DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. 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
3. In response to the amendment received on 8/21/2026:
Claims 1-12 are pending in the current application. Claims 1-4 have been amended.
The previous rejection under 35 USC 112 is overcome in light of the amendment.
The cores of the previous prior art-based rejections have been overcome in light of the amendment. All changes made to the rejection are necessitated by the amendment.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 103
5. Claims 1-2, 4, and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Harumoto US PG Publication 2017/0125766 in view of Miura JP2016-093941.
Regarding Claims 1-2, 4, 7-8, and 12, Harumoto discloses a lithium-ion secondary battery comprising an anode, a cathode, and a separator disposed therebetween (paras 0141-0143, meeting Claim 12), the separator comprising a porous polymer material (three-layer membrane formed of polyolefins, paras 0031, 0173-0180), and a coating layer including an inorganic material (e.g. magnesia/magnesium oxide, alumina/aluminum oxide, silica, clay, titania/titanium oxide, paras 0128-0129, meeting Claim 7) having a particle size (average particle diameter) of 0.1 µm to 3.0 µm, which overlaps* the claimed range of 40 nm to 1. 6 µm (para 0130, meeting Claim 8) and a binder (para 0128) on one surface of the porous polymer material, wherein a ratio of average pore size of the separator to a maximum pore size is e.g. 0.65 (meeting Claim 2) and is measured by a bubble point method (perm porometry, which is a bubble point method, paras 0080-0083) (see Working Example 2, Table 1, inverting the Maximum/average size) (see entire disclosure and especially paras 0029-0032, 0051, 0064-0068, 0128-0140, 0173-0181, Table 1). Harumoto does not specifically disclose the use of the recited coating layer containing inorganic material and binder with the porous polymer material of Working Example 2 having the claimed ratio of pore sizes, but it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to apply said coating layer to the porous polymer material of Working Example 2 of Harumoto because Harumoto teaches that this layer improves heat resistance (para 0138) and the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Harumoto discloses that surface roughness is a consideration for separator design (paras 0004-0005) but does not give any surface roughness values for their inventive separator such that the surface roughness Rz of an outermost layer of the separator is 2.5 µm or less. However, in the same field of endeavor of composite separator design, Miura discloses wherein in a laminate porous film separator of a non-aqueous electrolyte battery comprising a porous film substate, an inorganic coating layer comprising inorganic particles and resin binder advantageously has a surface roughness of 1 µm or less (a range that falls within and therefore rendering obvious the claimed range of 2.5 µm or less, and overlaps the claimed range of 1.0 µm to 2.0 µm*, meeting Claim 4) because this allows the layer to make uniform contact with the electrodes, resulting in excellent ion conductivity, and allows for a laminated porous film that suppresses a decrease in puncture strength and the occurrence of powder shedding from the surface of the coating layer, thus possessing excellent properties when used as a separator in a non-aqueous electrolyte secondary battery (see entire disclosure and especially e.g. paras 0010-0014). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the separator of Harumoto such that an outermost layer of the separator has a surface roughness of 2.5 µm or less, or from 1.0 µm to 2.0 µm, because Miura teaches that in this range, the layer can make uniform contact with the electrodes, resulting in excellent ion conductivity, and allows for a laminated porous film that suppresses a decrease in puncture strength and the occurrence of powder shedding from the surface of the coating layer, thus possessing excellent properties.
*In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claim 9, Harumoto discloses that the binder resin of the inorganic/organic layer can be a material such as polyvinylidene fluoride (PVDF) (see e.g. paras 0048, 0131-0134). Harumoto fails to specifically disclose wherein the binder is at least one or more material selected from a group consisting of polymethylmethacrylate, polybutylacrylate, polyacrylonitrile, polyvinylpyrrolidone, polyvinylacetate, Ethylene Vinyl Acetate copolymer, and polyethylene oxide. However, Miura teaches the use of water soluble binder such as polyvinylidene fluoride and polyvinylpyrrolidone (paras 0054-0055) in conjunction with the same types of materials as used by Harumoto, and so it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the separator of Harumoto modified by Miura such that the binder is e.g. polyvinylpyrrolidone because Miura teaches that this material is functionally equivalent to polyvinylidene fluoride and the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Regarding Claim 10, Harumoto discloses wherein the separator has a thickness of not greater than 15 µm (para 0069) which falls in the claimed thickness range of 10 µm to 17 µm (see paras 0069-0070, Working Example 2, Table 1).
Regarding Claim 11, Harumoto discloses wherein the separator has an air permeability of 100 sec/100 cm3 to 300 sec/100cm3 (para 0014) which overlaps and therefore renders obvious the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
6. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Harumoto US PG Publication 2017/0125766 in view of Miura JP2016-093941, as applied to Claim 1, and further in view of Lee US PG Publication 2023/0223659.
Regarding Claim 3, Harumoto modified by Miura discloses the claimed separator as described in the rejection of Claim 1, which is incorporated herein in its entirety. Harumoto modified by Miura fails to specifically disclose wherein the separator has a maximum pore size of 80 to 100 nm and an average pore size of 40 nm to 60 nm. However, in the same field of endeavor of composite separator design, Lee teaches that the inorganic/organic composite layer of a multilayer separator should have a pore size of e.g. 10 nm to 90 nm which would give a maximum pore size of 90 nm and an average pore size of halfway between 10 nm and 90 nm, or 50 nm, both falling in the claimed ranges (para 0076) and Lee teaches that these values provide pore uniformity in the thickness direction and improves self-discharge rate of the battery. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the separator of Harumoto modified by Miura such that the separator has a maximum pore size of 80 to 100 nm and an average pore size of 40 nm to 60 nm because Lee teaches that these values provide pore uniformity in the thickness direction of the layer and improves self-discharge rate of the battery.
7. Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Harumoto US PG Publication 2017/0125766 in view of Miura JP2016-093941, as applied to Claim 1, and further in view of Ryu US PG Publication 2016/0218340.
Regarding Claims 5-6, Harumoto modified by Miura discloses the claimed separator as described in the rejection of Claim 1, which is incorporated herein in its entirety. Harumoto modified by Miura fails to specifically disclose wherein the separator has an insulation breakdown voltage per unit thickness of 0.145 KV/µm or more, or a breakdown voltage of 1.6 KV or more. However, in the same field of endeavor of composite separator design, Ryu teaches that insulation (dielectric) breakdown voltage is an important property to optimize in multilayer composite separators in order to improve electrical safety since this voltage is measured when dielectric failure occurs and teaches improved process of forming these separators results in a separator having a measured insulation breakdown voltage of e.g. 3.0 KV for a membrane/separator of 19.0 µm thickness, which gives values of greater than 1.6 KV insulation breakdown voltage (meeting Claim 6) and an insulation breakdown voltage per unit thickness of 0.158 KV/µm (3.0KV / 19.0 µm = 0.158 KV/µm, meeting Claim 5) (see e.g. paras 0006, 0014-0016, and Table 1). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the separator of Harumoto modified by Miura such that the separator has an insulation breakdown voltage per unit thickness of 0.145 KV/µm or more, and a breakdown voltage of 1.6 KV or more because Ryu teaches that this material is functionally equivalent to cellulose acetate in the same type of application insulation (dielectric) breakdown voltage is an important property to optimize in multilayer composite separators in order to improve electrical safety since this voltage is measured when dielectric failure occurs and teaches improved process of forming these separators results in a separator having a measured insulation breakdown voltage of e.g. 3.0 KV for a membrane/separator of 19.0 µm thickness, which gives values of greater than 1.6 KV insulation breakdown voltage and an insulation breakdown voltage per unit thickness of 0.158 KV/µm.
Response to Arguments
8. Applicant's arguments with respect to the claims are based on the claims as amended. The amended claims have been addressed in the new rejection above.
Conclusion
9. 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 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.
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/LISA S PARK/Primary Examiner, Art Unit 1729
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