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 .
Claim Objections
Claims 1 and 14 are objected to because of the following informalities:
In claim 1, 11th line, replace “to100” with “to 100” before “nm”.
In claim 14, 1st line, add “said separator” before “comprising” for clarity.
In claim 14, 8th line, add “,” after “second inorganic particles” for clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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.
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 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.
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 1-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over KR 2013-0123568 A, of which a complete copy of the Korean document with an English machine translation was provided with the Information Disclosure Statement dated November 21, 2023.
Regarding independent claim 1, KR ‘568 discloses a separator for an electrochemical device in the form of a lithium secondary battery (see abstract; paragraphs [0001] and [0006]-[0036] of the machine translation; and Figures 1 and 2), in which the separator (10,20) comprises the following structural features:
a porous polymer substrate (100,102) having a first surface and a second surface opposite the first surface (see abstract; paragraphs [0006], [0007], and [0033]-[0036]; and Figures 1 and 2);
a first organic/inorganic composite porous layer (110,112) disposed on the first surface of the porous polymer substrate (100,102), wherein the first organic/inorganic composite porous layer (110,112) comprises first inorganic particles and a first binder polymer (see abstract; paragraphs [0006], [0007], and [0033]-[0036]; and Figures 1 and 2); and
a second organic/inorganic composite porous layer (120,122) disposed on the second surface of the porous polymer substrate (100,102), wherein the second organic/inorganic composite porous layer (120,122) comprises the first inorganic particles, second inorganic particles, and a second binder polymer (see abstract; paragraphs [0006], [0007], and [0033]-[0036]; and Figures 1 and 2),
wherein the first inorganic particles have an average particle diameter within a range of 1 nm to 100 nm (10 nm to 200 nm in KR ‘568 – see paragraph [0016] and Figure 2), and
wherein the second inorganic particles have an average particle diameter larger than the average particle diameter of the first inorganic particles (0.5 µm to 2 µm, or 500 nm to 2000 nm, in KR ‘568 – see paragraph [0016] and Figure 2).
Although the first and second organic/inorganic composite porous layers and inorganic particles thereof are different (see Figure 2 in KR ‘568), one of ordinary skill in the art would have recognized that the inorganic particles with two different ranges of average particle diameter would readily anticipate and/or render obvious the claim limitations, for the purpose of providing an improved separator that would result in increased output and lifetime of the lithium secondary battery (see abstract). With regard to the ranges of the average particle diameters of the first inorganic particles, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of KR ‘568, as set forth in MPEP 2144.05. “In the case where 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 2, KR ‘568 discloses that the second inorganic particles have an average particle diameter within the claimed range of 1.01 to 50 times of the average particle diameter of the first inorganic particles (see paragraph [0016]), since the average particle diameter of the second inorganic particles is 500-2000 nm, whereas the average particle diameter of the first inorganic particles is 10-200 nm, falling within the claimed range (see paragraph [0016]). With regard to the ranges of the average particle diameters of the first and second inorganic particles (including the degree of the second inorganic particles being greater in diameter to the first inorganic particles), these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of KR ‘568, as set forth in MPEP 2144.05. “In the case where 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 3, KR ‘568 discloses that the second inorganic particles have an average particle diameter of 500 nm to 2000 nm (see paragraph [0016]), which includes overlap with the claimed range of 150 nm to 800 nm. With regard to the ranges of the average particle diameters of the second inorganic particles, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of KR ‘568, as set forth in MPEP 2144.05. “In the case where 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 4, KR ‘568 discloses that a weight ratio of the first inorganic particles to the second inorganic particles in the second organic/inorganic composite porous layer (120,122) would fall within the broadly claimed range of 40:60 to 92:8 (see paragraph [0016] and Figure 2). With regard to the ranges of the weight ratios of the first and second inorganic particles, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of KR ‘568, as set forth in MPEP 2144.05. “In the case where 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 5, 6, and new independent claim 14 (of which claim 14 also includes all limitations of independent claim 1), KR ‘568 discloses that the first inorganic particles comprise fumed inorganic particles, including but not limited to (individually or as a mixture) particles of alumina, silica, or titanium dioxide (see paragraph [0019]).
Regarding claim 7, KR ‘568 discloses that the second inorganic particles comprise but are not limited to (individually or as a mixture) at least one of BaTiO3, alumina, silica, or titanium dioxide (see paragraph [0019]).
Regarding claims 8 and 9, although KR ‘568 discloses/suggests the features of independent claim 1, KR ‘568 does not explicitly disclose that a surface of the second organic/inorganic composite porous layer has an arithmetic mean roughness of 400 nm to 1000 nm, as well as that the separator has a heat shrinkage of 10% or less in each of a machine direction (MD) and a transverse direction (TD), as determined after allowing the separator to stand at 180°C for 1 hour. However, given the disclosed first and second organic/inorganic composite porous layers with first and second inorganic particles within the claimed ranges of average particle diameters, one of ordinary skill in the art would have recognized that properties derived from the components disclosed/suggested by KR ‘568 in independent claim 1 would be within or near the claimed ranges of arithmetic mean roughness and reduced (10% or less) heat shrinkage provided at the claimed temperature and time, for the purpose of providing an improved separator that would result in increased output and lifetime of the lithium secondary battery (see abstract of KR ‘568). With regard to the ranges of the arithmetic mean roughness and heat shrinkage, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of KR ‘568, as set forth in MPEP 2144.05. “In the case where 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 10 and 11, KR ‘568 discloses that the first binder polymer and the second binder polymer comprise at least one of polyacrylonitrile, polyvinyl pyrrolidone, cellulose acetate, cellulose acetate butyrate, cellulose acetate propionate, cyanoethyl cellulose, cyanoethyl sucrose, or pullulan (see paragraph [0027]).
Regarding claims 12 and 13, KR ‘568 discloses an electrochemical device (lithium secondary battery – see abstract and paragraphs [0001] and [0029]), in which the electrochemical device comprises a positive electrode (cathode), a negative electrode (anode), and a separator (10,20) interposed between the positive electrode and the negative electrode, wherein the separator is the separator (10,20) for the electrochemical device as defined in claim 1 (refer to the discussion of independent claim 1 above, wherein the electrochemical device would be selectable as a cylindrical lithium secondary battery (see abstract and paragraphs [0001] and [0029]).
Response to Arguments
The examiner acknowledges the applicants’ amendment/response received by the USPTO on August 12, 2026. Although the amendment overcomes the prior objections to the specification and claim 1, new objections are raised for claims 1 and 14 (see above section 1). In addition (and also addressed in the telephone interview of July 21, 2026), the applicants’ remarks/arguments addressing the prior 35 USC 102/103 rejection based on KR 2020-0078011 A (equivalent to US 2022/0037741) are persuasive, and thus the prior art rejection has been withdrawn. Since the applicants did not substantially amend independent claim 1 and a new ground of rejection is made, this Office Action is made non-final. The applicants have added new independent claim 14 (similar to the combination of independent claim 1 and claim 5, which was also discussed in the telephone interview of July 21, 2026. Claims 1-14 are currently under consideration in the application.
Applicants’ arguments with respect to claims 1-14 have been considered but are moot because the new ground of rejection includes a new reference to KR 2013-0123568 A, and thus does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
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, Keith Walker can be reached at (571)272-3458. 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.
/KEVIN P KERNS/Primary Examiner, Art Unit 1735 October 10, 2026
