Detailed Office Action
Applicant’s amendment and arguments dated 7/24/2026 have been entered and fully considered. Claim 1 is amended. Claims 1-5 remain pending.
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 .
Response to Amendment and Arguments
Amendment to claim 1 is acknowledged. This amendment is addressed below in the 35 USC 103 section over a new prior art.
The Examiner maintains the double patenting rejection previously set forth in the non-final office action of 4/24/2026, since no argument, as yet, has been presented disputing this rejection.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over CHO (US-2018/0226623 – of record), hereinafter CHO, in view of TAKAMORI (US-2023/0275319), hereinafter TAKAMORI. Note that the italicized text below are the instant claims.
Regarding claim 1, CHO discloses An electrode assembly, comprising a plurality of electrodes arranged in a stack along a stacking axis with a respective separator portion positioned between each of the electrodes in the stack, the plurality of electrodes including a top one of the plurality of electrodes positioned at a top of the stack along the stacking axis, an intermediate one of the plurality of electrodes positioned between the top electrode and the bottom electrode along the stacking axis, and a bottom one of the plurality of electrodes positioned at a bottom of the stack along the stacking axis, and the separator portions including a top one of the separator portions abutting the top electrode, an intermediate one of the separator portions abutting the intermediate electrode, and a bottom one of the separator portions abutting the bottom electrode {[abstract], [FIG. 1] note the vertical axis of the stack, top electrode, bottom electrode and intermediate electrodes 110 each abutting a separator 120},
wherein the deviations between the air permeability of the intermediate separator portion and the air permeability of the top separator portion or the bottom separator portion of 1 square inch under the pressure condition of 0.05 MPa and at room temperature is less than 20 sec/100ml {[0034] note all separators 120 are the same, thus the deviation between air permeability is near zero that meets this limitation}.
CHO, however, is silent on the last limitation of claim 1 reciting “and wherein the air permeability of the intermediate separator portion is lower than the air permeability of the top separator portion or the bottom separator portion”. The Examiner notes that as shown above the differences between the air permeability of the top, intermediate, and bottom separators of CHO is near zero that allows for further modification to CHO’s electrode assembly to impart small differences between these air permeabilities.
The Examiner also notes that without showing unexpected results, the claimed lower air permeability of the intermediate separator cannot be considered critical. As a matter of fact, throughout the instant disclosure, it is highly emphasized that the main purpose of the invention is to obtain uniform properties for all the separators and therefore, lower air permeability of the intermediate separator is not recognized as critical.
In the same field of endeavor that is related to separators for energy storage device, TAKAMORI teaches that the parameter of air permeability of the separator can be adjusted to prevent self-discharges (limit of the low values) and also obtain satisfactory air permeability (limit of high values) {[0199]}. Therefore, TAKAMORI recognizes this parameter as a result effective variable, affecting the performance of the battery or the energy storage device.
It is well established that determination of optimum values of result-effective variables (in this case the air permeability of various separators on battery performance) is within the skill of one practicing in the art {see MPEP 2144.05 (ll)(B)}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have optimized all the air permeabilities of various separators, which is a result-effective variable through routine experimentation to have determined the optimum performance of the battery, which in some cases, may result in slightly lower intermediate separator air permeability as compared to the top and/or bottom separators.
Regarding claims 2-4, CHO discloses wherein the air permeability of the top separator portion of 1 square inch under the pressure condition of 0.05 MPa and at room temperature is less than 120 sec/100ml (claims 2), wherein the air permeability of the intermediate separator portion of 1 square inch under the pressure condition of 0.05 MPa and at room temperature is less than 120 sec/100ml (claim 3), wherein the air permeability of the bottom separator portion of 1 square inch under the pressure condition of 0.05 MPa and at room temperature is less than 120 sec/100ml (claim 4) {[0053]}.
The Examiner notes that the unit of air permeability disclosed by CHO maybe different from the instant claim, however both recite a range of a less than a value, thus overlapping.
In the case where the claimed values encompass or equal to the ranges disclosed by CHO, the instant claims 2-4 are anticipated.
In the case where the ranges disclosed by CHO encompasses the claimed ranges, A prima facie case of obviousness is established since a claimed narrow range is within a broad prior art range {see MPEP 2144.05 (I)}.
In the alternative, and as discussed above under claim 1, TAKAMORI recognizes air permeability as a result effective variable and therefore as outlined above, obtaining appropriate values is within the skill of an artisan.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of CHO and TAKAMORI as applied to claim 1 above, and further as evidenced by CHUN (US-2020/0227788 – of record), hereinafter CHUN. The Examiner notes that CHUN is an evidentiary document and not a prior art rejection.
Regarding claim 5, the combination of CHO and TAKAMORI discloses all the limitations of claim 1 as discussed above.
Furthermore and regarding claim 5, CHO discloses wherein the intermediate separator portion is adhered to the intermediate electrode to a degree that it would take a first peel force per 55 mm width of the intermediate separator portion applied to an edge of the intermediate separator portion in order to peel the intermediate separator portion away from the intermediate electrode at a speed of 100 mm/min along the stacking axis, wherein the top and bottom separator portions are adhered to the respective top and bottom electrodes to a degree that it would take a second peel force per 55 mm width of the respective top and bottom separator portions applied to an edge of the respective top and bottom separator portion in order to peel the respective top and bottom separator portion away from the respective top and bottom electrode at a speed of 100 mm/min along the stacking axis, and wherein a difference between the first peel force and the second peel force is less than 15 gf/20 mm {[abstract], [FIG. 1]; note as evidenced by CHUN in its abstract, all the stack together is hot pressed, thus each of the top, bottom and intermediate separator is adhered to its respective electrode under the same condition(s), thus the difference between the peel force to sperate the separator from its respective electrode is near zero and that meets the limitations above}.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-19 of copending Application No. 18/403,361 (hereinafter APPL361), in view of TAKAMORI.
All the limitations of claim 1 is claimed by claim 16 of APPL361, except for the last amended limitation of “and wherein the air permeability of the intermediate separator portion is lower than the air permeability of the top separator portion or the bottom separator portion”.
In the same field of endeavor that is related to separators for energy storage device, TAKAMORI teaches that the parameter of air permeability of the separator can be adjusted to prevent self-discharges (limit of the low values) and also obtain satisfactory air permeability (limit of high values) {[0199]}. Therefore, TAKAMORI recognizes this parameter as a result effective variable, affecting the performance of the battery or the energy storage device.
It is well established that determination of optimum values of result-effective variables (in this case the air permeability of various separators on battery performance) is within the skill of one practicing in the art {see MPEP 2144.05 (ll)(B)}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have optimized all the air permeabilities of various separators, which is a result-effective variable through routine experimentation to have determined the optimum performance of the battery, which in some cases, may result in slightly lower intermediate separator air permeability as compared to the top and/or bottom separators.
Claims 2-4 are claimed by claims 17-18 of APPL361.
Claim 5 is claimed by claim 19 of APPL361.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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, Abbas Rashid can be reached at 571-270-7457. 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.
/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
Prosecution Insights