Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant's election with traverse of Group I, Species C in the reply filed on 10 July 2026 is acknowledged. The traversal is on the grounds that regardless of which thickness is elected, examination will require searching the same underlying separator architecture, including the same substrate/OLEN arrangement, the same electro-spun OLEN layer, and the same interface relationship between the OLEN and substrate. The prior art relevant to one OLEN thickness would be expected to substantially overlap with the prior art relevant to the other recited OLEN thicknesses because the alleged distinction among the species is only a dimensional variation of the same separator component. This is not found persuasive because as seen in the prior art below, the layer thickness of the OLEN does vary in the prior art, such that only a single species is disclosed, and searching for additional ranges for the OLEN thickness would require separate searches and multiple parallel lines of rejection which would impose an undue burden on examination. If a claim generic to the ranges becomes allowable, the different species will be rejoined for allowance.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 13/193,691 and 16/934,828, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, the prior applications and the instant specification fail to provide support for claims 3 and 6 as there is no disclosure of ribs in the previous applications.
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 1-10, 12-18, 21 and 24-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,720,624. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims already require a non-shutdown microporous battery separator membrane that prevents contact between the anode and cathode when the battery is maintained at elevated temperatures for a period of time comprises: a porous polymeric membrane; and a coating on at least one side of said porous polymeric membrane comprising electrospun non-porous fibers of polybenzimidazole (PBI), the basis weight of the PBI electrospun coating is from 1.0 to 8.0 g/m2 and having a coating thickness from 4 to 7 microns in a manner which obviates the instant claims.
Claims 1-10, 12-18, 21 and 24-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,100,548. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims already require A battery separator for use as a high melt temperature microporous Lithium-ion rechargeable battery separator, comprising: a base membrane, made by a dry stretch process and composed of one or more polyolefin polymers, and coated with a high glass transition (Tg) polymeric coating which comprises one or more high Tg polymers selected from the group consisting of: polyimidazoles, polybenzimidazole (PBI), polyketones, and combinations thereof and having a Tg greater than 165°C, and which is soluble in at least one moderately volatile solvent, wherein the high Tg polymeric coating comprises a plurality of electrospun nanofibers of the one or more high Tg polymers and fumed alumina particles, and wherein one or both of (a) the base membrane is a multi-layered membrane and (b) the base membrane is pre-treated with priming, stretching, corona treatment, plasma treatment, and/or surfactant coating on one or both sides of the base membrane in a manner which obviates the instant claims.
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 1-10, 12-18, 21 and 24-27 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.
These claims require a list of limitations: “the substrate has a substrate interface facing the OLEN, the OLEN has an OLEN interface facing the substrate, the substrate interface and the OLEN interface are entangled with each other, or the OLEN bonds with the substrate interface by applying a solution or slurry of the OLEN onto the substrate; a ratio of the thickness of the OLEN to that of the substrate is 1:2 to 1:50; the substrate is provided with micropores, a sum of areas of all the micropores on the surface of the substrate comprises 20-80% of a total area of the substrate; and/or a composite coating is provided on an inner surface of at least some micropores.”
It is unclear if the “and/or” at the end of the claims intends to modify all of the limitations listed, such that only one of the elements is required (i.e. there is an “or” between each limitation). For the purpose of examination, each limitation is taken to be in addition or in the alternative because of the presence of the “and/or” which appears to modify each clause of the claims. This “and/or” claim structure language is present in claims 1, 2, 4 and 5.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1, 2, 4, 5, 7-10, 12-18, 21 and 24-27 are rejected under 35 U.S.C. 102(a)(1 or 2) as being anticipated by, or in the alternative under 35 U.S.C. 103, obvious in view of Cho et al. (KR 100470314 B1 a copy and machine translation of which are provided).
In regard to claim 1, Cho et al. teach a battery separator, wherein said battery separator comprises a substrate (polyolefin base film such as Celgard PE single film – paragraph [0032] of machine translation) and an outer layer of electro-spun “noodles” (OLEN) (nanofibers of electrospun fiber – paragraphs [0034-0043]), and the OLEN is provided on at least one side of the substrate (or both – paragraph [0034]), the substrate has a substrate interface facing the OLEN, the OLEN has an OLEN interface facing the substrate, the substrate interface and the OLEN interface are entangled with each other, or the OLEN bonds with the substrate interface by applying a solution or slurry of the OLEN onto the substrate (paragraph [0040-44]); a ratio of the thickness of the OLEN to that of the substrate is 1:2 (Example 3, paragraphs [0076-0081] – “PE membrane serving as the strength supporting layer had a thickness of 21 μm” “Filaments constituting the membrane on the PE film produced through the above apparatus had a diameter of 300 to 1,000 nm and a film thickness of 10 μm, respectively.” and “[0081] The composite membrane thus obtained had a total thickness of 30 μm, porosity of 45%” - see also more generally “thickness of the polyolefin microporous membrane used in the composite membrane of the present invention is 5 to 50 μm” – paragraph [0033]; the substrate is provided with micropores, a sum of areas of all the micropores on the surface of the substrate comprises 20-80% of a total area of the substrate (porosity such as 45% in Example 3 above); and/or a composite coating is provided on an inner surface of at least some micropores (naturally occurring function of the electrospun fiber size and pore size of the PE membrane) which encompasses the claimed Chemical Formula with sufficient specificity in a manner which anticipates the claimed range (MPEP 2131.03) or in the alternative, establishes a prima face case of obviousness over the claimed range as substantially overlapping the claimed range (MPEP 2144.05).
In regard to claim 2, 8-17 and 21, Cho et al. teach the battery separator of Claim 1, where Example 3 includes a thickness of said substrate is 21μm; a thickness of the OLEN is 10μm; a thickness of the OLEN comprises 33% of a thickness of the separator; and/or the battery separator has a thickness of 30μm (Example 3, paragraphs [0076-0081] – “PE membrane serving as the strength supporting layer had a thickness of 21 μm” “Filaments constituting the membrane on the PE film produced through the above apparatus had a diameter of 300 to 1,000 nm and a film thickness of 10 μm, respectively.” and “[0081] The composite membrane thus obtained had a total thickness of 30 μm, porosity of 45%, MFPS of 0.304 μm, maximum pore size of 1.10 μm, and mechanical properties were the same as those of the PE porous film.” - see also more generally “thickness of the polyolefin microporous membrane used in the composite membrane of the present invention is 5 to 50 μm” – paragraph [0033], where the porous membrane web coating may be 50 micron or less, such as preferable 3 microns (paragraph [0043]) which encompasses the claimed ranges with sufficient specificity in a manner which anticipates the claimed range (MPEP 2131.03) or in the alternative, establishes a prima face case of obviousness over the claimed range as substantially overlapping the claimed range (MPEP 2144.05).
In regard to claim 4, Cho et al. teach the battery separator of Claim 1, wherein the substrate has a pre-treated surface (treated via stretching – paragraph [0044]).
In regard to claim 5, Cho et al. teach the battery separator of Claim 1, wherein the substrate is a porous membrane or a microporous membrane, which is a single layer membrane, a bi-layer membrane, a tri-layer membrane or a multi-layer membrane (paragraph [0033]) and the battery separator is a battery separator which is used in a lithium-ion rechargeable battery, cell, pack, battery, accumulator, or capacitor (paragraph [0013]).
In regard to claim 7, Cho et al. teach the battery separator of Claim 1, wherein the ratio of the thickness of the OLEN to that of the substrate is 1:5 in Example 4 (electrospun film thickness of 5-micron paragraph [0085], PE membrane thickness 25 micron – paragraphs [0083]).
In regard to claim 24-28, Cho et al. teach a free-standing ultra-high melt temperature microporous battery separator that prevents contact between the anode and cathode when the battery is maintained at elevated temperatures for a period of time comprising:
a porous membrane (PE membrane – paragraph [0032-0033]); and
a coating on at least one side of said porous membrane comprising a plurality of high glass transition temperature (Tg) polymer nanofibers (such as PMMA copolymer – paragraph [0035]) on said microporous membrane and said high glass transition temperature (Tg) polymer having a glass transition temperature (Tg) approaching 160°C which encompasses the claimed range with sufficient specificity in a manner which anticipates the claimed range (MPEP 2131.03) or in the alternative, establishes a prima face case of obviousness over the claimed range as substantially overlapping the claimed range (MPEP 2144.05),
which is provided on at least one side of said porous membrane (paragraph [0034]).
As the structure of the prior art is indistinguishable from the claims, the microporous membrane of the prior art is presumed to continue to provide a level of battery function when the battery is maintained at elevated temperatures of up to 250°C in a lithium-ion rechargeable battery, cell, pack, battery, accumulator, or capacitor (MPEP 2112.01).
Claim Rejections - 35 USC § 103
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. as applied to claim 1, and further in view of Young et al. (US Patent No. 6,132,899 newly cited).
In regard to claim 3 and 6, Cho et al. teach the battery separator of Claim 1, but does not disclose wherein on at least one surface of the substrate, there is provided ribs which are horizontal, vertical, slant or curved; pitches among ribs are the same as each other, or becomes wider, narrower or progressively changed, which are continuous or discontinuous.
However, Young et al. teach a similar separator formed of a PE membrane substrate and the desirability to form on at least one surface of the substrate, there is provided ribs 14 , 25 etc. which are horizontal, vertical, slant or curved; pitches among ribs are the same as each other, or becomes wider, narrower or progressively changed, wherein said ribs are continuous or discontinuous (in reply to claim 6) because such aids in electrolyte absorption and maintains fixed distance between the elements of the electrode assembly (see columns 2-5, figures 1-5).
Therefore, it would have been obvious to one of ordinary skill in the art at or before the effective filing date of the claimed invention filed to include a plurality of continuous or discontinuous ribs of various or uniform pitch on the surface of the PE membrane of Cho et al. as such enhances the electrochemical properties of the battery including the separator as taught by Young et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hashimoto et al. (US Pub 2010/0316912 newly cited) teaches a similar fiber coated PE membrane separator (see Examples).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS P D'ANIELLO whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723
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