DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claim 9 is objected to because of the following informalities: the limitation “surface detects” includes a drafting error. For the purpose of this Office Action, the limitation has been interpreted as “surface defects”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1 and 2-10 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.
5. Claim 1 recites the limitation "the content" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "a content".
6. Claims 2-10 are rejected as depending from claim 1.
7. Claim 7 is 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 7 recites the limitation “glycerol”. It is not clear how glycerol is considered a polymer.
8. Claim 8 recites the limitation "the rate of change" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "a rate of change".
9. Claim 9 recites the limitation "the number" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as "a number".
10. Claim 10 is 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 10 recites the limitation “A method of manufacturing a separator according to claim 1, comprising: (a) inputting a composition including a polyolefin, a hydrophilic polymer,”. It is not clear whether it is the same or different separator, polyolefin and hydrophilic polymer as recited in claim 1 from which it depends. For the purpose of this Office Action, the limitation has been interpreted as “A method of manufacturing the separator according to claim 1, comprising: (a) inputting a composition including the polyolefin, the hydrophilic polymer,”.
Claim Rejections - 35 USC § 102
11. 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.
12. 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.
13. Claim(s) 1, 2, 6, 7, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (KR20200085406A) as cited in IDS dated 4/2/24 with citations from machine translation provided with this Office Action.
Regarding claim 1, Lee discloses a separator (abstract, [0107]) which is formed of a porous film that has a hydrophobic region containing a polyolefin (polyolefin such as polyethylene [0044]-[0048], Example 1, claim 1) and a hydrophilic region containing a hydrophilic polymer dispersed in the hydrophobic region(hydrophilic polymer such as polyethylene vinyl acetate [0044]-[0048], Example 1, claim 1), and a content of the hydrophilic region in the porous film is 0.17 wt % (Example 1 where weight ratio polyethylene, polyethylene vinyl acetate is 29.95:0.05) which is within the claim range of 0.1 to 7.5 wt %, thus reading on the limitation.
According to the MPEP, “"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) See MPEP 2131.03.
Regarding claim 2, Lee discloses the polyolefin has a weight average molecular weight of 300,000 (Example 1) which is within the claim range of 200,000 to 800,000, thus reading on the limitation.
According to the MPEP, “"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) See MPEP 2131.03.
Regarding claim 6, Lee discloses the polyolefin includes one selected from the group consisting of polyethylene, polypropylene, polybutylene, polymethylpentene, and a combination of two or more thereof([0056]).
Regarding claim 7, Lee discloses the hydrophilic polymer is one selected from the group consisting of ethylene vinyl acetate and polyvinyl alcohol ([0060]).
Regarding claim 10, Lee discloses a method of manufacturing the separator according to claim 1([0044]-[0048], Example 1, claim 1), comprising: (a) inputting a composition including the polyolefin, the hydrophilic polymer, and a pore-forming agent to an extruder and forming a base sheet; (b) manufacturing a base film by stretching the base sheet and then extracting the pore-forming agent; and (c) heat-setting the base film([0044]-[0048], Example 1, claim 1).
Claim Rejections - 35 USC § 103
14. 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.
15. 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.
16. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR20200085406A) as cited in IDS dated 4/2/24 with citations from machine translation provided with this Office Action as applied to claims 1 and 2 above.
Regarding claim 3, Lee discloses the content of the first reactive group containing polymer may be 0.1 to 30 parts by weigh, or 0.3 to 10 parts by weight, or 0.5 to 5 parts by weight, based on 100 parts by weight of the polyethylene and if this range is satisfied, the problems of reduced compatibility can be resolved ([0059]-[0060], [0065]). Lee discloses the weight average molecular weight of the polyolefin may be 200,000 to 1,000,000 and by using a high molecular weight polyolefin as a starting material for manufacturing a separation membrane, it is possible to obtain a separation membrane with excellent strength and heat resistance while ensuring uniformity and processability of the separation membrane ([0058]). Lee does not explicitly disclose the ratio of the content of the hydrophilic region to the weight average molecular weight of the polyolefin is 0.1*10−5 to 1.1*10−5.
It would have been obvious to one of ordinary skill in the art to provide the separator of Lee with the ratio of the content of the hydrophilic region to the weight average molecular weight of the polyolefin is 0.1*10−5 to 1.1*10−5 in order to balance compatibility, excellent strength and heat resistance, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP §2144.05 (II-A).
17. Claim(s) 4, 5, 8, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR20200085406A) as cited in IDS dated 4/2/24 with citations from machine translation provided with this Office Action as applied to claim 1 above.
Regarding claim 4, Lee discloses the polyolefin has a weight average molecular weight of 200,000 to 1,000,000 ([0058]) which overlaps the claim range of 900,000 to 2,000,000, thus reading on the limitation.
Lee is explicitly silent to the claim range however “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 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 5, Lee discloses the content of the first reactive group containing polymer may be 0.1 to 30 parts by weigh, or 0.3 to 10 parts by weight, or 0.5 to 5 parts by weight, based on 100 parts by weight of the polyethylene and if this range is satisfied, the problems of reduced compatibility can be resolved ([0059]-[0060], [0065]). Lee discloses the weight average molecular weight of the polyolefin may be 200,000 to 1,000,000 and by using a high molecular weight polyolefin as a starting material for manufacturing a separation membrane, it is possible to obtain a separation membrane with excellent strength and heat resistance while ensuring uniformity and processability of the separation membrane ([0058]). Lee does not explicitly disclose the ratio of the content of the hydrophilic region to the weight average molecular weight of the polyolefin is 0.1*10−5 to 0.75*10−5.
It would have been obvious to one of ordinary skill in the art to provide the separator of Lee with the ratio of the content of the hydrophilic region to the weight average molecular weight of the polyolefin is 0.1*10−5 to 0.75*10−5 in order to balance compatibility, excellent strength and heat resistance, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP §2144.05 (II-A).
Regarding claim 8, Lee discloses the elongation ratio may be at least 3 times in the longitudinal direction and at least 4 times in the transverse direction, and the total elongation ratio may be 14 to 100 times ([0083]). Lee discloses when the elongation ratio satisfies the numerical range, the problem of insufficient orientation in one direction and the imbalance of physical properties between the longitudinal and transverse directions, which leads to a decrease in tensile strength and puncture strength, can be prevented, and as the total elongation ratio satisfies the numerical range, the problem of incomplete elongation or pore formation can be prevented([0083]). Lee does not explicitly disclose from immediately after the addition of droplets of an electrolyte on the surface of the separator until 5 minutes have elapsed, a rate of change in machine direction (MD) length is 15 to 50%, and a rate of change in transverse direction (TD) length is 15 to 40%.
It would have been obvious to one of ordinary skill in the art to provide the separator of Lee with from immediately after the addition of droplets of an electrolyte on the surface of the separator until 5 minutes have elapsed, a rate of change in machine direction (MD) length is 15 to 50%, and a rate of change in transverse direction (TD) length is 15 to 40% in order to balance physical properties and pore formation, excellent strength and heat resistance, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP §2144.05 (II-A).
Regarding claim 9, Lee discloses the content of residual diluent after extraction treatment should preferably be 1 weight % or less, and if the content exceeds 1 weight %, the physical properties deteriorate and the permeability of the porous membrane decreases ([0090]) but does not explicitly disclose a number of surface defects that are present on the surface of the separator, have a brightness, which differs from the surroundings, and have a size of 2 mm or more is 10/m2 or less.
It would have been obvious to one of ordinary skill in the art to provide the separator of Lee with disclose a number of surface defects that are present on the surface of the separator, have a brightness, which differs from the surroundings, and have a size of 2 mm or more is 10/m2 or less in order to balance physical properties and permeability, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP §2144.05 (II-A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA HOM LYNCH whose telephone number is (571)272-0489. The examiner can normally be reached 7:30 AM - 4:30 PM EST M-F.
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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724
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