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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/28/24 and 12/10/25 was considered by the examiner.
Drawings
The drawings were received on 03/28/24.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” “The present invention provides”, etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. It does not appear to capture the essence of the disclosed/claimed invention.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-9 are rejected under 35 U.S.C. 102a1 as being anticipated by the publication KR 10-2024321 (herein KR’321).
As to claim 1:
KR’321 discloses a process of making a separator comprising the steps of: extruding and stretching a composition comprising crosslinkable polyolefin and a silane-based material grafter to a polyolefin material, a non-crosslinkable polyolefin including a second polyolefin and a pore-forming agent/material to make a film; applying a catalyst to a surface of the film while removing the pore-forming agent/material by using a catalyst/solvent mixture; and heating and steaming the film to crosslink the crosslinkable polyolefin while removing/extracting all the solvent therefrom (0023-0026; 0045-0085; 0120-0125; 0155-0163; see EXAMPLES 1-3; see CLAIMS 1-2 & 7).
As to claims 2-6:
KR’321 discloses the polyolefin comprises polyethylene; polypropylene; polybutylene; polypentene; polyhexene; polyoctene; copolymers of two or more of ethylene, propylene, butene, pentene, 4-methylpentene, hexene, and octene and combinations thereof; with an average molecular weight of 250000-500000 (Abstract; 0023-0026; 0045-0085; 0120-0125; 0155-0163; see CLAIMS 1-2 & 7). KR’321 discloses the alkoxy-containing vinyl silane; and the weight content of the crosslinkable/non-crosslinkable and the weight content of silane-bases compound satisfying the range of 5-90 wt % and 10-50 wt %, respectively (Abstract; 0023-0026; 0045-0085; 0120-0125; 0155-0163; see EXAMPLES 1-3; see CLAIMS 1-2 & 7). Also, it is noted that the limitation “the ratio of the weight average molecular weight (Mw) of the fist polyolefin to that of the second polyolefin is 0.00005 to 1” is substantially an all-encompassing limitation covering substantially ratio from 0 to 1.
As to claims 7-9:
KR’321 teaches heating and steaming with an internal sprayer the film to crosslink the crosslinkable polyolefin while removing/extracting all the solvent therefrom at a first temperature of 60-100°C and a second temperature of 120-150°C (0023-0026; 0045-0085; 0120-0125; 0155-0163; see EXAMPLES 1-3; see CLAIMS 1-2 & 7). Note that at least the end points constitute a valid data point, and thus, it anticipates the claim as the end point represents a specific disclosure of a discrete embodiment of the invention disclosed by the prior art which amounts to a complete description and, therefore, an anticipation of the claimed range. See Ex Parte Lee 31 USPQ2d 1105. In this case, an end point of the first temperature is 60°C. As such, there is disclosed a specific representation of a discrete embodiment for such particular element, characteristic or property. Therefore, the claimed requirement is met.
Thus, the present claims are anticipated.
Claim Rejections - 35 USC § 102
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.
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.
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 10 is rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over the publication KR 10-2024321 (herein KR’321).
As to claim 10:
KR’321 discloses that it is known in the art to make a crosslinked polyolefin separator (0023-0026; 0045-0085; 0120-0125; 0155-0163; see CLAIMS 1-2 & 7). 1st Examiner's note: it is noted that the instant claims are being construed as product-by-process claims (i.e. the method limitation "the separator manufactured by the method of claim 1" has not been given patentable weight) and that the product itself does not depend on the process of making it. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In that, it is further noted that the product in the instant claims is the same as or obvious over the product of the prior art. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any difference, the difference would have been minor and obvious. Therefore, the present claims are unpatentable over a reference that satisfies the claimed compositional or physical or property or structural limitations, and/or a reference that discloses a product made by a process that reasonably substantially comprises every limitation of the claimed process. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974);See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Therefore, the claims are anticipated by KR’321. However, if the claims are not anticipated the claims are obvious as it has been held similar products claimed in product-by-process limitations are obvious. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974); See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Claim 10 is rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over the publication KR 10-2021-0072674 (herein KR’674).
As to claim 10:
KR’674 discloses that it is known in the art to make a crosslinked polyolefin separator (See Abstract). 1st Examiner's note: it is noted that the instant claims are being construed as product-by-process claims (i.e. the method limitation "the separator manufactured by the method of claim 1" has not been given patentable weight) and that the product itself does not depend on the process of making it. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In that, it is further noted that the product in the instant claims is the same as or obvious over the product of the prior art. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any difference, the difference would have been minor and obvious. Therefore, the present claims are unpatentable over a reference that satisfies the claimed compositional or physical or property or structural limitations, and/or a reference that discloses a product made by a process that reasonably substantially comprises every limitation of the claimed process. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974);See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Therefore, the claims are anticipated by KR’674. However, if the claims are not anticipated the claims are obvious as it has been held similar products claimed in product-by-process limitations are obvious. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974); See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Claim 10 is rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over the publication KR 10-2021-0001785 (herein KR’785).
As to claim 10:
KR’785 discloses that it is known in the art to make a crosslinked polyolefin separator (See Abstract). 1st Examiner's note: it is noted that the instant claims are being construed as product-by-process claims (i.e. the method limitation "the separator manufactured by the method of claim 1" has not been given patentable weight) and that the product itself does not depend on the process of making it. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In that, it is further noted that the product in the instant claims is the same as or obvious over the product of the prior art. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any difference, the difference would have been minor and obvious. Therefore, the present claims are unpatentable over a reference that satisfies the claimed compositional or physical or property or structural limitations, and/or a reference that discloses a product made by a process that reasonably substantially comprises every limitation of the claimed process. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974);See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Therefore, the claims are anticipated by KR’785. However, if the claims are not anticipated the claims are obvious as it has been held similar products claimed in product-by-process limitations are obvious. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974); See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Claim 10 is rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over the publication KR 10-2021-00092600 (herein KR’600).
As to claim 10:
KR’600 discloses that it is known in the art to make a crosslinked polyolefin separator (See Abstract). 1st Examiner's note: it is noted that the instant claims are being construed as product-by-process claims (i.e. the method limitation "the separator manufactured by the method of claim 1" has not been given patentable weight) and that the product itself does not depend on the process of making it. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In that, it is further noted that the product in the instant claims is the same as or obvious over the product of the prior art. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any difference, the difference would have been minor and obvious. Therefore, the present claims are unpatentable over a reference that satisfies the claimed compositional or physical or property or structural limitations, and/or a reference that discloses a product made by a process that reasonably substantially comprises every limitation of the claimed process. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974);See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Therefore, the claims are anticipated by KR’600. However, if the claims are not anticipated the claims are obvious as it has been held similar products claimed in product-by-process limitations are obvious. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974); See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Claim 10 is rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Degen et al 5591539.
As to claim 10:
Degen et al disclose that it is known in the art to make a crosslinked polyolefin separator (Abstract; See Examples 1-21). 1st Examiner's note: it is noted that the instant claims are being construed as product-by-process claims (i.e. the method limitation "the separator manufactured by the method of claim 1" has not been given patentable weight) and that the product itself does not depend on the process of making it. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In that, it is further noted that the product in the instant claims is the same as or obvious over the product of the prior art. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any difference, the difference would have been minor and obvious. Therefore, the present claims are unpatentable over a reference that satisfies the claimed compositional or physical or property or structural limitations, and/or a reference that discloses a product made by a process that reasonably substantially comprises every limitation of the claimed process. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974);See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Therefore, the claims are anticipated by Degen et al. However, if the claims are not anticipated the claims are obvious as it has been held similar products claimed in product-by-process limitations are obvious. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974); See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752
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