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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has complied with all of the conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/22/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings received on 12/22/2023 were reviewed and are acceptable.
Specification
The specification filed on 12/22/2023 was reviewed and is acceptable.
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.
Claim(s) 1-7 is/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.
Claim 1 recites the limitation “a metal oxide layer situated…over one of opposite surfaces of the metal layer…the one being a surface opposite to a surface of the metal layer on a side of the porous base material” in lines 6-10. It is unclear whether the metal oxide layer, when only one layer is required, is disposed over the metal layer opposite of the porous base material, consistent with Instant Fig 1, or disposed between the metal layer and the porous base material, consistent with “the one a surface…on a side of the porous base material” (but opposite to a surface of the metal layer). For purposes of this Office Action, it will be assumed that the metal oxide layer is intended to be disposed over the metal layer opposite of the porous base material, consistent with Instant Fig 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-2 and 5-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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
a metal oxide layer (Al2O3 layer, [0028, 0034]) situated either over one of opposite surface of the metal layer or over both of the opposite surfaces of the metal layer, the one being a surface opposite to a surface of the metal layer on a side of the porous base material (as shown in Fig 11).
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 2, Smith discloses all of the claim limitations as set forth above.
Smith further discloses that a thickness of the metal oxide layer is from 3 nm through 100 nm (20 nm Al2O3, [0020], which falls within the recited range).
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 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 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:
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.
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) 3 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.
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.
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 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]).
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.
Conclusion
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.
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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 06/15/2026
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