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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-12 are pending in the application. Claims 5, 8, & 10-12 are withdrawn. Claims 1-4, 6, 7, & 9 are presently examined.
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-9) and Species E (claims 6-7 & 9), in the reply filed on 7/1/2026, is acknowledged. Claims 5, 8, and 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species or groups, there being no allowable generic or linking claim. Currently, claim 1 is generic / linking for all species.
Claim Interpretation
Claim 1 states:
“a portion where the resin layer is not formed is present in a third region between the first region and the second region”
Examiner interprets this as stating that there is no resin layer in the third region.
Claim 2 states:
“a proportion of an area where the resin layer is formed in the first and second regions is higher than a proportion of an area where the resin layer is formed in the third region”
For consistency with claim 1, this “proportion of an area where the resin layer is formed in the third region” in claim 2 must have an area of zero, because there is no resin layer in the third region, according to claim 1.
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.
Claims 1-4, 6, 7, & 9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor(s) regard as the invention.
Claim 1 states:
“a portion where the resin layer is not formed is present in a third region between the first region and the second region”
The “portion where the resin layer is not formed” could be interpreted in one of the following two ways: (1) It is the third region. (2) It is part of the third region. This ambiguity must be corrected. Interpretation (1) is selected for present examination.
Claim 4 states:
“the third region includes a fourth region of a belt shape extending parallel to the first region, and the resin layer is formed in the fourth region”
According to interpretation (1) above, the third region is the “portion where the resin layer is not formed”, so it is not clear how the fourth region, which is part of the third region, can have resin.
Claims 2-4, 6, 7, & 9 are rejected due to their dependence on claim 1.
Claim Rejections - 35 USC § 102
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 claims are in bold font, the prior art is in parentheses.
Claims 1, 2, 4, & 7 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US7081142B1 (Carlson).
Carlson teaches the following claim 1 limitations:
A separator of a belt shape having first and second long sides, the separator comprising:
a substrate (column 28, lines 49-50; figure 4: first protective coating layer 101);
an inorganic filler layer (column 28, lines 47-48; figure 4: microporous separator layer 102) laminated on the substrate (101) and containing an inorganic filler as a major component (column 19, lines 12-14; figure 4: microporous separator layer can be inorganic); and
a resin layer (column 28, line 46; figure 4: edge insulating layer 301) laminated on part of the inorganic filler layer and containing a resin as a major component (column 33, lines 14-15: acrylic polymer), wherein
at least part of the resin layer (301) is formed in a first region of a belt shape and a second region of a belt shape (Figure A below, belt shape extending into the page of Figure A);
the first and second regions extend adjacent to the first and second long sides (Figure A below), respectively; and
a portion where the resin layer is not formed is present in a third region (column 28, lines 45-49; Figure A below: cathode active layer 201) between the first region and the second region
Figure A: Annotated Partial Carlson Figure 4
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357
908
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Greyscale
With regard to claim 2, Carlson teaches the limitations of claim 1 as discussed above. Claim 2 states:
a proportion of an area where the resin layer is formed in the first and second regions (Carlson’s edge insulating layer 301) is higher than a proportion of an area where the resin layer is formed in the third region (Carlson’s cathode active layer 201)
As discussed in the Claim Interpretation section above, the “proportion of an area where the resin layer is formed in the third region” must have an area of zero, because according to claim 1, there is no resin layer in the third region. Carlson’s edge insulating layer 301 does have an area (column 28, line 46; figure 4), so this area is greater than the zero area of the resin layer in Carlson’s cathode active layer 201.
With regard to claim 4, Carlson teaches the limitations of claim 1 as discussed above. Claim 4 states:
the third region includes a fourth region of a belt shape extending parallel to the first region, and the resin layer is formed in the fourth region
As discussed under the 112(b) rejection above, the resin layer is not formed in the third region, so it is not possible for the third region to include a fourth region with the resin layer. This impossible claim limitation is disregarded for present prior art analysis.
With regard to claim 7, Carlson teaches the limitations of claim 1 as discussed above. Carlson also teaches the following limitation of claim 7:
a proportion of an area where the resin layer is formed in the first and second regions is in a range of 5 to 100%
Carlson’s edge insulating layer 301 [claimed first and second regions] is 100% of the area where the resin layer is formed.
Claim Rejections - 35 USC § 103
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 3 & 6 are rejected under 35 U.S.C. 103 as being unpatentable over US7081142B1 (Carlson).
With regard to claim 3, Carlson teaches the limitations of claim 1 as described above. Claim 3 states:
a width of the first region and a width of the second region are each 30% or less of a width of the separator
Carlson doesn’t explicitly teach these relative widths; however, they are obvious based on the teachings of Carlson: Carlson’s edge insulating layer 301 [claimed first region & second region] have the function of preventing short-circuiting (column 28, lines 22-30) of the cathode active layer 201 [claimed third region]. It would be desirable for the cathode active layer 201 to be as large as possible for optimal battery capacity. Thus, Carlson’s edge insulating layer 301 should be as small as possible, while providing sufficient size to prevent short-circuiting.
Thus, it would have been obvious to one of ordinary skill in the art to keep Carlson’s edge insulating layer 301 as small as possible while still achieving its function of preventing short-circuiting, and thus achieve the claimed 30% or less.
With regard to claim 6, Carlson teaches the limitations of claim 1 as described above. Carlson also teaches the following limitation:
an average thickness of the resin layer (column 24, lines 33-39; column 29, lines 38-40: cathode active layer 201 thickness = edge insulating layer 301 thickness = 5 to 20 microns) is 0.47 times or less as large as a sum of an average thickness of the substrate (column 17, lines 18-21: first protective coating layer 101 thickness = 0.01 to 20 microns) and an average thickness of the inorganic filler layer (column 23, lines 8-12: microporous separator layer 102 thickness = 1 to 25 microns)
The following equations show the relationship between Carlson’s range of thicknesses and the claimed thickness relationship:
20
+
25
*
0.47
=
21
≥
5
t
o
20
Not all of Carlson’s thickness values satisfy the claimed relationship. MPEP 2144.05 (II)(A) provides the law for this issue:
“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)”
Given that Carlson’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 6 is an obvious variant of Carlson’s range.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US7081142B1 (Carlson), as applied to claim 1, and further in view of CN103109408B (Enomoto). Carlson fails to teach the following limitation of claim 9, which is taught by Enomoto:
the resin layer has voids
Enomoto describes a porous isolating body 30 / porous insulating body 30 (page 6, lines 42-46) to prevent active material short-circuiting (abstract, page 1, lines 20-23). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Carlson’s edge insulating layer 301 to be porous (i.e. have voids), as taught by Enomoto, to prevent active material short-circuiting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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