DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per preliminary amendment filed on 10/30/23, claims 11-28 are currently pending in the application.
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 17-20, 25-28 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.
Claims 17 and 25 recite the limitation “inorganic fine particle”. The term “fine” in claims 17 and 25 is a relative term which renders the claims indefinite. The term “fine” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 18-20 and claims 26-28 are subsumed by this rejection because they depend, directly or indirectly, on rejected base claims 17 and 25.
For the purpose of examination, in view of the disclosure (paragraph-[0065]), examiner interprets the limitation “inorganic fine particles” to mean “inorganic particles having an average particle size of 0.1 to 5 mm”.
Claims 18 and 26 recite the limitation “further comprising a polymer (A2) but excluding the polymer (A1)”. The claims 18 and 26 are indefinite due to conflicting claim language. Noting that claims 18 and 26 depend indirectly on claims 11 and 12, respectively, on the one hand, the composition of claims 18 and 26 appear to exclude polymer (A1), whereas polymer (A1) is an essential component in the dispersions of claims 11 and 12.
For the purpose of examination, in view of paragraph [0122] in the specification (PGPUB) which discloses that polymer (A2) is excluded if it corresponds to polymer (A1), the recitation “further comprising a polymer (A2) but excluding the polymer (A1)” is interpreted to mean “further comprising a polymer (A2) that is different than the polymer (A1)”.
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.
Claims 11-28 are rejected under 35 U.S.C. 103 as being unpatentable over Uenari et al. (JP 2020087591 A, machine translation).
Regarding claims 11, 12, 17 and 25, Uenari teaches a coating material for a secondary battery separator, said coating material comprising a first polymer, and a second polymer which is formed from (meth)acrylamide, wherein the second polymer has a mass which is 0.1 times or more and less than 100 times as large as that of the first polymer (Overview, ref. claims, [0015]-[0017]).
Disclosed second polymer may be formed from 60 parts by mass or more, for e.g., up to 99 parts by mass or less of (meth)acrylamide, and a second polymerizable monomer in an amount of 0.5 parts by mass to 70 parts by mass or less, with respect to 100 parts by mass of (meth)acrylamide [0094], wherein the second polymerizable monomer may be a (meth)acrylate ester or a functional group-containing monomer.
Disclosed genus of (meth)acrylate esters includes methyl methacrylate and n-butyl acrylate as preferred species [0077]-[0083], [0038]. Disclosed genus of functional group-containing monomers includes 2-hydroxyethyl methacrylate [0085]-[0086]. It is noted that per instant disclosure, the log Kow value of methyl (meth)acrylate = 0.59, that of n-butyl acrylate = 2.23 and that of 2-hydroxyethyl methacrylate = 0.33. Thus, disclosed methyl methacrylate and 2-hydroxyethyl methacrylate read on (a-1a) in claim 11, and disclosed n-butyl acrylate reads on claimed (a-1b) of claim 12.
Additionally, Uenari teaches that the first and second polymers may be formed from corresponding monomers in an aqueous medium, in the presence of a surfactant, to provide for a dispersion [0116]-[0125], wherein polymerizations may be conducted separately and then the formed first and second polymers may be mixed together [0162].
Uenari teaches coating materials comprising the first and second polymers described above, which may further include pigment particles, such as silica, alumina, titania, zirconia etc. [0167], such as those having particle having a size of 0.7 mm (Example 1, [0232]) (read on inorganic particles).
Uenari is silent on a dispersion comprising a polymer (A1) comprising monomer units in claimed amounts, said dispersion having a transmittance as in the claimed invention (claims 11, 12), or slurries comprising the dispersions of claims 11 or 12, and inorganic particles (claims 17, 25).
At the outset, it is noted that 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). See MPEP § 2144.05.
Given the teaching in Uenari on suitable second polymerizable monomers and for copolymerizing with (meth)acrylamide and amounts thereof for forming the second polymer, the teaching on the prescribed amount of the second polymer relative to the first polymer amount, and noting that the recitation “for a non-aqueous battery separator” is an intended use of said dispersion, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare aqueous dispersions comprising a second polymer formed from (meth)acrylamide, and 2-hydroxyethyl methacrylate or methyl methacrylate in amounts within the scope of claim 11, or from (meth)acrylamide and n-butyl acrylate in amounts within the scope of claim 12, or prepare coating materials thereof comprising inorganic particles, i.e. forming slurries as in claims 17 and 25.
Additionally, given the teaching that the second polymer has a mass which is less than 100 times as large as that of the first polymer, a skilled artisan would reasonably expect dispersions comprising a very small amount of the first polymer mixed with a substantially large amount of the second polymer that overlaps in scope with that of the claimed invention to have the claimed transmittance, absent objective evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriads of processes put before it and then obtain prior art products and make physical comparisons.
Regarding claims 13, 14, 18, 21, 22, and 26, in addition to the teaching on dispersions comprising a second polymer that overlaps in scope with those of claims 11 and 12, Uenari teaches as the polymerization conditions, normal pressure and a polymerization temperature ranging from 30oC to 95oC, a duration of 0.5h to 6h [0120]. A skilled artisan would reasonably expect polymers having compositions of overlapping scope and formed under prescribed conditions to have the claimed Tg, storage modulus and swelling degree, as materials and their properties are inseparable, absent objective evidence to the contrary.
Regarding claims 15, 16, 23 and 24, although Uenari is silent on the claimed feature, disclosed dispersions are intended for forming films (of thickness 1 mm to 10 mm) by various coating methods, onto porous membranes for providing battery separators [0175]-[0210]. It would have been within the level of ordinary skill in the art to adjust the viscosities of the dispersions of overlapping scope, including to those of the claimed invention, to enable easy coatability by the disclosed methods to provide for the desired film thickness, absent evidence of criticality for the claimed ranges.
Regarding claims 19, 20, 27 and 28, incorporating the discussion from paragraph 9 above, Uenari further teaches applying the coating materials on porous membranes (read on separator substrates) and drying to provide for a secondary battery separator comprising a porous membrane and a coating film (reads on a protective layer) [0175]-[0210]. Uenari further teaches lithium-ion battery as a secondary battery, comprising a solution of lithium salt dissolved in ethylene carbonate or propylene carbonate (reads on non-aqueous secondary battery) [0222].
Uenari is silent on a non-aqueous secondary battery separator within the scope of the claimed invention (claims 19, 27), or a non-aqueous secondary battery as claimed (claims 20, 28).
For reasons stated in 11 above, the slurries of claims 17 and 25 are obviated by Uenari. Additionally, given the teaching in Uenari on coating materials, i.e., slurries, for coating porous membranes to form secondary battery separators, and use of such separators in lithium-ion batteries, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to form non-aqueous secondary battery separators and non-aqueous secondary batteries, including those within the scope of the claimed invention.
Claims 15, 16, 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Uenari et al. (JP 2020087591 A, machine translation), in view of .
Fukumoto et al. (JP 2008016313 A, machine translation).
The discussion on Uenari as applied to claims 11, 12 above are incorporated herein by reference.
Although Uenari is silent on the claimed viscosity limitations, the secondary reference to Fukumoto is in a related field of endeavor and drawn to coating materials for a member of a secondary battery, and teaches a coating material that can be stored for a long period of time and having a viscosity of 10mPa s or more and 3000mPa s or less, in which the inorganic oxide filler is uniformly dispersed and aggregates are less likely to settle [0006]-[0027]. In view of the disclosed advantages, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to adjust the dispersion viscosity, including to those of overlapping scope.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to
the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights