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 .
Response to Amendment
The amendments as filed 07/28/2026 have been entered and do not overcome the 103 rejection as previously put forth in non-final office action mailed 04/29/2026.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over (US-20090246614-A1) hereinafter referred to as ‘Kim’ in view of (US-20210057701-A1) hereinafter referred to as ‘Zhang’ in further view of (US-20220059826-A1) hereinafter referred to as ‘Chen’
Regarding Claim 1,
Kim teaches a nonaqueous electrolyte secondary battery laminated separator comprising (Kim, “An electrode assembly of a secondary battery includes a positive electrode including a positive electrode active material layer, a negative electrode including a negative electrode active material layer, a separator separating the positive and negative electrodes from each other, and an electrolyte.”, see Abstract) :a nonaqueous electrolyte secondary battery functional layer (Kim, “The separator includes a porous layer comprising a ceramic material and a binder,”, see Abstract); and a polyolefin base material (Kim, “and a polyolefin-based resin layer”, see Abstract), the nonaqueous electrolyte secondary battery functional layer and the polyolefin base material being formed on top of each other (Kim, “The separator according to aspects of the present invention is formed to include a porous layer and a polyolefin-based resin layer”, see [0030]) %, and the polyolefin base material having a compressibility of not more than 5% ; (Kim, “polyolefin-based resin layer has a compressibility of 4% to 10%.”, see [0027]) and wherein the functional layer has unevenness on a surface thereof and an uneven space volume of not less than 0.5 mL/m2 and not more than 2.5 mL/m2 (Kim, “The porous layer has a centerline average roughness (Ra) of 0.3 μm to 1.5 μm, the polyolefin-based resin layer has a porosity of 30% to 60%, ”, see Abstract) (The examiner notes that uneven space volume is equal to porosity * surface (microns). This is because in terms of units mL= 1cm^2= 10^-6 m^3. Therefore, mL/m^2 is 10^-6m^3/M^2= 10^-6m= 1 microns. Therefore, the range of uneven space volume is 0.09 mL/m2 to 0.9 mL/m2 which is within the claimed range)
The examiner takes note of the fact that the prior art range of compressibility of 0.09 mL/m2 to 0.9 mL/m2, broadly overlaps the claimed range of 0.5 mL/m2 and not more than 2.5 mL/m2 . Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
The examiner takes note of the fact that the prior art range of compressibility of 4% to 10%.”, broadly overlaps the claimed range of no more than 5%. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Kim does not teach wherein the nonaqueous electrolyte secondary battery laminated separator is subjected to pressure application at 20 MPa, the nonaqueous electrolyte secondary battery functional layer having a compressibility of not less than 15% according to the following expression: (1 - thickness of the nonaqueous electrolyte secondary battery functional layer after pressure release (um) / thickness of the nonaqueous electrolyte secondary battery functional layer before pressure application (um)) x 100
Zhang teaches the nonaqueous electrolyte secondary battery laminated separator is subjected to pressure application at 20 MPa (Zhang, “The pressing pressure is preferably no higher than 20 MPa from the viewpoint of inhibiting blocking of the pores of the separator.”, see [0338]).
Zhang teaches that this pressure allows for the reduction of process time while not blocking the pores (Zhang, “The pressing pressure is preferably no higher than 20 MPa from the viewpoint of inhibiting blocking of the pores of the separator”, see [0338]).
Kim and Zhang are analogous as they are both of the same field battery separators.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the separator as taught in Kim to be manufactured under 20 MPa of pressure as taught in Zhang in order to prevent the blocking of the separator’s pores.
Chen teaches the nonaqueous electrolyte secondary battery functional layer having a compressibility of not less than 15% (1 - thickness of the nonaqueous electrolyte secondary battery functional layer after pressure release (um) / thickness of the nonaqueous electrolyte secondary battery functional layer before pressure application (um)) x 100 (Chen, “A compressibility S of the organic porous particulate material ranges from 40% to 90%, and in some embodiments, 50% to 80%.”, see [0007])(Chen, “the compressibility S of the organic porous particulate material is S=(H−h)/H.”, see [0100])(The examiner notes this is the same formula: S=(H-h)/H= H/H-h/H =1-h/H, which is the same formula as claimed)
The examiner takes note of the fact that the prior art range of compressibility of 40% to 90%, broadly overlaps the claimed range of not less than 15% , Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Chen teaches that this compressibility allows for the material to store electrolyte solution and for proper expansion of the material during lithiation (Chen, “Consequently, enough space is not able to be reserved for the expansion of the electrode plate, and the heat emission temperature of the electrode plate is relatively high. In addition, the material is less capable of storing the electrolytic solution, and the effect of improving the infiltration of the electrolytic solution for the electrode plate is weak.”, see [0049]).
Kim and Chen are analogous as they are both of the same field of separators for batteries.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a porosity of the non-resin layer to be greater than 15% in order to allow for sufficient porosity for electrolyte adsorption and resistance to lithiation expansion.
Regarding Claim 2,
Modified Kim teaches a nonaqueous electrolyte secondary battery member comprising: a positive electrode; a nonaqueous electrolyte secondary battery laminated separator recited in claim 1; and a negative electrode, the positive electrode, the nonaqueous electrolyte secondary battery laminated separator, and the negative electrode being formed on top of each other in this order (Kim, “An electrode assembly of a secondary battery includes a positive electrode including a positive electrode active material layer, a negative electrode including a negative electrode active material layer, a separator separating the positive and negative electrodes from each other, and an electrolyte.”, see Abstract) .
Regarding Claim 3,
Modified Kim teaches a nonaqueous electrolyte secondary battery comprising a nonaqueous electrolyte secondary battery laminated separator recited in claim 1 (Kim, “An electrode assembly of a secondary battery includes a positive electrode including a positive electrode active material layer, a negative electrode including a negative electrode active material layer, a separator separating the positive and negative electrodes from each other, and an electrolyte.”, see Abstract).
Regarding Claim 4,
Modified Kim teaches a nonaqueous electrolyte secondary battery comprising a nonaqueous electrolyte secondary battery member recited in claim 2 (Kim, “An electrode assembly of a secondary battery includes a positive electrode including a positive electrode active material layer, a negative electrode including a negative electrode active material layer, a separator separating the positive and negative electrodes from each other, and an electrolyte.”, see Abstract).
Response to Arguments
. Applicant's arguments filed 07/28/2026 have been fully considered but they are not persuasive. On pg. 7, the applicant argues:
“Hence, Kim's polyolefin-based resin layer compressibility of 4% to 10%, which is measured under fundamentally different conditions compared to the present invention, does not overlap with the presently claimed range of not more than 5%, and Applicant respectfully submits that any prima facie case of obviousness premised upon such an alleged overlap is unsupported.”
However, this is not convincing. The applicant claims that the compressibility as taught in Kim is incompatible because it teaches compressibility by a different method, and that the pressure of Kim is too low for the claimed invention. The MPEP recognizes that the process of a product is not a determination of its patentability in claims wherein a product is claimed (see MPEP 2113). Further, the examiner contends that the measurement of Kim is not much different from the claimed invention. Kim measures the thickness when compressed and then it is compared to the initial thickness (Kim, “The compressibility was expressed as a percentage (%) decrease with respect to the initial thickness.”, see [0086]). The instant application states compressibility as “The compressibility during pressure application is herein a parameter calculated by “compression amount during pressure application/thickness before pressure application×100. The compressibility during pressure application is an indicator that indicates, on the basis of the thickness before pressure application” (see [0169]). These methods are almost the same in description. Therefore, the method of measuring would not preclude the obviousness rejection and, even if it did, the measurement strategies are practically identical. One of ordinary skill in the art would have been found the combination obvious.
On pg. 7, the applicant argues:
“In contrast, the claimed pressure parameter (i.e., "at 20 MPa," as opposed to Zhang's "no higher than 20 MPa") is established with respect to the compressibility of the functional layer and polyolefin base material and, therefore, is neither defined by nor relevant to blockage of the porous membrane. Hence, the technical significance of Zhang's preferable pressing pressure of not more than 20 MPa (i.e., to avoid pore blockage) is completely dissimilar to and distinguishable from the purpose underlying the claimed pressure of precisely 20 MPa (i.e., to obtain the desired compressibility of the laminated separator components and reduce the increase in alternating-current resistance after compression). In fact, Applicant further respectfully submits that Zhang is completely silent with respect to any compressibility, much less the specific compressibility ranges of the functional layer and the polyolefin base material of the present claims, and therefore cannot cure the foregoing deficiency of Kim in this regard.”
However, this is not convincing. The MPEP finds that the rationale between the prior art and the claim invention may be different (see MPEP 2144 (IV)). It is also found that overlapping ranges are sufficient for a prima facie case of obviousness (see MPEP 2144.05 (I)). In fact, it has been found, specifically, that there is a case of obviousness with overlapping endpoints See In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range); (see MPEP 2144.05 (I)). The court has also found that the applicant must argue against the combination of references, rather than what each reference teaches or fails to teach individually (see MPEP 2145 (IV)).
The applicant argues that the rationale between Zhang and the instant application are different and, therefore, the references are not combinable, but that is not a consideration for patentability. The applicant argues that the overlapping ranges are too dissimilar, but an overlapping range forms a prima facie case of obviousness. Finally, the applicant argues that Zhang does not teach compressibility, but the examiner notes that feature is taught by the other references in the rejection of claim 1. Therefore, the rejection is upheld.
On pg. 9, the applicant argues:
“Accordingly, Chen's compressibility is a physical property which: (i) corresponds to individual particles (i.e., particles of the organic porous particulate material), not of a layer (e.g., the presently claimed functional layer); and (ii) is measured at an applied pressure of 2 MPa which is approximately one-tenth (1/10) of the 20 MPa pressure conditions required by the present claims. As argued above with respect to Kim's dissimilar, non-coextensive polyolefin-based resin layer compressibility measurement, Chen's compressibility range of 40% to 90% cannot be regarded as overlapping with the presently claimed functional layer compressibility range of not less than 15% considering both the dissimilar object of measurement (individual particle versus entire layer) and measurement pressure (2 MPa versus 20 MPa). Thus, as with Kim, Chen's compressibility range is not coextensive with the presently claimed range of not less than 15% and, therefore, cannot support any prima facie case of obviousness premised upon any alleged overlap of the functional layer compressibility parameter.”
However, this is not convincing. The applicant must argue against the combination of references rather than what each reference teaches or fails to teach individually (see MPEP 2145 (IV)). Additionally, simple substitution is exchanging one known element for another to obtain predictable results and has been as a prima facie case of obviousness (see MPEP 2143 (I)(B)).
The examiner notes that the applied pressed of 2 MPa of Chen does not preclude obviousness and is arguing against the references individually, as the pressure is taught by Zhang. Chen teaches a particle rather than a bulk layer. However, it would have been obvious to one of ordinary skill in the art to apply the same level of compressibility to the bulk separator, as Chen teaches the benefit of higher compressibility (Chen, see [0049]). Chen does not limit this benefit to only particles. Therefore, one of ordinary skill in the art would have found it obvious to substitute a particle for a bulk layer and attempt the same level of compressibility, due to the benefits to battery performance.
On pg. 10, the applicant argues:
“As previously explained, Kim, Zhang, and Chen are completely devoid of any teaching with respect to unevenness of the functional layer surface, much less the claimed uneven space volume of not less than 0.5 mL/m2 and not more than 2.5 mL/m2, and the technical impact of uneven space volume on battery performance. Hence, the improved discharge capacity, capacity recovery rate, and elastic recovery rate after pressure application at 20 MPa exhibited by laminated separators incorporating a functional layer with the claimed uneven space volume as demonstrated in Examples 3, 7, and 8 of the present application would not have been expected…Thus, the experimental results of Example 1 demonstrate not only the unexpected ability of the presently claimed laminated separator to reduce the increase in alternating-current resistance, but also the criticality of the claimed compressibility of the functional layer of not less than 15% to accomplish these technical improvements in battery performance, particularly withstanding the increase in alternating-current resistance upon compression.”
However, this is not convincing. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention, which flows naturally from the prior art (MPEP 2145 (II)). Kim teaches an uneven surface with a certain given porosity, which teaches the uneven space volume as claimed (see Abstract and rejection of Claim 1 above). Chen teaches the criticality of compressibility (Chen, see [0049]). It would, therefore, not be unexpected that compressibility would demonstrate benefits to cycling. Benefits which are not explicit in the prior art, but are obvious as the benefits of compressibility and the pressure would flow naturally from the obvious combination of the prior art.
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 SEAMUS PATRICK MCNULTY whose telephone number is (703)756-1909. The examiner can normally be reached Monday- Friday 8:00am to 5pm.
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/S.P.M./Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752
