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 § 102/103
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.
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 1-4, 6-9, 12, 14-16, 38-41, 43 and 46 (all pending claims) are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP-(4139178B2), submitted by applicant in an IDS, with evidence from ENTEK ppt brochure and Miller et al (US 2017/0072610.)
Claims are generally in the product-by-process format, directed at a self-supporting polyolefin/polyethylene microporous membrane. The membrane is also biaxially stretched. Additional elements in the dependent claims include web thickness.
Product-by-process claims, 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). A rejection based alternatively on 35 U.S.C. 102 or 103 for product-by-process claims has been approved by the courts. Therefore, all the process steps in these claims are given no patentable weight. Only structural elements and any process step that appears to influence the structure are only considered in the following analysis.
JP teaches microporous battery separators [0001] of high density polyethylene of Mol. Wt. 500,000 or more [0008]; and 2 million in examples. It uses mineral oils of flash point about 250C (240C or greater: [0005], examples.) Extracting solvent, isoparaffin, has flash point 46-50C (examples.) The microporous structure would be inherently having interconnected pores. JP also teaches that biaxial stretching is well-known in the art of battery separators [0002.] Isoparaffin is halogen-free.
The JP battery separator also has silica in similar proportions as in the disclosed and claimed invention. See the Examples.
Characteristics such as aniline point, and the boiling point difference inherently follows the flash point and the type of oils used, unless otherwise shown.
Residual solvent and plasticizer would be inherent, depending on the process and the stage of the process, unless otherwise shown. JP, [0025] teaches residuals as 1% or less, though it can also be 1-20%.
Thickness: JP teaches 100 microns in examples. The 25 microns or less, or 150-300 microns of thickness is not patentable unless otherwise shown, because this can be engineered based on the separator thickness required for the desired application.
Applicant uses ENTEK 800 oil: Calumet in the examples, which appear to be a commercially available mineral oil used for the purpose of making battery separators. Entek is known for its battery separators (source: internet: << https://entek.com/wp-content/uploads/2021/05/150909_ENTEK_-16ABCWeb.pdf >>). Copy attached in an 892.
Additional evidence that the battery separators are biaxially stretched is available from Miller, the previously applied prior art. Miller teaches free-standing UHMWPE microporous polyethylene membrane (abstract) that can be used for battery separator (claim 25) having TiO2, silica, etc., as filler [0008], [0021], and biaxially stretched [0044]. The molecular weight, by applicant’s own disclosure, of UHMWPE >> 0.5 million g/mol. Microporous matrix having Interconnecting pores: [0008]. Miller also teaches thickness 25 microns or less and 150-300 microns – see Table 3 which shows examples that have thickness within this thickness range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777