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 .
Status of Claims
Claims 1-20 are pending and examined below.
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 8-11 and 14-17 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.
The preamble of claims 8, 10 and 11 claim more than one invention. Specifically, claims 8 and 10 recite in the preamble a 1) battery separator or 2) a separator membrane; claim 11 recites in the preamble a 1) battery separator, 2) a separator membrane, or 3) a base film. The claims are indefinite as it is unclear what device is being claimed a battery separator, a separator, or in the case of claim 11, a base film. Claims 9 and 14-17 are rejected as dependent on claims 8, 10 or 11.
Regarding claim 11, is indefinite as the claim recites “which may provide improved strength”. The claim is indefinite as it is unclear as to what membrane the instant membrane has improved strength. Additionally, the words “may provide” means it may not provide. It is unclear whether the limitation is a requirement. Claim 15 is rejected as being dependent on claim 11.
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 2 is 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.
Claim 2 recites the lamination of the microporous polyolefin membrane laminated to a second polyolefin membrane. This fails to further limit the claim, i.e. two microporous membrane or sub-membrane, each comprising a plurality of co-extruded microporous polyolefin microlayers or nanolayers laminated to each other. Alternatively, claim 2 is reciting that the microporous polyolefin membrane laminate of the preamble is laminated to a second membrane of the preamble, which is intended use and fails to further limit claim 1.
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.
Claim Interpretation
The examiner is interpreting claim 2 as a membrane of claim 1 is laminated to a second membrane of claim 1, thereby claiming intended use. This interpretation is based on the claim language that specifically uses the language in the preamble.
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.
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.
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 non-obviousness.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kono et al. (US 2003/0211954) in view of Jeon et al. (US 2015/0183195).
Regarding claim 1, Kono discloses a microporous polyolefin membrane (see para [0025]) comprising:
at least two microporous membranes or sub-membranes each comprising a plurality of microporous polyolefin microlayers or nanolayers (i.e. film A/film B, the two membranes/sub-membranes separated by film C, see para [0021]-[0022] and [0025]), with said at least two microporous membranes or sub-membranes laminated to one another (see para [0013]).
Kono discloses the layers of the multi-layer membrane are separately extruded (see para [0029]). Kono does not disclose the two multi-layer microporous polyolefin films, i.e., film A/film B layers, separated by film C, are co-extruded thereby forming a plurality of co-extruded microporous polyolefin microlayers or nanolayers. Examiner note: film C in at least one embodiment cannot be stretched as lacking porosity and therefore would not be part of the co-extrusion and layer stretch process.
Jeon is analogous art to Kono as Jeon discloses a method of forming multi-layer microporous polyolefin membranes (see abstract and para [0003]). Jeon discloses a dry-process co-extruded process to form the microporous polyolefin membrane (see para [0010]). Jeon discloses the co-extruded method increases peel strength and superior permeability (see para [0016]).
Therefore, it would be obvious to a person having ordinary skill in the art to modify two microporous polyolefin multi-layers, i.e., film A/film B, to be formed by the co-extruded process of Jeon as the process increases permeability and peel strength between layers.
Further, the court has held it would be obvious to a person having ordinary skill in the art to use a known technique, i.e., dry-process (stretch to form pores) co-extruded multi-layers, to improve similar devices, i.e. microporous polyolefin multi-layer membranes, wherein the result is predictable, i.e., a multi-layer film A/film B.
Regarding claim 2, modified Kono discloses a microporous polyolefin membrane of claim 1.
The limitation wherein said microporous polyolefin membrane is laminated to a microporous polymer membrane is intended use and is given weight to the extent the prior art is able to perform the intended use. The microporous membrane of claim 1 is able to perform the intended use of further lamination.
Regarding claim 3, modified Kono discloses a microporous polyolefin membrane of claim 1, wherein at least one of said separator membranes or sub-membranes of co-extruded microporous polyolefin microlayers or nanolayers has at least three microlayers or nanolayers (see Jeon para [0021]).
The court has held it would be obvious to a person having ordinary skill in the art to merely duplicate parts as mere duplication has no patentable significance unless a new and unexpected result is produced. See MPEP § 2144.04.
Regarding claim 4, modified Kono discloses a microporous polyolefin membrane of claim 1 wherein at least one of said membranes or sub-membranes is made of one or more polypropylenes or polyethylenes (see Kono para [0025]).
Regarding claim 5, modified Kono discloses a microporous polyolefin membrane of claim 1 wherein at least one of said membranes or sub-membranes is made of coextruded dry process polyolefin microlayers or nanolayers (see Jeon para [0004], i.e., dry-process is co-extruded or extruded followed by stretching, see also abstract, para [0010]).
Regarding claims 6 and 7, modified Kono discloses a microporous polyolefin membrane of claim 1, but does not disclose wherein the microporous polyolefin membrane comprises at least three of said membranes or sub-membranes (claim 6); comprises at least four of said membranes or sub-membranes.
It would be obvious to a person having ordinary skill in the art to utilize the number of recited membranes or sub-membranes to achieve a desired thickness as the court has held the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP § 2144.04.
Regarding claim 12, Kono in view of Jeon discloses a dry process (see Jeon abstract, para [0004] and [0010]) microporous polyolefin membrane (see Kono abstract and para [0025]) comprising:
at least two microporous membranes or sub-membranes (see para [0021]-[0022]) each comprising a plurality of co-extruded dry process (see Jeon para [0004] and [0010]) microporous polyolefin microlayers or nanolayers (see Kono para [0021]-[0022]), with said at least two microporous membranes or sub-membranes laminated to one another (see para [0021]-[0022]). See obviousness discussion of claim 1.
Regarding claim 18, Kono in view of Jeon discloses a dry process (see Jeon abstract, para [0004] and [0010]) microporous polyolefin membrane (see Kono abstract and para [0025]) comprising:
Two microporous membranes or sub-membranes (see Kono para [0021]-[0022] and [0025]) each comprising a plurality of co-extruded dry process (see Jeon abstract , para [0004] and [0010]) microporous polyolefin microlayers or nanolayers (see Kono para [0021]-[0022] and [0025], with said two microporous membranes or sub-membranes laminated to one another.
Modified Kono does not disclose at least three microporous membranes or sub-membranes each comprising a plurality of co-extruded dry process microporous polyolefin microlayers or nanolayers, with said at least three microporous membranes or sub-membranes laminated to one another. See obviousness discussion of claim 1.
It would be obvious to a person having ordinary skill in the art to utilize the number of recited membranes or sub-membranes to achieve a desired thickness as the court has held the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP § 2144.04.
Regarding claim 19, modified Kono discloses a dry process microporous polyolefin membrane of claim 18, wherein each of said at least three microporous membranes or sub-membranes each comprising at least three microlayers or nanolayers (see Jeon para [0021]). See obviousness discussion of claim 3.
Claims 1-7, 12 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Stokes et al. (US 2015/0107042); alternatively, Stokes et al. (US 2015/0107042) in view of Kono et al. (US 2003/0211954).
The applied reference has a common assignee and one inventor (i.e., Stokes) with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2), but the rejection under 35 U.S.C. 103 has been overcome pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as Celgard, LLC not later than the effective filing date of the claimed invention. However, although reference Stokes et al. has been excepted as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, i.e., Stokes, Kristoffer, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Regarding claim 1, Stokes discloses a microporous polyolefin membrane (see abstract, para [0025]) comprising:
a microporous membrane or sub-membrane, each comprising a plurality of co-extruded microporous polyolefin microlayers or nanolayers (see para [0023], [0025], [0028]), further Stokes discloses at least two microporous membranes or sub-membranes laminated to one another (see para [0013]-[0019], [0028]).
It would be obvious to a person having ordinary skill in the art to laminate two of the co-extruded multi-layer membranes or sub-membranes as the court has held it would be obvious to a person having ordinary skill in the art to laminate two of the multi-layer co-extruded membranes as needed to achieve the desired thickness or number of layers as the court has held duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP § 2144.04.
Alternatively, regarding claim 1, Stokes discloses a microporous polyolefin membrane (see abstract, para [0025]) comprising:
a microporous membrane or sub-membrane, each comprising a plurality of co-extruded microporous polyolefin microlayers or nanolayers (see para [0025], [0028]). Further, Stokes discloses the microporous membrane may be laminated/bonded to a woven or knit layer on at least one side of the microporous polyolefin membrane.
Stokes does not specifically disclose an example wherein two co-extruded microporous membranes comprising polyolefin microlayers or nanolayers are laminated together.
Kono is analogous art to Stokes as Kono is directed to oil absorbing wipes as is Stokes (see Kono abstract). Kono discloses a multi-layer polyolefin microporous membrane (see para [0013], and [0019]-[0020]). Kono discloses the multi-layer polyolefin microporous membrane is laminated to a core material C (see para [0021]-[0022]). Kono discloses it is preferrable to have the oil absorbing layers are on both sides of the core material because the same operation and effect can be obtained in back and front surfaces of the oil clearing sheet and the wiping efficiency is very good.
Therefore, it would be obvious to a person having ordinary skill in the art to modify the plurality of co-extruded microporous polyolefin microlayers or nanolayers laminated to a woven or knit layer by laminating a plurality of co-extruded microporous polyolefin microlayers or nanolayers to both sides of the knit and/or woven layer because the same operation and effect can be obtained in back and front surfaces of the oil clearing sheet and the wiping efficiency is very good.
Modified Stokes discloses at least two microporous membranes or sub-membranes each comprising a plurality of co-extruded microporous polyolefin microlayers or nanolayers, with said at least two microporous membranes or sub-membranes laminated to one another.
Regarding claim 2, modified Stokes discloses a microporous polyolefin membrane of claim 1.
The limitation wherein said microporous polyolefin membrane is laminated to a microporous polymer membrane is intended use and is given weight to the extent the prior art is able to perform the intended use. The microporous membrane of claim 1 is able to perform the intended use of further lamination.
Regarding claim 3, modified Stokes discloses a microporous polyolefin membrane of claim 1, wherein at least one of said separator membranes or sub-membranes of co-extruded microporous polyolefin microlayers or nanolayers has at least three microlayers or nanolayers (see Stokes para [0041]).
Regarding claim 4, modified Stokes discloses a microporous polyolefin membrane of claim 1, wherein at least one of said membranes or sub-membranes is made of one or more polypropylenes or polyethylenes (see Stokes para [0041]).
Regarding claim 5, modified Stokes discloses a microporous polyolefin membrane of claim 1, wherein at least one of said membranes or sub-membranes is made of coextruded dry process polyolefin microlayers or nanolayers (see para [0018] and [0041]).
Regarding claims 6 and 7, modified Stokes discloses a microporous polyolefin membrane of claim 1. Modified Stokes does not specifically discloses the microporous polyolefin membrane comprises at least three of said membranes or sub-membranes (claim 6), or at least four of said membranes or sub-membranes (claim 7).
It would be obvious to a person having ordinary skill in the art to modify the microporous polyolefin membrane of Stokes to comprise at least three (claim 6) or at least four (claim 7) of said membranes or sub-membranes as the court has held it would be obvious to a person having ordinary skill in the art to laminate two of the multi-layer co-extruded membranes as needed to achieve the desired thickness or number of layers as the court has held duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP § 2144.04.
Regarding claim 12, Stokes discloses a dry-process microporous polyolefin membrane (see abstract, para [0025]) comprising:
a microporous membrane or sub-membrane, each comprising a plurality of co-extruded dry process microporous polyolefin microlayers or nanolayers (see para [0018], [0025], [0028]), further Stokes discloses at least two microporous membranes or sub-membranes laminated to one another (see para [0013]-[0019], [0028]).
It would be obvious to a person having ordinary skill in the art to laminate two of the co-extruded multi-layer membranes or sub-membranes as the court has held it would be obvious to a person having ordinary skill in the art to laminate two of the multi-layer co-extruded membranes as needed to achieve the desired thickness or number of layers as the court has held duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP § 2144.04.
Alternatively, regarding claim 1, Stokes discloses a microporous polyolefin membrane (see abstract, para [0025]) comprising:
a microporous membrane or sub-membrane, each comprising a plurality of co-extruded dry process microporous polyolefin microlayers or nanolayers (see para [0018], [0025], [0028]). Further, Stokes discloses the microporous membrane may be laminated/bonded to a woven or knit layer on at least one side of the microporous polyolefin membrane.
Stokes does not specifically disclose an example wherein two co-extruded dry process microporous membranes comprising polyolefin microlayers or nanolayers are laminated together.
Kono is analogous art to Stokes as Kono is directed to oil absorbing wipes as is Stokes (see Kono abstract). Kono discloses a multi-layer polyolefin microporous membrane (see para [0013], and [0019]-[0020]). Kono discloses the multi-layer polyolefin microporous membrane is laminated to a core material C (see para [0021]-[0022]). Kono discloses it is preferrable to have the oil absorbing layers are on both sides of the core material because the same operation and effect can be obtained in back and front surfaces of the oil clearing sheet and the wiping efficiency is very good.
Therefore, it would be obvious to a person having ordinary skill in the art to modify the plurality of co-extruded microporous polyolefin microlayers or nanolayers laminated to a woven or knit layer by laminating a plurality of co-extruded microporous polyolefin microlayers or nanolayers to both sides of the knit and/or woven layer because the same operation and effect can be obtained in back and front surfaces of the oil clearing sheet and the wiping efficiency is very good.
Modified Stokes discloses at least two microporous membranes or sub-membranes each comprising a plurality of co-extruded microporous polyolefin microlayers or nanolayers, with said at least two microporous membranes or sub-membranes laminated to one another.
Regarding claims 18, all the limitations of claim 18 are recited in claim 1, 5 and 6. See rejection of claims 1, 5 and 6 above.
Regarding claim 19, modified Stokes discloses a dry process microporous polyolefin membrane of claim 18, wherein each of said at least three microporous membranes or sub-membranes each comprising at least three microlayers or nanolayers (see Stokes para [0041], note each of three microporous membranes or submembranes are rejected as duplication of parts, Stokes discloses the part as three microlayers).
Double Patenting
The non-statutory 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 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 2 and 5 of U.S. Patent No. 11,056,750 and claims 1-10 of U.S. Patent No. 11,784,344. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the instant claim are recited within the cited claims of each of the recited patents.
Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,495,865 and claims 1-13 of U.S. Patent No. 12,370,733. Although the claims at issue are not identical, they are not patentably distinct from each other because the battery separator as recited in the referenced application anticipate all the limitations of the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zhang et al. (US 2011/0223486) (generic dry-process co-extruded method for forming microporous polymer membrances)..
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAYNE L MERSHON whose telephone number is (571)270-7869. The examiner can normally be reached 10:00 to 6:00 M-F.
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JAYNE L. MERSHON
Primary Examiner
Art Unit 1721
/JAYNE L MERSHON/ Primary Examiner, Art Unit 1721