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 .
The Applicant’s amendments were received on 10/28/25. Claims 1 has been amended.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Claim Rejections - 35 USC § 103
The rejection under 35 U.S.C. 103 as being unpatentable over Murata (EP2116372) in view of OTSUKA ET AL. (KR 10-2016-0033692) in further view of KO ET AL. (KR 10-2017-0129645), on claims 1-12 are amended in view of the Applicant’s amendments.
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 toP100a 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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murata (EP2116372) in view of OTSUKA ET AL. (KR 10-2016-0033692) in further view of KO ET AL. (KR 10-2017-0129645).
Regarding claims 1-4, the Murata et al. reference discloses a rechargeable battery comprising a separator between a positive electrode (P108) and a negative electrode (P109-P116). The positive electrode comprises a positive active electrode material comprising lithium cobalt oxide and the separator (multilayer porous membrane) comprises a polyolefin resin porous membrane (Applicant’s claimed porous substrate with a sing layer) and a porous layer (also appears to be referred to as the multilayer or porous multilayer by Murata; Applicant’s claimed coating layer) on the surfaces of the polyolefin resin porous membrane (P14). The positive electrode surface face the porous membrane (P111). The porous substrate essentially consists of polyolefin (50% or more of polyolefin; P18-20) and the thickness of the porous substrate can be about 5 micron to about 12.5 micron and a heat shrinkage rate in the transverse direction of the separator is less than about 5% (Table 1). Specifically, the Murata reference discloses the multilayer porous membrane has a film thickness (total layer thickness) of preferably 7 microns (P89) for sufficiently securing the mechanical strength and a porous layer (also disclosed by Murata reference as multilayer; claimed coating layer) thickness comprises 0.5 or 2 microns for permeability and to achieving higher capacity of a battery (P76). Therefore, it would have been obvious to one of the ordinary skill in the art at the time of the invention to choose the instantly claimed value through process optimization, since it has been held that the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable values involve only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). As a result, the polyolefin resin porous membrane is within the range of 5-12.5 microns.
In addition, The Murata et al. reference teaches the porous layer to comprise an inorganic component with a binder. The Murata et al. reference teaches a broad teaching of the binder to be a methacrylic copolymer (P38) but is silent in disclosing the binder layer further comprises a first structural unit derived from methacrylamide, a second structural unit derived from methacrylonitrile and a third structural unit derived from methacrylamido sulfonic acid. However, OTSUKA ET AL. reference discloses a separator for a lithium-ion battery cell, the separator comprising (i) a polypropylene porous film and (ii) a protective film coated on the polypropylene porous film (P256 and P338). The protective film (similar to the disclosed porous layer taught by the Murata reference) comprises fillers of alumina, silica, zirconia and a binder (Otsuka et al. 2.2-2.2.1). The binder of the protective film comprises a polymer comprising (meth) acrylamide-derived repeating units and repeating units derived from α,β-unsaturated nitrile compound (e.g., methacrylonitrile; see P80-P86, P98-P100), the proportions of the (meth)acrylamide-derived repeating units is 50-85 parts by mass (P82), and the proportion of the repeating units derived from α,β-unsaturated nitrile compound is 0-30 parts by mass (P99-P100). OTSUKA ET AL. also discloses that the weight average molecular weight (Mw) of the water soluble polymer is 300,000 to 6,000,000 (P115). The protective film with the binder is to bind the inorganic components in that layer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the binder to bind the fillers comprising a polymer comprising (meth) acrylamide-derived repeating units and repeating units derived from α,β-unsaturated nitrile compound (e.g., methacrylonitrile; see P80-P86, P98-P100), the proportions of the (meth)acrylamide-derived repeating units is 50-85 parts by mass (P82), and the proportion of the repeating units derived from α,β-unsaturated nitrile compound is 0-30 parts by mass (P99-P100). OTSUKA ET AL. also discloses that the weight average molecular weight (Mw) of the water soluble polymer is 300,000 to 6,000,000 (P115) disclosed by the Otsuka et al. reference for the broad teachings of the methacrylic copolymer binder that binds the same oxide particles (Otsuka et al. reference discloses silica, alumina, zirconia) taught in the Murata et al. reference to effectively bind these oxide particles and to increase battery protection.
The Murata et al. in view of OTSUKA ET AL. reference (herein referred to as the modified Murata et al. reference) is silent in specifying the acrylic copolymer further comprises a third structural unit derived from (meth)acrylamidosulfonic acid, a (meth)acrylamidosulfonate, or a combination thereof and a content of each structural unit is numerically limited by mol%. However, KO ET AL. discloses 0.1-20 mol% of sulfonate-containing unit (e.g., 2-acrylamido-2-methylpropane sulfonic acid) with respect to the total amount of an acrylic heat-resistant binder, the adhesion, heat resistance, air permeability, and oxidation resistance of a separator are enhanced (claim 1 and P60-P63). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate 0.1-20 mol% of sulfonate-containing unit (e.g., 2-acrylamido-2-methylpropane sulfonic acid) with respect to the total amount of polymer since choosing the instantly claimed value through process optimization, since it has been held that the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable values involve only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding the range of 0.1-20 mol% for the third structural unit, the proportions of the (meth)acrylamide-derived repeating units is 50-85 parts by mass, α,β-unsaturated nitrile compound is 0-30 parts by mass, it is the Examiner’s position that the amounts in question are so close that it is a prima facie obvious that one skilled in the art would have expected them to have the same properties Titanium Metals Corp. v. Banner, 227 USPQ 773
Regarding claim 5, the modified Murata et al. reference in view of KO ET AL. discloses that the first, second and third structural unit but does not specify the (meth)acrylonitrile is included in an amount of 10 to 15 mol% based on 100 mol% of the (meth)acrylic copolymer, (meth)acrylamido sulfonic acid, (meth)acrylamido sulfonic acid salt, or a combination thereof is included in an amount of 5 to 10 mol% based on 100 mol% of the (meth)acrylic copolymer, (meth)acrylamide is included in an amount of 80 mol% to 85 mol% based on 100 mol% of the (meth)acrylic copolymer. However, the KO ET AL. reference discloses different structural unit, the heat resistance, air permeability, and oxidation resistance of a separator are enhanced. Therefore, it would have been obvious to one of the ordinary skill in the art at the time of the invention to choose the instantly claimed value through process optimization, since it has been held that the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable values involve only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding claim 6, the modified Murata et al. reference discloses the feature wherein the water-soluble polymer comprises repeating units derived from meth(acrylamide)
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wherein R1 is a hydrogen atom or a methyl group and repeating units derived from α,β-unsaturated nitrile compound (e.g. methacrylonitrile
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See (P80-P86, P98-100). This corresponds to the case where, in chemical formula I and II , x=y=0 and R2 is methyl. In addition, KO ET AL. discloses the feature wherein the acrylic binder comprises a sulfonate-containing unit represented by chemical formula 5-7 (claims 1-4). Chemical formula 5-7 corresponds to Chemical formula 3-5.
Regarding claim 7, the modified Murata et al. reference in view of the KO ET AL. reference is silent in disclosing a glass transition temperature of 150-180°C, however, such properties are inherent, given that both modified Murata et al. reference . in view of KO ET AL. and the present application utilize similar or the same materials. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. In re Robertson, 49 USPQ2d 1949 (1999). 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. MPEP2112.01 I
Regarding claim 8, modified Murata et al. reference in view of KO ET AL. is silent in specifying the (meth)acrylic copolymer is included in an amount of 1-5wt% based on a total amount of the coating layer, however, since the modified Murata et al. reference in view of KO ET AL. reference discloses the copolymers are for the heat resistance, air permeability, and oxidation resistance enhancement. Therefore, it would have been obvious to one of the ordinary skill in the art at the time of the invention to choose the instantly claimed value through process optimization, since it has been held that the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable values involve only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding claim 9 and 11, the modified Murata et al. reference discloses a slurry for forming the protective film comprises a filler of titanium oxide (P32).
Regarding claim 10, the modified Murata et al. reference in view of KO ET AL. discloses water-soluble polymer is included in an amount of 0.1-20 parts by mass with respect to 100 parts by mass of filler (P183). However, the KO ET AL. reference discloses different components enhances the heat resistance, air permeability, and oxidation resistance of a separator. Therefore, it would have been obvious to one of the ordinary skill in the art at the time of the invention to choose the instantly claimed value through process optimization, since it has been held that the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable values involve only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding claim 12, the OTSUKA ET AL. reference discloses that thickness of the protective film to be 0.5-4microns (P205).
Double Patenting
The nonstatutory double patenting rejection as being unpatentable over claims 1-11 of U.S. Application No. 17/296528 in view of Murata (EP2116372) or Murata in view of 17/296528 are maintain. The rejections are repeated below for convenience.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Application No. 17/296528 in view of Murata (EP2116372) or Murata in view of 17/296528
Regarding claims 1-5 and 12, the Murata et al. reference discloses a rechargeable battery comprising a separator between a positive electrode (P108) and a negative electrode (P109-P116). The positive electrode comprises a positive active electrode material comprising lithium cobalt oxide and the separator (multilayer porous membrane) comprises a polyolefin resin porous membrane (Applicant’s claimed porous substrate with a sing layer) and a porous layer (also appears to be referred to as the multilayer or porous multilayer by Murata; Applicant’s claimed coating layer) on the surfaces of the polyolefin resin porous membrane (P14). The positive electrode surface face the porous membrane (P111). The porous substrate essentially consists of polyolefin (50% or more of polyolefin; P18-20) and the thickness of the porous substrate can be about 5 micron to about 12.5 micron and a heat shrinkage rate in the transverse direction of the separator is less than about 5% (Table 1). Specifically, the Murata reference discloses the multilayer porous membrane has a film thickness (total layer thickness) of preferably 7 microns (P89) for sufficiently securing the mechanical strength and a porous layer (also disclosed by Murata reference as multilayer; claimed coating layer) thickness comprises 0.5 or 2 microns for permeability and to achieving higher capacity of a battery (P76). Therefore, it would have been obvious to one of the ordinary skill in the art at the time of the invention to choose the instantly claimed value through process optimization, since it has been held that the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable values involve only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). As a result, the polyolefin resin porous membrane is within the range of 5-12.5 microns.
In addition, The Murata et al. reference teaches the porous layer to comprise an inorganic component with a binder. The Murata et al. reference teaches a broad teaching of the binder to be a methacrylic copolymer (P38) but is silent in disclosing the binder layer further comprises a first structural unit derived from methacrylamide, a second structural unit derived from methacrylonitrile and a third structural unit derived from methacrylamido sulfonic acid. However, the 17296528 reference discloses a separator for a lithium secondary battery, comprising a porous substrate and a coating layer on at least one surface of the porous substrate wherein the coating layer comprises an (meth)acrylic copolymer including a first structural unit, a second structural unit, and a third structural unit, the first structural unit is derived from (meth)acrylamide, the second structural unit is derived from (meth)acrylonitrile, and the third structural unit is derived from (meth)acrylamido sulfonic acid, (meth)acrylamido sulfonic acid salt, or a combination thereof, the first structural unit is included in an amount of 80 mol% to 90 mol% based on 100 mol% of the (meth)acrylic copolymer, the second structural unit is included in an amount of 5 mol% to 15 mol% based on 100 mol% of the (meth)acrylic copolymer, and third structural unit (meth)acrylamide, the second structural unit is derived from (meth)acrylonitrile, and the third structural unit is derived from (meth)acrylamido sulfonic acid, (meth)acrylamido sulfonic acid salt, or a combination thereof, the first structural unit is included in an amount of 80 mol% to 90 mol% based on 100 mol% of the (meth)acrylic copolymer, the second structural unit is included in an amount of 5 mol% to 15 mol% based on 100 mol% of the (meth)acrylic copolymer, and third structural unit
Regarding claims 6-12, these claims are identical to claims 4-10
Response to Arguments
Applicant's arguments filed 10/28/25 have been fully considered but they are not persuasive.
The Applicant’s arguments are
“In the interest of advancing prosecution of the present application, and without acquiescing to the rejection, claim 1 is amended to recite, in part (emphasis added), "wherein the porous substrate is a single layer that essentially consists of polyolefin and the thickness of the porous substrate is about 5 pm
to 12.5 pm." Applicant submits that a "multilayer" as cited in the Office action does not read on the above recited features. Further, even though the Office states that "Applicant's specification teaches a range that would include those taught in the Examples of Murata,” claim 1 recites, in part, "the thickness of the porous substrate is about 5 pm to 12.5 pm."
However, the Murata et al. reference defines the separator to be the multilayer porous membrane to comprise the polyolefin resin porous membrane with a porous layer on the polyolefin resin porous membrane. The porous layer appears to be interchangeably disclosed as the multilayer by the Murata et al. reference. The Murata reference discloses the multilayer porous membrane has a film thickness (total layer thickness) of preferably 7 microns (P89) for sufficiently securing the mechanical strength and a porous layer (also disclosed by Murata reference as multilayer; Applicant’s claimed coating layer) thickness comprises 0.5 or 2 microns for permeability and to achieving higher capacity of a battery (P76). Therefore, it would have been obvious to one of the ordinary skill in the art at the time of the invention to choose the instantly claimed value through process optimization, since it has been held that the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable values involve only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). As a result, the polyolefin resin porous membrane is within the range of 5-12.5 microns. Furthermore, the Applicant’s specification discloses the claimed porous substrate can be 1-40 microns (Applicant’s Paragraph [0028] which is within range of the specific example in Table 1 of the Murata reference i.e. polyolefin resin porous membrane of 16 microns).
Conclusion
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752