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 .
Status of Claims
Applicant’s amendment and arguments, dated 09/18/2026, have been fully considered. Claim(s) 1 is/are currently amended; claim(s) 3-7 stand as originally or previously presented; and claim(s) 2 is/are cancelled. The Examiner affirms that the original disclosure provides adequate support for the amendment.
Upon considering said amendment and arguments, the previous rejections under 35 U.S.C. 102(a)(1), as set forth in the Office Action dated 06/22/2026 have been withdrawan. Applicant’s amendment has necessitated the new grounds of rejection below.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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(s) 1, 3, and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 2020/0303706 A1; hereinafter “Smith”).
Regarding claim 1, Smith discloses a separator (Title) comprising:
a porous base material (microporous PP membrane, [0034]);
a metal layer (Al layer, [0034]) situated over either or both of opposite surfaces of the porous base material (as shown in Fig 11), and having a first surface facing away from the porous base material (as shown in Fig 11, first surface is the top surface) and a second surface facing toward the porous base material (as shown in Fig 11, second surface is the bottom surface); and
a metal oxide layer (Al2O3 layer, [0028, 0034]) situated on the first surface of the metal layer (as shown in Fig 11).
Smith further discloses that the metal oxide layer may have a thickness of 20 nm ([0020]), which falls within the recited range, and explicitly discloses that the multi-phase deposition should preferably be an ultra-thin layer of metal or metal oxide ([0005]), but does not explicitly disclose a 20 nm Al2O3 layer situated on the first surface of the metal layer.
Smith is analogous prior art to the current invention because they are concerned with the same field of endeavor, namely separators for lithium batteries.
Before the effective filing date of the current invention, it would have been obvious to one having ordinary skill in the art to utilize the 20 nm thick metal oxide layer in the embodiment of Fig 11, i.e. instead of the pictured 4 mm layer, because doing so would result in an ultra-thin metal oxide coating, as preferred by Smith, and because doing so would amount to nothing more than to use a known component for its intended use in a known environment to accomplish an entirely predictable result.
With respect to the limitation “A separator for a nonaqueous electrolyte secondary battery…” (emphasis added), it has been held that a recitation with respect to the manner in which the claimed article is intended to be employed does not differentiate the claimed article from a prior art article satisfying the claimed structural limitations (see MPEP 2114(II)). Therefore, while the intended use language of the claim has been considered, it is noted that the prior art separator is capable of performing the functions as claimed because Smith discloses a separator for lithium batteries (Title), which allows for the prior art to perform the functions as claimed.
Regarding claim 3, Smith discloses all of the claim limitations as set forth above.
Smith does not explicitly disclose the recited ratio being 1.40 or greater.
Before the effective filing date of the current invention, it would have been obvious to one having ordinary skill in the art that the separator of Smith would reasonably exhibit at least an overlapping ratio as recited, and to routinely select the overlapping portions of the disclosed ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)), because the disclosed separator has the recited metal layer and metal oxide layer (as noted above), which the Instant Specification evidences results in the recited ratio (see e.g. Instant Specification [0056]).
Regarding claim 5, Smith discloses all of the claim limitations as set forth above.
Smith further discloses that the metal layer contains Al (Al layer, [0034]).
Regarding claim 6, Smith discloses all of the claim limitations as set forth above.
Smith further discloses that the metal oxide layer contains an oxide of Al (Al2O3 layer, [0028, 0034]).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 2020/0303706 A1; hereinafter “Smith”), as applied to claim 3 above, in view of Shi et al. US 2017/0025658 A1; hereinafter “Shi”).
Regarding claim 4, Smith discloses all of the claim limitations as set forth above.
Smith discloses that the coatings may be a metal or metal oxide ([0005]) does not explicitly disclose that the metal and metal oxide are copper and copper oxide.
Shi teaches separators for batteries (Title). Shi teaches a substantially similar separator to that of Smith (see e.g. [0093]). Shi teaches that the metal for deposition may be a reactive metal, e.g. aluminum, nickel, or copper ([0095]).
Shi is analogous prior art to the current invention because they are concerned with the same field of endeavor, namely separators for lithium batteries.
Before the effective filing date of the current invention, it would have been obvious to one having ordinary skill in the art to routinely utilize copper and copper oxide as the metal and metal oxide coatings for the separator of Smith, as doing so would amount to nothing more than to use a known material for its intended use in a known environment to accomplish an entirely predictable result, as suggested by Shi.
The skilled artisan would accordingly find the recited areas of peaks obvious because the metal and metal oxides are the same, namely Cu and CuO (as noted above).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 2020/0303706 A1; hereinafter “Smith”), as applied to claim 1 above, in view of Chizawa (US 2020/0051755 A1).
Regarding claim 7, Smith discloses all of the claim limitations as set forth above.
Smith discloses that the separator is used in a secondary battery ([0002]), which necessarily comprises a pair of electrodes and the recited separator situated between the pair of electrodes in order to function as a battery, but does not explicitly disclose the secondary battery being a nonaqueous electrolyte secondary battery.
Chizawa teaches a nonaqueous electrolyte energy storage device (Title).
Chizawa is analogous prior art to the current invention because they are concerned with the same field of endeavor, namely lithium secondary batteries.
Before the effective filing date of the current invention, it would have been obvious to one having ordinary skill in the art that the secondary battery of Smith must actually utilize some electrolyte, and would thus find it obvious to routinely design the battery of Smith to be a nonaqueous electrolyte battery, as doing so would amount to nothing more than to use known materials for their intended uses in a known environment to accomplish an entirely predictable result, as suggested by Chizawa.
Response to Arguments
Applicant’s arguments, see Remarks, filed 09/18/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Smith (as noted above).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M ERWIN whose telephone number is (571)272-3101. The examiner can normally be reached Monday-Friday: 6am-3pm PDT.
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, Nicole Buie-Hatcher can be reached at 571-270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES M ERWIN/Primary Examiner, Art Unit 1725 10/05/2026
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