the Claim Interpretation section above.); and
a titanium oxide film and/or a titanium hydroxide film deposited on a surface of the porous film and inner walls of the porous structures by chemical solution deposition (Paragraph 138: TiO2 is applied on the separator by a sol. See the Claim Interpretation section above for interpretation of “on”.)
Claim 1 also states:
a titanium oxide film and/or a titanium hydroxide film deposited… by first applying a precursor solution on the porous film and applying a reactive solution thereafter to react with the precursor solution
Hennige fails to teach this method of making the separator. MPEP § 2113 provides the law for a recitation of how an article is made:
“‘[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”
The above recitation of how the separator is made does not limit the scope of the claim for patent examination purposes, except to the extent that the claimed process affects the separator. The present specification fails to teach how this method affects the final separator. Presumably, Hennige’s separator has the properties of a separator made from this method.
With regard to claims 2-4, Hennige teaches the limitations of claim 1 as discussed above. Claims 2-4 state:
Claim 2
a compression retention of the high thermal-stability separator is more than 90% after being compressed with a load of 88 Kgf/cm2 for 30 seconds
Claim 3
a decrease of air permeability (Gurley) of the high thermal-stability separator is less than 35% after being compressed with a load of 88 Kgf/cm2 for 30 seconds
Claim 4
a thermal rupture temperature of the high thermal-stability separator is more than 170ºC
Hennige doesn’t refer to a compression retention value, a decrease of air permeability, or a thermal rupture temperature. The present specification teaches a titanium oxide film and/or a titanium hydroxide film to achieve these claimed ranges (paragraph 139). Hennige’s separator includes TiO2 / titanium oxide (paragraph 138) and the other aspects of the presently-claimed separator; therefore, Hennige’s separator presumably has a value within these claimed ranges.
With regard to claims 7 & 10, Hennige teaches the limitations of claim 1 as discussed above. Claims 7 & 10 state:
Claim 7
the precursor solution is a 0.25wt% to 3wt% titanium alkoxide solution
Claim 10
the reactive solution is a 30wt% to 70wt% alcohol solution
Hennige fails to teach this method of making the separator. MPEP § 2113 provides the law for a recitation of how an article is made:
“‘[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”
The recitations in claims 7 & 10, of how the separator is made, do not limit the scope of these claims for patent examination purposes, except to the extent that these processes affect the separator. The present specification fails to teach how the methods of these claims affect the final separator. Presumably, Hennige’s separator has the properties of a separator made from these methods.
With regard to claims 8-9, Hennige teaches the limitations of claims 1 & 6-7 as discussed above. Hennige also teaches the limitations of claims 8-9:
Claim 8
the titanium alkoxide is titanium methoxide, titanium ethoxide, titanium isopropoxide, titanium tert-butoxide or combinations thereof (paragraph 138: titanium tetraisopropoxide = titanium isopropoxide)
Claim 9
a solvent of the titanium alkoxide solution is methanol, ethanol, isopropanol, or combinations thereof (paragraph 77: methanol)
Furthermore, according to MPEP § 2113, quoted above, these recitations of how the separator is made do not limit the scope of these claims for patent examination purposes, except to the extent that these processes affect the separator. The present specification fails to teach how the methods of these claims affect the final separator. Presumably, Hennige’s separator has the properties of a separator made from these methods.
With regard to claim 15, Hennige teaches the limitations of claim 1 as discussed above. Hennige also teaches the following limitation of claim 15:
the porous substrate is a single-layered or multi-layered polyolefin, polyester or polyamide porous substrate (paragraph 35: the perforate support comprises polyolefin)
Hennige teaches the following claim 36 limitations:
A high thermal-stability separator (paragraph 20: separator), comprising:
a porous film with a plurality of porous structures (paragraph 20: perforate support & porous ceramic material); and
a titanium oxide-silicon oxide film and/or a titanium hydroxide-silicon oxide film formed on a surface of the porous film and inner walls of the porous structures by chemical solution deposition (Paragraph 138: TiO2 is applied to the separator as a sol. See the Claim Interpretation section above for “on” interpretation. Paragraphs 31-32 & 71: Ceramic material contains particles with SiO2 on the particle surface. TiO2 and SiO2 would thus be on a surface of the porous film and inner walls.)
a porous film with a plurality of porous structures (paragraph 20: perforate support & porous ceramic material); and
Claim 36 also states:
a titanium oxide-silicon oxide film and/or a titanium hydroxide-silicon oxide film formed… by first applying a precursor solution on the porous film and applying a reactive solution thereafter to react with the precursor solution
Hennige fails to teach this method of making the separator. MPEP § 2113 provides the law for a recitation of how an article is made:
“‘[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”
The above recitation of how the separator is made does not limit the scope of the claim for patent examination purposes, except to the extent that the claimed process affects the separator. The present specification fails to teach how this method affects the final separator. Presumably, Hennige’s separator has the properties of a separator made from this method.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 11-14 & 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over US20060078791A1 (Hennige), as applied to claim 1, in view of US20210218113A1 (Jin).
With regard to claim 11, Hennige teaches the limitations of claim 1 as discussed above. Hennige fails to teach the following limitation of claim 11, which is taught by Jin:
the titanium oxide and/or the titanium hydroxide film further comprises a tackifier (paragraph 40: separator includes an acrylonitrile-acrylate copolymer binder)
The present specification teaches that the tackifier enhances adherence (paragraph 47). Jin’s binder fulfills this same function (paragraph 40: bonding).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Hennige’s separator to include acrylonitrile-acrylate copolymer binder, as taught by Jin, for bonding Hennige’s TiO2 to the separator.
With regard to claim 12, modified Hennige teaches the limitations of claims 1 & 11, as discussed above. Hennige fails to teach the following limitation of claim 12, which is taught by Jin:
the tackifier is… acrylonitrile-acrylate copolymer (paragraph 40: separator includes an acrylonitrile-acrylate copolymer binder)
With regard to claims 13-14, modified Hennige teaches the limitations of claim 1 & 11, as discussed above. Hennige fails to teach the following limitations:
Claim 13
the stabilizer is hexamethyldisilazane (HMDS)
Claim 14
the metal salt is sodium bromide, potassium iodide, magnesium chloride, strontium chloride, calcium chloride, strontium bromide, copper chloride, or combinations thereof
Claims 13-14 depend from claim 12, in which the stabilizer and the metal salt are alternatives to the tackifier. Jin teaches the tackifier (paragraph 40), so there is no need for prior art to teach the optional limitations of claims 13-14.
With regard to claim 16, Hennige teaches the limitations of claim 1, as discussed above. Hennige fails to teach the following limitation of claim 16, which is taught by Jin:
the inorganic layer comprises 80wt% to 99wt% inorganic particles and 1wt% to 20wt% binder (paragraph 112)
Jin teaches a mixture for a layer of a separator that has the following weight ratio of components: 90:10:0.4:0.4:1.2 (paragraph 112). 90 refers to the parts by weight of particles and 10 refers to the parts by weight of binder. Thus, the particle weight percent is 90/(90+10+0.4+0.4+1.2) = 88 wt% and the binder weight percent is 10/(90+10+0.4+0.4+1.2) = 9.8 wt%.
Jin is directed to a battery separator for improved battery performance (paragraphs 2 & 19). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Hennige’s separator layer with particles to include 88 wt% particles and 9.8 wt% binder, as taught by Jin, as part of a separator for improved battery performance.
With regard to claim 17, modified Hennige teaches the limitations of claims 1 & 16, as discussed above. Claim 17 states:
the inorganic particles are… SiO2 (paragraph 36)
Hennige teaches SiO2 on a surface of the particles (paragraph 112), but fails to teach that the particles are SiO2.
Jin teaches SiO2 in the separator (abstract, paragraphs 35-36). Jin is directed to a battery separator for improved battery performance (paragraphs 2 & 19). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Hennige’s separator layer particles to be SiO2, as taught by Jin, as part of a separator for improved battery performance.
With regard to claim 18, modified Hennige teaches the limitations of claims 1 & 16, as discussed above. Hennige fails to teach the following limitation of claim 18, which is taught by Jin:
the binder is… polyvinylidene fluoride (PVDF) (paragraph 40)
Jin is directed to a battery separator for improved battery performance (paragraphs 2 & 19). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Hennige’s separator layer with particles to include a polyvinylidene fluoride binder, as taught by Jin, as part of a separator for improved battery performance.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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