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 .
Response to Amendment
2. The amendment filed by Applicant on July 6, 2026 has been fully considered. The amendment to instant claim 3 and addition of new claim 20 are acknowledged. In light of the amendment, the previous rejections cited below are maintained. The new grounds of rejections of claims 3 and 20 necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1, 3, 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over
Zhang et al (US 2014/0045033) in view of Zhao et al (CN103035866, based on machine translation submitted in IDS on 08/28/25).
4. The rejection is adequately set forth on pages 3-7 of an Office action mailed on April 7, 20206 and is incorporated here by reference.
5. Claims 3 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over
Zhang et al (US 2014/0045033) in view of Zhao et al (CN103035866, based on machine translation submitted in IDS on 08/28/25) and Terai (US 2011/0006441).
6. Zhang et al discloses a ceramic coating for battery separators, comprising one or more ceramic particles distributed in a polymer binder (Abstract, [0022]), wherein the ceramic particles comprise oxides of silicon, alumina having size of 0.01-2 micron in diameter ([0022]) and the polymer binder comprises a poly(sodium acrylate-acrylamide-acrylonitrile) copolymer ([0024]); and the ratio between the polymer binder and the ceramic particle is 1:99 to 99:1 ([0025]), or up to 80%wt, or up to 60%wt of the particles, based on the weight of the coating material, are used ([0060]).
7. The specific example 2 shows a coating comprising a mixture of poly(sodium acrylate-acrylamide-acrylonitrile) copolymer with alumina ceramic particles having the particle size of less than 2 micron; and the coating having a thickness of 6 micron ([0044]).
8. Thus, Zhang et al discloses a ceramic coating, wherein the ceramic alumina or silica microparticles are distributed within/mixed with a polyacrylate copolymer comprising an acrylate monomer, an acrylonitrile monomer and an acrylamide monomer, as required by instant claim 1.
9. The weight ratio between the ceramic particles and the polyacrylate binder is overlapping with that as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Given the ceramic particles are used in amount of 80%wt based on the weight of the composite coating material ([0060]), the amount of the polymeric binder will be 20%wt; given the ceramic particles are used in amount of 50%wt based on the weight of the composite coating material ([0060]), the amount of the polymeric binder will be 50%wt.
10. Though Zhang et al recites the ceramic particles being distributed within the polyacrylate-based coating, Zhang et al does not explicitly teach said ceramic particles being individually coated, like having core-shell structure, with said polyacrylate coating, and the overall coated particles having size of 5-100 micron, or 7-8 micron.
11. However, Zhao et al discloses a ceramic coating for a ceramic battery separator, having a core-shell structure with core being ceramic particles including alumina or silica having size of 50nm-10 micron, and an acrylate polymer shell ([0002], [0013]-[0015]), with shell thickness of 1-10 micron ([0015]).
Thus, Zhao et al explicitly teaches that the ceramic coating used in separators can be made in the form of core-shell particles, wherein the ceramic particles are coated with the acrylate coating, wherein such core-shell composites have improved uniformity of the coating and improve the overall performance and stability of the ceramic membrane/separator ([0009]).
12. Since both Zhao et al and Zhang et al are related to ceramic coatings comprising ceramic particles and an acrylate polymer-based binder/coating, used for battery separators, and thereby belong to the same field of endeavor, wherein Zhao et al explicitly teaches that the ceramic coatings can be made in the form of core-shell particles, wherein ceramic particles are coated with the acrylate binder coating, thereby improving uniformity of the coating and improving the overall performance and stability of the ceramic membrane/separator, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Zhang et al and Zhao et al, and to modify, or obvious to try to modify the ceramic coating of Zhang et al by forming said ceramic coating in the form of core-shell particles, i.e. coating the alumina ceramic particles of Zhang et al with the acrylate-acrylamide-acrylonitrile-based copolymer binder, thus forming core-shell composites, so to ensure uniformity of the coating, preventing agglomeration of the ceramic particles, and thus to improve the overall performance and stability of the ceramic membrane/separator, as taught by Zhao et al as well, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
13. Given the ceramic coating of Zhang et al in view of Zhao et al comprises ceramic particles with size of 0.05 micron to about 2 micron ([0022] of Zhang et al); the ceramic coating has a thickness of 5.5-9 micron ([0078] of Zhang et al) and the coating/shell thickness in the core-shell particles maybe up to 10 micron ([0016] of Zhao et al); therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the ceramic particles having size of 2 micron, the shell/coating thickness of up to 10 micron, such as 3-7 micron, so to ensure the overall core-shell particle-based ceramic coating has an overall particle size/thickness of 5.5-9 micron, as required by Zhang et al, including the overall core-shell particle size of 7-8 micron as well (as to instant claim 1), since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
14. Though Zhang et al in view of Zhao et al disclose the coating/polymer binder being an acrylate-acrylonitrile-acrylamide copolymer ([0043] of Zhang et al), Zhang et al in view of Zhao et al do not recite the molar ratio of said monomers in said copolymer.
15. However, Terai discloses an adhesive resin composition for a semiconductor comprising a (meth)acrylic ester copolymer and silica ([0016]-[0018]), with the content of silica in said composition of 20-70%mass ([0024]).
16. The specifically exemplified copolymer Example 5 comprises ethyl acrylate/acrylonitrile/glycidyl methacrylate/ N,N-dimethylacrylamide copolymer, comprising:
ethyl acrylate - 63%mol;
acrylonitrile (AN) - 32.1%mol;
glycidyl methacrylate - 0.6%mol;
N,N-dimethylacrylamide - 4.3%mol ([0160]),
that is, the molar ratio of acrylate/ AN/ acrylamide is 1 : 0.51 : 0.07 (as to instant claims 3 and 20).
17. Since Terai and Zhang et al in view of Zhao et al are related to compositions comprising acrylate/AN/acrylamide copolymers and silica, and thereby belong to the same field of endeavor, wherein Terai explicitly teaches the use of said copolymer having the molar ratio of acrylate/ AN/ acrylamide of 1 : 0.51 : 0.07, and wherein said copolymer is providing excellent adhesive properties, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Terai and Zhang et al in view of Zhao et al, and to choose and use, or obvious to try to use the copolymer of acrylate/ AN/ acrylamide having a molar ratio of acrylate/ AN/ acrylamide of 1 : 0.51 : 0.07of 1 : 0.51 : 0.07 of Terai as the acrylate/ AN/ acrylamide copolymer used as a shell to coat ceramic/silica particles in the composition of Zhang et al in view of Zhao et al, since said copolymer of Terai has good adhesive properties and would improve adhesiveness of the ceramic coating of Zhang et al in view of Zhao et al towards the base membrane of the separator of Zhang et al in view of Zhao et al (see Figures 4-5 of Zhang et al), and it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Response to Arguments
18. Applicant's arguments filed on July 6, 2026 have been fully considered.
19. With respect to Applicant’s arguments regarding the rejection of Claims 1, 3, 5-6 under 35 U.S.C. 103 as being unpatentable over Zhang et al (US 2014/0045033) in view of Zhao et al (CN103035866, based on machine translation submitted in IDS on 08/28/25), it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Zhang et al discloses a ceramic coating for battery separators, comprising one or more ceramic particles distributed in a polymer binder (Abstract, [0022]), the ratio between the polymer binder and the ceramic particle is 1:99 to 99:1 ([0025]), or up to 80%wt, or up to 60%wt of the particles, based on the weight of the coating material, are used ([0060]). Thus, based on the teachings of Zhang et al, it would have been obvious to a one of ordinary skill in the art that the ceramic particles maybe used in major amount, i.e. as high as 80%wt, and thereby the ratio between the ceramic and the polymer binder will be 80:20. The ratio 1:99 to 99:1 includes even the ratio of 50:50, as required by instant claim 1. The weight ratio between the ceramic particles and the polyacrylate binder is overlapping with that as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
3) Though Zhang et al does not explicitly teach said ceramic particles being individually coated, like having core-shell structure, with said polyacrylate coating, and the overall coated particles having size of 5-100 micron, or 7-8 micron, the secondary reference of Zhao et al was applied for said teachings. Thus, Zhao et al discloses a ceramic coating for a ceramic battery separator, having a core-shell structure with core being ceramic particles including alumina or silica having size of 50 nm-10 micron, and an acrylate polymer shell ([0002], [0013]-[0015]), with shell thickness of 1-10 micron ([0015]).
Thus, Zhao et al explicitly teaches that the ceramic coating used in separators can be made in the form of core-shell particles, wherein the ceramic particles are coated with the acrylate coating, wherein such core-shell composites have improved uniformity of the coating and improve the overall performance and stability of the ceramic membrane/separator ([0009]).
4) Given the ceramic coating of Zhang et al in view of Zhao et al comprises ceramic particles with size of 0.05 micron to about 2 micron ([0022] of Zhang et al); the ceramic coating has a thickness of 5.5-9 micron ([0078] of Zhang et al) and the coating/shell thickness in the core-shell particles maybe up to 10 micron ([0016] of Zhao et al); therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the ceramic particles having size of 2 micron, the shell/coating thickness of up to 10 micron, such as 3-7 micron, so to ensure the overall core-shell particle-based ceramic coating has an overall particle size/thickness of 5.5-9 micron, as required by Zhang et al, including the overall core-shell particle size of 7-8 micron as well (as to instant claims 1, 6), since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
20. With respect to Applicant’s arguments regarding unexpected results of instant invention, it is noted that:
1) Instant claims are silent with respect to any properties of the claimed binder/composition, specifically, “enhanced adhesion, increased mechanical strength, reduced electrochemical impedance, improved cycle performance and reliability of the battery”, as argued by Applicant. It is not clear what properties and at what levels are the goal of instant invention, i.e. what are the levels of “improved” and “enhanced” properties are assumed herein.
2) Table 1 of instant specification shows specific examples using the acrylate/AN/acrylamide copolymers with very specific molar ratio of said comonomers. Instant claim 1 does not recite any molar ratio of the comonomers. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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