DETAILED ACTION
Application 19/315632, “ISOLATION FILM AND SECONDARY BATTERY AND ELECTRIC APPARATUS RELATED THERETO”, is the CONTINUATION of a PCT application filed on 4/10/23.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action on the merits is in response to communication filed on 6/22/26.
Response to Arguments
Applicant’s arguments filed on 3/30/26 have been fully considered, but are not persuasive.
In response to applicant’s arguments, the anticipation rejection based on Zhou has been withdrawn and an obviousness rejection based on the combination of Zhou (US 2020/0303707) and Lee (US 2014/0322586) has been applied to claim 1.
As to the Zhou-Lee combination, applicant argues that the combination fails to teach the presently claimed invention because Zhou fails to teach the dual coating layers, while Lee fails to teach a sandwich type structure wherein a coating layer is disposed between two porous base layers, and Lee also fails to teach the second porous base film facing the negative electrode plate in use. In response, the application of the references has been significantly changed in the present rejection, with certain materials, for example forms of Al2O3, being readable on both the first particles and the second particles, as the first particles may be “transition metal oxide” particles and the second particles may be any inorganic or organic particles which “do not undergo oxidation and reduction reactions within an operating voltage of a secondary battery”, two groups of particles which overlap in scope. Since different materials and features of the cited art are relied on in the present rejection, applicant’s argument is not persuasive with respect to the present rejection.
Applicant further argues that there is a particular criticality associated with the order of the first and second sub-coating layers relative to the negative electrode, with support for the argument drawn from paragraph [0095] of the published application. However, the first and second particles of claim 1 are only broadly claimed, thus the advantages of paragraph [0095] are not necessarily achieved for all embodiments of the claimed invention, such as for example, when different forms of Al2O3 represent the first and second particles. It is noted that claims 2 and 19 do further limit the identity of the first and second particles, respectively; however, these claims are separately dependent on claim 1 and not simultaneously required.
Claim Rejections - 35 USC § 112
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 7 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 7 merely repeats limitations which were already set forth in base 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 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 of this title, 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.
Claims 1, 3-7, 9, 15 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Zhou (US 2020/0303707) and Lee (US 2014/0322586).
Regarding claims 1 and 7, Zhou teaches a secondary battery comprising a positive electrode plate, a negative electrode plate, and a separator disposed between the electrodes such that a second porous base film of the separator faces the negative electrode plate (paragraph [0078-0079]).
Zhou further teaches the separator being a separator (Fig. 1; title), comprising: a first porous base film (upper item 1) and the second porous base film (lower item 1); and a coating layer (item 2) disposed between the first porous base film and the second porous base film (see Fig. 1; paragraph [0033]), wherein the coating layer comprises first particles (paragraph [0034]), and the first particles comprise at least one of molybdenum disulfide, silicon oxide, transition metal oxide, or conductive carbon particles (paragraph [0038-0040]).
Further regarding the 3/30/26 amendment to claim 1, Zhou further teaches wherein the coating layer further comprises second particles, and the second particles do not undergo oxidation and reduction reactions within an operating voltage range of a secondary battery; the second particles comprise at least one of inorganic particles or organic particles (paragraph [0038-0040]; e.g. “Al2O3, TiO2”, paragraph [0040]).
Zhou teaches the separator comprising a coating layer which includes particles such as, for example, Al2O3, for example (paragraphs [0034, 0038-0040]), but does not appear to teach wherein the coating layer comprises: a first sub-coating layer including first particles comprising at least one of molybdenum disulfide, silicon oxide, transition metal oxide, or conductive carbon particles disposed therein, and a second sub-coating layer comprising second particles which do not undergo oxidation and reduction reactions within an operating voltage of a secondary battery disposed therein, and wherein based on a total weight of the coating layer, a content of the first particles is greater than or equal to 20%.
In the battery art, Lee teaches a battery separator comprising two coating layers (Fig. 1), wherein the two coating layers comprise inorganic materials differing properties (paragraphs [0023-0024, 0028-0029]). Lee further teaches that the two inorganic materials having different properties may be different forms of a single type of material, such as for example Al2O3 (paragraph [0026, 0065, 0067]). Lee further teaches that the first coating layer, disposed closer to the negative electrode may have a greater inorganic material content and thickness (paragraphs [0058-0068]), suggesting a content ratio of second particles to first particles of less than or equal to 1, and a content of the first particles is greater than or equal to 20% (considering the 5 micron thickness and 10:90 binder to inorganic material ratio of the first coating layer). first particles Lee further teaches that providing two coating layers on a polymer substrate, provides improved resistance to transition metal ion transfer from the positive electrode to the negative electrode, safety and/or cycle life (paragraphs [0005-0007, 0077-0078]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to modify the battery of Zhou by providing two coating layers having first and second inorganic material particles, with the first coating layer closer to the anode having a higher content of the particles than the second coating layer which is disposed on the first coating layer, and a content of the first particles is greater than or equal to 20% for the benefit of improving improved resistance to transition metal ion transfer from the positive electrode to the negative electrode, safety and/or cycle life as taught by Lee.
It is noted that Al2O3 is a transition metal oxide which does not undergo oxidation and reduction reactions within an operating voltage of a secondary battery, and is therefore able to be read onto either or both of the first particles and second particles of claim 1.
Regarding claim 3, the cited art remains as applied to claim 1. Zhou further teaches wherein the transition metal oxide comprises one or more of manganese dioxide, cobalt oxide, iron oxide, or nickel oxide (“NiO”, paragraph [0012, 0040]).
Regarding claim 4, the cited art remains as applied to claim 1. Zhou further teaches wherein based on a total weight of the coating layer, a content of the first particles is 30% to 60% (e.g. Al2O3 at 36% by mass at Example 1, paragraph [0094]).
Regarding claim 5, the cited art remains as applied to claim 1. Zhou further teaches wherein an average particle size of the first particles is less than or equal to 3 µm, optionally 0.01 µm to 1 µm (“0.001 μm to 15 μm”, paragraph [0043]; e.g. “1.2 µm” noting that 1.2 rounds to 1).
Regarding claim 9, the cited art remains as applied to claim 1. Zhou further teaches wherein the coating layer further comprises a binder; optionally, the binder comprises one or more of polyacrylate, acrylic acid, carboxymethylcellulose, polyvinylidene fluoride-co-trichloroethylene copolymer, polymethyl methacrylate, polyvinylpyrrolidone, polyvinyl acetate, polyethylene-co-vinyl acetate copolymer, polyethylene oxide, polyarylate, cellulose acetate, cellulose acetate butyrate, cellulose acetate propionate, polyvinylidene fluoride, polyacrylonitrile, polyvinyl alcohol, starch, hydroxypropyl cellulose, regenerated cellulose, tetrafluoroethylene, polyethylene, polypropylene, or cyanoethyl branched starch (“polyacrylate”, paragraph [0008]).
Regarding claim 15, the cited art remains as applied to claim 1. Zhou is silent as to wherein the separator satisfies each of conditions (1) to (6): (1) a machine direction thermal shrinkage of the separator is less than or equal to 1.0% at250 0C for 1 hour;(2) a transverse direction thermal shrinkage of the separator is less than or equal to 1.0% at 250 0C for 1 hour;(3) an air permeability of the separator is less than or equal to 500 s/100cc;(4) a machine direction tensile strength of the separator is greater than or equal to 600 kg/cm2;(5) a transverse direction tensile strength of the separator is greater than or equal to 1000 kg/cm2; and (6) an ionic conductivity of the separator ranges from 0.5 mS/cm to 2.0 mS/cm.
However, the recited limitations are properties of a battery separator which are a consequence of the structure of the separator. Since the Zhou separator includes the positively claimed structure, absent any evidence to the contrary, the same properties are expected. Therefore, the invention of claim 1 is anticipated by Zhou.
Regarding claim 18, the cited art remains as applied to claim 16. Zhou does not appear to teach the secondary battery as a subcomponent of an electric device.
In the battery art, Lee teaches an electric device, comprising a secondary battery (“mobile phone”, paragraph [0003]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to employ the secondary battery of Zhou in an electric device for the benefit of making real world use of the battery as taught by Lee.
Regarding claim 19-20, the cited art remains as applied to claim 1. As to claim 19, Zhou teaches Al2O3 as an embodiment of the second inorganic particles. As to claim 20, the organic particles are only optionally claimed in base claim 1, which is taught by Zhou’s teaching of inorganic particles.
Claims 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Zhou (US 2020/0303707), Lee (US 2014/0322586) and Mizuno (TW 201727971; citations taken from machine translation).
Regarding claim 2, the cited art remains as applied to claim 1. Zhou teaches the first coating layer comprising a first particle such as Al2O3 (paragraph [0040] for the benefit of lithium dendrite inhibition and/or good heat resistance (paragraph [0034]), but does not appear to teach wherein the first particle comprises molybdenum disulfide.
In the battery art, Mizuno teaches a separator layer configured to include inorganic particles such as alumina and molybdenum disulfide, as alternatives, for the benefit of enhancing the heat resistance and/or short circuit resistance of a separator (see second paragraph of section “3. Porous layer” on page 12 of the machine translation; corresponds to paragraph [0059] of the original document).
It would have been obvious to a person having ordinary skill in the art at the time of invention to substitute molybdenum disulfide for some or all of the first inorganic particle of Zhou for the benefit of including an inorganic compound known to have desirable structural and heat resistance properties as taught by Mizuno. Such a modification merely requires the simple substitution of one known inorganic material (e.g. alumina as taught by Zhou and Mizuno) for another (molybdenum disulfide taught by Mizuno); therefore, a prima facie case of obviousness exists in accordance with MPEP 2141.
Claims 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Zhou (US 2020/0303707), Lee (US 2014/0322586) and Shi (US 2005/0014063).
Regarding claim 10, the cited art remains as applied to claim 1. Zhou teaches a separator comprising two porous base films joined by a coating layer, but does not appear to teach wherein a melting point of the first porous base film is different from a melting point of the second porous base film.
In the battery art, Shi teaches that a battery separator may be configured to include a microporous membrane [a kind of base film], an adhesive layer and a nonwoven flat sheet [a different kind of base film] (paragraph [0011]), with the nonwoven flat sheet included for having high temperature melt integrity (paragraph [0009]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to replace one of the porous base films with a nonwoven flat sheet, having a melting point different from the first porous base film, for the benefit of improving the high-temperature integrity of the separator as taught by Shi.
Regarding claim 11, the cited art remains as applied to claim 10. Zhou further teaches wherein the melting point of the first porous base film is denoted as Tm1, and the melting point of the second porous base film is denoted as Tm2, such that the separator satisfies: 1.05 < Tmi/Tm2< 2.50, and/or 160 ºC< Tmi< 350 °C 120 ºC< Tm2< 180 0C (paragraph [0021] teaches the porous films may be formed from polypropylene, which has a melting temperature of about 160 ºC*).
*As supporting evidence, see Amin-Sanayei (US 2022/0298313) which teaches that conventional polypropylene separators have a melting point of about 160-165 ºC at paragraph [0006].
Claims 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Zhou (US 2020/0303707), Lee (US 2014/0322586) and Reinartz (US 2023/0231231).
Regarding claim 13-14, the cited art remains as applied to claim 1. Zhou further teaches wherein each base film may have a thickness within the range of 2 to 12 μm (paragraphs [0007, 0094]), but does not appear to teach wherein the thickness of the first and second base films satisfy W1/W2 > 1.02.
However, it has been held that it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP 2144.04 IVA). Here, there is no evidence that the condition W1/W2 > 1.02 imparts an unexpected advantage in performance compared to an embodiment wherein W1=W2, in the context of claim 1
Moreover, in the battery art, Reinartz teaches it known that microporous layers of a laminate separator may be of “different thicknesses” as an obvious alternative to a same thickness as a matter of design choice (Fig. 1; paragraph [0010, 0032]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to modify the separator of Zhou such that the two base films have different thicknesses, as this modification merely requires the simple substitution of one known element (base layers having the same thickness as in Zhou or Reinartz Figure 1 left embodiment) for another known element (base layers having different thickness as in Reinartz Figure 1 right embodiment) to yield predictable results, either embodiment provides a functional separator; therefore, a prima facie case of obviousness exits. It is noted that the cited art does not expressly teach the numerical range W1/W2 > 1.02; however, Reinartz general teaching of different thicknesses is found to reasonably suggest the claimed range as the claimed range the skilled artisan would have no reason to limit the “different thicknesses” suggestion of Reinartz to those value that are less than 2% difference, which is only a small subset of the possible variation suggested by “different thicknesses”.
Claims 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Zhou (US 2020/0303707), Lee (US 2014/0322586), Adachi (US 2022/0102811), Cho (US 2016/0226045) and Lee’092 (US 2022/0311092).
Regarding claim 15, the cited art remains as applied to claim 1. Zhou is silent as to wherein the separator satisfies each of conditions (1) to (6): (1) a machine direction thermal shrinkage of the separator is less than or equal to 1.0% at 250 0C for 1 hour;(2) a transverse direction thermal shrinkage of the separator is less than or equal to 1.0% at 250 0C for 1 hour;(3) an air permeability of the separator is less than or equal to 500 s/100cc;(4) a machine direction tensile strength of the separator is greater than or equal to 600 kg/cm2;(5) a transverse direction tensile strength of the separator is greater than or equal to 1000 kg/cm2; and (6) an ionic conductivity of the separator ranges from 0.5 mS/cm to 2.0 mS/cm.
However, the recited limitations are properties of a battery separator which are a consequence of the structure of the separator. Since the Zhou separator includes the positively claimed structure, absent any evidence to the contrary, the same properties are expected.
Alternatively, as to (1) and (2), Zhou does teach the separator configured such that heat shrinkage is “prevented” or at least reduced (paragraph [0034]). Therefore, the achievement of the low thermal shrinkage values which are claimed is found to be obvious over Zhou, particularly considering that there is no lower limitation on the claimed ranges which are therefore aspirational rather than ranges which would only be achieved by applicant’s enabling invention.
As to (3), in the battery art, Adachi teaches a separator (paragraphs [0003-0004]), wherein the separator is configured to have a permeability of 500 s/100 cc or less for the benefit of facilitating suitable mobility of ions (paragraph [0046]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of invention to configure the separator of Zhou to have an air permeability of the separator is less than or equal to 500 s/100cc for the benefit of facilitating suitable mobility of ions as taught by Adachi.
As to (4) and (5), in the battery art, Cho teaches that it is desirable to configure a separator to have high tensile strength for the benefit of improvidng dimensional properties of a battery such as impact resistance (paragraph [0004]). Cho further teaches that machine and transverse direction tensile strengths of 1500 kgf/cm2 or higher are desirable (paragraph [0012]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of invention to configure the separator of Zhou to have machine direction and transverse direction tensile strengths of greater than or equal to 600 kg/cm2; and 1000 kg/cm2, respectively in order to provide the battery with good mechanical properties and/or impact resistance as taught by Cho.
As to (6), in the battery art, Lee’092 teaches that a high ionic conductivity for a separator is desirable and associated with improved properties such as output-energy density and good cycle characteristics (paragraphs [0042-0043; 0062]), and teaches that such a desirable ionic conductivity may be 0.3 ms/cm or more (paragraph [0038]), or 0.5 mS/cm or more and 2.0 mS/cm or less (paragraph [0189]; Table 1). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of invention to configure the separator of Zhou to have an ionic conductivity in the range of 0.5 to 2.0 mS/cm for the benefit of providing a battery comprising the separator with favorable electrochemical properties as taught by Lee’092.
Therefore, the invention of claim 15 is found to be obvious because the claimed limitations represent aspirational characteristics of a separator which were known to be desirable at the time of invention, and/or properties achieved with appropriate design in the prior art and taught by the art to be desirable to implement for certain known advantages.
Claims 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Zhou (US 2020/0303707), Lee (US 2014/0322586), and Honda (US 2022/0200098).
Regarding claim 20, the cited art remains as applied to claim 1. Zhou further teaches coating layer may comprise a binder such as polyvinylidene fluoride (paragraph [0008, 0045]), but does not appear to teach wherein the polyvinylidene fluoride is in the form of second particles.
In the battery art, Honda teaches that a coating layer may be provided by using binder in a particulate form for the benefit of providing a porous layer (paragraphs [0096-0098]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to include the binder of Zhou in a polymer form for the benefit of promoting porosity in the layer as taught by Honda. It is noted that polyvinylidene fluoride is electrochemically stable and therefore would not be expected to undergo oxidation and reduction reactions within an operating voltage range of a secondary battery.
Relevant or Related Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, though not necessarily pertinent to applicant’s invention as claimed.
Lee (USP 9698396) separator comprising a porous substrate and two coating layers
Geng (CN 108448160) separator comprising multiple layers
Song (US 2021/0408526) separator including molybdenum disulfide
Conclusion
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/JEREMIAH R SMITH/Primary Examiner, Art Unit 1723
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