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 Objections
Claim 19 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 12. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1, 2, 5-11 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US Pub 2013/0224555 cited in IDS) in view of Lee et al. (US Pub 2005/0196677 newly cited).
In regard to claim 1, Hong et al. teach a separator (base film 1 with layers 2a, 2b – annotated figure below) for an electrochemical device comprising a lithium manganese-based active material (paragraph [0071]), wherein the separator comprises: a porous polymer substrate (base film 1) having a first surface and a second surface (left and right sides in figure below); a first porous coating layer (coating layer 2b) on the first surface of the porous polymer substrate, which first porous coating layer comprises a first inorganic particle and a second inorganic particle, wherein the second inorganic particle has an average particle size smaller than an average particle size of the first inorganic particle (paragraph [0032]); and a second coating layer (coating layer 2a) on the second surface of the porous polymer substrate (paragraphs [0030-0074]).
Claim 1 calls for an average specific surface area larger than an average specific surface area of the first inorganic particle. The Hong et al. prior art teaches two different particle sizes for the first inorganic particles and second inorganic particles such as 5nm smaller particles and 600nm larger particles (paragraphs [0031-0032]), therefore, while no specific surface area comparison between the inorganic particles is disclosed by the prior art, a person of ordinary skill in the art would appreciate that the inorganic particles would necessarily have different specific surface area, one larger than the other (the smaller particles would have a larger specific surface area than the larger particles as particle size and specific surface area are inversely proportional).
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Claim 1 differs in calling for the second inorganic particle comprises sulfonic acid groups on a surface thereof, in which in some of the sulfonic acid groups, hydrogen cations are substituted with lithium cations. However, Lee et al. teach a similar composite polymer separator for a lithium-ion battery including a polymer matrix 12 (i.e. a porous base film) and a coating layer on a surface thereof comprised of a second polymer matrix 14 and a lithium cationic single ion conducting inorganic filler 16 and the desirability for the inorganic particle to comprise sulfonic acid groups on a surface thereof, in which in some of the sulfonic acid groups, hydrogen cations are substituted with lithium cations because such remarkably enhances the ionic conductivity (paragraphs [0021-0042], partial figure 5 below).
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Therefore, it would have been obvious to one of ordinary skill in the art at or before the effective filing date of the claimed invention filed include second inorganic particle comprising sulfonic acid groups on a surface thereof, in which in some of the sulfonic acid groups, hydrogen cations are substituted with lithium cations in the separator of Hong et al. as such remarkably enhances the ionic conductivity as taught by Lee et al.
In regard to claim 2, Hong et al. teach the separator of claim 1, wherein the first porous coating layer comprises the first inorganic particle and the second inorganic particle in a weight ratio of such as 91:9 (paragraph [0036]) which is close enough to the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).
In regard to claim 5, Lee et al. teach the separator of claim 1, wherein the sulfonic acid group is one or more selected from the group consisting of methane sulfonic acid, ethane sulfonic acid, trifluoromethane sulfonic acid, benzene sulfonic acid, p-toluene sulfonic acid, naphthalene sulfonic acid, phenylbenzimidazole sulfonic acid, and 2-acrylamido-2-methylpropane sulfonic acid (see various R1 groups – paragraphs [0039-0043]). The Examiner notes that the sulfonic acid used to create the functional groups on the particle relates to a product by process limitation as the sulfonic acid is subject to Li+ substitution and is not present in the final product (see MPEP 2113).
In regard to claim 6, Hong et al. teach the separator of claim 1, wherein the first inorganic particle is Al2O3 (paragraph [0059]).
In regard to claim 7, Hong et al. teach the separator of claim 1, wherein the first porous coating layer further comprises a water-based polymer binder (PVDF copolymer – paragraph [0037-0047]) which is mixed with the inorganic particles to form a coating slurry (which is reasonably expected to form an interstitial volume being formed by gaps between inorganic particles by bonding first inorganic particles with one another, second inorganic particles with one another, and first inorganic particles with second inorganic particles, absent evidence to the contrary, as the prior art teaches materials and processes substantially identical to the instant application – see MPEP 2112.01).
In regard to claim 8, Lee et al. teach the desirability for the water-based PVDF polymer binder to include an acrylic-based polymer, an ethylene vinyl acetate copolymer, a polyethylene oxide, polyarylate etc. (paragraph [0036])
In regard to claim 9, Hong et al. teach the separator of claim 1, wherein the first porous coating 2b layer faces a negative electrode 4 of the electrochemical device (figure 1 above).
In regard to claim 10, Hong et al. teach the separator of claim 9, wherein the second coating layer 2a may be formed on one or both sides of the base film (paragraph [0031]) therefore while prior art does not describe the layer individually, the ability to select the first inorganic particle but not the second inorganic particle in the second coating would have been determined through routine experimentation as the elimination of an element if its function is not necessary has been held as an obvious modification (see MPEP 2144.04, Part II).
In regard to claim 11, Hong et al. teach the separator of claim 1, wherein the lithium manganese-based active material such as LiMnO2 (paragraph [0071]). The Examiner notes that the claims are drawn to a separator and not a battery, there is no lithium manganese-based active material in the claimed separator.
In regard to claim 13, Hong et al. teach the separator of claim 1, wherein the porous coating layer has a thickness of 1 μm to 7 μm (paragraph [0019]).
In regard to claim 14, Hong et al. in view of Lee et al. teach the separator of claim 1 which has substantially identical structure and composition to the claimed device, and therefore the separator is reasonably presumed to have an adsorption rate of 20% to 50% to manganese ions being eluted from a positive electrode comprising the lithium manganese-based active material (see MPEP 2112.01) absent evidence to the contrary.
In regard to claim 15-18, Hong et al. teach an electrochemical device 10 comprising: a positive electrode 3 such as LiMnO2 (paragraph [0071]), a negative electrode 4, and a separator (1 and 2) between the positive electrode and the negative electrode, wherein the separator is the separator for the electrochemical device according to claim 1 wherein the first porous coating layer 2b of the separator faces the negative electrode 4 (figure 1 above, paragraph [0067]).
Claims 3, 4, 12 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. and Lee et al. as applied to claim 1 above, and further in view of Nishikawa (US Pub 2011/0143185 newly cited).
In regard to claim 3, 12 and 19 - Hong et al. teach the separator of claim 1, wherein pores of a desired size are created in the coating layer (paragraph [0033]) but does not specify pore size or mesoporous particles and surface area values. However, Nishikawa teaches similar alumina particles for incorporation into battery separators and the desirability to use mesoporous alumina with pores such as 50nm to 2 nm with a specific surface area such as preferably 500 m2/g because the porosity and surface area of the alumina particles materially affect the properties of the porous layer such as the strength and absorption properties (paragraphs [0060-0070]) in a manner which obviates the claimed ranges for pore sizes and surface areas absent evidence to the contrary (see MPEP 2144.05 Part II).
Therefore, it would have been obvious to one of ordinary skill in the art at or before the effective filing date of the claimed invention filed include inorganic alumina particles with particular pore sizes and surface areas in the separator of Hong et al. as such materially affects various properties of the porous layer as taught by Nishikawa.
In regard to claim 4, Hong et al. teach the separator of claim 3, wherein the first inorganic particle is different from the second inorganic particle (i.e. 5nm compared to 600nm – paragraph [0032]) and a person of ordinary skill in the art would appreciate that a 5nm particle would be too small to include any appreciable pores.
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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of co-pending Application No. 18/843,375 (reference application- now US Pub 2025/0183479). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims require (in independent claim 1) a separator for an electrochemical device comprising a lithium manganese-based active material, the electrochemical device comprising: a porous polymer substrate; and a porous coating layer laminated on at least one surface of the porous polymer substrate and comprising first inorganic particles and a polymer binder, wherein the first inorganic particles comprise a sulfonic acid group on a surface of a metal oxide or a metal hydroxide, and at least a portion of the sulfonic acid group comprises hydrogen cations substituted with lithium cations in a manner which obviates the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723
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