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 .
Specification
The title of the invention is objected to because of the following informality: the final word of the title, “BATTER,” appears to be a grammatical error for “BATTERY.” Appropriate correction is required. See MPEP 606.01.
Claim Interpretation
Claim 1 is directed to an article, namely “A nonaqueous electrolyte secondary battery separator including a polyolefin porous film.” The body of claim 1 characterizes the porous film by a property, i.e., a “number of necessary stages” of not more than 20, obtained by subjecting a two-dimensional SEM image of a cross section of the film to the image-analysis protocol of steps 1-9. Steps 1-9 describe how the property is measured; they do not recite steps for making the separator, and they impart no structure to the separator beyond the void distribution that the measured value reflects (see instant specification [0017]). Accordingly, patentability of claim 1 is determined by the structure of the separator itself, and a prior art separator having the same structure anticipates claim 1 even where the reference does not report the measured value.
To the extent any of steps 1-9 is construed as a process limitation, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.” (MPEP 2113(I)).
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.
(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.
Claims 1–4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoneguchi et al. (US 2021/0376423 A1).
Claim 1: Yoneguchi discloses a nonaqueous electrolyte secondary battery separator containing a polyolefin-based resin as a main component ([0013], [0030]). The separator is a porous polyolefin film produced by kneading a polyolefin-based resin with a pore-forming agent such as calcium carbonate, forming the mixture into a film, removing the pore-forming agent from the film, and stretching the film ([0053-0058]). Yoneguchi thus discloses the “nonaqueous electrolyte secondary battery separator including a polyolefin porous film,” as recited in the preamble of claim 1. The polyolefin-based resin is preferably a mixture of an ultra-high molecular weight (MW) component having a weight average MW of 1.5 million to 6 million and a low MW component having a weight average MW of 1,500 to 10,000 ([0048-0050]), the polyethylene-based resin having a low degree of branching ([0051]).
In Example 2, Yoneguchi mixes 100 parts by weight of polyethylene A1 (MW of 5.06 million; 0.1 branches per 1000 carbon atoms), 43 parts by weight of polyethylene B2 (MW of 4000; melting point of 132 °C), and 170 parts by weight of calcium carbonate having an average particle diameter of 0.07 µm (Maruo Calcium Co., Ltd.) in a Henschel mixer, kneads the mixture with a twin-screw kneader, and rolls the kneaded mixture into a film with a roller ([0172], [0176], [0178], [0181]). The calcium carbonate is removed by immersing the film in an aqueous hydrochloric acid solution containing a nonionic surfactant ([0179]). The film is then stretched 7-fold in the transverse direction (TD) at 100 °C and subjected to heat fixation at 130 °C ([0180-0181]). The resulting separator has a film thickness of 13.0 µm, a weight per unit area of 5.9 g/m², and an air permeability of 138 s/100 cc (Table 1, Example 2).
Yoneguchi does not expressly report the “number of necessary stages” obtained by the image-analysis protocol of steps 1-9 in claim 1 of the applicant’s invention. However, the separator of Yoneguchi is made from substantially the same materials, by substantially the same process, as the separators of the instant Examples that exhibit the claimed property:
(a) Instant Examples 1 and 4 combine an ultra-high MW polyethylene having a number-average number of branches of 0.1 with a polyethylene wax having a weight-average MW of 4000, and use calcium carbonate having an average particle diameter of 0.07 µm (Maruo Calcium Co., Ltd.) as the pore-forming agent (instant specification [0129], [0132]). Yoneguchi likewise combines an ultra-high MW polyethylene of very low branching (0.1 branches per 1000 carbon atoms) with a polyethylene having a MW of 4000, and uses 0.07 µm Maruo calcium carbonate as the pore-forming agent ([0172], [0176], [0178], [0181]).
(b) Instant Examples 1 and 4 form the composition into a sheet with rollers, remove the calcium carbonate with an aqueous hydrochloric acid solution containing a nonionic surfactant, stretch the primary sheet in the TD to a stretch ratio of 7.05 times, and anneal the stretched sheet at 129 °C and 132 °C, respectively (instant [0129], [0132]). Yoneguchi rolls the composition into a film, removes the calcium carbonate with an aqueous hydrochloric acid solution containing a nonionic surfactant, stretches the film 7-fold in the TD, and heat-fixes the film at 130 °C ([0178-0181]).
(c) The instant specification teaches that a relaxation operation in the MD is not carried out before annealing (instant [0057], [0137]). The process of Yoneguchi consists of TD stretching followed by heat fixation and includes no MD relaxation ([0180]).
(d) The film thickness (13.0 µm), weight per unit area (5.9 g/m²), and air permeability (138 s/100 cc) of the Yoneguchi separator fall within the ranges the instant specification describes for the claimed porous film, namely a thickness of 4 µm to 40 µm, a weight per unit area of 4 g/m² to 20 g/m² (more preferably 5 g/m² to 12 g/m²), and an air permeability of 110 sec/100 mL to 200 sec/100 mL (instant [0035], [0039], [0040]).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of anticipation has been established, and the burden shifts to applicant to show that the prior art product does not necessarily or inherently possess the claimed characteristic (MPEP 2112.01(I)). “Products of identical chemical composition can not have mutually exclusive properties.” (MPEP 2112(V)). Accordingly, the porous film of Yoneguchi is reasonably expected to inherently exhibit a number of necessary stages of not more than 20 when evaluated by steps 1-9, and Yoneguchi anticipates claim 1.
Claim 2: Yoneguchi discloses a laminated separator including the nonaqueous electrolyte secondary battery separator and a porous layer disposed on one surface or on both surfaces of the separator, the porous layer containing a resin and a filler such as alumina ([0015-0018], [0067], [0071], [0076]–[0080]). The resin of the porous layer is insoluble in the electrolyte and electrochemically stable during normal use of the battery ([0077]), and the positive and negative electrodes face each other via the laminated separator ([0096]). The porous layer of Yoneguchi is therefore an insulating porous layer containing a resin.
Claim 3: Yoneguchi discloses that the porous layer contains at least one resin selected from the group consisting of a (meth)acrylate-based resin, a fluorine-containing resin, a polyamide-based resin, a polyester-based resin, and a water-soluble polymer ([0018], [0080]), and also lists polyolefins as porous-layer resins ([0078], [0081]).
Claim 4: Yoneguchi discloses that the porous layer contains an aramid resin, poly(paraphenylene terephthalamide) being more preferable ([0019], [0083]–[0084]).
Claim 6: Yoneguchi discloses a nonaqueous electrolyte secondary battery member including a positive electrode, the nonaqueous electrolyte secondary battery separator, and a negative electrode, disposed in this order ([0020-0024], [0096], [0113]; claim 5).
Claim 7: Yoneguchi discloses a nonaqueous electrolyte secondary battery, e.g., a lithium ion secondary battery, including the nonaqueous electrolyte secondary battery separator ([0025]–[0026], [0096], claim 6).
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yoneguchi in view of Yoshimaru et al. (US 2018/0254455 A1, hereinafter “Yoshimaru”).
Claim 5: Yoneguchi discloses the nonaqueous electrolyte secondary battery separator including the insulating porous layer containing a resin, as set forth above for claims 1 and 2. Yoneguchi further discloses that the resin of the porous layer functions to bond the porous layer to the porous polyolefin film and/or to an electrode plate ([0076]). Yoneguchi does not expressly disclose an adhesive layer in addition to the insulating porous layer.
Yoshimaru ‘455, which is directed to the same type of nonaqueous electrolyte secondary battery separator including a polyolefin porous film and a laminated separator including an insulating porous layer ([0011], [0080]–[0082]), teaches that the insulating porous layer is preferably a heat-resistant layer or an adhesive layer ([0082]), and that the laminated body may include, in addition to the polyolefin porous film and the insulating porous layer, a publicly known porous layer such as a heat-resistant layer, an adhesive layer, and a protective layer according to need ([0101]). Yoshimaru thus teaches an adhesive layer in addition to the insulating porous layer of a laminated separator.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the laminated separator of Yoneguchi with an adhesive layer in addition to the insulating porous layer, as taught by Yoshimaru ‘455, in order to bond the laminated separator to an electrode, with a predictable result.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ATEF A SHAT whose telephone number is (571)270-0364. The examiner can normally be reached 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 5712721418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ATEF A SHAT/Examiner, Art Unit 1712
/MICHAEL B CLEVELAND/Supervisory Patent Examiner, Art Unit 1712
