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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed March 7, 2024, June 11, 2025, and November 13, 2025 have been placed in the application file and the information referred to therein has been considered as to the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 8, 11, and 13 recite “type” regarding different resins (multiple time in each of the aforementioned claims. It is unclear what “type” is intended to convey. Thus, the claim language is unclear and indefinite. See MPEP 2173.05(b)(III)(E). Since claims 2-12 are dependent upon claim 1, they are rejected for the same reason.
Claim 11 is recites limitations regarding the mass ratio in combination “and” (combination), while independent claim 1 sets forth that at least one exists (alternative, or combination). It is unclear if the combination or the alternative is required in claim 11, thus the clam language is unclear and indefinite). For prosecution, the following claim interpretation is set forth – only one needs to be met.
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.
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, 3, and 5-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/130994 (Hamada et al.) (note: US 2021/0057703 is relied upon as the English translation, as both relate to the same PCT) in view of US 2018/0254464 (Sakurai et al.).
As to claim 1, Hamada et al. teach a separator for a non-aqueous secondary battery (title), the separator comprising:
a porous substrate [20]; and an adhesive layer [50] that is provided on one side or on both sides of the porous substrate [20], and that contains at least one selected from the group consisting of: (i) adhesive resin particles containing an acrylic type resin and a polyvinylidene fluoride type resin, and (ii) a mixture of adhesive resin particles containing an acrylic type resin and adhesive resin particles containing a polyvinylidene fluoride type resin (figs. 5A-5D; examples A17-A19 (table 1, para 0308-0310, 0319-0321); para 0180-0186). Hamada et al. recognize the use of a mixture/combination including an acrylic type resin and styrene-butadiene copolymer (which has a phenyl-containing group) (para 0172).
Hamada et al. do not specifically teach a phenyl group-containing acrylic type resin.
However, Sakurai et al., in the same field of endeavor (separator with adhesive layer thereon), teach of an acrylic type monomer, which has a styrene monomer therewith (para 0076-007). The motivation for having a styrene-containing monomer (phenyl-group having) with an acrylic acid monomer is to suppress dissolution and swelling in an electrolytic solution (para 0077). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to have a styrene-containing monomer (phenyl-group having) (as taught by Sakurai et al.) with an acrylic acid monomer (that of Hamada et al.) (thus forming a phenyl group-containing acrylic type resin) is to suppress dissolution and swelling in an electrolytic solution
As to claim 3, Hamada et al. teach the porous substrate [20] includes a heat-resistant porous layer [30] that contains a binder resin and inorganic particles, and the adhesive layer [50] is provided on the heat-resistant porous layer (figs. 5A-5D; examples A17-A19 (table 1, para 0308-0310, 0319-0321).
As to claim 5, Hamada et al. teach an adhesive strength between the adhesive layer and the heat-resistant porous layer, is from 0.01 N/15mm to 2.0 N/15mm (para 0289-0291, 0294, 0302; examples A17-A19 (table 2; 0308-0310, 0319-0321)) (i.e. 27/ N/m is 0.405 N/15 mm).
Note: Although heat-pressing and electrolyte are recognized above, it is noted that the measurements as made are not clearly set with respect to those states. However, these tests are merely characteristics of the separator, wherein the results would be expected to be similar under both conditions (heat press and electrolyte and without). If any differences of the obtained characteristics are shown, they would be small, such that obviousness is still applicable. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 6, Hamada et al. teach the binder resin contains at least one selected from the group consisting of a wholly aromatic polyamide, a polyamideimide and a polyimide (para 0227).
As to claim 7, Hamada et al. teach the inorganic particles contain at least one selected from the group consisting of a metal hydroxide and a metal sulfate (para 0144-0145, 0308).
As to claim 8, the combination renders obvious that the adhesive resin particles containing a phenyl group-containing acrylic type resin are at least one selected from the group consisting of: (iii) adhesive resin particles of a copolymer containing an acrylic type monomer unit and a styrene type monomer unit, and (iv) adhesive resin particles of a mixture containing an acrylic type resin and a styrene type resin (as a combination of styrene and acrylic type has been rendered obvious the rejection to claim 1; see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake).
As to claim 9, Hamada et al. teach a total adhesion amount of the adhesive resin particles and the mixture of the adhesive resin particles to the porous substrate is from 0.1 g/m2 to 5.0 g/m2 (0.2-2 g/m2) (para 0197).
As to claim 10, Hamada et al. teach 50:50 to 90:10 regarding the polyvinylidene fluoride type resin : acrylic type resin (para 0180-0186). Additionally, the combination of styrene and acrylic type has been rendered obvious the rejection to claim 1; see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake.
Although the adhesive layer has a peak area S1 representing phenyl group of from 0.01 to 3.0, a peak area S2 representing carbonyl group of 4.0 or less, and a peak area S3 representing C-F bonds, measured by Fourier Transform Infrared Spectroscopy, is not particularly set forth, such a limitation would be obvious.
As set forth above, an amount of polyinylidene fluoride resin and acrylic acid resin is set forth giving a CF peak and a carbonyl peak in a prescribed amount. Additionally, regarding the combination Sakurai et al. renders obvious adding a phenyl group (via styrene monomer) for electrolyte dissolution and swelling suppression purposes (par 0077). Accordingly, at the very least, the amount of the materials as set forth above (and thus their presence, regardless of what way they are measured and including Fourier Transform Infrared Spectroscopy) is discovery of routine/optimal amounts (polyvinylidene fluoride and acrylic resin for oxidation resistance, and phenyl for swelling electrolyte dissolution purposes). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 11, Hamada et al. teach a mass ratio between the acrylic type resin and the polyvinylidene fluoride type resin, which are contained in the adhesive resin particles, is from 5:95 to 95:5, and
wherein a mass ratio between the phenyl group-containing acrylic type resin and the polyvinylidene fluoride type resin, which are contained in the mixture of the adhesive resin particles, is from 5:95 to 95:5 (50:50 to 90:10 regarding the polyvinylidene fluoride type resin :acrylic type resin (para 0180-0186)).
(Note: The acrylic type resin being a phenyl group- containing acrylic type resin has been set forth in the rejection to claim 1, incorporated herein but not reiterated herein for brevity’s sake.)
As to claim 12, Hamada et al. teach a non-aqueous secondary battery that obtains electromotive force by lithium doping and dedoping (para 0251), the non-aqueous secondary battery comprising:
a positive electrode (para 0254-0258);
a negative electrode (para 0254, 0259); and
the separator for a non-aqueous secondary battery according to any one of claim 1 (the separator of claim 1 set forth in the rejection to claim 1, incorporated herein but not reiterated herein for brevity’s sake) the separator being disposed between the positive electrode and the negative electrode (para 0263).
As to claim 13, Hamada et al. teach a non-aqueous secondary battery (para 0251), comprising:
a positive electrode (para 0254-0258);
a negative electrode (para 0254, 0259); and
a separator disposed between the positive electrode and the negative electrode (para 0263), wherein the separator comprises:
a porous substrate [20]; and an adhesive layer [50] that is provided on one side or on both sides of the porous substrate [20], and that contains at least one selected from the group consisting of: (i) adhesive resin particles containing an acrylic type resin and a polyvinylidene fluoride type resin, and (ii) a mixture of adhesive resin particles containing an acrylic type resin and adhesive resin particles containing a polyvinylidene fluoride type resin (figs. 5A-5D; examples A17-A19 (table 1, para 0308-0310, 0319-0321); para 0180-0186). Hamada et al. recognize the use of a mixture/combination including an acrylic type resin and styrene-butadiene copolymer (which has a phenyl-containing group) (para 0172),
wherein the separator is bonded to the positive electrode or the negative electrode via the adhesive layer (para 0264-0266, 0295, 0302).
Hamada et al. do not specifically teach (a) a phenyl group-containing acrylic type resin, or (b) in a case in which the separator is peeled off from an electrode, the adhesive resin particles contained in the adhesive layer adhere to both of the porous substrate and the electrode.
. With respect to (a): Sakurai et al., in the same field of endeavor (separator with adhesive layer thereon), teach of an acrylic type monomer, which has a styrene monomer therewith (para 0076-007). The motivation for having a styrene-containing monomer (phenyl-group having) with an acrylic acid monomer is to suppress dissolution and swelling in an electrolytic solution (para 0077). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to have a styrene-containing monomer (phenyl-group having) (as taught by Sakurai et al.) with an acrylic acid monomer (that of Hamada et al.) (thus forming a phenyl group-containing acrylic type resin) is to suppress dissolution and swelling in an electrolytic solution
With respect to (b): The claim limitation (in which the separator is peeled off from an electrode, the adhesive resin particles contained in the adhesive layer adhere to both of the porous substrate and the electrode), would be expected from the product (even if the specific conditional is not set forth in the prior art). The reason for expectation is that the same product as that claimed is formed, thus the resultant of the peeled product would also be expected.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamada et al. in view of Sakurai et al. as applied to claim 1 above, and further in view of US 2005/0100794 (Chamberlain, II et al.).
. As to claim 2, Hamada et al. do not teach wherein a surface of the porous substrate contains at least one functional group selected from the group consisting of a carbonyl group, a carboxy group, a hydroxyl group, a peroxy group and an epoxy group.
However, Chamberlain, II et al., in the same field of endeavor (separator) teaches of a separator with a coated substrate, wherein an adhesion promotor such as a polyolefin having a pendant hydroxyl functional group is used at a surface of the substrate (para 0031). The motivation for having a surface of the porous substrate containing at least one functional group selected from the group consisting of a carbonyl group, a carboxy group, a hydroxyl group, a peroxy group and an epoxy group in order to promote adhesion to the adjacent layer (para 0031). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to have a surface of the porous substrate containing at least one functional group selected from the group consisting of a carbonyl group, a carboxy group, a hydroxyl group, a peroxy group and an epoxy group in order to promote adhesion to the adjacent layer.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamada et al. in view of Sakurai et al. as applied to claims 1 and 3 above, and further in view of WO 2019/164130 A1 (Kim et al.) (note: US 2021/0005858 is relied upon as the English translation of the WO document, as both pertain to the same PCT.)
Hamada et al. do not teach an arithmetic mean height Sa of a surface of the heat-resistant porous layer on an adhesive layer side is 0.7 µm or less.
However, Kim et al. in the same field of endeavor teach of a porous coating layer with organic and inorganic material, wherein the organic material protrudes in height about 0.1-0.4 µm (para 0051) (arithmetic mean height Sa of a surface of the heat-resistant porous layer is 0.7 µm or less). The motivation for having the organic material protrude in height about 0.1-0.4 µm is to enable adhesion and provide air permeability, while keeping resistance low (para 0051-0052). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) a porous coating layer with organic and inorganic material, wherein the organic material protrudes in height about 0.1-0.4 µm (arithmetic mean height Sa of a surface of the heat-resistant porous layer is 0.7 µm or less) in order to enable adhesion and provide air permeability, while keeping resistance low. (Note: The combination would render the teaching above to a surface of the heat-resistant porous layer on an adhesive layer side, as this is the structure of Hamada et al.. The same reasons for combination are applicable.)
Conclusion
Note: No other prior art is considered pertinent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:00 -7:30 (AM) and 9:45-3:15 ET.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759
