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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12 and 18, in the reply filed on July 07, 2026 is acknowledged.
Claims 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 07, 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "a heat shrinkage rate in MD and TD" in line 1. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the examiner has interpreted the limitation as “a heat shrinkage rate in a machine direction and a heat shrinkage rate in a transverse direction”, as disclosed in Applicant’s [00133].
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 3, 5, 7, 11-12, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2022/0052419 A1, hereinafter “Kim ‘419”), with ASTM D3755 – 20 (published January 2020, and hereinafter “ASTM”) and Thomas (Utah State University Senior Theses and Projects, 2007) as evidence.
Regarding claim 1, Kim ‘419 discloses a separator for a secondary battery ([0018], separator), the separator comprising: a porous substrate ([0018]-[0021], porous substrate); and an inorganic particle layer including a binder and inorganic particles on at least one surface of the porous substrate ([0018] and [0022], coating layer including an acrylic copolymer and inorganic particles), wherein the binder includes a water-soluble binder material including a unit derived from a (meth)acrylamide-based monomer ([0022], [0026], [0090], and [0117], acrylic polymer is water-soluble and comprises a unit derived from (meth)acrylamide).
With regard to the limitations “the separator exhibits a value of the following Formula (1) satisfying 0.15 or more: (1) BDV/t wherein 'BDV' is a voltage in kilovolts (kV) measured in accordance with ASTM D 3755 Standard Test Method for Dielectric Breakdown Voltage and Dielectric Strength of Solid Electrical Insulating Materials Under Direct-Voltage Stress, when a leakage current value is 5 mA, measured under conditions of raising an applied voltage at 5 kV/10 sec after placing the separator between electrodes of a withstand voltage tester (Hipot Tester), and 't' is an overall average thickness in microns (μm) of the separator,” Kim ‘419 discloses BDV values of 1,245 kV to 1,494 kV and a separator thickness of t = 10 μm ([0117] and Table 1), resulting in BDV/t values of 124.5 to 149.4 kV/μm. However, Kim ‘419 discloses a method of measuring BDV wherein an applied voltage is raised at 0.3 kV/8 sec in an AC mode ([0131]).
ASTM discloses that the breakdown value obtained with direct voltage usually will be approximately 2 to 4 times the rms value of the 60-Hz alternating-voltage breakdown (page 2, section 5.2), and for relatively homogeneous solids, the dielectric strength varies approximately as the reciprocal of the square root of the thickness (page 5, section X1.4.2). Thomas discloses a positive correlation between increasing voltage ramping rate and increasing breakdown voltage (page 5, Table 1).
It is the examiner’s position that the claimed BDV/t value would inherently result from the separator of Kim ‘419, which meets the other limitations of claim 1 as set forth above. Although the BDV/t values of Kim ‘419 are measured using different parameters than what is claimed in instant claim 1, one of ordinary skill in the art would expect the BDV/t values of Kim ‘419 as measured with the parameters of instant claim 1 to be greater than those of Kim ‘419, as evidenced by ASTM and Thomas. Therefore, the separators of Kim ‘419 would have BDV/t values of 0.15 or more and meet the limitations of claim 1.
Regarding claim 3, Kim ‘419 discloses the limitations of claim 1. Kim ‘419 further discloses wherein when an average thickness of the porous substrate is t1, a t1/t value is 0.65 or more ([0117] and Table 1, t1 = 8 μm and t = 10 μm, so t1/t = 0.8).
Regarding claim 5, Kim ‘419 discloses the limitations of claim 1. Kim ‘419 further discloses wherein the porous substrate includes a polar functional group on the surface ([0019], porous substrate may comprise monomers with polar functional groups such as polyesters).
Regarding claim 7, Kim ‘419 discloses the limitations of claim 1. Kim ‘419 further discloses wherein the binder is a copolymer including a unit derived from the (a) (meth)acrylamide-based monomer ([0022]-[0026] and [0053]-[0054], Chemical Formula 1, first structural unit derived from (meth)acrylamide), (b) a hydroxyl group-containing (meth)acrylate-based monomer ([0016], [0022]-[0026] and [0055]-[0056], Chemical Formula 2, second structural unit derived from (meth)acrylate that may contain a hydroxy group as a substitute), and (c) a polyfunctional (meth)acrylamide-based monomer ([0022]-[0026] and [0061]-[0062], Chemical Formulae 4-6, structural unit derived from (meth)acrylamido sulfonic acid).
Regarding claim 11, Kim ‘419 discloses the limitations of claim 1. Kim ‘419 further discloses wherein the binder has a weight average molecular weight of 100,000 to 2,000,000 g/mol ([0076], weight average molecular weight of acrylic copolymer is 350,000 to 970,000).
Regarding claim 12, Kim ‘419 discloses the limitations of claim 1. Kim ‘419 further discloses wherein the inorganic particle layer has a thickness of 3 μm or less ([0085], [0117], and Table 1, coating layer thickness is 1.5 μm to 3 μm, specifically 2 μm in Examples 1-5).
Regarding claim 18, Kim ‘419 discloses the limitations of claim 1. Kim ‘419 further discloses an electrochemical device comprising the separator of claim 1 ([0096] and Fig. 1, lithium secondary battery 100 comprising separator 113).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kim ‘419 (US 2022/0052419 A1).
Regarding claim 6, Kim ‘419 discloses the limitations of claim 1. Kim ‘419 further discloses wherein a heat shrinkage rate in MD and TD is 5% or less, which was measured after the separator is allowed to stand at 150°C for 60 minutes ([0087], [0132], and Table 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP § 2144.05(I)).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kim ‘419 (US 2022/0052419 A1) in view of Ueki et al. (US 2013/0084503 A1, hereinafter “Ueki”).
Regarding claim 2, Kim ‘419 discloses the limitations of claim 1. Kim ‘419 does not disclose wherein in a particle size distribution of the inorganic particles, a (D80-D20)/D50 value is 0.01 to 2.0, wherein D80 refers to a particle diameter where 80% of the inorganic particles have particle diameters less than D80, D20 refers to a particle diameter where 20% of the inorganic particles have particle diameters less than D20, and D50 refers to a particle diameter where 50% of the inorganic particles have particle diameters less than D50.
Ueki discloses a porous layer binder comprising a (meth)acrylamide monomer and metal compound particles that have D10 equal to or greater than 0.3 μm, D50 from 0.4 to 2.0 μm, and D90 equal to or less than 2.9 μm ([0042] and [0053]-[0055]), which results in (D90-D10)/D50 being 0.8 to 6.5. For a given particle distribution, the value of D80-D20 is less than or equal to the value of D90-D10, and therefore (D80-D20)/D50 would be less than or equal to 6.5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP § 2144.05(I)).
Ueki is considered to be analogous to the claimed invention because it is in the same field of 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 coating layer of Kim ‘419 with the teachings of Ueki, and one of ordinary skill in the art would have a reasonable expectation of success in doing so. Doing so would maintain a suitable maximum difference in height on the uneven surface of the porous layer coating, increasing cyclic durability (Ueki [0049]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kim ‘419 (US 2022/0052419 A1) in view of Kim et al. (KR 101700409 B1, machine translation relied upon herein, and hereinafter “Kim ‘409”).
Regarding claim 4, Kim ‘419 discloses the limitations of claim 1. Kim ‘419 does not disclose wherein the inorganic particle layer has a packing density of 1.45 g/(m^2·μm) or more.
Kim ‘409 discloses a coating layer comprising a (meth)acrylic polymer binder that may comprise a (meth)acrylamide based monomer with a packing density of 1.45 g/(m^2·μm) or more. ([0009], [0013]-[0019], [0097], and Table 2, Examples 1-4 with packing density of 2.19 to 2.22 g/cm3.
Kim ‘419 and Kim ‘409 are considered to be analogous to the claimed invention because they are in the same field of 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 coating layer of Kim ‘419 with the teachings of Kim ‘409, and one of ordinary skill in the art would have a reasonable expectation of success in doing so. Doing so would secure stable physical properties during coating and reduce battery electrical resistance (Kim ‘409 [0015]).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim ‘419 (US 2022/0052419 A1) in view of Hyodo et al. (CN 102549805 A, machine translation relied upon herein, and hereinafter “Hyodo”).
Regarding claim 8, Kim ‘419 discloses the limitations of claim 7. Kim ‘419 does not disclose wherein the (c) polyfunctional (meth)acrylamide- based monomer in the copolymer includes a structure of Chemical Formula 3, wherein R7 to R9 are independently of one another a functional group including one or more of hydrogen; a substituted or unsubstituted, linear or branched C1 to C6 alkyl group; a substituted or unsubstituted, linear or branched C1 to C6 alkoxy group; a substituted or unsubstituted, linear or branched C2 to C6 alkenyl group; and a substituted or unsubstituted, linear or branched C2 to C6 alkynyl group, and R10 is a C1 to C10 linear or branched hydrocarbon group including one or more of a hydroxyl group, a carboxyl group, an amine group, an amide group, an ether group, a ketone group, an ester group, and an aldehyde group. Kim ‘419 further discloses that the structural unit derived from the (meth)acrylamidosulfonic acid includes a bulky functional group, which reduces copolymer mobility and enhances separator heat resistance ([0025]).
Hyodo discloses a separator comprising polyacrylamide resins comprising multifunctional monomers that may be bis(meth)acrylamides such as methylene bis(meth)acrylamide that are present at 0.1 mol% or more and 5 mol% or less relative to the total molar sum of the monomers in the polyacrylamide resin ([0052] and [0119]-[0120]).
Hyodo is considered to be analogous to the claimed invention because it is in the same field of 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 acrylic copolymer of Kim with the teachings of Hyodo according to known methods to yield the predictable result of providing a bulky functional group, reducing copolymer mobility, and enhancing separator heat resistance, and one of ordinary skill in the art would have a reasonable expectation of success in doing so (see MPEP § 2143(I)(A)). In addition, doing so would impart cross-linking structures to the copolymer (Hyodo [0119]).
Regarding claim 9, modified Kim ‘419 discloses the limitations of claim 8. Modified Kim ‘419 discloses wherein the copolymer includes a structure of Chemical Formula 4, wherein R1 and R4 are hydrogen or an unsubstituted C1 to C6 alkyl group, R2, R3, and R5-R9 are hydrogen (Kim ‘419 [0053]-[0056] and Hyodo [0119], methylene bis (meth)acrylamide), R10 is a C4 linear hydrocarbon group including an amide group (Hyodo [0119], methylene bis (meth)acrylamide), L is a C1 to C6 substituted or unsubstituted, linear or branched alkylene group (Kim ‘419 [0016] and [0055]-[0056]), m is 75 to 95 (Kim ‘419 [0059]), n is 10 to 15 (Kim ‘419 [0051]), and p is 0.1 to 5 (Hyodo [0119]-[0120]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP § 2144.05(I)).
Regarding claim 10, modified Kim ‘419 discloses the limitations of claim 9. Modified Kim ‘419 discloses wherein in Chemical Formula 4, p is 0.1 to 5 (Hyodo [0119]-[0120]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP § 2144.05(I)).
Double Patenting
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, 4, 6, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of copending Application No. 18/991,739 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of reference claim 1 anticipate the limitations of instant claim 1, the limitations of reference claim 1 overlap with the claimed ranges of instant claims 4 and 6, and the limitations of reference claim 18 anticipate the limitations of instant claim 1.
Reference claim 1 claims a separator comprising: a porous substrate, an inorganic particle layer including a binder and inorganic particles disposed on at least one surface of the porous substrate, wherein the binder includes an acrylamide-based water-soluble binder, wherein a ratio of a breakdown voltage (kV) of the separator to an overall average thickness (μm) of the separator is 0.15 kV/μm or more (corresponding to instant claim 1).
Reference claim 1 further claims wherein the inorganic particle layer has a packing density of 1.2 g/m2·μm or more (corresponding to instant claim 4), and wherein the separator has a heat shrinkage rates in the machine direction and in the transverse direction of 5% or less as measured after being allowed to stand at 150°C for 60 minutes (corresponding to instant claim 6). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP § 2144.05(I)).
Reference claim 14 further claims a lithium secondary battery comprising the separator of claim 1 (corresponding to instant claim 18).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/J.L./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 2 September 2026
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