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 Objections
Claims 2 and 17 are objected to because of the following informalities:
In claims 2 and 17, lines 2-3, “more adhesive that a coating formulation” should read “more adhesive than a coating formulation”.
Appropriate correction is required.
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 11-14, 22-23, and 25 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 11-12 recite the limitation “less than 10% nano-ceramic” in line 3. It is unclear what basis is used to determine the recited percentage (e.g., wt%, vol%, etc.). Therefore, the scope of the claims is indefinite.
Claims 13-14 recite the limitation “less than 5% nano-ceramic” in line 3. It is unclear what basis is used to determine the recited percentage (e.g., wt%, vol%, etc.). Therefore, the scope of the claims is indefinite.
Claims 22-23 recite the limitation “The two-side-coated membrane of claim 21” in line 1. There is insufficient antecedent basis for this limitation in these claims. For examination purposes, it will be assumed that applicant meant to state “The two-side-coated battery separator of claim 21” instead.
Claim 25 recites the limitation “The two-side-coated membrane of claim 21” in line 1. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it will be assumed that applicant meant to state “The two-side-coated membrane of claim 16” instead.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 18 and 21 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 18 and 21 recite that the “adhesive coating layer of the second coating is continuous or discontinuous”. Since a coating layer is necessarily required to be either continuous or discontinuous (i.e. there is no third option), this limitation does not further limit the subject matter of claims 16 and 1, respectively. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 16, 18, 21, and 24-25 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Jang et al (US 2021/0184314 A1).
Regarding claim 1, Jang discloses a two-side-coated battery separator (Figure 1; [0030] and [0057]).
Jang further discloses that the separator consists of a porous substrate that has a heat-resistant layer (corresponding to the claimed ceramic coating layer due to similarities in composition and function; [0034] – [0037]) and a first adhesive layer coated on one side of it, where the first adhesive layer is the outermost layer (Figure 1; [0030], [0034], and [0048]). The combination of the heat-resistant layer and the first adhesive layer on one side of the porous substrate corresponds to the claimed second coating.
Jang even further discloses that an additional second adhesive layer can be disposed on the opposite surface of the porous substrate (Figure 1; [0057]). This additional second adhesive layer on the other side of the porous substrate corresponds to the claimed first coating.
Jang also teaches that the adhesive coating layers in the first coating and the second coating can each be formed from different compounds ([0057]).
Regarding claim 16, Jang discloses a two-side-coated battery separator corresponding to the claimed two-side-coated membrane (Figure 1; [0030] and [0057]).
Jang further discloses that the separator consists of a porous substrate that has a heat-resistant layer (corresponding to the claimed ceramic coating layer due to similarities in composition and function; [0034] – [0037]) and a first adhesive layer coated on one side of it, where the first adhesive layer is the outermost layer (Figure 1; [0030], [0034], and [0048]). The combination of the heat-resistant layer and the first adhesive layer on one side of the porous substrate corresponds to the claimed second coating.
Jang even further discloses that an additional second adhesive layer can be disposed on the opposite surface of the porous substrate (Figure 1; [0057]). This additional second adhesive layer on the other side of the porous substrate corresponds to the claimed first coating. Jang also teaches that the adhesive coating layers in the first coating and the second coating can each be formed from different compounds ([0057]).
Regarding claim 18, Jang discloses the two-side-coated membrane discussed above in claim 16. As discussed with respect to claim 16, Jang discloses a first adhesive layer that corresponds to the claimed adhesive layer in the second coating. Since a layer must necessarily be continuous or discontinuous, the first adhesive layer of Jang would have to be either continuous or discontinuous. Accordingly, Jang discloses the claimed limitation.
Regarding claim 21, Jang discloses the two-side-coated battery separator discussed above in claim 1. As discussed with respect to claim 1, Jang discloses a first adhesive layer that corresponds to the claimed adhesive layer in the second coating. Since a layer must necessarily be continuous or discontinuous, the first adhesive layer of Jang would have to be either continuous or discontinuous. Accordingly, Jang discloses the claimed limitation.
Regarding claim 24, Jang discloses the two-side-coated battery separator discussed above in claim 1. Jang further discloses that the first adhesive layer can be applied with a spray coating method ([0006] and [0051]).
Regarding claim 25, Jang discloses the two-side-coated membrane discussed above in claim 16. Jang further discloses that the first adhesive layer can be applied with a spray coating method ([0006] and [0051]).
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.
Claims 2-5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al (US 2021/0184314 A1) in view of Lane et al (US 2020/0335759 A1) and Zhao et al (CN 112563583) cited through US equivalent (US 2023/0223582 A1).
Regarding claim 2, Jang discloses the two-side-coated battery separator discussed above in claim 1. While Jang does teach that the adhesive layers can have different compositions ([0057]), it is not expressly disclosed that the first adhesive layer composition is more adhesive than the second adhesive layer composition.
Zhao, also drawn to battery art (abstract), discloses a similar separator that comprises a base film with a ceramic layer and an adhesive layer disposed on a surface of the base film ([0013]). Zhao also discloses that the separator can have a base film with just an adhesive layer disposed on it surface ([0015]). Zhao even further discloses that the surface of the base film containing both a ceramic layer and an adhesive layer is called a ceramic surface ([0013]), while the surface of the base film containing just an adhesive layer is called an adhesive surface ([0015]). Zhao teaches that an adhesive layer that is a component of a ceramic surface exhibits reduced peeling force relative to an adhesive layer that is a component of an adhesive surface, including peeling force differences on the scale of multiple N/m (Table 1; [0062]-[0063]).
Lane, drawn to battery art (abstract) as well, teaches analogous coatings on a porous substrate of a battery separator [0009]. More specifically, Lane teaches that an adhesion agent can be incorporated into a coating composition ([0067]). Lane discloses that a coating composition containing an adhesion agent has higher adhesion to an electrode than a coating composition without it added ([0067]).
In view of the teachings of Zhao and Lane, it would have been obvious to one of ordinary skill in the art to have modified Jang’s first adhesive layer (corresponding to the claimed adhesive coating layer of the second coating) to be more adhesive than Jang’s second adhesive layer (corresponding to the claimed adhesive coating layer of the first coating). As discussed with respect to claim 1, Jang’s first adhesive layer is disposed over a heat-resistant layer (corresponding to the claimed ceramic coating layer), whereas Jang’s second adhesive layer is disposed directly onto the porous substrate. As taught by Zhao, an adhesive layer associated with a ceramic layer can exhibit reduced peeling force relative to an adhesive layer that isn’t associated with a ceramic layer. Lane teaches that incorporating an adhesion agent into a coating composition increases the adhesion of the resulting coating. Therefore, one of ordinary skill in the art would have been motivated to include Lane’s adhesion agent into Jang’s first adhesive layer composition to compensate for the reduced adhesion associated with the adjacent ceramic layer that is taught by Zhao. The resulting increase in adhesiveness of Jang’s first adhesive layer composition relative to the unmodified second adhesive layer composition would have been predictable in view of Zhao’s disclosure that provides a motivation to increase the adhesiveness of Jang’s first adhesive layer and Lane’s teachings that provides a method of increasing the adhesiveness. Such a modification would constitute application of a known technique to a known device to predictably improve it ([MPEP 2143 (I)(D)]).
Regarding claims 3-5, Jang in view of Zhao and Lane discloses the two-side-coated battery separator discussed above in claim 2. As discussed with respect to claim 2, Lane teaches that adhesive strength is adjustable through modification of the coating composition by incorporating an adhesion agent. Accordingly, adhesive strength is a result-effective variable. As was also discussed with respect to claim 2, Zhao disclosed that that the presence of a ceramic layer adjacent to an adhesive layer can produce a reduction in peel strength on the scale of multiple N/m compared to an adhesive layer that is not adjacent to a ceramic layer. In light of the modification to Jang’s first adhesive layer composition to make it more adhesive through the incorporation of an adhesion agent as discussed in claim 2, it would have been obvious for one of ordinary skill in the art to have optimized the amount of adhesion agent added. This optimization would have resulted in the selection of peeling force values for the composition of the first adhesive layer that give it increased adhesion relative to the composition of the second adhesive layer, including the claimed differences of 5 N/m more, 7 N/m more, and 10 N/m more. This selection of peeling force values would have been nothing more than the routine optimization of a known result-effective variable to find the optimal adhesion for the adhesive layers in Jang’s separator [MPEP 2144.05 (II)].
Regarding claim 17, Jang discloses the two-side-coated membrane discussed above in claim 16. While Jang does teach that the adhesive layers can have different compositions ([0057]), it is not expressly disclosed that the first adhesive layer composition is more adhesive than the second adhesive layer composition.
Zhao, also drawn to battery art (abstract), discloses a similar separator that comprises a base film with a ceramic layer and an adhesive layer disposed on a surface of the base film ([0013]). Zhao also discloses that the separator can have a base film with just an adhesive layer disposed on it surface ([0015]). Zhao even further discloses that the surface of the base film containing both a ceramic layer and an adhesive layer is called a ceramic surface ([0013]), while the surface of the base film containing just an adhesive layer is called an adhesive surface ([0015]). Zhao teaches that an adhesive layer that is a component of a ceramic surface exhibits reduced peeling force relative to an adhesive layer that is a component of an adhesive surface, including peeling force differences on the scale of multiple N/m (Table 1; [0062]-[0063]).
Lane, drawn to battery art (abstract) as well, teaches analogous coatings on a porous substrate of a battery separator [0009]. More specifically, Lane teaches that an adhesion agent can be incorporated into a coating composition ([0067]). Lane discloses that a coating composition containing an adhesion agent has higher adhesion to an electrode than a coating composition without it added ([0067]).
In view of the teachings of Zhao and Lane, it would have been obvious to one of ordinary skill in the art to have modified Jang’s first adhesive layer (corresponding to the claimed adhesive coating layer of the second coating) to be more adhesive than Jang’s second adhesive layer (corresponding to the claimed adhesive coating layer of the first coating). As discussed with respect to claim 1, Jang’s first adhesive layer is disposed over a heat-resistant layer (corresponding to the claimed ceramic coating layer), whereas Jang’s second adhesive layer is disposed directly onto the porous substrate. As taught by Zhao, an adhesive layer associated with a ceramic layer can exhibit reduced peeling force relative to an adhesive layer that isn’t associated with a ceramic layer. Lane teaches that incorporating an adhesion agent into a coating composition increases the adhesion of the resulting coating. Therefore, one of ordinary skill in the art would have been motivated to include Lane’s adhesion agent into Jang’s first adhesive layer composition to compensate for the reduced adhesion associated with the adjacent ceramic layer that is taught by Zhao. The resulting increase in adhesiveness of Jang’s first adhesive layer composition relative to the unmodified second adhesive layer composition would have been predictable in view of Zhao’s disclosure that provides a motivation to increase the adhesiveness of Jang’s first adhesive layer and Lane’s teachings that provides a method of increasing the adhesiveness. Such a modification would constitute application of a known technique to a known device to predictably improve it ([MPEP 2143 (I)(D)]).
Claims 6-15, 19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al (US 2021/0184314 A1).
Regarding claim 6, Jang discloses the two-side-coated battery separator discussed above in claim 1. Jang further discloses that the thickness of the first adhesive layer may be between 0.5-3.0 µm ([0052]), which overlaps with the claimed thickness of 1 micron or less. The courts have found that when a claimed range overlaps with one of the prior art, the claimed range is prima facie obvious [MPEP 2144.05 (I)]. Therefore, Jang renders obvious having the thickness of the adhesive layer in the second coating being 1 micron or less. In addition to the foregoing, the examiner notes that Jang provides several adhesive layer composition examples where the thickness of the first adhesive layer is less than 1 micron ([0087]-[0110]).
Regarding claim 7, Jang discloses the two-side-coated battery separator discussed above in claim 1. Jang does not expressly disclose a specific range for the thickness of the second adhesive layer. Jang does, however, provide an example composition for the first and second adhesive layers ([0091]-[0094]). In this example, Jang states that the thickness of the first and second adhesive layers are both 0.6 µm ([0094]). Therefore, Jang teaches having the thickness of the adhesive layer in the first coating to be 1 micron or less.
Regarding claim 8, Jang discloses the two-side-coated battery separator discussed above in claim 6. As discussed with respect to claim 7, Jang provides an example composition for the first and second adhesive layers where each layer has a thickness of 0.6 µm ([0091]-[0094]). Therefore, Jang teaches having the thickness of the adhesive layer in the first coating to be 1 micron or less.
Regarding claim 9, Jang discloses the two-side-coated battery separator discussed above in claim 6. As discussed with respect to claim 6, Jang discloses various adhesive layer composition examples ([0087]-[0110]). In one specific example, Jiang teaches that the first adhesive layer is composed of a mixture of PVDF, polyvinyl alcohol (corresponding to the claimed binder), and water ([0088]). Accordingly, Jang teaches the claimed composition of the adhesive layer in the second coating.
Regarding claim 10, Jang discloses the two-side-coated battery separator as discussed above in claim 8. As discussed with respect to claim 6, Jang discloses various adhesive layer composition examples ([0087]-[0110]). In one specific example, Jiang teaches that the first adhesive layer is composed of a mixture of PVDF, polyvinyl alcohol (corresponding to the claimed binder), and water ([0088]). Accordingly, Jang teaches the claimed composition of the adhesive layer in the second coating.
Regarding claim 11, Jang discloses the two-side-coated battery separator as discussed above in claim 6. As discussed with respect to claims 9 and 10, Jiang discloses that the first adhesive layer can be composed of a mixture of PVDF, polyvinyl alcohol (corresponding to the claimed binder), and water ([0088]). Jang does not disclose nano-ceramic in this coating composition. Thus, the formulation contains 0% nano-ceramic, which is within the claimed range of “less than 10%”. Accordingly, Jang teaches the claimed composition of the adhesive layer in the second coating.
Regarding claim 12, Jang discloses the two-side-coated battery separator as discussed above in claim 8. As discussed with respect to claims 9 and 10, Jiang discloses that the first adhesive layer can be composed of a mixture of PVDF, polyvinyl alcohol (corresponding to the claimed binder), and water ([0088]). Jang does not disclose nano-ceramic in this coating composition. Thus, the formulation contains 0% nano-ceramic, which is within the claimed range of “less than 10%”. Accordingly, Jang teaches the claimed composition of the adhesive layer in the second coating.
Regarding claim 13, Jang discloses the two-side-coated battery separator as discussed above in claim 6. As discussed with respect to claims 9 and 10, Jiang discloses that the first adhesive layer can be composed of a mixture of PVDF, polyvinyl alcohol (corresponding to the claimed binder), and water ([0088]). Jang does not disclose nano-ceramic in this coating composition. Thus, the formulation contains 0% nano-ceramic, which is within the claimed range of “less than 5%”. Accordingly, Jang teaches the claimed composition of the adhesive layer in the second coating.
Regarding claim 14, Jang discloses the two-side-coated battery separator as discussed above in claim 8. As discussed with respect to claims 9 and 10, Jiang discloses that the first adhesive layer can be composed of a mixture of PVDF, polyvinyl alcohol (corresponding to the claimed binder), and water ([0088]). Jang does not disclose nano-ceramic in this coating composition. Thus, the formulation contains 0% nano-ceramic, which is within the claimed range of “less than 5%”. Accordingly, Jang teaches the claimed composition of the adhesive layer in the second coating.
Regarding claim 15, Jang discloses the two-side-coated battery separator as discussed above in claim 1. Jang further discloses that the separator is utilized within a secondary battery ([0004]).
Regarding claim 19, Jang discloses the two-side-coated membrane discussed above in claim 18. Jang does not expressly state that the first adhesive layer is continuous. Jang does, however, disclose that the first adhesive layer can be applied through the use of a die coating method, a wire bar coating method, or a spray coating method ([00051]). Jang further teaches that utilizing a die coating method in particular allows the first adhesive layer to be coated more evenly to lower its surface roughness ([0053]). Jang also illustrates in figure 1 that the first adhesive layer is present in an uninterrupted coating (Figure 1; first adhesive layer (130) is an uninterrupted layer extending across the heat resistant layer (120) in the separator). The courts have stated, "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom” (MPEP 2144.01). From the disclosures presented by Jang, it is reasonable to infer that the first adhesive layer is continuous. Accordingly, Jang renders the claimed limitation obvious.
Regarding claim 22, Jang discloses the two-side-coated battery separator discussed above in claim 21. Jang does not expressly state that the first adhesive layer is continuous. Jang does, however, disclose that the first adhesive layer can be applied through the use of a die coating method, a wire bar coating method, or a spray coating method ([00051]). Jang further teaches that utilizing a die coating method in particular allows the first adhesive layer to be coated more evenly to lower its surface roughness ([0053]). Jang also illustrates in figure 1 that the first adhesive layer is present in an uninterrupted coating (Figure 1; first adhesive layer (130) is an uninterrupted layer extending across the heat resistant layer (120) in the separator). The courts have stated, "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom” (MPEP 2144.01). From the disclosures presented by Jang, it is reasonable to infer that the first adhesive layer is continuous. Accordingly, Jang renders the claimed limitation obvious.
Claims 20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al (US 2021/0184314 A1) in view of Moon et al (US 2015/0140403 A1).
Regarding claim 20, Jang discloses the two-side-coated membrane discussed above in claim 18. Jang does not expressly disclose that the first adhesive layer can be discontinuous.
Moon, drawn to battery art ([0006]), discloses a battery separator that has a porous coating layer disposed on a surface of a porous base ([0006]). Moon further discloses that a first adhesive layer is disposed at intervals in the form of dots along a surface of the porous coating layer (Figure 1; [0006]). It would have been obvious for one of ordinary skill in the art to have replaced the first adhesive layer of Jang with the discontinuous dot-pattern adhesive layer disclosed by Moon. Both adhesive layers perform the function of providing adhesion in a battery separator and modifying Jang’s separator to have Moon’s first adhesive layer in the place of Jang’s first adhesive layer would have predictably provided a first adhesive layer in Jang that is discontinuous instead of continuous. Therefore, substituting the first adhesive layer of Jang for the first adhesive layer of Moon would have amounted to nothing more than the simple substitution of one adhesive layer for another to obtain an adhesive layer that is discontinuous instead of continuous [MPEP 2143 (I)(B)].
Regarding claim 23, Jang discloses the two-side-coated battery separator discussed above in claim 21. Jang does not expressly disclose that the first adhesive layer can be discontinuous.
Moon, drawn to battery art ([0006]), discloses a battery separator that has a porous coating layer disposed on a surface of a porous base ([0006]). Moon further discloses that a first adhesive layer is disposed at intervals in the form of dots along a surface of the porous coating layer (Figure 1; [0006]). It would have been obvious for one of ordinary skill in the art to have replaced the first adhesive layer of Jang with the discontinuous dot-pattern adhesive layer disclosed by Moon. Both adhesive layers perform the function of providing adhesion in a battery separator and modifying Jang’s separator to have Moon’s first adhesive layer in the place of Jang’s first adhesive layer would have predictably provided a first adhesive layer in Jang that is discontinuous instead of continuous. Therefore, substituting the first adhesive layer of Jang for the first adhesive layer of Moon would have amounted to nothing more than the simple substitution of one adhesive layer for another to obtain an adhesive layer that is discontinuous instead of continuous [MPEP 2143 (I)(B)].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T LONG whose telephone number is (571)270-1723. The examiner can normally be reached Monday-Thursday 8 AM - 4 PM.
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/J.T.L./ /MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746