DETAILED CORRESPONDENCE
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 .
Priority
2. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
3. Information disclosure statements (IDS), submitted April 19, 2024; July 4, 2025, October 20, 2025, and April 27, 2026, have been received and considered by the examiner.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
5. Claim 2 recites “the barrier layer is selected from a film or a coating” and then defines examples of a film material and examples of a coating material.
On one hand, the Office notes that there is no clear structural difference between a film and a coating as claimed, as “coating” seems to be a product-by-process limitation. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
On the other hand, because the claims have mutually exclusive materials listed for “coating” and for “film”, these categories of materials will be interpreted as different species/groups.
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.
6. Claims 2 and 4 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 2 recites “comprises one or more of polypropylene, polyethylene, polyester fiber, and polyvinyl chloride…” and then recites “optionally comprises one or more of cast polypropylene, uniaxially oriented polypropylene, biaxially oriented polypropylene, polyethylene, polyester fiber, and polyvinyl chloride” and then recites “further optionally comprises polyethylene…” The use of “optionally” raises an issue of indefiniteness because the list attached to “optionally” includes repeated and narrowed species of the first list, and then it is unclear if the “further optionally” is a narrowed version of the first list or the “optionally” limitation. “A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim 4 is rejected as being dependent on Claim 2.
7. Claims 5-8 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. The term “close to” in claim 5 is a relative term which renders the claim indefinite. The term “close to” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 6-8 are rejected as being dependent upon a rejected base claim.
8. Claim 8 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 8 recites “a side of the spacing zone close to the reaction zone is 1 m to 10 mm”.
First, the term “close to” in claim 8 is a relative term which renders the claim indefinite. The term “close to” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Second, the claim does not describe what dimension is represented by the measurements. Is the depth of the spacing zone 1 mm to 10 mm at the side or is this the length, or the width??
9. 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 “wherein the barrier layer is provided through a coating or adhesive process; and optionally, the barrier layer is provided through an adhesive process”. The use of “optionally” renders this claim unclear for the same reason as applied to Claim 2. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 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.
(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.
10. Claims 1-2, 4-5, and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugimoto JP2011-124058.
Regarding Claims 1 and 2, Sugimoto discloses a secondary battery (power generation element) 10 comprising a positive electrode plate 30 and a negative electrode plate 20, wherein the positive electrode plate 30 comprises a positive electrode current collector (aluminum foil) 38 and a positive electrode film layer provided on each of two surfaces of the positive electrode current collector 38 (positive electrode active material layer provided as inner positive electrode active material layer 35 and outer positive electrode active material layer 31, see Figs 2/5 and para 0033), the negative electrode plate 10 comprises a negative electrode current collector (copper foil) 28 and a negative electrode film layer provided on each of two surfaces of the negative electrode current collector 28 (negative electrode active material layer provided as inner negative electrode active material layer 25 and outer negative electrode active material layer 21, see Figs 3-6 and para 0034), and the negative electrode film layer comprises a reaction zone (including negative electrode active material layer 25) opposite the positive electrode film layer (para 0035) and a non-reaction zone (outer negative electrode active material layer 21 where reaction with electrolyte is not desired, para 0008) not opposite the positive electrode film layer (para 0036) wherein a barrier layer (polytetrafluoroethylene layer, meeting Claim 2) is provided on a surface of the non-reaction zone (para 0037) (see entire disclosure and especially Figs 1-7 and paras 0008, 0032-0037 and 0051-0052).
Regarding Claim 4, because the prior art meets the limitation of “the coating” of Claim 2, any limitation directed to “the film” that further limits the film but does not specifically choose the film as the species of barrier layer is not required to be met by the prior art.
Regarding Clam 5, Sugimoto discloses wherein a spacing zone 221e is provided along a width direction of the negative electrode plate at an end of the non-reaction zone of the negative electrode plate close to the reaction zone (on an opposing side but still close), and the barrier layer is provided starting from the spacing zone 221 and extending away from the reaction zone (para 0056)
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Regarding Claims 10-12, Sugimoto discloses an electric apparatus (e.g. a vehicle having an engine and motors (electric apparatuses, meeting Claim 12) comprising a battery pack (meeting Claim 11) comprising the secondary battery of Claim 1 prepared by a preparation method comprising (1) preparing a positive electrode plate 30 (para 0052, 0066), (2) preparing a negative electrode plate 20 (para 0052), preparing a separator (separator has been made of polyethylene, para 0032), preparing an electrolyte (para 0031), and preparing a secondary battery (para 0042, 0051), wherein step (2) comprises a step of providing a barrier layer (para 0042), and the secondary battery is designed the same as is described in Claim 1 (the rejection of which is incorporated herein in its entirety).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
11. Claims 3 and 6-8 are rejected under 35 U.S.C. 103 as being obvious over Sugimoto JP2011-124058, as applied to Claim 1.
Regarding Claim 3, Sugimoto discloses the secondary battery as described in the rejection of Claim 1, which is incorporated herein in its entirety. Sugimoto does not specifically disclose a thickness of the barrier layer. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the protective layer of Sugimoto such that the layer has a thickness between 6 microns and 40 microns so that it is thick enough to fulfill the protective property without making the battery too thick, for example, since the size of an article is not a matter of invention. See In re Rose, 105 USPQ 237 (CCPA 1955) (see MPEP § 2144.04). A change in proportion or relative dimension is obvious in the absence of unexpected results. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding Claims 6-8, Sugimoto does not specifically disclose wherein width of the spacing zone is 5 mm to 50 mm or a side of the spacing zone close to the reaction zone is 1 mm to 10 mm or a depth of the spacing zone is equal to thickness of the negative electrode film layer. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the spacing zone of Sugimoto such that the its width is 5 mm to 50 mm and a side of the spacing zone is 1 mm to 10 mm and a thickness is the same as thickness of the negative electrode film layer so that that the spacing zone is wide enough and deep enough and has a size long enough to fulfill the protective property without sacrificing too much reaction ability, e.g. battery capacity, for example, since the size of an article is not a matter of invention. See In re Rose, 105 USPQ 237 (CCPA 1955) (see MPEP § 2144.04). A change in proportion or relative dimension is obvious in the absence of unexpected results. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Murai JP2002-075454 discloses a secondary battery having a negative electrode plate having an uncoated portion 27 that does not face the positive electrode active material plate has lithium metal attached to the uncoated portion using insulating resin tape with adhesive (paras 0019-0020, Fig 2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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/LISA S PARK/Primary Examiner, Art Unit 1729
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