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 .
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.
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Tsukuda et al. (EP 0898316 A1), hereinafter “Tsukuda”, in view of Kim et al. (US 10615389 B2), hereinafter “Kim”, and Cho et al. (EP 4152505 A1), hereinafter “Cho”.
Regarding claim 1, Tsukuda teaches a battery separator comprising a porous polyolefin substrate and an applied strengthening layer (corresponding to the claimed high tensile strength separator comprising a porous polyolefin substrate with a plurality of porous structures on surfaces and interiors thereof) (Tsukuda, Paragraph [0002], lines 1-2; [0032] lines 1-4), wherein the applied strengthening layer may comprise organometallic compounds (Tsukuda, [0032] lines 1-4), such as hexamethyldisilazane (Paragraph [0115], lines 1-2; Paragraph [0117], line 1; Paragraph [0118], lines 1 & 18; & Paragraph [0030], lines 1-6) and titanium oxide (Tsukuda, Paragraph [0126], lines 1-2).
Examiner notes that “obtained by sequentially applying a titanium alkoxide solution of 0.1wt% to 5wt%, a hexamethyldisilazane of 0.1wt% to 5wt% and a 30wt% to 70wt% alcohol solution to the porous polyolefin substrate” is an intended use limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2111.02 (II).
Tsukuda teaches a solution comprising 0.1%-5% concentration of the organometallic compound (Tsukuda, [0153], line 1). Therefore, the claimed 0.1wt% to 5wt% of hexamethyldisilazane solution would result from the combination of Tsukuda’s organometallic concentration range of 0.1%-5% and Tsukuda’s hexamethyldisilazane organometallic compound, explicitly disclosed by the prior art. See § MPEP 2112. Tsukuda also teaches a hydrolyzate that may comprise organometallic compounds, such as titanium alkoxides (Tsukuda, [0124], lines 1-2). Therefore, the claimed 0.1wt% to 5wt% of titanium alkoxide solution would result from the combination of Tsukuda’s organometallic concentration range of 0.1%-5% and Tsukuda’s hydrolyzate comprising titanium alkoxides, explicitly disclosed by the prior art. See § MPEP 2112. Tsukuda further teaches that the titanium alkoxides result in the precipitation of titanium oxide (corresponding to the claimed strengthening layer comprising titanium oxide and/or titanium hydroxide) (Tsukuda, [0125], lines 1-4, [0126], lines 1-3). Lastly, Tsukuda teaches an example solution comprising 65% ethanol (corresponding to the claimed 30wt% to 70wt% alcohol solution) (Tsukuda, [0316], lines 1-5). Since Tsukuda teaches applying a solution to porous separator to form a strengthening layer, and solutions comprising the claimed chemical species within the claimed ranges, then Tsukuda’s strengthening layer is thus considered capable of the same uses as recited.
Tsukuda does not teach the strengthening layer applied to sidewalls of the porous structures of a porous polyolefin substrate, nor the inorganic layer comprising a plurality of inorganic particles. However, Kim teaches a separator comprising a porous substrate, a heat-resistant inorganic layer formed on at least one substrate surface and on internal surfaces of the pores (Kim, Col. 2, lines 50-57). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Kim’s heat-resistant inorganic layer to Tsukuda’s separator to prevent the porous substrate from shrinking (Kim, Col. 6, lines 49-55).
Kim does not teach a separator comprising an inorganic layer comprising a plurality of inorganic particles. Cho teaches a separator comprising a coating layer comprising inorganic particles (Cho, Paragraph [0006], lines 1-3). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Cho’s inorganic coating layer to Tsukuda’s separator and Kim’s heat-resistant layer to prevent heat shrinking behavior (Cho, Paragraph [0005], lines 1-4; & Paragraph [0006], lines 1-3).
Regarding claim 4, Tsukuda modified by Kim and Cho teaches a 10µm to 100µm thickness range for the porous polyolefin substrate (Tsukuda, Paragraph [0163], line 3), which overlaps with the instantly claimed range of 5µm to 30µm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. Tsukuda limits the substrate thickness to prevent short circuits at small separator thickness and to prevent high battery resistance at large separator thickness (Tsukuda, Paragraph [0163], lines 5-7). It would have been within the skill of one of ordinary skill in the art to select any value of substrate thickness within Tsukuda’s disclosed range, including a value within the claimed range, as it has been held that overlapping ranges are prima facie obvious.
Claims 3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tsukuda (EP 0898316 A1), in view of Kim (US 10615389 B2) and Cho (EP 4152505 A1), as applied to claims 1 and 4 above, and further in view of Lee et al. (EP 4401227 A1), hereinafter “Lee”.
Regarding claim 3, Tsukuda modified by Kim and Cho teaches a separator may comprise polypropylene or polyethylene (Tsukuda, Paragraph [0002], lines 1-2). Tsukuda modified by Kim and Cho does not teach a separator comprising a single-layered substrate. However, Lee teaches a single-layered separator substrate comprising polyolefins, such as polypropylene or polyethylene (Lee, Paragraph [0063], lines 1-7). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute Tsukuda, Kim, and Cho’s multi-layer substrate with Lee’s single-layered polypropylene or polyethylene substrate, to prevent electrode contact and facilitate ion exchange (Lee, Paragraph [0063], lines 1-3).
Regarding claim 5, Lee teaches a porosity range of 10% to 90% (Lee, Paragraph [0064], line 4) for the porous polyolefin substrate, which overlaps with the instantly claimed range of 30% to 70% porosity. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. It would have been obvious to add Lee’s porosity range for the polyolefin substrate to the substrate of Tsukuda, Kim, and Cho in order to improve adhesive strength between the porous substrate and coating layer (Lee, Paragraph [0007], lines 1-3). In this regard, it would have been within the skill of one of ordinary skill to select any value of porosity within the disclosed range, including a value within the claimed range, as it has been held that overlapping ranges are prima facie obvious.
Regarding claim 6, Tsukuda modified by Kim and Cho teaches a separator comprising an inorganic layer with ranges of 20wt% to 99.9wt% inorganic particles and 0.1wt% to 80wt% binder polymer (Cho, Paragraph [0075], lines 1-2), which overlap with the instantly claimed ranges of 80wt% to 99wt% inorganic particles and 1wt% to 20wt% binder. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Cho’s weight percent ranges for inorganic particles and binders to the separator of Tsukuda and Kim, to minimize binder from infiltrating pore spaces (Cho, Paragraph [0010], lines 1-3). In this regard, it would have been within the skill of one or ordinary skill to select any value of inorganic particle weight percent or binder weight percent within the disclosed range, including a value within the claimed ranges, as it has been held that overlapping ranges are prima facie obvious.
Regarding claim 6, Lee teaches an inorganic layer thickness between 1µm to 20µm (Lee, Paragraph [0014], line 1), which overlaps with the instantly claimed range of 0.5µm to 3µm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Lee’s inorganic layer thickness range to the separator of Tsukuda, Kim, and Cho, to improve adhesive strength between the porous substrate and coating layer (Lee, Paragraph [0007], lines 1-3). In this regard, it would have been within the skill of one or ordinary skill to select any value of inorganic layer thickness within the disclosed range, including a value within the claimed range, as it has been held that overlapping ranges are prima facie obvious.
Regarding claim 7, Lee teaches an inorganic layer comprising inorganic particles ranging from 0.3µm to 0.7µm in particle size (Paragraph [0052], lines 1-2), which overlaps with the instantly claimed range of 0.1µm to 3µm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. It would have been obvious to add Lee’s inorganic particle size range to the polyolefin substrate of Tsukuda, Kim, and Cho, to form uniform pores for ion migration (Lee, Paragraph [0052], lines 4-6). In this regard, it would have been within the skill of one of ordinary skill to select any value of particle size within the disclosed range, including a value within the claimed range, as it has been held that overlapping ranges are prima facie obvious.
Regarding claim 7, Lee also discloses an inorganic layer comprising one or more inorganic particles selected from: Mg(OH)2, BaSO4, BaTiO3, HfO2, SrTiO3, SnO2, CeO2, MgO, NiO, CaO, ZnO, ZrO2, SiO2, Y2O3, Al(OH)3, Al2O3, AlOOH, SiC, TiO2, or combinations thereof (Lee, Paragraph [0057], lines 1-3; & Paragraph [0059], lines 1-3). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Lee’s inorganic particle species to the separator of Tsukuda, Kim, and Cho, to improve lithium-ion transfer (Lee, Paragraph [0053], lines 2-4).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tsukuda (EP 0898316 A1), in view of Kim (US 10615389 B2), Cho (EP 4152505 A1), and Lee (EP 4401227 A1), as applied to claims 3 and 5-7 above, and further in view of Katayama et al. (EP 2573837 A1), hereinafter “Katayama”.
Regarding claim 8, Tsukuda modified by Kim, Cho, and Lee does not teach a binder comprising ethylene-vinyl acetate copolymer (EVA), poly(meth)acrylate, crosslinkable (meth)acrylic resin, fluororubber, styrene-butadiene rubber (SBR), polyvinyl alcohol (PVA), polyvinyl butyral (PVB), polyvinylpyrrolidone (PVP), poly-n-vinyl acetamide, polyvinylidene fluoride (PVDF), polyurethane, or combinations thereof. Katayama teaches a separator comprising binders that may include ethylene-vinyl acetate copolymer (EVA), crosslinked methyl polymethacrylate (PMMA), fluororubber, styrene-butadiene rubber (SBR), polyvinyl alcohol (PVA), polyvinyl butyral (PVB), polyvinylpyrrolidone (PVP), poly-n-vinyl acetamide, polyurethane, or combinations thereof (Katayama, Paragraph [0068], lines 2-6; Paragraph [0069], lines 1-2; & Paragraph [0078], lines 7-9). Crosslinked PMMA is a species of poly(meth)acrylate and crosslinkable (meth)acrylic resin, which teaches the two binder polymers stated in the instant claim 8. Cho teaches a separator comprising a binder that may include polyvinylidene fluoride (PVDF) (Cho, Paragraph [0138], line 2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Katayama’s polymer binders to the separator of Tsukuda, Kim, Cho, and Lee, to ensure separator melting at high temperature (Katayama, Paragraph [0035], lines 1-3), and further to add Cho’s polymer binders to the separator of Tsukuda, Kim, Cho, and Lee in order to minimize deviation in physical properties between the separator surface and the coating layer (Cho, Paragraph [0029], lines 3-5).
Terminal Disclaimer
The terminal disclaimer filed on 7/28/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 18/476,867 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 7/28/2026 have been fully considered but they are not persuasive.
Applicant argues regarding the newly amended claim 1 that Kim teaches away from using wet processes, such as the processes taught by Tsukuda and Cho. In response, examiner notes that Kim does teach that reduced water content on a separator may enable separator operability (Kim, col. 2, lines 38-42). However, Kim is generally directed to applying an inorganic layer onto at least one substrate surface and internal surfaces of the pores to prevent the substrate from shrinking (Kim, col. 2, lines 50-57; col. 6, lines 49-55). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues regarding claim 1 that Tsukuda does not teach the strengthening layer applied to sidewalls of the porous structures, nor the inorganic layer. In response, examiner notes that Tsukuda was never alleged to teach the strengthening layer applied to sidewalls of the porous structures, nor the inorganic layer. Kim teaches a separator comprising a porous substrate and a heat resistant inorganic layer formed on at least one substrate surface and on internal surfaces of the pores (Kim, col. 2, lines 50-57). Cho teaches a separator comprising a coating layer comprising inorganic particles (Cho, Paragraph [0006], lines 1-3). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues regarding claims 1 and 4 that one of ordinary skill, before the effective filing date of the claimed invention, has no motivation to combine Tsukuda, Kim, and Cho to obtain the high tensile strength separator as claimed. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Kim’s heat-resistant inorganic layer to Tsukuda’s separator to prevent the porous substrate from shrinking (Kim, col. 6, lines 49-55), and to add Cho’s inorganic coating layer to Tsukuda’s separator to prevent heat shrinking behavior (Cho, Paragraph, [0005], lines 1-4; Paragraph, [0006], lines 1-3).
Applicant argues regarding claim 2 that hexamethyldisilazane disclosed by Tsukuda is not used as a stabilizer in a pre-strengthened titanium alkoxide solution, as stated in the instant specification (Instant specification, Paragraph [0031]). In response, examiner notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues regarding claim 2 that that one of ordinary skill, before the effective filing date of the claimed invention, has no motivation to combine Tsukuda, Kim, Cho, and Zhong to obtain the high tensile strength separator as claimed. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Examiner notes that this argument is not persuasive, as seen above in the response to the arguments regarding claim 1. Furthermore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Zhong’s coating layer to Tsukuda, Kim, and Cho’s separator, in order to improve thermal stability of the separator (Zhong, Paragraph [0014]).
Applicant argues regarding claims 3 and 5-7 that one of ordinary skill, before the effective filing date of the claimed invention, has no motivation to combine Tsukuda, Kim, Cho, and Lee to obtain the high tensile strength separator as claimed. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Examiner notes that this argument is not persuasive, as seen above in the response to the arguments regarding claim 1. Furthermore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention:
to substitute Lee’s single-layered polypropylene or polyethylene substrate for the multi-layer substrate of Tsukuda, Kim, and Cho in order to prevent electrode contact and facilitate ion exchange (Lee, Paragraph [0063], lines 1-3) (re: claim 3)
to add Lee’s porosity range to the polyolefin substrate of Tsukuda, Kim, and Cho in order to improve adhesive strength between the porous substrate and coating layer (Lee, Paragraph [0007], lines 1-3) (re: claim 5)
to add Cho’s weight percent ranges for inorganic particles and binders to the separator of Tsukuda and Kim in order to minimize binder from infiltrating pore spaces (Cho, Paragraph [0010], lines 1-3) (re: claim 6)
to add Lee’s inorganic layer thickness range to the separator of Tsukuda, Kim, and Cho in order to improve adhesive strength between the porous substrate coating layer (Lee, Paragraph [0007], lines 1-3) (re: claim 6)
to add Lee’s inorganic particle size range to the polyolefin substrate of Tsukuda, Kim, and Cho in order to form uniform pores for ion migration (Lee, Paragraph [0052], lines 4-6) (re: claim 7)
to add Lee’s inorganic particle species to the separator of Tsukuda, Kim, and Cho in order to improve lithium-ion transfer (Lee, Paragraph [0053], lines 2-4) (re: claim 7)
Applicant argues regarding claim 8 that one of ordinary skill, before the effective filing date of the claimed invention, has no motivation to combine Tsukuda, Kim, Cho, Lee, and Katayama to obtain the high tensile strength separator as claimed. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Examiner notes that this argument is not persuasive, as seen above in the response to the arguments regarding claims 3 and 5-7. Furthermore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Katayama’s polymer binders to the separator of Tsukuda, Kim, Cho, and Lee in order to ensure separator melting at high temperature, and to add Cho’s polymer binders to the separator of Tsukuda, Kim, Cho, and Lee in order to minimize deviation in physical properties between the separator surface and the coating layer (Cho, Paragraph [0029], lines 3-5).
Applicant’s arguments regarding the nonstatutory double patenting rejections of claims 1-3 and 6-8 over copending Application No. 18/476,867 have been fully considered and are persuasive in view of the terminal disclaimer filed. The previous nonstatutory double patenting rejections of claims 1-3 and 6-8 has been withdrawn.
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.
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 Rachel Avina whose telephone number is (571)270-0429. The examiner can normally be reached M-F 7:30am-3:30pm.
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/R.M.A./ Examiner, Art Unit 1734
/JONATHAN JOHNSON/ Supervisory Patent Examiner, Art Unit 1734
