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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 19-23 and 33-36, drawn to binder.
Group II, claim 24, drawn to resin.
Group III, claims 25-26, drawn to non-aqueous secondary battery.
Group IV, claim 27, drawn to method for preparing a binder.
Group V, claims 28-32 and 37-38, drawn to electricity storage device.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I, II, III, IV, and V lack unity of invention because even though the inventions of these groups require the technical feature of separator for a non-aqueous secondary battery, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of U.S. Pre-Grant Publication No. 2013/0252066, hereinafter Yeou.
Yeou teaches a separator for a rechargeable lithium battery. Additionally, Yeou teaches that the separator includes a porous substrate and a coating layer (Abstract).
During a telephone conversation with 703-740-8322 on June 26, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 19-23 and 33-36. Affirmation of this election must be made by applicant in replying to this Office action. Claims 24-32 and 37-38 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Status
Claims 1-18 have been cancelled. Claims 19-23 and 33-36 are rejected and claims 24-32 and 37-38 have been withdrawn from consideration.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on February 14, 2024 and December 30, 2025 has been considered by the examiner.
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.
Claims 19-23, and 33-36 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2013/0252066, hereinafter Yeou.
Regarding claim 19, Yeou teaches a separator for a rechargeable lithium battery that includes a porous substrate and a coating layer (reads on binder). The coating layer (binder) consists of an inorganic compound-organic/inorganic binder (reads on instant’s condensation product (B)) and a binder polymer (reads on instant’s polymer (A)) (Abstract). In example 1, the binder polymer consists of three monomers 2-ethylhexylacrylate (instant’s a3), styrene, acrylic acid (instant’s a1), sodium dobenzenesulfonate (instant’s a1), and distilled water[0113]-[0114]. The mixture was prepared by polymer emulsion, agitated for 10 minutes, and then the organic/inorganic binder (B) y-glycidoxy propyltrimethoxysilane was added thereto [0119]. The binder polymer may have a glass transition temperature of about -40C to 20C [0049]. This demonstrates an overlap in ranges taught. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). “Prepared by polymerization of a monomer mixture” is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product of the prior art was made by a different process (MPEP 2113). In this case, given the broadest reasonable interpretation, the final product resulting from the claimed product by process limitation is “the polymer (A)”. This final product as claimed is not necessarily limited to all monomer groups (a1-a3) being present in the final product. The final product of polymerization in the presence of the three monomers (a1-a3) may be a polymer with at least one of monomer (a1) having an acidic functional group, monomer (a2) having an amide group, monomer (a3) being an alkyl (meth)acrylate, or a combination thereof. Art teaching this final formula reads on the limitation regardless of the process.
However, in an effort to expedite prosecution, should claim 1 be taken to require a2, Yeou’s example 1 fails to teach an amide monomer (instant’s a2) and additionally, in the specific example above, y-glycidoxy propyltrimethoxysilane (B) fails to teach an R1 of claimed formula 1 due to the ether group and epoxy group in the chain.
Yeou teaches that the binder polymer (A) may be a polymerizable monomer having a cross-linking functional group that may include methyl(meth)acrylate (instant’s a3), butyl(meth)acrylate (instant’s a3), ethyl(meth)acrylate (instant’s a3), (meth)acryl amide (instant’s a2), acryl amide methyl propane sulfonic acid (instant’s a1 and a2), ethylenic unsaturated carboxylic acid (instant’s a1), and styrene sulfonic acid (instant’s a1) [0043]. “Condensation product” (with respect to B) is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product of the prior art was made by a different process (MPEP 2113). In this case, the final product resulting from the claimed product by process limitation is “general formula (1)”. However, in addition the specific silane (B) above Yeou teaches that B may generically be a vinylalkylalkoxysilane [0017] (reads on instant’s general formula 1).
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to have substituted an amide polymerizable monomers (A) equivalent taught in [0043] and the organic/inorganic binder (B) equivalent vinylalkylalkoxysilane [0017] in Yeou’s example 1 for the purpose of crosslinking [0043] and coating the binder polymer [0012] (2144.06). Additionally, it would have been obvious to combine embodiments selecting from the finite number of options in each of the binder monomers (claimed polymer A) and organic/inorganic binder (claimed condensation product B) lists described with an expectation of each material in each list performing its function and described as art recognized equivalents for the purpose barring evidence to the contrary (MPEP 2143-2144).
Regarding claim 20, Yeou teaches the binder for a non-aqueous secondar battery separator according to claim 19, wherein the acidic functional group of the monomer (a1) having an acidic functional group is any of a carboxyl group, sulfonate group, or a phosphate group (‘The binder polymer may be a polyerizable monomer having a cross-linking functional group that may include methyl(meth)acrylate, butyl(meth)acrylate, ethyl(meth)acrylate, acryl amide methyl propane sulfonic acid, ethylenic unsaturated carboxylic acid, and styrene sulfonic acid [0043]).
Regarding claims 21 and 33, Yeou teaches the binder for a non-aqueous secondary battery separator according to claim 19 and 20, wherein the monomer mixture contains no monomer (a4) having a crosslinkable functional group (‘The binder polymer may be a polyerizable monomer having a cross-linking functional group that may include methyl(meth)acrylate, butyl(meth)acrylate, ethyl(meth)acrylate, acryl amide methyl propane sulfonic acid, ethylenic unsaturated carboxylic acid, and styrene sulfonic acid [0043]). As mentioned above, it would have been obvious to combine the finite number of options of binder monomers in the binder polymer (claimed polymer A) to results in a polymer with three or less crosslinkable monomers.
“Prepared by polymerization of a monomer mixture” is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product of the prior art was made by a different process (MPEP 2113). In this case, given the broadest reasonable interpretation, the final product resulting from the claimed product by process limitation is “the polymer (A)”. This final product as claimed is not necessarily limited to all monomer groups (a1-a3) being present in the final product. The final product of polymerization in the presence of the three monomers (a1-a3) may be a polymer with at least one of monomer (a1) having an acidic functional group, monomer (a2) having an amide group, monomer (a3) being an alkyl (meth)acrylate, or a combination thereof. This does not include a fourth polymer (a4) that has a crosslinkable functional group. Art teaching this final formula reads on the limitation regardless of the process.
Regarding claim 22, Yeou teaches the binder for a non-aqueous secondary battery separator according to claim 19, wherein the binder is in a particulate form and has an average particle size of 50 to 500nm (‘the inorganic particle (claimed B) may have an average diameter ranging from about 10nm to about 100nm’ [0035] and ‘the binder polymer emulsion (claimed A) may have a polymer diameter ranging from about 50nm to about 500nm’ [0051]). This demonstrates an overlap in ranges taught. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a Prima facie case of obviousness exists (MPEP 2144.05).
Regarding claim 23 and 36, Yeou teaches the binder for a non-aqueous secondary battery separator according to claim 19 and 21, wherein the polymer (A) is obtained by emulsion polymerization of the monomer mixture in an aqueous medium in which the silane compound (b) is dissolved (‘the resulting colloidal silica as an inorganic compound was added to the polymer emulsion (a) according to Preparation Example 1 as a binder polymer. The mixture was agitated for 10 minutes and the organic/inorganic binder was added thereto’ [0119]).
“Obtained by emulsion polymerization of the monomer mixture in an aqueous medium in which the silane compound (b) is dissolved” is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product of the prior art was made by a different process (MPEP 2113). In this case, the final product resulting from the claimed product by process limitation is “the polymer (A)”. Art teaching this final formula reads on the limitation regardless of the process.
Regarding claim 34, Yeou teaches the binder for a non-aqueous secondary battery separator according to claim 20, wherein the binder is in a particulate form and has an average particle size of 50 to 500nm (‘the inorganic particle may have an average diameter ranging from about 10nm to about 100nm’ [0035] and ‘the binder polymer emulsion may have a polymer diameter ranging from about 50nm to about 500nm’ [0051]). This demonstrates an overlap in ranges taught. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a Prima facie case of obviousness exists (MPEP 2144.05).
Regarding claim 35, Yeou teaches the binder for a non-aqueous secondary battery separator according to claim 20, wherein the polymer (A) is obtained by emulsion polymerization of the monomer mixture in an aqueous medium in which the silane compound (b) is dissolved (‘the resulting colloidal silica as an inorganic compound was added to the polymer emulsion (a) according to Preparation Example 1 as a binder polymer. The mixture was agitated for 10 minutes and the organic/inorganic binder was added thereto’ [0119]).
“Obtained by emulsion polymerization of the monomer mixture in an aqueous medium in which the silane compound (b) is dissolved” is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product of the prior art was made by a different process (MPEP 2113). In this case, the final product resulting from the claimed product by process limitation is “the polymer (A)”. Art teaching this final formula reads on the limitation regardless of the process.
Claims 21, 33, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2013/0252066, hereinafter Yeou as applied to claims 19 and 20 above, and further in view of U.S. Pre-Grant Publication No. 2020/0243861, hereinafter Yamamoto.
Regarding claims 21 and 33, Yeou teaches a separator for a rechargeable lithium battery that includes a porous substrate and a coating layer (reads on binder). The coating layer consists of an inorganic compound-organic/inorganic binder (reads on instant’s condensation product (B)) and a binder polymer (reads on instant’s polymer (A)) (Abstract). The binder polymer may be a polyerizable monomer having a cross-linking functional group that may include methyl(meth)acrylate, butyl(meth)acrylate, ethyl(meth)acrylate, (meth)acryl amide, acryl amide methyl propane sulfonic acid, ethylenic unsaturated carboxylic acid, styrene sulfonic acid, and conjugated diene monomer [0043] (reads on instant’s a1, a2, and a3). The organic/inorganic binder may also be vinylalkylalkoxysilane [0017] (reads on instant’s general formula 1).
However, Yeou fails to teach that the monomer mixture contains no monomer (a4) having a crosslinkable functional group.
Yamamoto teaches a binder composition for a non-aqueous secondary battery with which it is possible to form a functional layer that can provide a battery component such as an electrode or a separator with a balance of excellent handleability and process adhesiveness (Abstract). The binder composition contains a block region composed of an aromatic vinyl monomer unit and a diblock content of 0% mass to 60% mass. Diblock structures in the block polymer have a higher tendency to by tacky than longer chain structures (for example, triblock structures) [0047].
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to have used the binder polymer of Yeou with three or less monomers in order to increase tackiness, leading to a balance of excellent handleability and process adhesiveness, as taught by Yamamoto.
Regarding claim 36, Yeou and Yamamoto, the binder for a non-aqueous secondary battery separator according to claim 21. Additionally, Yeou teaches that the polymer (A) is obtained by emulsion polymerization of the monomer mixture in an aqueous medium in which the silane compound (b) is dissolved (‘the resulting colloidal silica as an inorganic compound was added to the polymer emulsion (a) according to Preparation Example 1 as a binder polymer. The mixture was agitated for 10 minutes and the organic/inorganic binder was added thereto’ [0119]).
“Obtained by emulsion polymerization of the monomer mixture in an aqueous medium in which the silane compound (b) is dissolved” is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 product of the prior art was made by a different process (MPEP 2113). In this case, the final product resulting from the claimed product by process limitation is “the polymer (A)”. Art teaching this final formula reads on the limitation regardless of the process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mia K Holbrook whose telephone number is (571)272-9253. The examiner can normally be reached Monday - Friday 7:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at (571) 270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.K.H./Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
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