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 .
Preliminary Amendment
The preliminary amendment received on January 12, 2024 is acknowledged. Action on the merits of claims 1-18 follows.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed January 12, 2024 and October 3, 2025 have been placed in the application file and the information referred to therein has been considered as to the merits.
With respect to foreign language references and foreign language patent office communications with no translation of the document: “If no translation is submitted, the examiner will consider the information in view of the concise explanation and insofar as it is understood on its face, e.g., drawings, chemical formulas, English language abstracts, in the same manner that non-English language information in Office search files is considered by examiner in conducting searches.” See MPEP §609.04(a)(II) (D) and 37 CFR 1.98(a)(3)(ii).
Specification
The specification received January 12, 2024 has been reviewed for examination purposes.
Claim Interpretation
Differential scanning calorimetry (DSC) results are highly dependent on the measurement conditions (heating rate, cooling rate, sample mass, pan type, etc.). Because of that when a claim mentions DSC a prior art reference does not have to mention, perform or report DSC to anticipate or obviate any claim containing a DSC-defined property. It can anticipate or obviate the limitation if the prior art sheet inherently (whether under anticipation or near enough for obviousness) possesses the claimed DSC property.
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 1-18 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 phrase “polyvinylidene fluoride type” resin. The addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955). Likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey. The interpretation was made more difficult by the fact that the zeolites defined in the dependent claims were not within the genus of the type of zeolites defined in the independent claim. Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986).
Applicant is advised to delete the term “type” from this phrase to overcome this rejection. Claims 2-5 and 12-18 are dependent upon claim 1 and do not remedy this issue. Therefore, claims 2-5 and 12-18 are rejected for the same reasons.
Claim 6 recites the phrase “polyvinylidene fluoride type” resin. The addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955). Likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey. The interpretation was made more difficult by the fact that the zeolites defined in the dependent claims were not within the genus of the type of zeolites defined in the independent claim. Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986).
Applicant is advised to delete the term “type” from this phrase to overcome this rejection. Claims 7-11 are dependent upon claim 6 and do not remedy this issue. Therefore, claims 7-11 are rejected for the same reasons.
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.
Claims 1, 12, 13, 16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato (WO2020/189112A).
As to claim 1, Sato discloses a separator for a non-aqueous secondary battery, the separator comprising:
a porous substrate (abstract, examples); and
an adhesive porous layer that is provided on one side or on both sides of the porous substrate, and that contains a polyvinylidene fluoride type resin and an inorganic filler (abstract and examples),
wherein an average primary particle size of all of the inorganic filler contained in the adhesive porous layer is from 0.01 mm to less than 0.50 mm (Sato teaches of a first range from 0.01-1.0 mm, still preferably 0.5 mm or less (from the viewpoint of suppressing the heat shrinkage of the layer), and
Sato teaches that the PVDF resin is a blend of type A resin and type B resin, each resin would have a respective endothermic peak and exothermic peak when subjected to differential scanning calorimetry (DSC), thus totaling at least two endothermic peaks and two exothermic peaks.
The melting point of the polyvinylidene fluoride type resin is determined from a differential scanning calorimetry curve (DSC curve) obtained by performing differential scanning calorimetry (DSC). Specifically, the polyvinylidene fluoride type resin is placed in a sample chamber of the differential scanning calorimeter, and heated in a range of from 30° C. to 200° C. at a rate of 5° C./min under a nitrogen atmosphere to obtain the DSC curve. A temperature of an endothermic peak appearing in the DSC curve is defined as the melting point of the polyvinylidene fluoride type resin. When there are a plurality of endothermic peaks, the temperature of the lowest endothermic peak is defined as the melting point. The polyvinylidene fluoride type resin as a sample is obtained by peeling off the porous layer from the porous substrate and removing the filler from the peeled porous layer (para. [0082]).
Therefore, the porous adhesive layer is held to inherently meet the last wherein clause of claim 1, wherein, when differential scanning calorimetry is performed with all of the polyvinylidene fluoride type resin contained in the adhesive porous layer as a sample, two or more endothermic peaks and/or two or more exothermic peaks are observed.
As to claim 12, the volume of the filler is 30-90% by volume with specifics falling in that range.
As to claim 13, the inorganic filler contains at least one of metal hydroxide particles, metal sulfide particles and barium titanate particles (paras. [0114]-[0117]).
As to claim 16, the weight average molecular weight of resin A is 600,000 to 3,000,000 and B from 300,000 to 3,000,000 with specific examples within the range of claim 16 (Table 1).
As to claim 18, Sato discloses a non-aqueous secondary battery obtaining electromotive force by lithium doping and dedoping comprising:
A positive electrode,
A negative electrode, and
The separator of claim 1 above between the two electrodes (paras. [0023]-[0026]).
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.
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.
Claims 2-5 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 Sato (WO 2020/189112) as applied to claim 1 above.
Sato does not teach of one endothermic peak in a region of 125-140oC and one peak observed in a region of 140-190oC (claim 2) one exothermic peak in a region of 80-125oC and one peak observed in a region of 125-190oC (claim 4). Sato does not teach of a temperature difference between adjacent endothermic peaks is 10oC or more and 90oC or less (claim 3) a temperature difference between adjacent exothermic peaks is 10oC or more and 90oC or less (claim 5).
Differential scanning calorimetry is a process dependent analysis requiring selecting various conditions (sample mass, pan type, gas atmosphere, heating and cooling rates). According to the instant invention, DSC is performed in general placing a ~5mg sample in an aluminum sample pan, in nitrogen atmosphere and subjecting the sample to a three step heat/cool/heat process (30-200oC @ 5oC/min, 200-30oC @ 5oC/min and 30-200oC @ 5oC/min).
The melting point of the polyvinylidene fluoride type resin is determined from a differential scanning calorimetry curve (DSC curve) obtained by performing differential scanning calorimetry (DSC). Specifically, the polyvinylidene fluoride type resin is placed in a sample chamber of the differential scanning calorimeter, and heated in a range of from 30° C. to 200° C. at a rate of 5° C./min under a nitrogen atmosphere to obtain the DSC curve. A temperature of an endothermic peak appearing in the DSC curve is defined as the melting point of the polyvinylidene fluoride type resin. When there are a plurality of endothermic peaks, the temperature of the lowest endothermic peak is defined as the melting point. The polyvinylidene fluoride type resin as a sample is obtained by peeling off the porous layer from the porous substrate and removing the filler from the peeled porous layer (para. [0082]).
As discussed above, Sato teaches of a polyvinylidene fluoride resin of a mixture of two resins where one resin A has a melting point from 120-150oC and second resin B has a melting point from 120-173oC. By example, Sato teaches of various melting point differentials to be in excess of 10oC.
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection.
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)
In the case of the instant application the basis for expectation of inherency follows.
Referring to Table 1, Sato teaches of various specific embodiments. Example 1 teaches of PVDF A with a melting point of 132oC. PVDF B with a melting point of 152oC and an inorganic filler (BaSO4) with an average primary particle size of 0.05 microns. Upon subjecting examples of Sato, such as example 1 to the same DSC as the instant invention, a person of ordinary skill in the art would reasonably expect that the peaks observed for the materials of Sato would exhibit the same or unpatentably similar endothermic and exothermic peaks of claims 2 and 4. For example, PVDF A having a 132oC melting point would be expected to yield an endothermic event in the range of 120-140oC while PVDF B having a 152oC melting point would be expected to yield one in the range of 140C-190oC (to claim 2), absent clear evidence to the contrary. Similarly, the resultant exothermic peaks would be present as well, noting that exothermic peaks are lower than their melting point temperatures. So PVDF A having a 132oC melting point would be expected to yield an exothermic event in the range of 80-125oC while PVDF B having a 152oC melting point would be expected to yield one in the range of 125-190oC when subjected to the same DSC conditions (to claim 4), absent clear evidence to the contrary.
The Examiner invites applicant to provide that that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.
Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
In the least, if any difference in observed peaks between Sato and the ranges of claims 2 and 4 are shown, given that the separator of Sato anticipates the base separator, thus having the same general features of claims 1, 2 and 4, the differences in observed peaks would be minor and obvious differences. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Furthermore, given the temperature differential between the two resins (example 1 showing a 20oC difference) and given the expected identical or similar peaks to be observed by Sato when subjected to the same DSC conditions, a person of ordinary skill in the art would further expect the same or unpatentably similar temperature differences between adjacent peaks, absent clear evidence to the contrary (as recited in claims 3 and 5). Under the same specified DSC conditions, the crystallization events would be expectedly separated by at least 10oC. In the least, if any difference in observed peaks between Sato and the ranges of claims 3 and 5 are shown, given that the separator of Sato anticipates the base separator, thus having the same general features of claims 1, 3 and 5, the differences in observed peaks would be minor and obvious differences. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Claim Rejections - 35 USC § 103
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (WO 2020/189112) as applied to claim 1 above, and further in view of Kuratani et al. (U.S. Patent Application Publication No. 2020/0411827).
Sato does not appear to teach of the adhesive porous layer comprising the structural units derived from the formula 1 of claim 14.
Kuratani is drawn to the same field of endeavor, separator designs for non-aqueous secondary batteries. Kuratani discloses that the polyvinylidene fluorine resin can contain the same monomer unit (paras. [0031]-[0032]).
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The monomer unit was noted to improve adhesion between the adhesive porous layer and an electrode, thus making it easier to secure adhesions.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention Sato by selecting the polyvinylidene fluorine resin to include the monomer unit of Kuratani noted above since it would have predictably improved adhesion between the adhesive porous layer and an electrode, thus making it easier to secure adhesions.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (WO 2020/189112) as applied to claim 1 above, and further in view of Honda et al. (U.S. Patent Application Publication No. 2018/0331342) and Iizuka et al. (JP2020-113442A)
Sato does not appear to teach of the acid value being less than 3.0 mg KOH/g.
Honda is drawn to the same field of endeavor, separator designs for non-aqueous secondary batteries. Honda disclosed acid values for polyvinylidene fluoride type resins in a range from 3-20 mgKOH/g. Honda noted that such acid values were recognized to increase adhesion between the adhesive porous layer and the electrode (para. [0045]). Furthermore, Honda teaches that it is preferred that the binder resin included in the adhesive porous layer is the VDF-HFP copolymer having an acid value of from 3.0 mgKOH/g to 20 mgKOH/g (para. [0079]. Thus while preferred, values outside of this range to some extent can be suitably appreciated so long as sufficient adhesion is maintained.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention Sato to control the amount of acid value to a low to moderate amount as taught by Honda since it would have improved adhesion between the adhesive porous layer and the electrode.
As to modifying the amount of acid value to be less than 3.0 mgKOH/g, the consideration of values below 3.0 mgKOH/g would have been reasonably appreciated and apparent by a person of ordinary skill in the art.
Honda recognized controlling the acid value to low/moderate levels for sufficient adhesion, Honda preferably teaches of 3-20 mgKOH/g but does not exclude values outside of that range. Rather, even using values slightly below 3 would have been reasonably appreciated so long as sufficient adhesion is achieved. The comparative examples of Honda may teach of values much less than 3 but also appear to include other differences in comparison not just acid value.
Iizuka, also drawn to the battery art and PVdF skeletons with acidic functional groups disclosed that the acid value can be from 0.1-15 mgKOH/g can still provide adhesive properties (para. [0019]). Tuning the acid value in general would have been readily appreciated as a result effective variable whereby sufficient acid value, including values below 3.0 mgKOH/g would have been employable while maintaining a sufficient level of adhesion.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the acid value of modified Sato to be less than 3 mgKOH/g as taught by Iizuka since the tuning of the acid value for the benefit of sufficient adhesion was a known result effective variable and while Honda preferably teaches of a range from 3-20mgKOH/g, values below 3 mgKOH/g would have been appreciated with the understanding that such values provided sufficient adhesion as further noted by Iizuka.
Further as to claiming particular ranges, and/or difference in ranges: generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (WO 2020/189112) as applied to claim 1 above, and further in view of Nagao (U.S. Patent Application Publication No. 2018/0233726).
Sato does not teach of the content ratio of structural units derived from hexafluoropropylene (HFP) being 3.5-7.0 mol.% in the adhesive layer.
Nagao, is drawn to the same field of endeavor, separator designs for non-aqueous secondary batteries. Nagao discloses controlling the molar amount of HFP in a vinylidene fluoride resin in a range from 1-7% by mol to provide for sufficient electrolyte absorption and adhesion (paras. [0097]-[0100]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the HFP amount in Sato to be in a range from 1-7mol.%, preferably 2-6mol.% as taught by Nagao since it would have predictably improved the electrolyte absorption and adhesion of the layer. Further as to claiming particular ranges, and/or difference in ranges: generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). 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); In re Woodruff, 919, F.2d 1575, 16 USPQ 2d 1934 (Fed. Cir. 1990).
Allowable Subject Matter
Claims 6-11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: none of the cited prior art of record, alone or in combination, are held to reasonably teach, suggest or render obvious the separator of claim 6 wherein the separator comprises the particular porous substrate, adhesive porous layer on one or both sides of the substrate containing the particular PVdF resin and inorganic filler.
Sato teaches of a similar separator as discussed above including the porous substrate and an adhesive layer provided on one or both sides of the porous substrate containing PVdF and inorganic filler (same average primary particle size). The differences between instant claim 6 and Sato lies in the particulars of both resin X and Y of claim 6 and while Sato does teach of two different resins, Sato does not reasonably teach or suggest the resins meeting the particular combination of features of at least claim 6 including the resin X having a content ratio of structural units derived from hexafluoropropylene being from more than 3.5 mol% to 15 mol% with respect to a total of structural units, a weight-average molecular weight being from 100,000 to less than 1,000,000, and a melting point being from 125°C to less than 150°C, and resin Y: containing structural units derived from vinylidene fluoride and optionally containing structural units derived from hexafluoropropylene, a content ratio of structural units derived from hexafluoropropylene being from 0 mol% to 3.5 mol% with respect to a total of structural units, a weight-average molecular weight being from 1,000,000 to less than 3,000,000, and a melting point being from 150°C to less than 180°C.
The combination of features of claim 6 provides a specific adhesive porous layer with deliberate composition (including HFP), molecular weight and melting point ranges that is not sufficiently disclosed nor suggested by the cited prior art of record.
None of the remaining cited prior art of record, alone or in combination, are held to reasonably teach, suggest or render obvious the particular separator of at least claim 6 for at least the same reasons noted above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Application Publication No. 2020/0343511 discloses a separator with a PVDF coating having inorganic filler particles in a range from 0.01-0.30mm.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGG CANTELMO whose telephone number is (571)272-1283. The examiner can normally be reached Mon-Thurs 7am to 5pm.
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/GREGG CANTELMO/Primary Examiner, Art Unit 1725
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