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 .
Election/Restrictions
Applicant’s election without traverse of Group I: Claims 1-9 and 12 in the reply filed on 2/11/2026 is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
The use of the term “Nitto” in para. [0204], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The “Detailed Description” of Fig. 1 appears to be missing. 37 C.F.R. 1.74 recites: When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference letters or numerals (preferably the latter). See MPEP 608.01(f).
Appropriate correction is required.
Claim Objections
Claims 2 and 5 are objected to because of the following informalities:
Claim 2 recites the limitation “ZrO2” in line 4. This should instead read “ZrO2” for proper chemical compound notation.
Claim 5 recites the limitation “in the inorganic particles having a surface coated with the coating layer, a mass ratio” in lines 1-2. The “in” does not appear grammatically correct. The examiner advises to rewrite the limitation to “the inorganic particles having a surface coated with the coating layer comprise a mass ratio.”
Appropriate correction is required.
Claim Interpretation
The phrase “and/or” is noted on line 3 of claim 7, line 10 of claim 8, and line 5 of claim 9. Based on the structure of each of these claims, it is best understood that each of the limitations between the semi-colons may collectively be met (in the case of and) or at least one of them may bet met (in the case of or).
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 1-9 and 12 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 "the inorganic particle" in line 5. There is insufficient antecedent basis for this limitation in the claim. The examiner advises the limitation to instead read “the inorganic particles.” “The inorganic particle” is also noted in line 2 of claim 8.
Claim 5 recites the limitation of “a mass ratio of the coating layer to a coated inorganic particle is (0.05-2):1.” It is best understood that the mass of a coated inorganic particle would including the inorganic particle and the coating layer overtop because of the phrasing of “coated” and lacking anything to the contrary. While para [0081] of the instant specification clarifies that the mass of all the inorganic particles does not contain the mass of the coating layer, this is for a different mass ratio based on the mass of all the inorganic particles. Therefore, it is unclear if the same logic applies to this mass ratio including the coated inorganic particle. If the coated inorganic particle mass includes the coating layer, how would coated particle mass 1 be less than, for example 2, the coating layer, which is a portion of it? The examples in the specification do not provide further clarification. For compact prosecution, the examiner will assume the coated inorganic particle mass is just the inorganic particle mass of the inorganic particle that is coated.
Claim 8 recites the limitation wherein the coating contains 80 wt% to 99 wt% of the inorganic particle, 1 wt% to 5 wt% of a binder, 1 wt% to 3 wt% of a dispersant and/or 0.1 wt% to 1 wt% of a thickener. In the case of 99 wt% of the coating being made up of the inorganic particle, how is it possible for the weight ranges of the binder and dispersant to be also met when each of their minimums are 1 wt%? This is in the case of “and” in the “and/or” on line 10 of claim 8. For compact prosecution, the examiner will consider the range as 80 wt% to 97.9 wt% of the inorganic particle.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2021/0036286 A1) in view of Abe et al. (US 2016/0226050).
Regarding claim 1, Lee et al. teaches a separator (See e.g. separator in Para. 54), comprising a substrate (see e.g. porous polymer substrate in Para. 57) and a coating formed on the substrate (see e.g. porous organic/inorganic coating layer on at least one surface of a porous polymer substrate in Para. 57) wherein the coating contains inorganic particles (see e.g. heat conductive inorganic particles in Para. 56 and core-shell particles in Para. 56 wherein the core may be inorganic in Para. 59), and 30 wt% to 70 wt% of the inorganic particles have a surface coated with a coating layer, and 70 wt% to 30 wt% of the inorganic particles have an uncoated surface, based on a total weight of the inorganic particle (See e.g. Lee et al. teaches in Para. 79 the core-shell particle may include 100 parts by weight of the core portion and 0.5-3 parts by weight, 0.8-2 parts by weight, or 0.9-1.5 parts by weight of the shell portion. Lee et al. teaches in Para. 81 the content of core-shell particles may be 30-90 parts by weight, 50-85 parts by weight, or 70-80 parts by weight based on 100 parts by weight of the heat conductive inorganic particles. See calculations below that serve as examples of how the range may be overlapped. The example calculations are not the only possible instance within the ranges taught by Lee et al. that may read on the claim. This overlaps the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).
Knowns in the Prior Art:
The core-shell particle may include 100 parts by weight of the core portion and 0.5-3 parts by weight, 0.8-2 parts by weight, or 0.9-1.5 parts by weight of the shell portion. (Para. 79 of Lee et al.)
The core of the core-shell particle may be inorganic. (Para. 59 of Lee et al.)
The content of core-shell particles may be 30-90 parts by weight, 50-85 parts by weight, or 70-80 parts by weight based on 100 parts by weight of the heat conductive inorganic particles. (Para. 81 of Lee et al.)
Background:
Weight of core + Weight of shell = Weight of core-shell particles
Total weight of inorganic particles = weight of core + weight of heat conductive inorganic particles
Set Parameters for example calculation (within ranges and examples of prior art):
The shell is 1 part by weight based on 100 parts by weight of the inorganic core portion.
The core-shell portion is 70 parts by weight based on 100 parts by weight the heat conductive inorganic particles.
Assuming basis of 100 g of core particle for ease of calculations
Acronyms:
Part by weight = pbw
Core-shell particle = C-S P
Heat conductive inorganic particles = IP
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Lee et al. fails to explicitly teach two layers of substrate and the coating formed between the two layers of substrate.
However, Abe et al. teaches a separator having an intermediate coating layer between two porous films that may be made of polypropylene or polyethylene in Para. 34-35 and Fig. 1. The coating layer may be composed of inorganic/and/or organic particles in Para. 32. The separator can improve the discharge characteristics at low temperatures and cycle characteristics at high temperatures in Para. 30 and 64.
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 separator comprising a coating on a porous polymer film of Lee et al. to be a separator comprising a coating between two porous polymer films, as taught be Abe et al., to improve the discharge characteristics at low temperatures and cycle characteristics at high temperatures as noted in Para. 30 and 64 of Abe et al..
Regarding claim 2, Lee et al. in view of Abe et al. teaches the separator according to claim 1, wherein the inorganic particles are selected from at least one of Si, an Si oxide, an Si nitride, an Fe oxide, an Fe nitride, an Fe oxysalt, an Sn oxide, a Ti oxide, a Ti nitride, a Cu oxide, a Cu nitride, an Mn oxide, a Ge oxide, an Ni oxide, ZrO2, ZnO and AlN (see e.g. Lee et al. teaches the inorganic core of the core-shell particles may be a metal hydroxide in Para. 50 such as silicon and tin in Para. 62. The heat conductive inorganic particles may be zinc oxide or aluminum nitride in Para. 91).
Regarding claim 3, Lee et al. in view of Abe et al. teaches the separator according to claim 1, wherein the inorganic particles have a particle size Dv50 of 0.01 µm to 10 µm (Lee et al. teaches the heat conductive inorganic particles may have a diameter of 50-900 nm, 80-700 nm, or 100-500 nm in Para. 92, i.e. 0.5 µm to 0.9 µm. Lee et al. teaches the diameter of the core-shell particles corresponds to the diameter of heat conductive inorganic particles, and the shell may have a thickness of 1-20 nm, 2-19 nm, or 3-18 nm in para. 76. The core may be inorganic in Para. 59. Therefore, the core diameter may be, for example, 499 nm or 0.49 µm if the shell is 1 nm. Lee et al. teaches the diameter of the core-shell particles and the heat conductive inorganic particles means ‘D50 diameter’ in Para. 78 and 93. The claim as currently worded does not limit an interpretation of each of the types of inorganic particles meeting the claim limitation. Additionally, an average between the diameters of the heat conductive inorganic particles and the core of the core-shell particles may also overlap the claimed range (ex:
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). This overlaps the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05)).
Regarding claim 4, Lee et al. in view of Abe et al. teaches the separator according to claim 1, wherein a material forming the coating layer is selected from at least one of polyvinylidene fluoride (PVDF), polydopamine (PDA), polyaniline (PAn), polyimide (PI), and polymethyl methacrylate (PMMA) (See e.g. Lee et al. teaches the shell portion includes a polymer resin that may be a water-insoluble polymer such as polyvinylidene fluoride in Para. 17 and 22).
Regarding claim 5, Lee et al. in view of Abe et al. teaches the separator according to claim 1, wherein in the inorganic particles having a surface coated with the coating layer, a mass ratio of the coating layer to a coated inorganic particle is (0.05-2) : 1 (See e.g. Lee et al. teaches in Para. 79 the core-shell particle may include 100 parts by weight of the core portion and 0.5-3 parts by weight, 0.8-2 parts by weight, or 0.9-1.5 parts by weight of the shell portion. When the content of shell portion is within the above-defined range, it is possible to solve the problem of reaction between water contained in the metal hydroxide in the core portion and an electrolyte at high temperature.
The only deficiency of Lee et al. is that in Para 79, it discloses the use of shell mass to core mass of (0.5-3):100 or (0.005-0.03):1, while the present claims requires (0.05-2):1.
It is apparent, however, that the instantly claimed amount of (0.05-2):1 and that taught by Lee et al. of (0.005-0.03):1 are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference of 0.02 between the amount of (0.005-0.03):1 disclosed by Lee et al. and the amount disclosed of (0.05-2):1 in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of (0.05-2):1, it therefore would have been obvious to one of ordinary skill in the art that the amount of (0.05-2):1 disclosed in the present claims is but an obvious variant of the amounts disclosed in (0.005-0.03):1, and thereby one of ordinary skill in the art would have arrived at the claimed invention.)
Regarding claim 6, Lee et al. in view of Abe et al. teaches the separator according to claim 1, wherein the coating layer has a thickness of 3 nm to 10 nm (see e.g. Lee et al. teaches where the shell of the core-shell portion has a thickness of 1-20 nm, more preferably 3-18 nm in Para. 20 and 76. This overlaps the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05)).
Regarding claim 7, Lee et al. in view of Abe et al. teaches the separator according to claim 1, wherein the coating has a thickness of 1 µm to 10 µm;
the coating has a coating amount of 5 g/m2 to 50 g/m2;
and/or the separator has a thickness of 10 m to 20 m (See e.g. the porous organic/inorganic coating layer may have a thickness of 1-10 µm in Para. 119. This overlaps the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05)).
Regarding claim 8, Lee et al. in view of Abe et al. teaches the separator according to claim 1, wherein the coating contains 80 wt% to 99 wt% of the inorganic particle;
1 wt% to 5 wt% of a binder;
1 wt% to 3 wt% of a dispersant;
wt% to 1 wt% of a thickener, all based on a total weight of the coating;
the binder is selected from at least one of sodium carboxymethylcellulose (CMC) and styrene butadiene rubber (SBR);
the dispersant is selected from at least one of hydrolytic polymaleic anhydride, an acrylic block polymer, a polyester block polymer, a polyethylene glycol-type polyol, and a polyethyleneimine derivative;
and/or the thickener is selected from at least one of sodium carboxymethylcellulose, methylcellulose, hydroxyethyl cellulose, hydroxypropyl methylcellulose, polyacrylate, polyurethane, and polyether (see e.g. Lee et al. teaches the content of heat conductive inorganic particles may be 50 parts by weight or more based on 100 parts by weight of the total porous organic/inorganic coating layer in para. 106. This overlaps the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).).
Regarding claim 9, Lee et al. in view of Abe et al. teaches the separator according to claim 1, wherein a material forming the substrate is selected from at least one of polypropylene, polyethylene, polyamide, polyester, polytetrafluoroethylene, polyvinylidene fluoride, and polyvinyl chloride;
the substrate has a thickness of 3 m to 30 m;
the substrate is a porous film having a porosity of 30% to 80%; and/or
the material forming the substrate has a number-average molecular weight of 100,000- 1,000,000 (see e.g. Lee et al. teaches the porous polymer substrate may be a porous polymer film substrate including polyolefin such as polyethylene or polypropylene in Para. 121-123 and a porosity of 10-95% in Para. 126. This overlaps the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05)).
Regarding claim 12, Lee et al. in view of Abe et al. teaches a secondary battery (see e.g. Lee et al. teaches lithium secondary battery in Para. 53), comprising a separator according to claim 1, or a separator obtained by a method according to claim 10 (See e.g. rejection of claim 1, Para. 54, 56, 57, 59, 79, 81 of Lee et al., and Para. 30, 32, 34-35, and 64 of Abe et al.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2015/0349312 A1 teaches inorganic particles with partial organic coating.
CN 114171849 teaches core-shell inorganic-organic particles on a substrate. This was cited in the IDS filed 4/8/2024.
WO 2016/000276 A1 teaches core-shell inorganic particles in diaphragm
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J METZGER whose telephone number is (571)272-0170. The examiner can normally be reached Monday - Thursday (1st week) or Monday - Friday (2nd week) 7:30am-5:00am - 9-day biweekly schedule.
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/KATHERINE J METZGER/Examiner, Art Unit 1723
/TONG GUO/Supervisory Patent Examiner, Art Unit 1723