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 .
Response to Arguments
Applicant's arguments filed 1-5-2026 have been fully considered but they are not persuasive. Applicant argues that satisfying 0.1 um < Dv90 < 2 um as recited in amended claim 1, is critical for the effect of the present application but as explained below Li teaches Dv90 = 2 um. Applicant argues that Li teaches that the coating layer on the base film is a single layer and the invention is not claiming a single layer. The examiner disagrees. Therefore, the rejection of claim(s) 1, 3-5, 10-12, 14-15 and 18-19 remain rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 112038548, machine translation).
Applicant’s arguments with respect to claim(s) 14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Terminal Disclaimer
The terminal disclaimer filed on 1-5-2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US application number US 19/036,638 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Election/Restrictions
Applicant's election with traverse of Invention I, claims 1, 3-8, 10-12, 14-15 and 18-19, drawn to a separator comprising a substrate and a coating comprising organosilicon particles comprising a 1st polymer comprising a 1st structural unit, (I) where R1=H and R2 = C1-20 alkyl group; a 2nd structural unit (II) where R3=H and 3rd structural unit (III) where R4-R11= C1-10 alkyl group and at least one structural unit represented by formula (III-1) where R12=H and R13=C1-10 alkyl AND the organo-silicon particle does not comprise a 2nd polymer as claimed in claim 9 and does not further comprise inorganic particles as claimed in claim 13 in the replies filed on 7-31-2025 and 9-19-2025 are acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Claims 9 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7-31-2025 and 9-19-2025.
Claims 16-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7-31-2025.
Claim Rejections - 35 USC § 112
Claim 14 is 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 14 is rejected because (c) cannot comprise a thickness of the coating is 0.1-4 µm because claim 1 from which the claim depends from now claims a thickness of the coating is 1-4 µm. this makes the claim vague and indefinite.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3-5, 10-12, 14-15 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 112038548, machine translation). Li teaches in FIG 7, a cylindrical battery and Embodiments 7 and 8, a cylindrical power battery. Li discloses in Figures 1 and 3 and in the specification, a separator of a battery includes a base membrane and a modified layer deposited on at least one surface of the base membrane, the modified layer includes a plurality of silicon resin spherical particles tightly arranged in a single layer, the silicon resin spherical particles can be polysilsesquioxane (PSSQ), polyphenylsilsesquioxane (PPSQ) and polymethylsilsesquioxane (PPSQ) and the volume average particle size can be 1-3 micrometers, Dv50 [thus teaching claim 4 when Dv50 = 1 um; teaching claim 1 when Dv90=2 um; Dv10 = 0 um, then teaching claim 3 when (Dv90-Dv10)/Dv50=2 um]. The thickness of the base film is 3-25 micrometers [teaching claim 1 when the thickness is 1-4 um] and a porosity of the base film is 35-85% [teaching claim 14 (a) when the porosity is 35-41% and 14 (c) when the thickness of the coating is 1-4 um]. The silicon resin spherical particles [teaching claim 5 (3)] added to water to create a coating slurry in which the silicon particles are present in an amount of 20-60 weight% [teaching claim 12 when 50-60 wt%]. In Example 1, the slurry is coated on one side of the base film, drying a diaphragm giving an air permeability of 218 sec/100 cc [teaching claim 15(VII)] is obtained. Li teaches in comparative example 1, comparative example 2 in Table 4, that the moisture content of the diaphragm can be greater than 800 PPM or greater than 1000 PPM [thus teaching claim 11, 800 ug/g and 1000 ug/g]. Li teaches the claimed invention teaching that the volume average particle size of the organosilicon Dv50 = 1 um but does not specifically teach that the particle size of the organosilicon particles by volume satisfy Dv90 = 2 um or (Dv90-Dv10)/Dv50 = 2.0 um. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use particles comprising Dv10 = 0 um; Dv50 = 1 um and Dv90= 2.0 um by allowing optimization of the volume distribution particle size range of the organosilicon particles and since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use particles comprising Dv10 = 0 um; Dv50 = 1 um and Dv90= 2.0 um by allowing optimization of the volume distribution particle size range of the organosilicon particles and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Li teaches the claimed invention teaching a separator containing organosilicon particles but does not specifically teach that the number average molecular weight is 22,000-79,000 as claimed in claim 10. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use organosilicon particles comprising polysilsesquioxane (PSSQ) particles or polyphenylsilsesquioxane (PPSQ) particles or polymethylsilsesquioxane (PPSQ) particles having a number average molecular weight of 22,000 to 79,000, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use organosilicon particles comprising polysilsesquioxane (PSSQ) particles or polyphenylsilsesquioxane (PPSQ) particles or polymethylsilsesquioxane (PPSQ) particles having a number average molecular weight of 22,000 to 79,000, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Allowable Subject Matter
Claims 6-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 Laura Weiner whose telephone number is (571)272-1294. The examiner can normally be reached 9 am-5 pm EST M-F.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723