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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7-20-2026 has been entered. Election/Restrictions
Applicant's election with traverse of a separator comprising a substrate and a polymer layer claimed in claim 14, comprising a liquid-retaining polymer comprising an ether polymer as claimed in claims 7-8, comprising a building block represented by formula (BII)
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96
109
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R24-R26 = H and R27 = an unsubstituted C2 ether group, specifically poly(ethyl vinyl ether),
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200
273
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and a bonding polymer as claimed in claim 3, comprising a polyacrylate
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221
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in the reply filed on 9-29-2025 is acknowledged. The traversal is on the ground(s) that it would not be a burden to search all the different possibilities for the polymer layer. This is not found persuasive because the polymer layer comprising:a) a liquid retaining polymer that comprises: i) a fluoropolymer as claimed in claim 4-6 is very different than ii) an ester polymer as claimed in 9-10 is very different than iii) an aldehyde-ketone polymer as claimed in claims 11-12. The requirement is still deemed proper and is therefore made FINAL.
Claims 4-6, 9-12 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.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 9-29-2025.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3, 7-8, 13-14 and 16-19 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.
Claim Rejections - 35 USC § 112
Claims 1, 3, 7-8, 13-14 and 16-19 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. Claim 1 is rejected because it is unclear if the claim is a product-by-process claim or a product claim because of the phrase “wherein a liquid-retaining property of the …is measured by a method including the following: …”. It is unclear what the limits of claim 1 entails. Claim 1 is rejected because of the phrase “wherein the bonding force of the separator is measured by a method of forming a laminated including a layer of negative electrode plate, a layer of the separator and a layer of positive electrode plate, pressing…of positive and negative electrode plates and separator and …between the positive and negative plates…” because the claim is claiming a separator and not a battery which also comprises negative and positive plates. Therefore, these method steps cannot be present. Also, it is unclear what is being claimed in claim 1. Claim 1 is rejected because it is unclear what liquid-retaining polymers would result in the liquid-retaining polymer limitation claimed in claim 1. Claim 1 is rejected because the term “liquid-retaining polymer” is vague and indefinite because is it unclear to the meaning of the technical feature because the capacity of a polymer to swell and absorb a solvent to retain a liquid depends on the polymer and the solvent. Claim 1 is rejected because it is unclear what bonding polymers would result in a bonding formed of the separator in a range of 10-30 N/m. Claim 3 resolves this issue. Claim 7 is rejected because it is unclear what ether polymers would result in the limitations claimed in claim 7. The term “ether polymer” is vague and unclear because it is unclear if the term is referring to a polyether which is a polymer featuring an ether leakage every repeating unit, or poly(ethylene oxide) or polytetrahydrofuran because the examples in the specification in table 1, teach only using ethyl vinyl ether and vinyl acetate monomer units. None of these produce a polymer featuring ether linkages within his repeating units. The ether polymers claimed in claim 8 resolves this issue. Claim 7 is rejected because it is unclear what the phrase “the sheetlike structure contains an elastic modulus… represents a melting temperature of the ether polymer” further limits claim 7, because the claim attempts to define the subject matter in terms of the results achieved, therefore it is unclear what protection is being sought. Claim 13 is rejected because it is unclear what liquid-retaining polymers would result in the liquid-retaining polymer limitation claimed in claim 13. Claim 14 is rejected because it is unclear what is the difference between the separator body claimed in claim 1 which the Examiner thought was “the substrate”. It is now unclear how many layers does the separator now comprise. Claim 17 is rejected because it is unclear what side of separator body is the polymer layer comprising a liquid-retaining polymer is positioned on in regard to a positive electrode versus a negative electrode.
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.
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.
Claim(s) 1, 3, 13-14 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (EP 3 813 149) and Tsujimoto et al. (CN 107 492 625) and Sato (EP 3 920 265). Lee et al. teaches in the examples, separators comprising in [0034-0037], a porous substrate/separator body; a polymer layer applied onto both sides of the separator with a polymer which is capable of absorbing the electrolyte of [teaching a liquid retaining polymer swells and retains liquid electrolyte] , wherein the peel force [bonding force] is 45-76 gf/25mm [18-30 N/m, Table 1], while m/q expressed in claim 1 is not mentioned, the claimed product is identical in all other aspects. Lee et al. teaches the use of a liquid retaining fluoropolymer which comprises polymer chains. In all the examples and comparative examples in table 1, comprise a polyethylene film as separator body and liquid retaining polymer being one i) a copolymer of VdF, TFE and cyanoethyl polyvinyl alcohol or ii) a copolymer of VdF and TrFE. Tsujimoto et al. teaches in its examples 1-13, 15 and 16 in table 1, separators for electrochemical devices comprising:
(i) a 7 µm-thick microporous polyethylene substrate
(ii) a polymer layer applied on both sides of the substrate through a dip-coat technique, said layer comprising:
(ii-1) a first copolymer i.e. VdF:HFP:MAME (maleic acid monomethyl ester) with ratios 98.0/1.5/0.5.
(ii-2) a second copolymer i.e. VdF:HFP with ratio 97/3
(ii-3) an additional bonding acrylic-type polymer,
wherein the peeling force (i.e. bonding force of the separator to the electrode) is 12.3-25.0 N/m.
Sato teaches in its examples 5, 7, 9 and 12-17 in table 1, separators for a non-aqueous secondary batteries comprising:
(i) a 9 µm-thick microporous polyethylene film
(ii) a polymer layer applied on both sides of the substrate through a dip-coat technique, said layer comprising:
(ii-1) a first copolymer i.e. VdF:TFE.(ii-2) a second copolymer i.e. VdF:HFP, wherein the adhesive strength of the separator to the electrode) is 10 N/m or more.
Lee et al. or Tsujimoto et al. or Sato do not expressly teach the parameter m/q as claimed in claim 1 but the claimed product is identical in all other respects (identical structure, properties or composition features).
Lee et al. teaches the presence of cyanoethyl polyvinyl alcohol, which is a derivative of polyvinyl acetate, while Tsujimoto et al. teaches the presence of an acrylic-based polymer. Lee et al. teaches in its comparative examples 1-3, the use of a PVdF- HFP copolymer (HDF amounts 2-16 %) as liquid-retaining polymer, said fluoropolymers having a crystallization degree below 30% and a melting temperature below 140 °C and teaches in [0043], that the molecular weight of its fluorinated polymer is "preferably 600,000 or less, or 400,000 or less", Tsujimoto et al. discloses the use of two fluoropolymers, one VdF:TFE and one VdF:HFP, said VDF:HFP copolymer having a melting temperature of 135 °C and teaches that its VdF:HFP has a molecular weight of 300 000 g/mol. Sato teaches the use of two fluoropolymers, one VdF:HFP:MMM and one VdF:HFP, at least one of which having a melting temperature of 140 °C or lower and teaches the fluoropolymers to have molecular weights of 117 000 g/mol or more.
Claim(s) 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (EP 3 813 149) and Tsujimoto et al. (CN 107 492 625) and Sato (EP 3 920 265) and further in view of Bai et al. (CN 104 140 502) or Zhang et al. (CN 110 993 859). Lee et al. and Tsujimoto et al. and Sato teaches the claimed invention as explained about but does not teach an ether polymer comprising the building blocks of formula (BI) or formula (BII). Bai et al. teaches in example 1, a separator for batteries comprising:i) a poly propylene microporous membrane; ii) a polymer layer applied on both sides of the membrane with a polymer layer comprises: a) a copolymer of polyethylene oxide, acrylonitrile and butyl acrylate and b) titanium dioxide particles. Zhang et al. teaches in its example 1, a separator for batteries comprising:
(i) a polypropylene microporous film
(ii) a polymer layer applied on both sides of the film, said layer comprising polyethylene oxide-grafted PVDF/HFP polymer particles capable absorbing the electrolyte (i.e. swells and retains said liquid electrolyte), wherein the dry bond strength (i.e. bonding force of the separator to the electrode) is 15.5-29.4 N/m (see table 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use ether polymers instead of fluoropolymers as the liquid retaining polymer because Bai et al. and Zhang et al. teaches that both these liquid retaining polymers can be used in the separator as explained above and one would expect therefore that these liquid retaining polymers would function in a similar way and give similar results.
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, 7-8, 13-14 and 16-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-13 of copending Application No. 19/319,895 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application No. 19/319,895 claims in claims 5-7, the same liquid-retaining polymer which can be a fluoropolymer; claims 8-9, the same ether polymer of instant claims 7-8 of my case; claims in claims 10-11, an ester polymer and claims in claims 12-13, an aldehyde-ketone polymer. Application No. 19/319,895 claims in claim 13, the exact same the molecular weight of the polymer limitation of instant claim 13. Application No. 19/319,895 claims in claims 15-20 of '895 the exact same as instant claims 14-19.
Since Application No. 19/319,895 claims the same liquid-retainer polymer then inherently the same liquid-retaining property represented by m/q must also be obtained.
In addition, the presently claimed property of the same liquid-retaining property represented by m/q would have obviously been present once the Application No. 19/319,895 product is provided. See MPEP 2122.01, I.
Since Application No. 19/319,895 claims a separator comprising a liquid-retainer polymer then inherently the bonding force must have the same bonding force must also be obtained.
In addition, the presently claimed property of the bonding force would have obviously been present once the Application No. 19/319,895 product is provided. See MPEP 2122.01, I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zhang et al. (CN 110993859, machine translation) teaches an improved structure of a polymer coating membrane comprising a base film and the coating layer comprising modifying a gel polymer by grafting with a carboxyl group which improves the polymer coating membrane adhesive property and stability. Zhang et al. teaches that the gel polymer is composed of one or at least two kinds of copolymers or mixtures of polyvinylidene fluorine, polyurethane, polyethylene oxide, polypropylene oxide, polyacrylonitrile, polyacrylamide, polymethyl acrylate, polymethyl methacrylate, polyvinyl acetate, polyvinyl pyrrolidone or poly-acrylic acid tetraethylene glycol ester. Zhang et al. teaches that the coating slurry comprises the surface crafted polymer gel, a bonding agent comprising polyethylene oxide, polymethyl methacrylate, acrylic and acrylic ester [teaching claim 3] and de-ionized water. Zhang et al. teaches that the base film is a polyolefin membrane [teaching a separator body]. Zhang et al. teaches that the drying temperature is 40-80° C. Zhang et al. teaches in [Table 1, 0071], that in project 1, the peel strength 26 N/m and in project 2, the peel strength was 87 N/m [teaches claim 2].
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723
Prosecution Insights