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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/01/2024, 03/12/2025, 10/03/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Amendment
The amendments filed on 08/22/2024 and 02/14/2025 have been entered. Claims 1, 7-8, 10-11, 13, 17-18, 20-22 and 24 are amended and Claims 1-24 are pending.
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 3-5, 21-22 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 3-5 recite the limitation “the wire type particle" and “the three-dimensional structured particle” and claim 2, from which they depend introduces plural wire type particles and plural three dimensional structured particles. This creates ambiguity of which individual particle is measured or must every particle meet the range or is it an average measurement. Appropriate correction is required for clarification.
Claims 21-22 introduce a first heat resistant layer and a first shutdown filler and Claim 1 from which they depend already introduces a heat-resistant layer and shutdown filler so ambiguity is present as to whether there are additional layers or shutdown fillers beyond the layer and filler in claim 1. Appropriate correction is required for clarification.
Claim 21 also recites the limitation “the first surface” in Line 2 of claim 21. There is insufficient antecedent basis for this limitation in the claim.
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 1-4, 7, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (US 20220311093 A1), hereinafter "Ji". Ji et al. is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claims 1-2, 7, 13, 18 and 21, Ji et al. discloses a separator for a rechargeable lithium battery (Ji, [0016]), the separator comprising a substrate comprising polyolefin and a heat resistant layer on at least one surface of the substrate (Ji, [0014, 0030, 0061]), wherein the heat resistant layer may reasonably include heterogeneous particles having different shapes, i.e. three-dimensional structured spherical particles (Ji, [0043]) and wire-type nanocellulose i.e. cellulose nanofibers (Ji, [0061-0064]), wherein the separator may further comprise a shutdown filler (third organic particles) inside the heat resistant layer (Ji, [0065-0066, 0069, 0077]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a spherical first particle and a wire type particle (cellulose nanofiber) included in the heat resistant layer with the shutdown filler as disclosed in Ji as doing so is a combination the skilled artisan can reasonably envisage and as doing so would amount to nothing more than selecting an expressly suggested combination with predictable complementary functions.
In regard to Claims 3-5, Ji et al. discloses the separator for a rechargeable lithium battery of claims 1 and 2. Ji et al. also discloses a diameter of the three-dimensional structured particle is 300-700nm (Ji, [0040]) which anticipates the claimed range, a length of the wire-type particle is 1-500nm (Ji, [0064]) which overlaps the claimed range, a diameter of the wire-type particle is 1-300nm (Ji, [0063]) which overlaps the claimed range and wherein a ratio of a length of the wire-type particle and a diameter of the three-dimensional structured particle is calculated to be 0.00143-1.6667 (Ji, [0040, 0043, 0064]) which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. 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.
In regard to Claim 8, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses wire-type particles and three-dimensional structured particles (first and second particles) included in a heat-resistant layer wherein the wherein the three-dimensional structured particles comprises an organic filler (Ji, [0047-0048]).
In regard to Claim 10, Ji et al. discloses the separator for a rechargeable lithium battery of claim 8. Ji et al. also discloses an organic filler comprising a crosslinked acrylate-based copolymer (Ji, [0052]).
With respect to the limitations of Claims 11-12, it is noted that the limitations are directed to non-selected options of parent claim 8. For example, claim 8 explicitly recites that "at least one of an organic filler and an inorganic filler" (emphasis added). Accordingly, the limitations of claims 11-12 are reasonably considered to be optional limitations which depend upon the selection of an inorganic filler recited in claim 8, and which in this case have not been selected because Ji discloses the use of organic fillers, as noted above.
In regard to Claims 15-16, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses wherein a glass transition temperature (Tg) of the shutdown filler is 100° C to about 130° C (Ji, [0067]), which overlaps the claimed range and the particle diameter is 0.1 μm to about 1 μm (Ji, [0068]), which anticipates the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. 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.
In regard to Claim 19, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses wherein the substrate has a thickness about 1 μm to about 30 μm (Ji, [0034]), which anticipates the claimed range.
In regard to Claim 20, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses wherein a thickness of the heat resistant layer is 0.3 μm to about 3.0 μm (Ji, [0060]), which anticipates the claimed range.
In regard to Claim 22, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses wherein: a first heat resistant layer is on the first surface of the substrate; a second heat resistant layer is on the second surface of the substrate; a first shutdown filler is inside the first heat resistant layer and a second shutdown filler is inside the second heat resistant layer (Ji, [0065, 0073-0074, 0076]) which is an obvious variation of the separator of Ji.
In regard to Claim 24, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses a rechargeable lithium battery, comprising; a positive electrode; a negative electrode; and the separator for a rechargeable lithium battery claim 1between the positive electrode and the negative electrode (Ji, [0086]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (US 20220311093 A1), hereinafter "Ji" as applied to claim 1 above in view of Wang et al. (US 20210280947 A1), hereinafter "Wang". Ji and Wang et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claim 6, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses wire-type particles and three-dimensional structured particles included in a heat-resistant layer but is silent as to the weight ratio of the particles. However, the skilled artisan of Ji must supply the particles in some loading and would easily be able to optimize the weight ratio without undue experimentation.
Further, the skilled artisan would be well aware of the weight ratio of wire type particles and three-dimensional structured particles in a heat resistant layer in a preferred range as evidenced by Wang et al. which discloses a separator comprising a substrate and a heat resistant layer wherein the heat resistant layer includes heterogeneous particles having different shapes and includes a cellulose nanofiber (wire-type) and three-dimensional structured particles in a preferred weight ratio of 0.1:1 to 5:1 3D particle: nanowire which is equivalent to 10:1 to 1:5 weight ratio of the wire-type particles and the three-dimensional structured particles (Wang, Claims 3 and 16), which anticipates the claimed range.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the wire-type particles and the three-dimensional structured particles of Ji at a weight ratio disclosed in Wang as doing so would be obvious to try for the skilled artisan and as doing so would amount to nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (US 20220311093 A1), hereinafter "Ji" as applied to claim 1 above in view of Lee et al (US 20200403205 A1), hereinafter "Lee". Ji and Lee et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claim 9, Ji et al. discloses the separator for a rechargeable lithium battery of claim 8. Ji et al. also discloses an organic filler particle in the heat-resistant layer comprising PMMA (Ji, Preparation Example 1) but is silent as to the weight average molecular weight of the organic filler.
However, the skilled artisan of Lee must supply the organic filler particles with some known molecular weight and would be well aware of the variation in material properties when selecting the molecular weight as evidenced by Lee et al. which discloses a separator with a heat resistant layer comprising organic filler particles consisting of PMMA wherein the organic filler particles have a preferred weight average molecular weight of 10,000-300,000 (Lee, [0037, 0045, 0055, 0098-0099]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the organic filler particles as disclosed in Ji with a molecular weight withing the range taught in Lee as doing so would give the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than known work the same field of endeavor prompting an obvious variation of it for use.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (US 20220311093 A1), hereinafter "Ji" as applied to claim 1 above in view of Kamiki et al. (JP 5709008 B2 - Machine Translation referenced for citation), hereinafter "Kamiki". Ji and Kamiki et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claim 14, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses a heat-resistant layer and a shutdown filler but is silent as to the weight ratio of the two.
However, the skilled artisan of Ji must provide the two in some measurable weight ratio and would reasonably optimize the weight ratio as evidenced by Kamiki et al. which discloses a separator with a substrate and heat resistant layer comprising a shutdown filler wherein the weight ratio of the two is calculated from the materials to be (100+4):25 normalized to 80.62:19.38 (Kamiki, [78, 112], Sample 1), which anticipates the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the heat resistant layer and shutdown filler of Ji in a weight ratio as taught in Kamiki as doing so would be obvious to try for the skilled artisan and as doing so would amount to use of a known component for its intended use in a known environment to accomplish an entirely predictable result.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (US 20220311093 A1), hereinafter "Ji" as applied to claim 1 above in view of Gao et al. (WO 2021217496 A1 - US 20230170536 A1 referenced for citation), hereinafter "Gao". Ji and Gao et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claim 17, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses a shutdown filler comprising a polyethylene (Ji, [0069]) but is silent as to the type.
However, the skilled artisan would be well aware of materials comprising polyethylene used for shutdown fillers in the same field as evidenced Gao by which discloses a separator comprising a shutdown filler which is LDPE wherein this material has the advantage of coalescing into an ion-blocking coating to suppress thermal runaway (Gao, Abstract, [0018, 0044]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide LDPE as a shutdown filler as taught in Gao as the polyethylene shutdown filler of Ji as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Gao and as doing so would amount to nothing more than a simple substitution of one known element for another to obtain predictable results.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (US 20220311093 A1), hereinafter "Ji" as applied to claim 1 above in view of Choi et al. (US 20200388808 A1), hereinafter "Choi". Ji and Choi et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely separator materials.
In regard to Claim 23, Ji et al. discloses the separator for a rechargeable lithium battery of claim 1. Ji et al. also discloses inhibiting shrinkage (Ji, [0048]) but is silent as to the shrinkage rate.
However, it is submitted that such limitations are simply measurements of, and thus descriptions of properties of the material and the skilled artisan would be well aware of reducing the shrinkage to certain % as evidenced by Choi et al. which discloses a separator with a heat resistant layer and shutdown filler wherein the separator has an average shrinkage rate of less than or equal to 5% in the longitudinal direction (MD direction) and the transverse direction (TD direction) measured after exposure at 150 to 250 °C for 1 hour (Choi, [0194, 0202], Table 2, Example 6).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the separator with heat resistant layer and shutdown filler in Ji with a shrinkage of less than 5% as taught in Choi as doing so would be aligned with the desire to inhibit shrinkage as disclosed in Ji and as doing so would amount to nothing more than a variation of it for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13, 18 and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/729105 in view of Ji et al. (US 20220311093 A1), hereinafter "Ji".
Claim 1 recites the limitations regarding a separator for a rechargeable lithium battery, comprising a substrate, a heat resistance layer wherein the heat-resistant layer includes heterogeneous particles having different shapes and a shutdown filler on, under or inside the heat resistant layer. The difference between the current application’s claim 1 and the claim 1 of the reference application is the requirement for a shutdown filler. Ji et al. disclose a separator for a rechargeable lithium battery, comprising a substrate, a heat resistance layer wherein the heat-resistant layer includes heterogeneous particles having different shapes and a shutdown filler on, under or inside the heat resistant layer wherein the advantage of the shutdown filler in the heat resistant layer is heat triggered pore blocking and suppress thermal runaway using the known particle additive. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a shutdown filler to the heat resistant layer of the reference application as doing so would give the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than the use of a known technique to improve similar devices (methods, or products) in the same way.
Claims 2-13 of the current application correspond to claims 2-13 of the reference application.
Claim 18 of the surrent application corresponds to claim 17 of the reference application.
Claim 24 of the surrent application corresponds to claim 24 of the reference application in view
of Ji.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at (571) 270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.M.O./Examiner, Art Unit 1725
/JONATHAN CREPEAU/Primary Examiner, Art Unit 1725
Prosecution Insights