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 .
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.
Claim 9 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 9 recites the limitation "a non-conductive heat-resistant particle layer" in claim 8, it is unclear if this structure is actively being claimed because the functional layer of claim 8 only contains the composition of claim 1 which does not include a heat-resistant functional layer. It is therefore unclear if this “non-conductive heat-resistant particle layer” is actively being claimed or an optional limitation which may or may not be included in the laminate.
Claim Objections
Claim 9 is objected to because of the following informalities: “relative to thickness” should be “relative to the thickness”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-6, 8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maruhashi et al. (U.S. App. Pub. No. 2018/0287189).
Regarding claim 1, Maruhashi et al. discloses a composition for an adhesive layer of a non-aqueous secondary battery (i.e. an electrochemical device functional layer) (Title and Abstract) which includes first and second particulate polymers. (Example 1, Table 1 Particulate Polymer B and Particulate Polymer A, respectively). Particulate polymer B has a volume average particle diameter of 500 nm (Table 1, Example 1) and should be larger than the particulate polymer A volume-average particle diameter. (par. [0041]. Particulate polymer A includes a onomer A having a hydroxyl group (N-methylolacrylamide, par. [0159]) and particulate polymer B includes a monomer B having a carboxyl group. (methacrylic acid, par. [0162]). Therefore, Particulate Polymer A meets the limitation of particulate polymer (Y) and Particulate Polymer B meets the limitations of particulate polymer (X) as claimed.
Regarding claim 3, Particulate Polymer B includes a (meth)acrylic acid alkyl ester monomer in the form of methyl methacrylate. (par. [0162]).
Regarding claim 4, Particulate Polymer B includes a (meth)acrylic acid alkyl ester monomer in the form of butyl acrylate. (par. [0159]).
Regarding claim 5, Particulate Polymer A is included in an amount of 50 parts by mass relative to 100 parts by mass of Particulate Polymer B (par. [0165]) which lies within the presently claimed range.
Regarding claim 6, the composition may further include a porous membrane having non-conductive particles therein. (par. [0096]).
Regarding claims 8 and 10, the composition of Maruhashi et al. is used to form a laminate on an electrochemical device. (Example 1, Abstract).
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 2, 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Maruhashi et al. (U.S. App. Pub. No. 2018/0287189) in view of Hamada et al. (U.S. App. Pub. No. 2021/0057703)
Regarding claim 2, Marushashi et al. is relied upon as described in the rejection of claim 1, above.
Murahashi et al. fails to disclose a volume-average particle diameter of a particulate polymer (X) of not less than 1 micrometer and not more than 10 micrometers.
Hamada et al. teaches a separator for a non-aqueous secondary battery including a substrate, a heat-resistant porous layer and a porous coating adhesive film. (Abstract). Hamada et al. teaches that the adhesive particles in the adhesive layer should lie in the range of 0.01 micrometers to 1.0 micrometers for controlling the porosity of the structure while controlling thickness of the adhesive layer. (par. [0191]).
It would have been obvious to one of ordinary skill in the art to use Particulate Polymer B particles in Murahashi et al. having diameters of 1 micrometers or less as disclosed in Hamada et al., overlapping with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have found it obvious to use diameters of 1 micrometer or less in order to produce an adhesive layer having desirable thickness and porosity for forming a structure having improved desired properties in Murahashi et al.
Regarding claim 7, Murahashi et al. does not disclose the content of the particulate polymer (Y) to non-conductive heat-resistant particles in the range presently claimed.
Hamada et al. teaches that the content of inorganic particles in the heat resistant layer should be 50-90% by mass (par. [0020]) and is a result effective variable for controlling the heat resistance and resistance to peeling of the layers. (par. [0011]). Furthermore, Hamada et al. teaches that the thickness of the heat-resistant porous layer on the separator should be 0.5 micrometers to 10 micrometers or less from the standpoint of adjusting the handleability and energy density of the battery. (par. [0164]).
In contrast, Murahashi et al. teaches that the thickness of the adhesive layer containing Polymer Particulates A and B should be in the range of 0.01-10 micrometers for providing sufficient strength of the layer and ionic conductivity to the battery. (par. [0088]). Furthermore, Murahashi et al. teaches that the content of Polymer Particulate A in the adhesive layer should be 20-70 parts by weight relative to the content of Polymer Particulate B.
Therefore, given the result effective layer of the relative content of inorganic particles in the heat resistant layer, the content of the Polymer Particulate A in the adhesive layer and that the thickness of the layer containing the Polymer Particulate A relative to the heat resistant layer in view of the combination of Murahashi and Hamada et al., the specific amount of Polymer Particulate Y relative to the heat resistant particless not considered to confer patentability to the claims. As the content is a variable that can be modified, among others, by adjusting the relative contents in each layers and the thicknesses thereof, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
Regarding claim 9, Murahashi et al. does not explicitly disclose a ratio of the volume average particle diameter to the thickness of the non-conductive heat-resistant particle layer.
Hamada et al. teaches that the thickness of the heat-resistant porous layer on the separator should be 0.5 micrometers to 10 micrometers or less from the standpoint of adjusting the handleability and energy density of the battery. (par. [0164]).
It would have been obvious to one of ordinary skill in the art to use the thickness disclosed in Hamada et al. as the thickness for a heat-resistant layer used in a functional laminate structure in Murahashi et al.
One of ordinary skill in the art would have found it obvious to have a thickness of a heat-resistant porous layer in the range disclosed in Hamada et al. in order to improve the handleability and energy density of a battery containing the functional laminate structure. The resulting ratio of the Polymer Particulate B volume average diameter from Example 1 of Murahashi et al. (500 nm) to the thickness of the heat-resistant layer would therefore be 1:1 or less (500 nm/ 0.5 micrometers to 500 nm / 10 micrometers), overlapping with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 08/30/2026
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