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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15 and 19 in the reply filed on 12 July 2026 is acknowledged.
Relevant MPEP Sections
MPEP 2112.01 relating to Composition, Product, and Apparatus Claims: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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 1-15 and 19 are rejected under 35 U.S.C. 102(a)(1 or 2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mizuno et al. (US Pub 2016/0126520 cited in IDS).
In regard to claim 1, Mizuno et al. teach a separator, comprising a base film of polyethylene (PE) composition comprising 30% by mass of an ultra-high molecular weight polyethylene (UHMWPE) having a mass average molecular weight (Mw) of 250000 and 70% by mass of a high-density polyethylene (HDPE) having a Mw of 28000 (paragraph [0136] – Example 1),
which is formed by extruding and stretching to produce a polyolefin microporous membrane (a) having a thickness of 9 μm (see Examples, paragraph [0136-0148] for Example 1).
While the prior art does not specify the specific tensile energy per unit thickness test of the instant claims is performed, the separator of the prior art is formed to have tensile rupture strength of preferably 80,000 kPa or more in both MD and TD. When it is 80,000 kPa or more, the membrane will not rupture when used as a battery separator. The tensile rupture strength is more preferably 100,000 kPa or more. Further, the tensile rupture elongation of the polyolefin microporous membrane used in the prior art is preferably 100% or more in both MD and TD. When the tensile rupture elongation is 100% or more, the membrane will not rupture when used as a battery separator (paragraphs [0113-0114]). The specifics of the claimed testing conditions do not distinguish the claims from the prior art, as the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 above) as the prior art is reasonably presumed to have properties which anticipate or obviate the claimed material properties such as tensile energy per unit thickness in both directions, absent evidence to the contrary.
In regard to claims 2, 14 and 15, Mizuno et al. teach the separator according to claim 1, and the prior art teaches substantially an identical separator, and optimization of the tensile strength in both MD and TD directions (paragraphs [0113-0114]) such that a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 above) for the claimed properties values during tests such as those described as the specific testing conditions required by these claims do not distinguish the structure of the separator from that of the prior art.
In regard to claim 3, Mizuno et al. teach the separator according to claim 1, wherein the base film has an elongation such as in MD direction of 210%; and the base film has an elongation in TD direction of 280% in Example 9 (Table 1).
In regard to claims 4-7, Mizuno et al. teach the separator according to claim 1, a base film of polyethylene (PE) composition comprising 30% by mass of an ultra-high molecular weight polyethylene (UHMWPE) having a mass average molecular weight (i.e. M1) of 250,000 and 70% by mass of a high-density polyethylene (HDPE) having a molecular weight (i.e. M2) of 28,000 (paragraph [0136] – Example 1 – M1/M2 of ~8.9).
In regard to claim 8, Mizuno et al. teach the separator according to claim 4, wherein the polyethylene-based polymer has a degree of crystallinity which is controlled to ensure good shutdown properties (paragraph [0048]) which obviates optimizing the result effective variable of the degree of crystallinity, further, as the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 above).
In regard to claim 9, Mizuno et al. teach the separator according to claim 1, wherein the thickness of the base film is 8 microns in the disclosed Examples (Table 1), more ranges for thickness are disclosed in paragraph [0109].
In regard to claims 10-13, Mizuno et al. teach the separator according to claim 1, further comprising a heat resistant layer located on at least one surface of the base film, the heat resistant layer comprises heat resistant particles, the mass proportion of which in the heat resistant layer is >40% (such as 49 parts by weight alumina – Example 2, paragraph [0152]); and, wherein, the inorganic heat resistant particles are optionally selected from one or more of alumina, silicon oxide, titanium oxide, etc. (paragraph [0092]) and the organic heat resistant particles are optionally selected from one or more of polyacrylic resins etc. (paragraphs [0090]) with a thickness such as 1 to 5 micron (paragraph [0098]) and wherein a peel strength between the heat resistant layer and the base film such as 2.2 N/25mm (paragraphs [0120, 132-0133], Peeling strength values in Table 2) which fall within or overlaps the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).
In regard to claim 19, Mizuno et al. teach an electrochemical device (lithium secondary battery) comprising the separator according to claim 15 (paragraph [0002]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ha et al. (US Pub 2014/0287296 newly cited) teaches a similar separator with optimized tensile strength (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS P D'ANIELLO whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723
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