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 .
Priority
Acknowledgment is made of applicant’s claim for priority in view of Provisional Application 63236245 with an effective filing date of 08/24/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/02/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
The amendment filed on 02/13/2024 has been entered. Claims 1-23 are canceled, Claims 24-45 are newly added and Claims 24-45 are pending.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Reference Character (206) in Figure 2. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Reference Character (206) in Figure 2 is not disclosed in the specification.
Appropriate correction is required.
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 (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 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.
Claims 24, 27 and 33-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hatta et al. (US 20160043370 A1), hereinafter "Hatta".
In regard to Claim 24, Hatta et al. discloses a battery separator comprising: a microporous membrane comprising one or more layers of polyolefin (Hatta, [0047-0048]) and a heat dissipation layer affixed to a surface of the microporous membrane (Hatta, [0042]). Hatta et al. also discloses the heat dissipation layer comprising at least 2% of a high thermal conduction material and configured to reduce thermal propagation within a battery cell (Hatta, [0006, 0009, 0081, 0088]).
In regard to Claim 27, Hatta et al. discloses the battery separator of claim 24. Hatta et al. also discloses wherein the heat dissipation layer comprises a polymer and/or blended polymer (Hatta, [0079]).
In regard to Claim 33-36, Hatta et al. discloses the battery separator of claim 24. Hatta et al. also discloses wherein the microporous membrane comprises one or more polyolefins wherein the polyolefin is polyethylene wherein the microporous membrane is a single layer film or a multilayer film (Hatta, [0047-0048, 0051]) and further comprises a PVDF binder (Hatta, [0325]).
Claims 37 and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hatta et al. (US 20160043370 A1), hereinafter "Hatta".
In regard to Claim 37, Hatta et al. discloses a battery cell comprising: an anode; a cathode; and a separator disposed between the anode and the cathode (Hatta, Example 1-1). Hatta et al. also discloses a battery separator comprising: a microporous membrane comprising one or more layers of polyolefin (Hatta, [0047-0048]) and a heat dissipation layer affixed to a surface of the microporous membrane (Hatta, [0042]). Hatta et al. also discloses the heat dissipation layer comprising at least 2% of a high thermal conduction material and configured to reduce thermal propagation within a battery cell (Hatta, [0006, 0009, 0081, 0088]).
In regard to Claim 40, Hatta et al. discloses the battery separator of claim 37. Hatta et al. also discloses wherein the heat dissipation layer comprises a polymer and/or blended polymer (Hatta, [0079]).
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.
Claims 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Hatta et al. (US 20160043370 A1), hereinafter "Hatta" as applied to claim 24 above, in view of Cho et al. (KR 20130133444 A - Machine Translation Referenced for Citation), hereinafter "Cho". Hatta and Cho et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claims 25-26, Hatta et al. discloses the battery separator of claim 24. While Hatta et al. discloses the use of resin and describes the melting point or glass transition point of the material (Hatta, [0005]) and a preferred list of materials in the heat dissipation layer which is configured to reduce thermal propagation within a battery cell, it is silent as to the materials comprising a phase change material.
Cho et al. discloses a battery separator comprising: a microporous membrane comprising one or more layers of polyolefin and a heat dissipation layer affixed to a surface of the microporous membrane (Cho, Abstract, [72]) wherein the heat dissipation layer comprises a phase change material including wax, an organic material, an inorganic material, or a salt (Cho, [18]), wherein the phase change material is taught to have to benefit of undergoing a phase change at the predetermined temperature so that it is possible to prevent the temperature of the electrochemical device from rising sharply above a specific temperature (Cho, [16-17]) which results in a cell being capable of maintaining optimal operating state by preventing the physical and chemical deformation of the separating film due to high temperature or accumulated heat and eventually suppressing the variation of the resistance of the electrochemical elements (Cho, Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a phase change material to the heat dissipation layer of a separator configured to reduce thermal propagation within a battery cell as taught in Cho et al. to the heat dissipation layer disclosed in Hatta et al. as doing so would be obvious to try which would give the skilled artisan the reasonable expectation of achieving the benefits taught in Cho and as doing so would amount to nothing more than the use of known technique to improve similar devices (methods, or products) in the same way.
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Hatta et al. (US 20160043370 A1), hereinafter "Hatta" as applied to claim 24 above, as evidenced by Guiton et al. (US5320990A), hereinafter "Guiton". Hatta is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claims 28-30, Hatta et al. discloses the battery separator of claim 24. Hatta et al. also discloses wherein the high thermal conduction material is at least one of AIN, Si3N4, or BN (Hatta, [0081]) which are materials described in the current application as being selected for their thermal conductivity range (Original Specification, [0030]), and as evidenced by Guiton et al. the AlN selected in Hatta et al. has a thermal conductivity of at least 200 W/m-K (Guiton, Abstract) which anticipates the claimed ranges.
Claims 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Hatta et al. (US 20160043370 A1), hereinafter "Hatta" as applied to claim 24 above. Hatta is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claim 31, Hatta et al. discloses the battery separator of claim 24. While Hatta et al. discloses wherein the heat dissipation layer is configured to reduce thermal propagation within a battery cell (Hatta, [0006, 0009]), it is silent as to the percentage of thermal propagation reduction. However, in regard to Claim 31 and the following limitations:
“wherein the heat dissipation layer is configured to reduce thermal propagation within a battery cell by at least 50%.”
Hatta et al. discloses a battery separator comprising: a microporous membrane comprising one or more layers of polyolefin (Hatta, [0047-0048]) and a heat dissipation layer affixed to a surface of the microporous membrane (Hatta, [0042]) and that the heat dissipation layer comprises at least 2% of a high thermal conduction material and the stated goal of the layer is to reduce thermal propagation within a battery cell (Hatta, [0006, 0009, 0081, 0088]), which is substantially similar to the current application (Original Specification, Claim 1). While Hatta does not specifically address the limitations in regard to the measured thermal propagation reduction, Hatta teaches a structure, which is substantially similar to those instantly claimed, absent any clear and convincing evidence and/or arguments to the contrary.
The examiner also notes no special methods are apparent in the instant disclosure that would make any properties of the underlying components and structures unique. As a prima facie case of obviousness has been set forth on the record, and because the USPTO does not possess the laboratory facilities to test and compare the prior art to the claimed invention, the burden shifts to applicant to demonstrate otherwise. Therefore, a POSITA at the time of filing would have readily known of and could readily envision the use of a separator that has the same thermal propagation reduction and behavior.
In regard to Claim 32, Hatta et al. discloses the battery separator of claim 24. Hatta et al. also discloses a heat dissipation layer on the separator and that the advantage and design incentive of the cell in Hatta is increased energy density (Hatta, [0002, 0136, 0147-0149]) which shows the skilled artisan is aware of increasing the energy density of the cell and it would be obvious to provide materials and configurations of the separator and heat dissipation layer which were also capable of increasing the energy density of the cell.
Claims 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Hatta et al. (US 20160043370 A1), hereinafter "Hatta" as applied to claim 37 above, in view of Cho et al. (KR 20130133444 A - Machine Translation Referenced for Citation), hereinafter "Cho". Hatta and Cho et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claims 38-39, Hatta et al. discloses the battery separator of claim 37. While Hatta et al. discloses the use of resin and describes the melting point or glass transition point of the material (Hatta, [0005]) and a preferred list of materials in the heat dissipation layer which is configured to reduce thermal propagation within a battery cell, it is silent as to the materials comprising a phase change material.
Cho et al. discloses a battery separator comprising: a microporous membrane comprising one or more layers of polyolefin and a heat dissipation layer affixed to a surface of the microporous membrane (Cho, Abstract, [72]) wherein the heat dissipation layer comprises a phase change material including wax, an organic material, an inorganic material, or a salt (Cho, [18]), wherein the phase change material is taught to have to benefit of undergoing a phase change at the predetermined temperature so that it is possible to prevent the temperature of the electrochemical device from rising sharply above a specific temperature (Cho, [16-17]) which results in a cell being capable of maintaining optimal operating state by preventing the physical and chemical deformation of the separating film due to high temperature or accumulated heat and eventually suppressing the variation of the resistance of the electrochemical elements (Cho, Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a phase change material to the heat dissipation layer of a separator configured to reduce thermal propagation within a battery cell as taught in Cho et al. to the heat dissipation layer disclosed in Hatta et al. as doing so would be obvious to try which would give the skilled artisan the reasonable expectation of achieving the benefits taught in Cho and as doing so would amount to nothing more than the use of known technique to improve similar devices (methods, or products) in the same way.
Claims 41-43 are rejected under 35 U.S.C. 103 as being unpatentable over Hatta et al. (US 20160043370 A1), hereinafter "Hatta" as applied to claim 37 above, as evidenced by Guiton et al. (US5320990A), hereinafter "Guiton". Hatta is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claims 41-43, Hatta et al. discloses the battery separator of claim 37. Hatta et al. also discloses wherein the high thermal conduction material is at least one of AIN, Si3N4, or BN (Hatta, [0081]) which are materials described in the current application as being selected for their thermal conductivity range (Original Specification, [0030]), and as evidenced by Guiton et al. the AlN selected in Hatta et al. has a thermal conductivity of at least 200 W/m-K (Guiton, Abstract) which anticipates the claimed ranges.
Claims 44-45 are rejected under 35 U.S.C. 103 as being unpatentable over Hatta et al. (US 20160043370 A1), hereinafter "Hatta" as applied to claim 37 above. Hatta is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claim 44, Hatta et al. discloses the battery separator of claim 37. While Hatta et al. discloses wherein the heat dissipation layer is configured to reduce thermal propagation within a battery cell (Hatta, [0006, 0009]), it is silent as to the percentage of thermal propagation reduction. However, in regard to Claim 44 and the following limitations:
“wherein the heat dissipation layer is configured to reduce thermal propagation within a battery cell by at least 50%.”
Hatta et al. discloses a battery separator comprising: a microporous membrane comprising one or more layers of polyolefin (Hatta, [0047-0048]) and a heat dissipation layer affixed to a surface of the microporous membrane (Hatta, [0042]) and that the heat dissipation layer comprises at least 2% of a high thermal conduction material and the stated goal of the layer is to reduce thermal propagation within a battery cell (Hatta, [0006, 0009, 0081, 0088]), which is substantially similar to the current application (Original Specification, Claim 1). While Hatta does not specifically address the limitations in regard to the measured thermal propagation reduction, Hatta teaches a structure, which is substantially similar to those instantly claimed, absent any clear and convincing evidence and/or arguments to the contrary.
The examiner also notes no special methods are apparent in the instant disclosure that would make any properties of the underlying components and structures unique. As a prima facie case of obviousness has been set forth on the record, and because the USPTO does not possess the laboratory facilities to test and compare the prior art to the claimed invention, the burden shifts to applicant to demonstrate otherwise. Therefore, a POSITA at the time of filing would have readily known of and could readily envision the use of a separator that has the same thermal propagation reduction and behavior.
In regard to Claim 45, Hatta et al. discloses the battery separator of claim 37. Hatta et al. also discloses a heat dissipation layer on the separator and that the advantage and design incentive of the cell in Hatta is increased energy density (Hatta, [0002, 0136, 0147-0149]) which shows the skilled artisan is aware of increasing the energy density of the cell and it would be obvious to provide materials and configurations of the separator and heat dissipation layer which were also capable of increasing the energy density of the cell.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 24-45 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27-53 of copending Application No. 18/683798 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the terms that differentiate claim 27 of the reference application and claim 24 of the current application are “heat dissipation” and “heat absorption” wherein claim 39 of the reference application requires the heat absorption layer to function equivalently to a heat dissipation layer of the current invention and “high heat capacity material” and “high thermal conduction material”.
Claim 41 of the reference application is equivalent to Claim 37 of the current application besides the same terminology which is an obvious variation based on claim 51 of the reference application.
The dependent claims are identical except for the requirement of heat capacity instead of thermal conductivity however these materials may reasonably overlap and would amount to nothing more than obvious variations of the same invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at (571) 270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.M.O./Examiner, Art Unit 1725
/JONATHAN CREPEAU/Primary Examiner, Art Unit 1725
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