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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/23/2026 has been entered.
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 1-5, 7-9, 11-13, 15-17 and 19-22 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.
Claim 1 recites, “wherein the coating comprises first particles comprising primary particles and second particles comprising secondary particles, the secondary particles having a pore structure...” This recitation introduces four separate particle designations (first particles, primary particles, second particles, and secondary particles) without defining their hierarchical or structural relationship to one another, thereby rendering the metes and bounds of the claimed composition ambiguous:
In the art, the term “secondary particle” has an established technical meaning denoting an agglomeration formed from a plurality of primary particles as evidenced by Sun et al. (US-20140158932-A1; see Abstract). It is unclear whether the second particles are distinct agglomerations of the aforementioned primary particles, separate porous particles, or a different species altogether.
Thus, it is unclear whether the limitation, “the secondary particles having a pore structure” refers to intra-particle pores existing within individual particles themselves or inter-particle voids formed between agglomerated primary particles.
For examination purposes, and in light of the instant specification (Table 1; [0086, 00238]), the term “primary particles” will be interpreted as “first particles” and the term “secondary particles” will be interpreted as “second particles”, and the instant limitation is interpreted to have recited: --wherein the coating comprises first particles and second particles, the second particles having a pore structure…--
In order to overcome this rejection, Applicant can amend the claim to remove the term “secondary particles”, which appears to indicate an agglomeration of primary particles and is broader in scope than the intended second particles which appear to have an intra-porous structure.
Claim 11 recites the limitation “the silicone particles”. Here it is unclear if the recitation of “the silicone particles” has sufficient antecedent basis, since Claim 1 (from which Claim 11 depends) recites silicone particles in the alternative as a possible identity of the primary particles. It could be interpreted that Claim 11 is intended to further limit the identity of the primary particles in Claim 1 to silicone particles. Alternatively, it could be interpreted that this claim merely limits an optional limitation of Claim 1 and therefore is not afforded patentable weight if the optional limitation is selected (i.e. if the primary particles of Claim 1 are not silicone particles, Claim 11 would not be afforded patentable weight). As such, Claim 11 and dependent Claims 12-13 and 15-16 are rejected as being indefinite. Since the instant specification indicates that silicone particles can be used as the primary particles of the coating (see Examples 1-1 to 1-7 in Table 1; [00266-00267]) but are not required to be used as the primary particles of the coating (see Examples 1-8 to 1-9 in Table 1; [00266-00267]). For the sake of compact prosecution, either interpretation will be applied to Claim 11. Applicant could overcome this rejection by changing the claim language to recite, “wherein the primary particles comprise silicone particles, and the silicone particles comprise…”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-5, 7, 11-13, 15-16, 19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (JP-2003007279-A; see also English translation provided 08/25/2025 for citations) in view of Katayama et al. (US-20110003209-A1; newly cited) as evidenced by Clough et al. (US-5549990-A; newly cited).
Regarding Claim 1, Nishikawa discloses a separator [0012], comprising:
a substrate (nonwoven fabric sheet (A); [0012]); and
a coating (film) provided on at least one side of the substrate [0027-0028], wherein the coating comprises first particles comprising primary particles (organic polymer (C); [0012, 0025]) and second particles comprising secondary particles (porous inorganic filler (B); [0012, 0022, 0024]), the secondary particles having a pore structure [0021].
Nishikawa discloses that the organic polymer (i.e. primary particles) is not particularly limited as long as it can swell in and retain the electrolyte [0025]. Nishikawa does not disclose that the primary particles comprise one or more of the claimed materials.
Katayama teaches a similar separator including a coating (insulator layer) comprising inorganic particles and binder particles [0014, 0016, 0038-0039, 0042-0043, 0061, 0067]. The coating can further include a swelling resin which swells in the electrolyte solution [0067, 0069]. The swelling resin can be particles of a core-shell structure, wherein the core comprising a swelling resin, and the shell comprises heat resistant fine particles [0071, 0075]. The heat resistant fine particles can be organic particles such as, from a list of various polymers, a melamine-based resin and a phenol-based resin [0076]. Advantageously, such polymers do not undergo any chemical changes or thermal deformation and can be present stably when exposed to high temperatures in an organic electrolyte solvent [0076].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the primary particles to have a core-shell structure as taught by Katayama, wherein the core swells in electrolyte and the shell comprises a heat resistant melamine-based resin and/or a phenol-based resin with a reasonable expectation that such a particle selection would result in primary particles for use in a separator. The use of a melamine-based resin reads on “melamine formaldehyde resin particles” and the use of a phenol-based resin reads on “phenolic resin particles”, since these particular resins are well-known species of melamine-based resins / phenol-based resins as evidenced by Clough (Col. 17: lines 45-56; Col. 18: lines 24-28; see also MPEP 2144.07; MPEP 2144.08).
Nishikawa discloses that the weight of the porous inorganic filler (secondary particles) is 0.1 to 0.4 Wp (g/m2) when the weight per unit area of the organic polymer (primary particle) is Wp (g/m2) [0023]. Accordingly, Nishikawa discloses that the ratio of primary particles (A) to secondary particles (B) is 2.5 (i.e. 1/0.4) to 10 (i.e. 1/0.1), which is within the claimed range of 2<A/B≤20.
Regarding Claim 3, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa discloses that the porosity of the secondary particles preferably is 75% or more, thereby allowing the particles to be impregnated with electrolyte, as well as increasing the energy density of the battery [0021]. Although Nishikawa does not explicitly teach that the porosity of the secondary particles is 10% to 60%, the Examiner notes that the range disclosed by the prior art is substantially close to the upper limit of the claimed range such that, absent showings of criticality, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have expected substantially the same properties in a separator comprising secondary particles with a porosity of about 75% and a separator comprising secondary particles with a porosity of 60%, thus rendering the claimed range obvious (MPEP 2144.05, I).
Regarding Claim 4, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa discloses that the particle size of the secondary particles is 0.1 to 5 µm [0022]. If the secondary particles are less than 0.1 µm it is difficult to obtain sufficient short circuit prevention, while if the secondary particles exceed 5 µm the surface of the separator becomes undesirably rough [0022]. Therefore, although Nishikawa does not explicitly teach that the particle size of the secondary particles is less than or equal to 2 µm, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, have to optimized the size of the secondary particles, including selecting the overlapping portion of the claimed range, with a reasonable expectation that such a particle size would result in a successful balance between sufficiently preventing a short circuit while preventing the surface from becoming undesirably rough (MPEP 2144.05, II).
Regarding Claim 5, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa discloses that the specific surface area of the secondary particles is 300 m2/g or more [0021], which is within the claimed range of greater than or equal to 100 m2/g.
Regarding Claim 7, modified Nishikawa renders obvious all of the limitations as set forth above, including that the weight of the secondary particles is 0.1 to 0.4 Wp (g/m2) [0023]. If the amount of secondary particles falls below 0.1 Wp (g/m2), the effect of preventing short circuits cannot be sufficiently obtained, while if the amount is more than 0.4 Wp (g/m2) the surface is undesirably rough and it is difficult for the organic polymer (primary particles) to sufficiently bind the secondary particles, and peeling can occur [0023].
Therefore, although Nishikawa does not explicitly teach that “the weight proportion B of the secondary particles in the coating is less than or equal to 20%”, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the content of secondary particles in the coating layer, including selecting the content to be less than or equal to 20%, with a reasonable expectation that such a selection would result in a successful balance between preventing short circuits while also preventing peeling (MPEP 2144.05, II).
Regarding Claims 11-13 and 15-16, modified Nishikawa renders obvious all of the limitations as set forth above, including that the primary particles comprise melamine formaldehyde resin particles and/or phenolic resin particles (see rejection of Claim 1, above). The broadest reasonable interpretation of Claim 1 has silicone particles claimed in the alternative. Since Claim 11 recites “the silicone particles” and therefore appears to only limit previously present silicone particles, Claim 11 is interpreted as serving to further narrow an alternative limitation which is not required. Therefore, by including the claimed “melamine formaldehyde resin particles” and/or “phenolic resin particles”, modified Nishikawa, under broadest reasonable interpretation, meets the limitations of Claim 11 and dependent Claims 12-13 and 15-16 (see 112(b) rejection, above).
Regarding Claim 19, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa further discloses a secondary battery comprising the separator according to Claim 1 [0029, 0062-0064].
Regarding Claim 20, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa discloses that the separator is designed to satisfy the requirements for electrolyte retention, short circuit prevention and mechanical properties which are required for smaller, lighter and thinner portable electronic devices [0002-0005, 0009].
Therefore, although modified Nishikawa does not explicitly teach an “electric apparatus comprising the secondary battery according to claim 19”, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have provided a portable electronic device (reads on electric apparatus) which uses the disclosed secondary battery of Claim 19, with a reasonable expectation that such a configuration would result in a successful portable electronic device capable of being successfully powered by the disclosed secondary battery.
Regarding Claim 21, modified Nishikawa renders obvious all of the limitations as set forth above, including that the weight of the porous inorganic filler (secondary particles) is 0.1 to 0.4 Wp (g/m2) when the weight per unit area of the organic polymer (primary particle) is Wp (g/m2) [0023]. If the amount of inorganic filler falls below 0.1 Wp (g/m2), the effect of preventing short circuits cannot be sufficiently obtained, while if the amount is more than 0.4 Wp (g/m2) the surface is undesirably rough, and it is difficult for the organic polymer to sufficiently bind the porous inorganic filler and peeling can occur [0023].
Therefore, although Nishikawa does not explicitly teach that “5<A/B≤20”, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the ratio of primary particles (A) to secondary particles (B), including selecting ratios which fall within the claimed range, with a reasonable expectation that such a selection would result in a successful balance between preventing short circuits while also preventing peeling (MPEP 2144.05, II).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (JP-2003007279-A; see also English translation provided 08/25/2025 for citations) in view of Katayama et al. (US-20110003209-A1) as evidenced by Clough et al. (US-5549990-A) as applied to Claim 1, above, and in view of Yun et al. (US-20200203694-A1).
Regarding Claim 2, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa discloses that the porosity of the secondary particles is selected in view of allowing the particles to be impregnated with electrolyte, as well as increasing the energy density of the battery [0021]. Nishikawa does not teach the average pore size of the secondary particles, and therefore does not teach that the secondary particles have a pore size of 0.1 nm to 10 nm.
Yun teaches a similar separator comprising a substrate coated with inorganic particles and a binder polymer [0006-0007]. The inorganic particles can be porous inorganic particles [0068]. Yun teaches that the porous inorganic particles may have a pore size of 1 -50 nm, and that such a pore size allows both for electrolyte holding and for HF or moisture to be isolated in the pores, thus aiding in smooth charge/discharge [0068].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the average pore size of the secondary particles to be 1-50 nm with a reasonable expectation that such a pore size would result in smooth charge/discharge and secondary particles which can isolate HF / moisture in the pores while allowing for electrolyte holding.
This range overlaps the claimed range of 0.1 to 10 nm. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the overlapping portion of the range with a reasonable expectation that such a pore size would result in successful secondary particles for use in a separator (MPEP 2144.05, I).
Claim(s) 3 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (JP-2003007279-A; see also English translation provided 08/25/2025 for citations) in view of Katayama et al. (US-20110003209-A1) as evidenced by Clough et al. (US-5549990-A) as applied to Claim 1, above, and in view of Seo et al. (US-20070122716-A1).
Regarding Claim 3, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa discloses that the porosity of the secondary particles preferably is 75% or more, thereby allowing the particles to be impregnated with electrolyte, as well as increasing the energy density of the battery [0021]. Although Nishikawa does not explicitly teach that the porosity of the secondary particles is 10% to 60%, the range rendered obvious by Nishikawa is so close to the claimed range that it is understood to render obvious the claimed range, absent showings of criticality (MPEP 2144.05, I). Assuming, arguendo, that Applicant is able to show by means of evidence or persuasive argument that the claimed range is critical, such a range would still have been obvious over the teachings of Seo.
Seo teaches similar porous inorganic particles which are applied to a separator [0023, 0037-0038]. Seo discloses that the porosity of the secondary particles (inorganic particles) is between 30 to 95% [0037]. Such a porosity allows for the porous inorganic particles to both adsorb electrolyte and reduce the weight of the battery [0034, 0037]. Additionally, if the porosity is below 30%, it is difficult to expect swelling of the electrolyte in the pores and further the improvement in battery performance, while if the porosity exceeds 95%, mechanical strength of the particle decreases [0037].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the porosity of the secondary particles of modified Nishikawa, including selecting the secondary particles to have a porosity of 10% to 60%, with a reasonable expectation that such a porosity would result successful secondary particles which can both adsorb electrolyte and reduce the weight of the battery, as well as a successful balance between improved battery performance and mechanical strength (MPEP 2144.05, II).
Regarding Claim 8, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa discloses that the secondary particles are not particularly limited as long as they do not adversely affect battery characteristics [0024]. Nishikawa discloses inorganic particles of silica or alumina as specific examples [0024]. Nishikawa does not teach that the inorganic particles are one of the claimed inorganic particles.
Seo teaches similar porous inorganic particles which are applied to a separator [0023, 0037-0038]. Nonlimiting examples of the inorganic particles include MgO, ZrO2, Al2O3 and TiO2 [0042]. The Examiner notes that this establishes alumina (Al2O3) as a substitutable equivalent to MgO (i.e. magnesium oxide), ZrO2 (i.e. zirconium oxide), and TiO2 (i.e. titanium oxide; see MPEP 2144.06, II).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted the porous silica or alumina disclosed by Nishikawa for MgO, ZrO2, and/or TiO2 as taught by Seo with a reasonable expectation that such a substitution would result in successful inorganic particles (secondary particles) for use in a separator coating (MPEP 2144.06, II).
Regarding Claim 9, modified Nishikawa renders obvious all of the limitations as set forth above. Although Nishikawa discloses that the secondary particles are porous [0021, 0024], Nishikawa does not specifically teach that the pores have a through-hole structure.
Seo teaches similar porous inorganic particles which are applied to a separator [0023, 0037-0038, 0042]. Seo teaches that the porous inorganic particles have a through-hole structure (see Figs. 2, 8; [0033]). Advantageously, such a structure allows for electrolyte molecules and solvated lithium ions to pass through, thereby increasing ionic conductivity.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have provided the porous inorganic particles of Seo such that they have a through-hole structure with a reasonable expectation that such a configuration would result in a successful separator with increased ionic conductivity.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (JP-2003007279-A; see also English translation provided 08/25/2025 for citations) in view of Katayama et al. (US-20110003209-A1) as evidenced by Clough et al. (US-5549990-A) as applied to Claim 1, above, and in view of Hamada et al. (US-20210057703-A1).
Regarding Claim 17, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa discloses that the separator is designed in consideration of mechanical properties sufficient for the production of batteries, and that the substrate preferably has a yield strength of 3.0x102 N/m or more since the higher the value, the easier the material is to handle and the higher the productivity [0009, 0015]. Nishikawa does not teach the tensile strength, and therefore does not teach that the transverse-direction tensile strength is greater than or equal to 2000 kgf/cm2.
Hamada teaches that the tensile strength of a coated separator is preferably 500 kgf/cm2 to 3000 kgf/cm2 [0004, 0023, 0028, 0056, 0066-0068, 0205-0206]. A separator with such a tensile strength is able to be successfully used in battery [0015-0018, 0028, 0269], and provides a balance between adhesion and strength [0011, 0206-0208].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the transverse-direction tensile strength of the separator to be 500 kgf/cm2 to 3000 kgf/cm2 with a reasonable expectation that such a tensile strength would result in a successful separator. This range overlaps the claimed range. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the overlapping portion of the range with a reasonable expectation that a transverse-direction tensile strength of 2000 kgf/cm2 to 3000 kgf/cm2 would result in a successful separator (MPEP 2144.05, I).
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (JP-2003007279-A; see also English translation provided 08/25/2025 for citations) in view of Katayama et al. (US-20110003209-A1) as evidenced by Clough et al. (US-5549990-A) as applied to Claim 1, above, and in view of Kai et al. (US-20220013861-A1; newly cited).
Regarding Claim 22, modified Nishikawa renders obvious all of the limitations as set forth above, including that the primary particles are core-shell particles comprising a core that can swell in electrolyte and a shell comprising a heat resistant melamine-based resin and/or a phenol-based resin (see rejection of Claim 1, above). The core comprises a polymer which swells in electrolyte such as polymethyl methacrylate or polystyrene ([Nishikawa: 0025]; [Katayama: 0067]). Nishikawa discloses that primary particles which have good adhesion to electrodes are particularly preferred [0025]. Modified Nishikawa does not teach that the primary particles comprise silicone particles.
Kai teaches a similar separator including a coating comprising organic particle and inorganic particles [0001, 0014, 0016]. The organic particles can have a core-shell structure, wherein the core comprises monomers such as acrylate monomer units or styrene-based monomer units, and the shell comprises a monomer unit selected from fluorine-containing (meth)acrylate monomer units or silicon-containing monomer units [0029, 0036]. Advantageously, by including at least one of fluorine-containing (meth)acrylate monomer units or silicon-containing monomer units, the surface free energy of the organic particles is decreased, thereby resulting in improved adhesion between the porous layer and electrodes [0029].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected some of the primary particles of modified Nishikawa to be core-shell particles wherein the shell comprises silicone-containing monomer units (reads on silicone) with a reasonable expectation that such a configuration would result in successful primary particles with improved adhesion to electrodes.
Although modified Nishikawa does not explicitly teach that the silicone particles have a diameter of 0.01 µm to 2.5 µm, Kai teaches that the particles preferably have a particle diameter of 0.01 µm or more and 5 µm or less, thereby ensuring good battery characteristics and appropriate separator thickness [0051].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the core-shell particles comprising silicone to have a diameter of 0.01 µm to 5 µm with a reasonable expectation that such a particle diameter would result in successful primary particles. This range encompasses the claimed range of 0.01 µm to 2.5 µm. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the overlapping portion of the range with a reasonable expectation that such a selection would result in primary particles with good battery characteristics and a separator with appropriate thickness (MPEP 2144.05, I).
Claim(s) 11-13 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (JP-2003007279-A; see also English translation provided 08/25/2025 for citations) in view of Katayama et al. (US-20110003209-A1) as evidenced by Clough et al. (US-5549990-A) as applied to Claim 1, above, and in view of Ryu et al. (US-20190326579-A1) and in view Lee (EP-3407413-B1).
Regarding Claim 11, modified Nishikawa renders obvious all of the limitations as set forth, above, including that the primary particles are core-shell particles comprising a core that can swell in electrolyte and a shell comprising a heat resistant melamine-based resin and/or a phenol-based resin (see rejection of Claim 1, above). Nishikawa discloses that the invention is drawn towards a separator that reinforces a gel electrolyte membrane without reducing conductivity and while providing sufficient mechanical properties for battery production [0065], and that the primary particles are designed to swell and retain electrolyte [0025]. Nishikawa discloses that the primary particles can include polymethyl methacrylate and/or polyacrylonitrile [0025]. Nishikawa does not teach that the primary particles comprise silicone particles.
Ryu teaches a composite separator comprising a porous substrate coated with a composite electrolyte layer including a block copolymer, an ionic liquid, and a particle [0008]. The particle can be an organic particle, an organic-inorganic particle or a combination thereof [0008, 0108]. As a possible embodiment of a particle, Ryu teaches a cage-structured silsesquioxane [0108, Claim 18]. Ryu teaches that the organic particle may have a polymer segment (e.g. a block) which is the same as a polymer or polymer segment of the block copolymer [0107]. The block copolymer can comprise a polymer such as polymethylmethacrylate and poly(acrylonitrile) [0101-0102, 0104]. Advantageously, Ryu teaches that the block copolymer and the particle serve to increase the ion conductivity of the separator and improve mechanical strength as well as thermal stability [0056]. Furthermore, the composite separator has improved wettability to the electrolyte solution [0168].
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have included the some of the silicone-based organic particles taught by Ryu instead of/in addition to the primary particles rendered obvious by modified Nishikawa with a reasonable expectation that such a modification would result in a successful coating capable of increasing the ion conductivity and improving the mechanical strength, thermal stability, and wettability of the separator of modified Nishikawa.
Furthermore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have selected the silicon-based primary particles to be a polymer comprising polymethylmethacrylate, poly(acrylonitrile) and cage-structured silsesquioxane with a reasonable expectation that such a particle would result in a successful coating layer.
The primary particles comprising cage-structured silsesquioxane reads on the recited limitation of primary particles comprising silicone particles. Polymethylmethacrylate reads on the recited limitation of a first structural unit represented by formula (I) (i.e. R1 and R2 are both methyl groups, which is within the claimed list of possible R1 and R2 candidates). Poly(acrylonitrile) reads on the recited limitation of a second structural unit represented by formula (II) (i.e. R3 is hydrogen, which is within the claimed list of possible R3 candidates).
Although modified Nishikawa teaches a cage-structured silsesquioxane, modified Nishikawa does not teach the exact structure of the cage-structured silsesquioxane, and therefore does not teach that the third structure is represented by formula (III).
Lee teaches a cage-structured silsesquioxane [0047] which can be used in an electrolyte composition for a lithium secondary battery [0024, 0109-0110]. The cage-structured silsesquioxane includes a polymerizable reactive group [0027, 0041-0043, 0047-0048] such that the cage-structured silsesquioxane can be successfully coupled to a block copolymer [0024]. The block copolymer [0024] can include polymethylmethacrylate [0067, 0091] and polyacrylonitrile [0081-0082, 0090]. The cage-structured silsesquioxane is represented by Formula 2 (see below). At least one functional group (R1-R8) of the cage-structured silsesquioxane can be a methacryloxypropyl group [0050-051]. The other functional groups can be, for example, a substituted or unsubstituted C1-C30 alkyl group [0048].
Both modified Nishikawa and Lee teach a cage-structured silsesquioxane which can be coupled to polymethylmethacrylate and polyacrylonitrile. Therefore, although not disclosed in a specific embodiment, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the cage-structured silsesquioxane of modified Nishikawa to be that depicted in Formula 2 (see below), wherein R1-R7 are each a substituted or unsubstituted C1-C10 alkyl group, and wherein R8 is a methacryloxypropyl group, with a reasonable expectation that such a selection would result in a successful cage-structured silsesquioxane capable of being successfully coupled to polymethylmethacrylate and polyacrylonitrile.
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Accordingly, modified Nishikawa renders obvious a third structural unit represented by formula (III). The use of methacryloxypropyl as a substituent corresponds to a structural unit represented by formula (III-1) as evidenced by the instant specification [instant specification: 00135, 00233].
Regarding Claims 12-13, modified Nishikawa renders obvious all of the limitations as set forth above. Modified Nishikawa further teaches that the first structural unit (polymethylmethacrylate) is an ion-conductive segment [Ryu: 0101-0102], the second structural unit (polyacrylonitrile) is a structural segment [Ryu: 0101, 0104], and the third structural unit (cage-structured silsesquioxane) may aid in improving the mechanical strength of the separator [Ryu: 0056].
Although modified Nishikawa does not explicitly teach the relative ratio of each component, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have been found it obvious to have optimized the relative contents of the first structural unit, the second structural unit, and the third structural unit in order to strike a balance between ion conductivity, structural strength, and mechanical strength (MPEP 2144.05, II), including selecting the molar amount of the first structural unit (a) to be 70≤a≤90 as required by Claim 12 and selecting the ratio of a/b to be 4≤a/b≤15, as required by Claim 13 with a reasonable expectation that such a content of first structural unit and such a ratio of first structural unit to second structural unit would result in a successful primary particle with sufficient ionic conductivity, as desired by Nishikawa [Nishikawa: 0065].
Regarding Claim 15, modified Nishikawa renders obvious all of the limitations as set forth above. Nishikawa discloses that decreasing the weight of the separator increases the energy density of the battery [0021]. Modified Nishikawa further teaches that the first structural unit (polymethylmethacrylate) is an ion-conductive segment [Ryu: 0101-0102], the second structural unit (polyacrylonitrile) is a structural segment [Ryu: 0101, 0104], and the third structural unit (cage-structured silsesquioxane) may aid in improving the mechanical strength of the separator [Ryu: 0056]. Modified Nishikawa does not teach the average molecular weight of the silicone particles.
Lee teaches that the molecular weight of the ion-conductive domain (corresponds to first structural unit) and the structural domain (corresponds to second structural unit) can be selected in view of improving ionic conductivity and mechanical properties [0085-0087].
Although modified Nishikawa does not explicitly teach that the number weight average molecular weight of the silicone particles is 35,000 to 70,000, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the number weight average molecular weight of the silicone particles in order to achieve a balance between keeping the battery separator as light as possible while ensuring sufficient ionic conductivity and mechanical properties (MPEP 2144.05, II). One of ordinary skill in the art would have a reasonable expectation that a number weight average molecular weight of 35,000 to 70,000 would result in a successful separator for use in a battery.
Regarding Claim 16, modified Nishikawa renders obvious all of the limitations as set forth above. Although Nishikawa does not explicitly teach the porosity of the substrate, Katayama teaches that the porosity of a separator is preferable 20% to 70% [0090]. If the porosity is excessively small, the separator can have poor ionic permeability while if the porosity is excessively large, the separator may have insufficient strength [0090].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the porosity of the substrate, including selecting a porosity of the substrate to be “greater than or equal to 25%”, with a reasonable expectation that such a porosity would result in a successful balance between ionic permeability and mechanical strength (MPEP 2144.05, II).
Response to Arguments
Applicant has argued that one of ordinary skill in the art would reasonably understand that primary particles refer to individual particles while secondary particles refer to an aggregation of primary particles, and alleges that therefore Claim 1 is definite (Remarks, Pg. 10). The Examiner has carefully considered this argument, but notes that such an argument does not appear to resolve the confusion regarding the terms “primary particles” and “secondary particles”. For instance, Applicant’s argument appears to suggest that the secondary particles are indeed an aggregation of the primary particles. However, under such an interpretation, it becomes unclear whether the limitation “the secondary particles having a pore structure” refers to pores within the second particles (i.e. an intra-particle pore structure), or between adjacent primary particles within an agglomeration of secondary particles (i.e. an inter-particle pore structure). See also 112(b) rejection, above. Further clarification is requested.
Applicant has argued that Claim 11 recites “the first particles comprise the silicone particles”, thereby narrowing the primary particles as listed in Claim 1 to silicone particles (Remarks, Pg. 10). The Examiner has carefully considered this argument, but respectfully does not find it persuasive. As laid out in the 112(b) rejection (see above), there is insufficient antecedent basis for the limitation “the silicone particles”, since silicone particles are recited in the alternative. Applicant could overcome this rejection by changing the claim language to recite, “wherein the primary particles comprise silicone particles”, as recited in newly added Claim 22.
Applicant’s arguments with respect to Claim 1 have been considered but are moot because the new grounds of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/D.C.N./Examiner, Art Unit 1751
/Haroon S. Sheikh/Primary Examiner, Art Unit 1751
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