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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/12/2023 has been considered by the examiner.
Examiner’s Comment
Applicants’ attention is drawn to the fact that the instant claims are directed to at least two distinct inventions: I. A separator of a lithium-ion battery cell and a lithium-ion battery cell comprising a separator, represented by claims 1-18; and II. A method of forming a separator of a battery cell, represented by claims 19-20. The restriction requirement is not made at this time; however, it may be imposed later if the claims are amended to introduce additional limitations to each invention, which would require an additional search in each Group of claims.
Claim Objections
Claims 5-6, 9-10, 14, 16-17 and 20 are objected to because of the following informalities:
The formulae recited in claims 5-6, 9-10, 14, 16-17 and 20 must be correctly presented. For example, the “3” in PbTiO3 must be subscript.
Appropriate correction is required.
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.
Claims 2 and 7-18 are 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.
1) Claim 2 recites “the film”. There is insufficient antecedent basis for this limitation in the claim.
2) Claim 7 recites “a second inner layer”, which can be interpreted as depositing on either side of the porous separator film. However, according to the instant specification (e.g., Fig. 3), the second inner layer must be on the other side of the porous separator film relative to the first inner layer. Thus, the instantly claimed limitation in claim 7 is inconsistency with the specification, which renders the scope of the claim uncertain.
A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure. See MPEP § 2173.03.
3) The above issue in 2) applies similarly to “a second outer layer” recited in claims 7.
4) Claim 7 recites the limitation "the inner layer". There is insufficient antecedent basis for this limitation in the claim.
5) Claim 7 recites the limitation "the separator film". There is insufficient antecedent basis for this limitation in the claim.
6) Claims 8-10 are indefinite because claim 7, upon which they depend, is indefinite.
7) Claim 8 recites the limitations "the inner layer", “the outer layer” and “the film”. There is insufficient antecedent base for these limitations in the claim.
8) Claim 11 recites the limitation "the separator film". There is insufficient antecedent basis for this limitation in the claim. Claims 12-18 are indefinite because of their dependencies on claim 11.
9) The issues in 1)-5) above apply similarly to claim 12.
10) Claim 12 recites the limitation "the separator film". There is insufficient antecedent basis for this limitation in the claim.
11) Claim 13 recites the limitation "the inner layers" and “the outer layer”. There is insufficient antecedent basis for this limitation in the claim.
12) Claim 14 recites the limitation "the outer layers". There is insufficient antecedent basis for this limitation in the claim.
13) Claim 18 recites the limitation "the outer layer". There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, see the art rejections below for how the limitations in question are addressed.
Claim Rejections - 35 USC § 102
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
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.
Claims 1, 5-12, 14 and 16-17 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Shi et al. (US 20170062785 A1, hereafter referred to as Shi).
Regarding claims 1 and 5-6, Shi teaches a separator (e.g., “19”, Fig. 10) of a lithium-ion battery cell comprising:
a porous separator film (“14”);
an inner layer (e.g., the upper “16” in Fig. 10) disposed against the separator film and including ceramic filler (e.g., Al2O3 in “16”, see [0051], [0044]-[0045]); and
an outer layer (e.g., the upper “10” in Fig. 10) disposed against the inner layer and including ferroelectric material (e.g., PVDF in “10”, [0043]).
The functional limitation “configured to facilitate lithium-ionic conductivity between the separator and an electrode” for the ferroelectric material is inherently present because Shi teaches all the claimed structural limitations of the separator. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). MPEP § 2112.01.
Regarding claims 7 and 9-10, Shi teaches the separator of claim 6 further comprises a second inner layer (e.g., the lower “16” in Fig. 10) disposed against the separator film (“14”) and including ceramic filler (e.g., Al2O3 in “16”, see [0051], [0044]-[0045]); and
a second outer layer (e.g., the lower “10” in Fig. 10) disposed against the inner layer and including ferroelectric material (e.g., PVDF in “10”, [0043]).
Regarding claim 8, Shi teaches the separator of claim 1,
Regarding claim 11, Shi teaches a lithium-ion battery cell comprising:
an anode ([0004]);
a cathode ([0004]); and
a separator disposed between the anode and the cathode ([0004]), the separator (e.g., “19”, Fig. 10) including:
a porous separator film (“14”);
a first inner layer (e.g., the upper “16” in Fig. 10) disposed against the separator film and including ceramic filler (e.g., Al2O3 in “16”, see [0051], [0044]-[0045]); and
a first outer layer (e.g., the upper “10” in Fig. 10) having an inner side disposed against the first inner layer (Fig. 10) and an outer side disposed against the anode or cathode (because the separator is between the anode and the cathode), the first outer layer including ferroelectric material (the upper “10” includes a ferroelectric material PVDF, [0043]).
Regarding claims 12, 14 and 16-17, Shi teaches the battery cell of claim 11, wherein the separator further includes:
a second inner layer (e.g., the lower “16” in Fig. 10) disposed against the separator film (“14”) and including ceramic filler (e.g., Al2O3 in “16”, see [0051], [0044]-[0045]); and
a second outer layer (e.g., the lower “10” in Fig. 10) having an inner side disposed against the second inner layer (Fig. 10) and an outer side disposed against the other of the anode or cathode (because the separator is between the anode and the cathode), the second outer layer including ferroelectric material (e.g., PVDF in “10”, [0043]).
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Shi, as applied to claim 1 above, and further in view of Zhang et al. (US 20230125852 A1, hereafter referred to as Zhang).
Regarding claims 2-4, Shi teaches the separator of claim 1, but is silent on the claimed limitations recited in claims 2-4. However, in the same field of endeavor, Zhang discloses a similar structure of a separator, wherein a ceramic coating (corresponding to the inner layer as claimed) is coated on a separator base layer ([0008], corresponding to the porous separator film as claimed) with a thickness of, for example, 10 µm ([0015]), and then a first binder coating layer (corresponding to the outer layer as claimed) is disclosed on a surface of the ceramic coating. Zhang further discloses that the thickness of the ceramic coating may be, for example, 5 µm ([0032]) and the thickness of the first binder coating layer may be in the range of 1 µm to 5 µm ([0036]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have incorporated the teachings of Zhang into Shi such that the thickness of the porous separator film of Shi is 10 µm, the thickness of the inner layer of Shi is 5 µm, and the thickness of the outer layer of Shi is in the range of 1 µm to 5 µm, because the use of known technique to improve similar devices (methods, or products) in the same way is prima facie obvious. MPEP § 2143. As a result, Shi in view of Zhang teaches the thickness ratio of the inner layer to the outer layer is in the range of 1 to 5. The claimed “the inner layer is at least twice as thick as the outer layer” equates a thickness ratio of greater than 2, which overlaps the range of 1 to 5 as taught by Shi in view of Zhang. 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 MPEP § 2144.05 (I). The thickness of the inner layer of 5 µm reads on the claimed “a thickness of 1.0 to 5.0 microns”. The claimed thickness range of 0.1 to 2.0 microns of the outer layer overlaps that of 1 µm to 5 µm of Shi in view of Zhang, and again, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists.
Shi in view of Zhang teaches “the inner layer is thicker than the outer layer, and the film is thicker than the inner layer” (See above).
Claims 13, 15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Shi, as applied to claims 12, 11 and 18 above, respectively, and further in view of Zhang.
Regarding claims 13, 15 and 18, the limitations recited in these claims are similar to those recited in claims 2-4 and are rejected similarly. The rejections of claims 2-4 are incorporated herein by reference.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shi in view of Zhang.
Regarding claims 19 and 20, Shi teaches a method (See, e.g., [0062]) of forming a separator of a battery cell, the method comprising:
placing an inner layer (“308”, [0062]; “16”, Fig. 9) containing ceramic filler (e.g., Al2O3 in “16”, see [0051], [0044]-[0045]) on a first side of a porous separator film (“304”, [0062]; “14”, Fig. 9); and
placing an outer layer (“306”, [0062]; “10”, Fig. 9) containing ferroelectric material (e.g., PVDF in “10”, [0043]) on the inner layer (See Fig. 9).
The functional limitation “to facilitate lithium-ionic conductivity with an electrode” is inherently present because Shi teaches all the claimed structural limitations of the separator. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). MPEP § 2112.01.
Shi is silent on “the inner layer is thicker than the outer layer” as claimed. However, in the same field of endeavor, Zhang discloses a similar structure of a separator, wherein a ceramic coating (corresponding to the inner layer as claimed) is coated on a separator base layer ([0008]) and then a first binder coating layer (corresponding to the outer layer as claimed) is disclosed on a surface of the ceramic coating. Zhang further discloses that the thickness of the ceramic coating may be, for example, 10 µm ([0032]) and the thickness of the first binder coating layer may be in the range of 1 µm to 5 µm ([0036]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have incorporated the teachings of Zhang into Shi such that the thickness of the inner layer of Shi is 10 µm and the thickness of the outer layer of Shi is in the range of 1 µm to 5 µm, because the use of known technique to improve similar devices (methods, or products) in the same way is prima facie obvious. MPEP § 2143. As a result, Shi in view of Zhang teaches “the inner layer is thicker than the outer layer” as claimed in claim 19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZHONGQING WEI/Primary Examiner, Art Unit 1727
Prosecution Insights