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 .
Specification
The disclosure is objected to because of the following informalities:
In paragraph 0036, line 10 "layer140" should read --layer 140--.
Appropriate correction is required.
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 that may comprise titanium oxide and hexamethyldisilazane for improved separator heat resistance (Tsukuda, Paragraph [0002], lines 1-2; Paragraph [0126], lines 1-2; Paragraph [0115], lines 1-2; Paragraph [0117], line 1; Paragraph [0118], lines 1 & 18; & Paragraph [0030], lines 1-6). 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.
Claim 2 is 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 Zhong et al. (US 20230071387 A1), hereinafter “Zhong”.
Regarding claim 2, Tsukuda modified by Kim and Cho teaches a strengthening layer that may comprise titanium dioxide and hexamethyldisilazane (Tsukuda, Paragraph [0032]; Paragraph [0126], lines 1-2; Paragraph [0115], line 1; Paragraph [0117], line 1; Paragraph [0118], lines 1 & 18; & Paragraph [0030], lines 1-6). Tsukuda, Kim, and Cho do not teach a strengthening layer comprising titanium hydroxide. However, Zhong teaches a separator comprising a coating layer that may include titanium oxide, titanium hydroxide, or both species in combination with each other (Zhong, Paragraph [0018], lines 1-3; & Paragraph [0019], lines 1-4). 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, to improve thermal stability of the separator (Zhong, Paragraph [0014]).
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, Cho, and Zhong, 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, Zhong, and Lee, to minimize deviation in physical properties between the separator surface and the coating layer (Cho, Paragraph [0029], lines 3-5).
Double Patenting
Claims 1-3, and 6-8 of this application are patentably indistinct from claims 1, 13, and 15-18 of Application No. 18/476867. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of copending Application No. 18/476867, hereinafter referred to as “the 867 application”, in view of Tsukuda (EP 0898316 A1) and Kim (US 10615389 B2).
Regarding the instant claim 1, claim 1 of the 867 application teaches a separator comprising a porous film comprising a porous substrate and an inorganic layer, wherein the inorganic layer comprises a plurality of inorganic particles and a binder and is formed on at least one surface of the porous substrate, and the porous substrate and the inorganic layer have a plurality of porous structures communicated with each other; and a titanium oxide film (corresponding to the claimed strengthening described in the instant claim 2) and/or a titanium hydroxide film deposited on a surface of the porous film and inner walls of the porous structures.
Claim 1 of the 867 application does not explicitly teach a porous polyolefin substrate. However, Tsukuda teaches that porous materials, including polyolefins such as polypropylene and polyethylene, have been used as separators (Tsukuda, Paragraph [0002], lines 1-2). 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’s polyolefin substrate for the 867 application’s separator substrate to prevent battery ignition (Tsukuda, Paragraph [0003]).
Claim 1 of the 867 application and Tsukuda do not teach a strengthening layer formed on sidewalls of the porous structures. Kim teaches a separator with an inorganic layer formed on at least one substrate surface and on internal surfaces of the pores (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 coating layer on internal surfaces of the pores to the separator of Tsukuda and the 867 application, to increase separator thermal resistance and prevent thermal contraction (Kim, Col. 1, lines 48-50 & 61-64).
Regarding the instant claim 2, claim 13 of the 867 application modified by Tsukuda and Kim teaches a high thermal-stability separator, comprising 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, wherein the titanium oxide and/or the titanium hydroxide film further comprises a tackifier, a stabilizer or a metal salt, wherein the stabilizer is hexamethyldisilazane (HMDS). Therefore, the strengthening layer of claim 13 of the 867 application meets the limitations of the strengthening layer described in the instant claim 2.
Claims 3 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-18 of the copending 867 application, in view of Tsukuda (EP 0898316 A1) and Kim (US 10615389 B2), as applied to the instant claims 1 and 2 above, and further in view of Lee (EP 4401227 A1).
Regarding the instant claim 3, claim 15 of the 867 application modified by Tsukuda and Kim teaches a porous film comprising a porous substrate and an inorganic layer, wherein the porous substrate is a single-layered or multi-layered polyolefin, polyester or polyamide porous substrate. Claim 15 of the 867 application modified by Tsukuda and Kim does not explicitly teach a single-layered polyethylene substrate or a single-layered polypropylene 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 Lee’s single-layered substrate for the substrate of Tsukuda, Kim, and the 867 application, to prevent electrode contact and facilitate ion exchange (Lee, Paragraph [0063], lines 1-3).
Regarding the instant claim 6, claim 16 of the 867 application modified by Tsukuda and Kim teaches a high thermal-stability separator, comprising an inorganic layer, wherein the inorganic layer comprises 80wt% to 99wt% inorganic particles and 1wt% to 20wt% binder. The weight percentage ranges for the inorganic particles and binder recited in claim 16 of the 867 application satisfy the corresponding ranges recited in the instant claims 6-8. The 867 application modified by Tsukuda and Kim does not teach the inorganic layer thickness as ranging between 0.5µm and 3µm. However, 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 and 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 the 867 application, 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 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 the instant claim 7, claim 17 of the 867 application modified by Tsukuda and Kim teaches an inorganic layer comprising a plurality of inorganic particles, wherein the inorganic particles are Mg(OH)2, BaSO4, BaTiO3, Pb(Zr,Ti)O3 (PZT), Pb1-xLaxZr1-y(Zr,TiyO3) (PLZT, wherein 0<x<1 and 0<y<1), Pb(Mg1/3Nb2/3)O3-PbTiO3 (PMN-PT), HfO2, SrTiO3, SnO2, CeO2, MgO, NiO, CaO, ZnO, ZrO2, SiO2, Y2O3, Al(OH)3, Al2O3, AlOOH, SiC, TiO2, or combinations thereof. The inorganic particles recited in claim 17 of the 867 application modified by Tsukuda and Kim meet the limitations regarding inorganic particle species recited in the instant claim 7. However, claim 17 of the 867 application modified by Tsukuda and Kim does not explicitly teach that the particle size of the inorganic particles is ranging between 0.1µm and 3µm. Lee teaches a particle size range from 0.3μm to 0.7μm (Lee, Paragraph [0052], lines 1-2), which overlaps with the instantly claimed particle size range of 0.1µm and 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 particle size range to the separator of Tsukuda, Kim, and the 867 application, to improve ion transport and create more uniform pore sizes (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 the instant claim 8, claim 18 of the 867 application modified by Tsukuda and Kim teaches a binder comprising ethylene-vinyl acetate copolymer (EVA), poly(meth)acrylate, cross-linked (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. Claim 18 of the 867 application modified by Tsukuda and Kim recites the same binders as disclosed in the instant claim 8.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jo et al. (US 20250316848) teaches a porous polyolefin separator with an inorganic layer comprising a binder and inorganic particles with similar weight distribution and particle sizes as the instant application.
Taguchi et al. (EP 3605655 B1) teaches a polyolefin separator with an inorganic layer comprising inorganic particle species recited in the instant application.
Ryu et al. (KR 20080025433 A) teaches a hydrophobic surface treatment for a porous separator, comprising hexamethyldisilazane, to improve separator mechanical strength.
Lee et al. (WO 2015076611 A1) teaches a separator coating layer comprising polymer binders for improved separator adhesion.
Fukui et al. (WO 2020166692 A1) teaches a porous heat-resistant film to improve adhesion between the separator substrate and porous layer.
Zhong et al. (WO 2021150335 A1) teaches a separator comprising a coating layer to improve thermal stability.
Cheng et al. (CN 111224047 A) teaches a porous separator comprising a coating layer with inorganic and organic substances and an adhesive for improved separator stability.
Kwon et al. (US 12609363 B2) teaches a separator comprising a heat-resistant porous layer with strong adhesion to an inorganic filler for heat resistance.
Wheesung et al. (KR 20190110249 A) teaches a separator comprising a poly(meth)acrylate binder.
Kim et al. (US 20250329872 A1) teaches a separator comprising a (meth)acrylic resin binder.
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/R.M.A./ Examiner, Art Unit 1734
/JONATHAN JOHNSON/ Supervisory Patent Examiner, Art Unit 1734
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