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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-7 and 9-11 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Toyoda et al. (US 2016/0344007).
Toyoda et al. disclose a composition for a porous membrane in a secondary battery. The composition contains non-conductive particles, a water-soluble polymer and water wherein the particle have a specific surface area of 25 m2/g or less measured by the BET method (see para [0020], [0032], [0145]).
The reference does not explicitly disclose the claimed parameter P of 35 or more. However, this value is expected to be inherent in Toyoda’s composition. The reference teaches that by adjusting the specific surface area of non-conductive particles, it is possible to increase the filling rate of a porous membrane with small-sized particles and to improve heat shrinkage resistance and reduce the amount of moisture absorbed by the porous membrane to a low value. The reference also discloses that the amount of moisture in the porous membrane is less than 200 ppm and the heat shrinkage rate is less than 1%.
A composition with the disclosed amount of moisture and heat shrinkage would inherently meet the claimed P>=35 value. The present disclosure teaches that a P value of 35 or more ensures excellent heat shrinkage resistance and a reduction of residual moisture (see para [0011] and [0064] of the present specification). More specifically, the present disclosure teaches a water content of less than 800 ppm and a heat shrinkage rate of less than 20% associated with a P value of 35 or more (see para [0088]-[0089], Examples 1-7 and Table 1 of the present specification).
Thus, a composition with a moisture amount of less than 200 ppm and a heat shrinkage rate of less than 1% as taught by Toyoda et al. would have been expected to have a P value of 35 or more in the absence of evidence to the contrary. It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC §102 or on prima facie obviousness under 35 USC §103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
With regard to claim 2, Toyoda discloses a water-soluble polymer including a crosslinkable monomer unit in an amount of 0.1-5wt% (see para [0049]-[0052].
With regard to claim 3, the viscosity of Toyoda’s composition is 10-200 mPaˑs (see para [0113).
With regard to claim 4, the average molecular weight of the water-soluble polymer is 2.0 x 105 to 1.00 x 106 (see para [0059]).
With regard to claim 5, the volume average particle diameter of the non-conductive particle is 0.1-1 µm (see para [0033], for example).
With regard to claim 6, the water soluble polymer taught by Toyoda contains a meth acrylamide monomer in an amount of 80-98% by weight (see para [0036]-[0039]].
With regard to claim 7, Toyoda discloses that the water-soluble polymer contains an acid group- containing monomer unit, with the amount thereof being 1-20% by weight (para [0040]-[0048]).
With regard to claims 9-11, Toyoda discloses use of the aforementioned composition as a porous membrane separator for a secondary battery (see para [0017] and abstract).
Claim(s) 1, 5 and 9-11 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Hagihara et al. (US 2022/0328928).
Hagihara et al. disclose a composition for a porous separator membrane in a secondary battery. The composition contains non-conductive particles (Ba sulfate), a water-soluble polymer and water (see para [0085],[0095]-[0096]). The reference also teaches that the Ba sulfate particles have a specific surface area of 1.0-18.0 m2/g (see para [0079]).
The reference does not explicitly disclose the claimed parameter P of 35 or more. However, this value is expected to be inherent in Hagihara’s composition. The reference teaches that by adjusting the specific surface area of Ba sulfate particles, it is possible to suppress a decrease in battery capacity density and an increase in moisture content of a battery separator. The reference also teaches that the porous layer has a shrinkage rate of 8.0% or less when allowed to stand in an atmosphere of 130 degree C for 1 hour, and a moisture content of 500 ppm or less.
A composition with the disclosed amount of moisture and heat shrinkage would be expected to inherently meet the claimed P>=35 value. The present disclosure teaches that a P value of 35 or more ensures excellent heat shrinkage resistance and a reduction of residual moisture (see para [0011] and [0064] of the present specification). More specifically, the present disclosure teaches a water content of less than 800 ppm and a heat shrinkage rate of less than 20% associated with a P value of 35 or more (see para [0088]-[0089], Examples 1-7 and Table 1 of the present specification).
Thus, a composition with a moisture amount of less than 500 ppm and a heat shrinkage rate of less than 8% as taught by Hagihara et al. would have been expected to have a P value of 35 or more in the absence of evidence to the contrary. It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC §102 or on prima facie obviousness under 35 USC §103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
With regard to claim 5, see Example 13 in Table 1.
With regard to claims 9-11, see para [0205] and claims.
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toyoda et al. (US 2016/0344007).
Toyoda et al. discloses a composition, as detailed above, wherein the composition preferably contains a dispersant (i.e., a type of surfactant). The reference teaches an amount of dispersant relative to 100 parts by weight of the non-conductive particles is preferably 0.1-5 pbw (see para [0111]). The claimed range of 0.1-1 pbw per 100 parts by mass of the non-conductive particles is obvious in view of the overlapping portions of the range.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toyoda et al. (US 2016/0344007) in view of EP 3203545.
Toyoda et al. disclose compositions for secondary battery separators, as detailed above under sections 102 and 103, but fail to disclose the claimed P value.
EP 3203545 discloses a composition for a porous membrane in a lithium ion secondary battery having a non-conductive particles and a binding material. The reference teaches that adjusting the volume average particle diameter of the non-conductive particles enables an appropriate packing rate and thereby ensures heat contraction resistance of the porous membrane (see para [0029]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to determine the optimal packing rate for the non-conductive particles taught by Toyoda et al. in order to achieve optimal heat contraction resistance of the porous layers formed therein as suggested by EP’545.
Claim(s) 1, 5, and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagihara et al. (US 2022/0328928) in view of EP 3203545.
Hagihara et al. disclose a composition for secondary battery separators, as detailed in section 102 above, but fail to disclose the claimed P value.
EP 3203545 discloses a composition for a porous membrane in a lithium ion secondary battery having a non-conductive particles and a binding material. The reference teaches that adjusting the volume average particle diameter of the non-conductive particles enables an appropriate packing rate and thereby ensures heat contraction resistance of the porous membrane (see para [0029]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to determine the optimal packing rate for the non-conductive particles taught by Hagihara et al. in order to achieve optimal heat contraction resistance of the porous layers formed therein as suggested by EP’545.
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/Holly Rickman/ Primary Examiner, Art Unit 1785
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