DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/290,530 (PGPUB 2025/0343323 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, the above identified Application claims a separator for an electrochemical device (claim 8) comprising: a porous polymer substrate (ibid): and a porous coating layer on at least one side of the porous polymer substrate (ibid), wherein the porous coating layer comprises a water-based polymer binder (claims 4, 8 and 12), an inorganic particle (claim 8), and an organic filler (claim 8: particulate binder polymer).
The limitation “and in the organic filler, during operation of the electrochemical device, adhesive strength is generated in a range of an operating temperature of the electrochemical device” is a functional limitation(s). As defined in the MPEP, “[a] functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or specific ingredients). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971)” – MPEP § 2173.05(g).
In the instant case, the above identified Application fails to explicitly claim this functional limitation.
However, the Examiner deems that the claimed limitation is a functional limitation and is deemed to be an inherent characteristic of the prior art since the prior art is substantially identical in composition and/or structure. The Examiner’s sound basis for this assertion is the disclosure of substantially identical particulate binder materials (claims 14 – 16) along with the conventional knowledge in the art that polymers soften above their glass temperature, which would necessarily lead to ‘adhesive strength’ being generated at temperatures above 20 ºC, which is taken to read on the ‘operating temperature range of the electrochemical device’.
Regarding claim 2, the water-based polymer limitations are met as discussed above (e.g. see claim 12).
Regarding claim 3, the Examiner takes Official Notice that these are conventional inorganic particles for use in coating layers and, since ‘inorganic particles’ are specifically required, this limitation is deemed necessarily met1. In addition, regarding this limitation, the Examiner notes that the disclosure of the above identified Application teaches that the claimed invention is an obvious variation of the disclosed invention (see relevant disclosure to types of inorganic particles to be used in the coating layer). Applicants are reminded that while it is generally prohibited from using the disclosure of a potentially conflicting patent or application in a Double Patenting analysis, there are two exceptions permitted by the MPEP. Specifically, “those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent”. In the instant case, since the claims explicitly require the inorganic particles, the portion of the specification detailing what classes of such particles are suitable is deemed to clearly be ‘providing support’ for the patent claims.
Regarding claim 4, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative particle sizes through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of particulate matter. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the particle size of the organic filler through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of particulate matter (see also claim 14). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 6, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative glass temperatures through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of polymeric materials. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 7, an “operating temperature” is not a patentable characteristic/limitation of a product claim as it is, essentially, an intended use limitation on how one should use the overall battery structure. Notwithstanding that aspect, the above identified Application discloses glass temperatures of the organic filler/polymer particles that can be within the claimed 90 -130 ºC range (claim 16).
Regarding claim 8, the above identified Application disclose organic filler/polymer particles meeting the claimed material limitations (claim 15).
Regarding claim 9, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative amounts of the inorganic and organic particles through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of particulate matter. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 10, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative amounts of the two polymers through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of polymers. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amount of the water-based polymer through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of polymers (see also claim 13). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The limitations of claim 12 are product-by-process limitations and are not further limiting in so far as the structure of the product is concerned. “[E]ven 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 prior product was made by a different process.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, it would have been routine and obvious to optimize the ‘solids content’ of an aqueous solution (see also claim 1).
Regarding claim 13, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the air permeability of the coating layer through routine experimentation, especially given the teaching in the above identified Application regarding the desire to utilize the claimed invention as a separator, where air permeability is a known, critical parameter. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 14 and 15, the Examiner takes Official Notice that forming the organic particulate matter at a gradient meeting the limitations of these claims is known in the art as a functionally equivalent structure to a coating layer having no gradient2. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, coating layers with no gradient versus gradients in the organic particles meeting the claimed limitations are functional equivalents in the field of known separator coating layers. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 16, the nominal battery limitations are met by the above identified Application (see claim 17).
Regarding claims 17 and 20, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the wet adhesive strength through routine experimentation, especially given the teaching in the above identified Application regarding the known criticality of controlled adhesion of the coating layer. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 18, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the shrinkage rate through routine experimentation, especially given the teaching in the above identified Application regarding the known desire to minimize any shrinkage to avoid short circuits or failure of the separator (i.e. motivation to be as close to 0% in both the MD and TD directions). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 19, these limitations are met for the same reasons as set forth above with regard to claim 7.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 19/045,407 (PGPUB 2025/0183481 A1) in view of Lee et al. (U.S. Patent No. 11,527,801 B2) and/or IDS reference KR 2021-0035591 A (published April 1, 2021). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, the above identified Application claims a separator for an electrochemical device (claim 1) comprising: a porous polymer substrate (ibid): and a porous coating layer on at least one side of the porous polymer substrate (ibid), wherein the porous coating layer comprises a water-based polymer binder (claim 4), an inorganic particle (claim 1), and an organic filler (claim 1).
The limitation “and in the organic filler, during operation of the electrochemical device, adhesive strength is generated in a range of an operating temperature of the electrochemical device” is a functional limitation(s). As defined in the MPEP, “[a] functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or specific ingredients). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971)” – MPEP § 2173.05(g).
In the instant case, the above identified Application fails to explicitly claim this functional limitation.
However, the Examiner deems that the claimed limitation is a functional limitation and is deemed to be an inherent characteristic of the prior art since the prior art is substantially identical in composition and/or structure. The Examiner’s sound basis for this assertion is the disclosure of substantially identical organic filler materials (claim 2). Furthermore, Lee et al. teach providing a particle binder (organic filler) having encompassing compositions wherein the particles have a ‘melting point’ in the range of 100 – 130 ºC (col. 4, line 51 bridging col. 6, line 3), as well as teaching the inclusion of organic ‘adhesion’ particles having glass temperature values of 50 ºC or higher (col. 6, lines 4 – 16). KR ‘591 A supports this concept of ‘an additive that expresses adhesion at a temperature of 110 ºC or more’ as the adhesive properties of the separator can be improved and exhibits improved performance and adhesion to the electrode plate (Lee et al. examples).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of the above identified Application to ensure using organic particles that meet the claimed functional limitation as taught by Lee et al. and/or KR ‘591 A, as such organic particles can lead to improved adhesion, including to the electrode plate, as well as improved electrode performance.
Regarding claim 2, the water-based polymer limitations are met as discussed above (e.g. see claim 4).
Regarding claim 3, the Examiner takes Official Notice that these are conventional inorganic particles for use in coating layers and, since ‘inorganic particles’ are specifically required, this limitation is deemed necessarily met3. In addition, regarding this limitation, the Examiner notes that the disclosure of the above identified Application teaches that the claimed invention is an obvious variation of the disclosed invention (see relevant disclosure to types of inorganic particles to be used in the coating layer). Applicants are reminded that while it is generally prohibited from using the disclosure of a potentially conflicting patent or application in a Double Patenting analysis, there are two exceptions permitted by the MPEP. Specifically, “those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent”. In the instant case, since the claims explicitly require the inorganic particles, the portion of the specification detailing what classes of such particles are suitable is deemed to clearly be ‘providing support’ for the patent claims.
Regarding claim 4, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative particle sizes through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of particulate matter. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the particle size of the organic filler through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of particulate matter (see also claim 14). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 6, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative glass temperatures through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of polymeric materials. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 7, an “operating temperature” is not a patentable characteristic/limitation of a product claim as it is, essentially, an intended use limitation on how one should use the overall battery structure. Notwithstanding that aspect, the above teachings in the secondary references disclose glass temperatures of the organic filler/polymer particles that can be within the claimed 90 -130 ºC range for the reasons set forth above.
Regarding claim 8, the above identified Application disclose organic filler meeting the claimed material limitations (claim 2).
Regarding claim 9, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative amounts of the inorganic and organic particles through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of particulate matter. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 10, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative amounts of the two polymers through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of polymers (see also claim 16). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amount of the water-based polymer through routine experimentation, especially given the teaching in the above identified Application regarding the desire to include both types of polymers (see also claim 12). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The limitations of claim 12 are product-by-process limitations and are not further limiting in so far as the structure of the product is concerned. “[E]ven 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 prior product was made by a different process.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, it would have been routine and obvious to optimize the ‘solids content’ of an aqueous solution.
Regarding claim 13, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the air permeability of the coating layer through routine experimentation, especially given the teaching in the above identified Application regarding the desire to utilize the claimed invention as a separator, where air permeability is a known, critical parameter (e.g. as in claim 10). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 14 and 15, the Examiner takes Official Notice that forming the organic particulate matter at a gradient meeting the limitations of these claims is known in the art as a functionally equivalent structure to a coating layer having no gradient4. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, coating layers with no gradient versus gradients in the organic particles meeting the claimed limitations are functional equivalents in the field of known separator coating layers. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 16, the nominal battery limitations are met by the above identified Application (see claim 18).
Regarding claims 17 and 20, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the wet adhesive strength through routine experimentation, especially given the teaching in the above identified Application regarding the known criticality of controlled adhesion of the coating layer. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 18, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the shrinkage rate through routine experimentation, especially given the teaching in the above identified Application regarding the known desire to minimize any shrinkage to avoid short circuits or failure of the separator (i.e. motivation to be as close to 0% in both the MD and TD directions; see also claim 11). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 19, these limitations are met for the same reasons as set forth above with regard to claim 7.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 6, 8 -18 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the claimed ‘operating temperature’ being a range of 90 – 130 ºC, does not reasonably provide enablement for an organic filler generating ‘adhesive strength’ in ranges of -80 to -60 ºC, 480 – 520 ºC, etc.. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
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 – 6, 8 – 18 and 20 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 pre-AIA the applicant regards as the invention.
The term “adhesive strength is generated” in these claims is a relative term which renders the claim indefinite. The term “adhesive strength is generated” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear exactly what magnitude constitutes ‘adhesive strength’ and, as such, what constitutes it ‘being generated’ in some arbitrary temperature range.
The Examiner notes that incorporation of the subject matter of claim 7 (identical to claim 19) would overcome both 112 rejections, as the glass temperature is known to be a characterization of polymer materials such that they begin to exhibit a clearly defined change in mobility/viscosity, which can be characterized by being attributed to the ‘adhesive strength’, for example.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 13 and 16 – 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Cho et al. (U.S. Patent App. No. 2021/0305658 A1) in view of Lee et al. (U.S. Patent No. 11,527,801 B2) and/or IDS reference KR 2021-0035591 A (KR ‘591 A). See provided Abstract Translation of KR ‘591 A.
Regarding claim 1, Cho et al. discloses a separator for an electrochemical device (Title; Abstract) comprising: a porous polymer substrate (ibid and Paragraphs 0071 - 0076): and a porous coating layer on at least one side of the porous polymer substrate (Title; Abstract; Paragraph 0059), wherein the porous coating layer comprises a water-based polymer binder (Title; Abstract), an inorganic particle (ibid), and an organic filler (Paragraph 0060).
The limitation “and in the organic filler, during operation of the electrochemical device, adhesive strength is generated in a range of an operating temperature of the electrochemical device” is a functional limitation(s). As defined in the MPEP, “[a] functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or specific ingredients). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971)” – MPEP § 2173.05(g).
In the instant case, Cho et al. fails to explicitly claim this functional limitation.
However, Lee et al. teach providing a coating layer on a separator having similar organic filler (particle binder) wherein the particles have a ‘melting point’ in the range of 100 – 130 ºC (col. 4, line 51 bridging col. 6, line 3), as well as teaching the inclusion of organic ‘adhesion’ particles having glass temperature values of 50 ºC or higher (col. 6, lines 4 – 16). Furthermore, KR ‘591 A supports this concept of ‘an additive that expresses adhesion at a temperature of 110 ºC or more’ (see Abstract Translation) as the adhesive properties of the separator can be improved and exhibits improved performance and adhesion to the electrode plate (e.g. see Lee et al. examples).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of the Cho et al. to ensure using organic particles that meet the claimed functional limitation as taught by Lee et al. and/or KR ‘591 A, as such organic particles can lead to improved adhesion, including to the electrode plate, as well as improved electrode performance.
Regarding claim 2, the water-based polymer limitations are met as discussed above (e.g. Paragraphs 0044 – 0055, especially Paragraphs 0044 - 0045).
Regarding claim 3, the Examiner takes Official Notice that these are conventional inorganic particles for use in coating layers and, since ‘inorganic particles’ are specifically required, this limitation is deemed necessarily met5. In addition, Cho et al. disclose encompassing particles (Paragraphs 0056 – 0059).
Regarding claim 4, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative particle sizes through routine experimentation, especially given the teaching in both Cho et al. and Lee et al. regarding the desire to include both types of particulate matter. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the particle size of the organic filler through routine experimentation, especially given the teaching in both Cho et al. and Lee et al. regarding the desire to include both types of particulate matter. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 6 and 7, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative glass temperatures through routine experimentation, especially given the teaching in both Cho et al. and Lee et al. regarding the desire to include both types of polymeric materials (binder are particulate organic/polymer material). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). In claim 7, the Examiner notes that an “operating temperature” is not a patentable characteristic/limitation of a product claim as it is, essentially, an intended use limitation on how one should use the overall battery structure.
Regarding claim 8, Lee et al. disclose organic filler meeting the claimed material limitations (see Lee et al. citations above).
Regarding claim 9, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative amounts of the inorganic and organic particles through routine experimentation, especially given the teaching in both Cho et al. and Lee et al. regarding the desire to include both types of particulate matter. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 10, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative amounts of the two polymers through routine experimentation, especially given the teaching in both Cho et al. and Lee et al. regarding the desire to include both types of polymers (i.e. polymer binder and organic/polymer filler particles). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amount of the water-based polymer through routine experimentation, especially given the teaching in Cho et al. regarding the desire to include similar amounts (Paragraph 0061). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The limitations of claim 12 are product-by-process limitations and are not further limiting in so far as the structure of the product is concerned. “[E]ven 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 prior product was made by a different process.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, it would have been routine and obvious to optimize the ‘solids content’ of an aqueous solution, especially given the teaching of similar methodology in Cho et al. (Paragraphs 0119 – 0129 and examples, which teaches encompassing solids content).
Regarding claim 13, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the air permeability of the coating layer through routine experimentation, especially given the teaching in both Cho et al. and Lee et al. regarding the desire to utilize the claimed invention as a separator, where air permeability is a known, critical parameter. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 16, the nominal battery limitations are met by Cho et al. (see at least Paragraphs 0081 – 0113).
Regarding claims 17 and 20, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the wet adhesive strength through routine experimentation, especially given the teaching in both Lee et al. and KR ‘591 A regarding the known criticality of controlled adhesion of the coating layer (via additional adhesion particles or explicitly taught as in the Abstract of KR ‘591 A).. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 18, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the shrinkage rate through routine experimentation, especially given the teaching in both Cho et al. and Lee et al. to use the invention as a separator wherein a skilled artisan would readily appreciate the desire to minimize any shrinkage to avoid short circuits or failure of the separator (i.e. motivation to be as close to 0% in both the MD and TD directions). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 19, these limitations are met for the same reasons as set forth above with regard to claim 7.
Claims 14 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Cho et al. in view of Lee et al. and KR ‘591 A as applied above, and further in view of Kwon et al. (WO 2022/071775 A1, published April 7, 2022; and its English Language equivalent, U.S. Patent App. No. 2023/0307789 A1) and/or IDS reference Kamon et al. (JP 2021-1184378 A). See US ‘789 A1 for citations of Kwon et al. and see the Abstract Translation for JP ‘378 A citations.
Cho et al., Lee et al. and KR ‘591 A are relied upon as described above.
Regarding claims 14 and 15, none of the above disclose a gradient in the organic particles meeting the claimed limitations.
However, Kwon et al. teaches using a similar coating layer and teaches having a gradient in the organic particles meeting the claimed limitations inorder to achieve improved heat resistance and adhesion (Title; Abstract; Paragraphs 0047 – 0051 and 0109 – 0120). Similarly, Kamon et al. teach the coating layer comprising at least three ‘layers’ or ‘regions’ meeting the claimed different gradient amounts of the organic resin to have excellent battery characteristics at low cost. While Kamon et al. is directed to the overall polymeric material (i.e. binder polymer and polymeric organic filler particles, combined), the Examiner deems that a skilled artisan would readily appreciate the same advantageous would apply by either only controlling the organic filler particles to meet the taught distribution or to have both the binder resin and the organic filler (polymeric particles) both follow the same gradient teaching.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Cho et al. in view of Lee et al. and KR ‘591 A to meet the claimed gradient limitations as set forth in claims 14 and 15 as taught by one or both of Kwon et al. and/or Kamon et al., as such a gradient can lead to improved heat resistance and adhesion while achieving excellent battery characteristics at low cost.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
September 15, 2026
1 For support of the Examiner’s position of Official Notice, see the art applied and cited herewith, as well as the various art supplied on Applicants’ supplied Information Disclosure Statements.
2 For support of the Examiner’s position of Official Notice, see the art applied below to these claims.
3 For support of the Examiner’s position of Official Notice, see the art applied and cited herewith, as well as the various art supplied on Applicants’ supplied Information Disclosure Statements.
4 For support of the Examiner’s position of Official Notice, see the art applied below to these claims.
5 For support of the Examiner’s position of Official Notice, see the art applied and cited herewith, as well as the various art supplied on Applicants’ supplied Information Disclosure Statements.
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