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 .
Specification
The disclosure is objected to because of the following informalities: Status of parent applications in paragraph 0001 page1 of the instant specification should be updated.
Appropriate correction is required.
Claim Interpretation
In claim 33 “and/or” is interpreted broadly as –or--.
Claim Objections
Claims 31 and 34 are objected to because of the following informalities:
In claim 31 the hyphen between “coating” and “is” should be deleted.
In claim 34 “according to claim 28” should be deleted and -- made according to the process of claim 28— inserted thereof as there is no product claimed per se in claim 28; only a process. .
Appropriate correction is required.
Applicant is advised that should claim 30 be found allowable, claim 35 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. 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 § 112
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.
Claim 33-34 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 33-34 are recited as products while claim 28 is to a process thus claim 33-34 fail to further limit the process of claim 28. 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.
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 28,30,31, and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12040456 . Although the claims at issue are not identical, they are not patentably distinct from each other because the obvious combination of patent claim 1 and 2 renders instant claims 28, 30, 35 obvious. Claim 28 specifies the thickness of less than 10 um which lies inside the range of patent claim 2, thus being prima facie obvious per MPEP 2144 . Patent claim 3 corresponds to claim 31. Patent claim 4 corresponds to claim 34.
Claims 28,30,31, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No 10777800. Although the claims at issue are not identical, they are not patentably distinct from each other because the obvious combination of patent claims 1 and 2 render claim 28,30.35 obvious. Patent claim 31 corresponds to claim 31.
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.
Claims 28,30,35 are rejected under 35 U.S.C. 103 as being unpatentable over Call (US 2007/0148538) in view of Callahan et al. (US 6,602,593).
Regarding claim 28, Call teaches a process to form a polyethylene / polypropylene / polyethylene multilayer microporous membrane (a battery separator) (Abstract) comprising:
extruding a polypropylene (PP) to form a nonporous precursor membrane and, extruding a polyethylene (PE) to form a nonporous precursor membrane (Abstract; [0011-0013]) and, stacking the polypropylene and polyethylene in as PE/PP/PE to yield a multilayer membrane (Abstract; [0011-0012]) and,
annealing the multilayer membrane [0012, 0016] and
stretching the multilayer membrane to form an intermediate stretched multilayer microporous membrane [0012, 0016]
Call teaches membrane has a thickness less than 20 µm ([0011]; clm. 4-6). The claimed range of 0-10 µm falls within this disclosed range of 0-20,0-15 µm. As such this is prima facie obvious to optimize the range barring unexpected results, see MPEP 2144.05 I . Where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 I). In this case, Call and Callahan would have made obvious a membrane produced by the process described in claim 28. Thus, the resulting membrane necessarily would have had the claimed thickness unless this property is achieved by method steps not yet claimed.
Call does not specifically teach that the stretching involves stretching in the machine direction and transverse direction, simply noting that the stretching is conventional and may be conducted according to, for example, the disclosure of Callahan et al. (US 6,602,593) [0016].
Callahan et al. similarly teach a method of making a battery separator (Abstract) in which polypropylene and/or polyethylene films are extruded and then stretched to become microporous (col. 1, LL. 58-64; col. 2, LL. 32-34), and in which the stretching may occur in the machine direction and the transverse direction (col. 5, LL. 62-66).
Therefore, it would have been obvious to one of ordinary skill in the art to machine direction stretch the multilayer membrane of Call to form an intermediate uniaxial stretched multilayer microporous membrane, and to transverse direction stretch the intermediate uniaxial stretched multilayer microporous membrane to form a second intermediate MD and TD stretched multilayer microporous membrane, because Call teaches that the stretching may be conducted according to the method of Callahan et al., and because Callahan et al. teach the claimed stretching in the machine direction and transverse direction.
Claim 28 requires that the PE/PP/PE multilayer microporous membrane have a TD tensile strength greater than 400 kgf/cm2. Where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 I). In this case, Call and Callahan would have made obvious a membrane produced by the process described in claim 28. Thus, the resulting membrane necessarily would have had the claimed tensile strength—unless this property is achieved by method steps not yet claimed.
Claims 30 and 35 requires stretching either simultaneously or sequentially. This is disclosed by Callahan, supra.
Claim 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Call and Callahan et al. as applied to claim 28 above, and further in view of either one of Wensley et al. (US 2012/0177976) or Murata et al. (US 2012/0141859).
Regarding claim 31, Call does not specifically teach that a ceramic coating is incorporated into the process. However, it is well known in the art that providing ceramic coatings on such polyolefin microporous battery separator membranes allow the membranes to operate effectively at higher temperatures and reliably maintain separation between the battery electrodes, and that the coatings may be effectively provided by a calendering (i.e., gravure) process, as evidenced by Wensley et al. (Abstract; [0003-0004, 0008, 0015, 0019, 0059, 0063, 0071]) and Murata et al. (Abstract; [0002, 0006, 0008, 0010, 0039, 0069]) Therefore, it would have been obvious to one of ordinary skill in the art to incorporate a ceramic coating into the process of Call, in order to allow a battery incorporating the membrane to operate safely at higher power densities and temperatures.
Claims 33 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Call, Callahan et al., and Matsumoto as applied to claim 32 above, and further in view of Arora et al.
Claim 33 recites surface properties of the battery separator membrane. Where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 I). In this case, Call, Callahan et al., and Matsumoto would have made obvious a membrane produced by the process described in claim 33. Thus, the resulting membrane necessarily would have had the claimed surface properties—unless these are achieved by method steps not yet claimed.
In the alternative, it would have been obvious to one of ordinary skill in the art to maximize the smoothness of the membrane because Arora et al. teaches that a nonuniform separator will cause significant deviations from the average resistance at various sections of the material such that sections having lower or higher resistance compared with the average value should be regarded as flawed (page 4430, left, bottom).
Regarding claim 34, Call teaches a battery including the PE/PP/PE membrane according to claim 34, as described with respect to claim 28 above (Call: Abstract; [0001-0002, 0008, 0011]).
Response to Arguments
Applicant's arguments filed 1-16-2026 have been fully considered but they are not persuasive. Applicant’s arguments with respect to claim 28 has been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that the present invention is not novel and inventive because it was the first or only to recognize the desire for thinner separator. Rather, it is novel and inventive over the cited references because it has actually achieved a dry process capable producing these thin specifications. In short, merely expressing that a certain feature is desirable or advantageous is insufficient to establish a prima facie case of obviousness. Indeed, the Office must establish the feature is actually achieved by some other prior art reference and that a reasonably skilled artisan would have a reasonable expectation of success in modifying the prior art in such a way that the feature is present in the resulting modifications. The examiner respectively disagrees in that the claimed range of less than 10um falls within the disclosed range of less than 15um, less than 20um. As such it is well within the scope of one of ordinary skill in the art to optimize the range through routine experimentation. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05 I . Moreover, Given that the obvious combination of Call in view of Callahan results in the claimed process steps , any product made by the obvious process would necessarily have the same properties unless there are material differences in the process steps not claimed Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). , see MPEP 2112.01. All other arguments have been considered but are not deemed to be persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Duane Smith whose telephone number is (571)272-1166. The examiner can normally be reached 9-5 Monday-Friday.
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DUANE SMITH
Supervisory Patent Examiner
Art Unit 1759
/DUANE SMITH/Supervisory Patent Examiner, Art Unit 1759