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 § 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.
Claim(s) 1-8 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamada et al. (WO 2019/130994, see English language equivalent EP 3734698) in view of Sakurai et al. (US 2019/0044118).
Regarding claims 1 and 10-11, Hamada discloses a separator for a non-aqueous secondary battery, the separator 10A-C containing: a porous substrate 20; a heat resistant porous layer 30 that is provided on one side or on both sides of the porous substrate, and that contains a porous coating film; and an adhesive layer 50 that is provided on one side or on both sides of a layered body 40 made up of the porous substrate and heat-resistant porous layer(s) (abstract, Figs 5A-5D).
The heat resistant porous layer 30 containing the porous coating film including at least one selected from the group consisting of a wholly aromatic polyamide, a polyamide imide, and a polyimide [aromatic type resin] (abstract, [0024], [0066], [0088]). The heat resistant porous layer further contains inorganic particles (abstract, [0024], [0034], [0075]-[0076], [0094]-[0095]).
The adhesive layer 50 preferably includes an acrylic type resin particles 52 [acrylic type resin] from a viewpoint of excellent oxidation resistance ([0116], [0121]).
With regards to claims 10-11, Hamada further teaches the separator is a in a non-aqueous battery that obtains electromotive force by lithium doping and dedoping, the battery containing a positive electrode, a negative electrode, and the separator being disposed between the positive electrode and negative electrode ([0009], [0180]). The separator having an excellent adhesiveness to an electrode ([0010], [0032], [0039], [0115], [0191]). Because the adhesive resin particles adhere to the heat resistant porous layer and the electrode ([0029]), it is considered that in a case in which the separator is peeled off from an electrode, the adhesive resin particles adhere to both the heat resistant porous layer and the electrode.
However, while Hamada discloses the adhesive layer comprises acrylic type resin particles ([0116]), Hamada does not explicitly disclose wherein the adhesive resin particles having phenyl group-containing acrylic type resin.
Sakurai discloses a separator for a non-aqueous secondary battery comprising a composite membrane containing: a porous substrate, a heat-resistant adhesive porous layer containing an acrylic type resin (abstract). The acrylic type resin may be a copolymer of the acrylic type monomer with other monomer, including a styrene type monomer [phenyl group] ([0070]). Examples of the styrene type monomer include styrene, meta-chlorostyrene, para-chlorostyrene, para-fluorostyrene, para-methoxystyrene, meta-tertiary-butoxystyrene, para-tertiary-butoxystyrene, para-vinylbenzoic acid, and para-methyl-α-methylstyrene ([0071]). Styrene, para-methoxy-styrene and para-methyl-α-methylstyrene are preferable as the styrene type monomer, and in particular, an acrylic type resin containing a styrene unit is most preferable due to a strong effect of suppressing dissolution in an electrolytic solution ([0072]). The content of styrene monomer contained in the acrylic type resin is preferably from 30-90% by mass ([0072]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the styrene type monomer [phenyl group] in the acrylic type resin as taught by Sakurai with the acrylic type resin in the adhesive layer of Hamada for the purpose of having a strong effect of suppressing dissolution in an electrolytic solution.
Regarding claim 2, modified Hamada discloses all of the claim limitations as set forth above. Sakurai discloses that the acrylic type resin is a copolymer containing an acrylic type monomer and a styrene type monomer ([0013], [0070]).
Regarding claim 3, modified Hamada discloses all of the claim limitations as set forth above. Hamada teaches that the weight of the adhesive layer per surface is preferably 0.2-2.0 g/m2, from a viewpoint of adhesive to an electrode and from a viewpoint of ion permeability, handleability of the separator, or energy density of a battery ([0143]). It is noted that the coating amount [of 0.2-2.0 g/m2] is determined by subtracting the basis weight before formation of a layer from the basis weight after formation of the layer ([0199]-[0200]), which is the same method as in the instant application (see published paragraphs [0289], [0291]).
Regarding claim 4, modified Hamada discloses all of the claim limitations as set forth above. Hamada teaches that the peel strength [adhesive strength] between the porous substrate and the heat resistant porous layer is from 5 N/m to 75 N/m (abstract, [0037]). Converting these values to N/15mm (value * (1 m/1000 mm) * 15 mm), means that the peel strength [adhesive strength] is between 0.075-1.125 N/15mm. The peel strength further relates to the peel strength between the adhesive layer and the heat resistant porous layer ([0124], [0204]). Therefore, Hamada discloses a range that is within the claimed range of 0.1-2.0 N/15mm. Hamada further teaches the separator is heat pressed either with or without electrolytic solution ([0191]-[0192]).
Regarding claim 5, modified Hamada discloses all of the claim limitations as set forth above. However, while Sakurai teaches the acrylic type resin is a copolymer containing an acrylic type monomer and a styrene type monomer ([0013], [0070]), modified Hamada does not explicitly disclose wherein the adhesive layer has a peak area S1 representing phenyl group of from 0.01 to 3.0 and a peak area S2 representing carbonyl group of 4.0 or less, measured by Fourier Transform Infrared Spectroscopy.
However, Sakurai teaches that the styrene type monomer contained in the acrylic type resin is preferably 30-90% by mass, and more preferably 50%-83% by mass ([0072]), and provides examples of using acrylic monomer to styrene monomer ratios of 60:40, 59:39, and 80:20 (see Table 1, Examples 1-6).
As seen in instant application at Examples 1-3, ratios of acrylic monomer to styrene monomer used includes 62:38, 89:11, and 18:82 (see published paragraphs [0326]-[0328]). The corresponding values of S1 are 0.15, 0.29, and 0.04, and the corresponding values of S2 are 0.69, 0.27, and 1.41 (see instant Table 1). That is, ratios of acrylic monomer to styrene monomer in the acrylic type resins within the range of 18:82 to 89:11 all produce values of S1 and S2 within the claimed range. Because Sakurai discloses a copolymer with acrylic and styrene within the range of 18:82 to 89:11 (and specifically provides examples of 60:40, 59:39, and 80:20), the copolymer of Sakurai having acrylic and styrene monomers will have S1 and S2 values within the claimed range.
Regarding claim 6, modified Hamada discloses all of the claim limitations as set forth above. Hamada further discloses that the heat resistant porous layer has a porous coating film containing at least one selected from the group consisting of a wholly aromatic polyamide, a polyamide imide, and a polyimide ([0024], [0066], [0088]).
Regarding claim 7, modified Hamada discloses all of the claim limitations as set forth above. Hamada further teaches that the inorganic particles can include metal hydroxides or metal sulfates ([0076], [0085]).
Regarding claim 8, modified Hamada discloses all of the claim limitations as set forth above. Hamada discloses a porous substrate 20, and the heat resistant porous layer 30 is provided on one or both sides of the porous substrate 20 (abstract, Figs 5A-5D).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamada et al. (WO 2019/130994, see English language equivalent EP 3734698) in view of Sakurai et al. (US 2019/0044118), as applied to claim 1 above, and further in view of Yoshitomi (JP 2012/119224, see Applicant supplied machine translation).
Regarding claim 9, modified Hamada discloses all of the claim limitations as set forth above. However, Hamada does not explicitly disclose wherein an arithmetic mean height Sa of a surface of the heat-resistant porous layer on an adhesive side is 0.7 µm or less.
Yoshitomi discloses a separator for a nonaqueous electrolyte secondary battery comprising a porous base material [porous substrate] and a heat-resistant porous layer disposed on one or both sides of the porous base material and containing a heat-resistant resin (abstract). The heat-resistant resin can be an aromatic polyamide or polyimide ([0041]), with an inorganic filler ([0043]-[0044]). On the surface of the heat-resistant porous layer, the center line average roughness (Ra) [average mean height Sa] is within the range 0.1 µm ≤ Ra ≤ 0.5 µm (abstract). If Ra is less than 0.1 µm, the smoothness is too high which causes slippage with the electrode active material [the outer side], and on the other hand if Ra is more than 0.5 µm, unevenness will occur in the spacing between electrode active material, and good cycle characteristics may not be obtained ([0015]). Yoshitomi further teaches this range suppresses minute surface defects and provides appropriate adhesion ([0010], [0013]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an average roughness of the heat-resistant porous layer within the range of 0.1-0.5 µm as taught by Yoshitomi with the heat resistant porous layer of Hamada for the purpose of suppressing minute surface defects, providing appropriate adhesion, and having a battery with good cycle characteristics.
In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize, by routine experimentation, the average roughness of the heat-resistant porous layer (including in the range of 0.1-0.5 µm) as taught by Yoshitomi with the heat resistant porous layer of Hamada for to obtain a balance between slippage, adhesion, and unevenness.
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.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 of copending Application No. 18/859645 (reference application) {published as US 2025/0279541}. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims disclose a separator comprising a heat-resistant porous layer that contains an aromatic type resin and inorganic particles, an adhesive layer that is provided on the heat-resistant porous layer and contains adhesive resin particles having a phenyl group-containing acrylic type resin (claim 1), and materials and properties of the resins (claims 2-5), materials of inorganic particles (claim 6), and a porous substrate and battery (claims 7-8).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 of copending Application No. 18/859258 (reference application) {published as US 2025/0329876}. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims disclose a separator comprising a heat-resistant porous layer that contains an aromatic type resin and inorganic particles, an adhesive layer that is provided on the heat-resistant porous layer and contains adhesive resin particles having a phenyl group-containing acrylic type resin (claim 1), and materials and properties of the resins (claims 2-5), materials and properties of inorganic particles (claims 1 and 6), and a porous substrate and battery (claims 7-8).
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 JACOB BUCHANAN whose telephone number is (571)270-1186. The examiner can normally be reached M-F 8:00-5:00 PM (ET).
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/JACOB BUCHANAN/ Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/ Supervisory Patent Examiner, Art Unit 1725
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