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 Status
Claims 1 and 6 have been amended; support for claim 1 is found in [0009,0043,0046,0050], the amendment to claim 6 was a minor editorial amendment.
Claims 7-13 and 17 have been withdrawn.
Claims 1-6 and 14-16 are currently pending and have been examined on the merits in this office action.
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.
Claims 1-4, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Endo (JP 2006111712 A) in view of Gao et al. (US 2023/0031405 A1).
Regarding claim 1, Endo discloses a separator comprising:
A polyolefin based porous substrate having a thickness of about 8 µm or less ([15] polyolefin microporous membrane has a thickness less than 20 µm or, such as between 0.1-16 µm),
Wherein the total pore volume within the polyolefin-based porous substrate is about 0.3 cc/g to 1 cc/g ([20] pore volume 0.3-1 ml/g).
Endo is silent with respect to wherein the pore volume is 1.05 cc/g to 1.5 cc/g as Endo teach a slightly smaller range than that of the claimed invention.
Gao discloses inorganic trapping agent mixtures used in an electrochemical cell and is analogous with the instant invention as being within the same field of endeavor of battery cell. Gao discloses wherein separators can be made with polyolefin membranes with micrometer size pores to allow for transport of ions ([0003-0004]). Gao further discloses wherein the separator can be made of particles and thus can have a pore volume range of about 0.1 cc/g to about 2.0 cc/g in order to allow for ionic transport within the battery cell ([0029] and claim 4).
Therefore, it would have been obvious in view of a skilled artisan to adjust the pore volume of the separator of Endo to have a pore volume within the range taught by Gao of 0.1-2.0 cc/g as a simple modification of the pore volume of one separator to allow for ionic transfer within the battery cell. Ionic transfer through the separator is a common feature in the art and thus a skilled artisan would have found it obvious to adjust the pore volume to allow for ionic transfer to occur that would increase the conductivity and thus there are no unexpected results resulting from the modification. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, modified Endo discloses all the claim limitations of claim 1 and discloses the separator according to claim 1. The claim limitations of claim 2 state “wherein the total pore volume is obtained by injecting moisture into the polyolefin-based porous substrate at a constant pressure and measuring the total amount of moisture injected until the moisture saturation reaches 100 volume%.” This is deemed to be a product by process limitation as the product according to claims 1-2 does not depend upon the process of making the product. The product-by-limitations of claim 2 are not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claim 2 as written does not distinguish the product of the instant application from the product of the prior art.
Regarding claim 3, modified Endo discloses all the claim limitations of claim 1. Endo further discloses a thickness of the polyolefin based porous substrate is about 5- 8 µm or less ([15] polyolefin microporous membrane has a thickness less than 20 µm or, such as between 0.1-16 µm). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, modified Endo discloses all the claim limitations of claim 1 and discloses the separator according to claim 1. The claim limitations of claim 4 state “wherein the polyolefin-based porous substrate is manufactured by a wet method, and the wet method is a method including an extrusion process and a stretching process using a raw material of a polyolefin-based resin mixed with a diluent.” This is deemed to be a product by process limitation as the product according to claims 1 and 4 does not depend upon the process of making the product. The product-by-limitations of claim 4 are not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claim 4 as written does not distinguish the product of the instant application from the product of the prior art.
Regarding claim 14, modified Endo discloses an electrode assembly comprising: the separator according to claim 1; and
A positive electrode and a negative electrode being provided on both surfaces of the separator, respectively (Endo [0001] secondary battery that contains the separator and also a secondary battery contains a positive and negative electrode and is known in the art that a separator for a battery separates the negative and positive electrodes).
Regarding claim 15, modified Endo discloses an electrochemical device comprising the electrode assembly according to claim 14 and a case configured to accommodate the electrode assembly (Endo [0001] secondary battery that contains the separator and also a secondary battery contains a positive and negative electrode and is known in the art that a separator for a battery separates the negative and positive electrodes and is known that a secondary battery comprises a casing).
Claims 5-6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Endo (JP 2006111712 A) in view of Gao et al. (US 2023/0031405 A1), as applied to claim 1 above, and further in view of Reinartz et al. (US 2022/0216568 A1).
Regarding claim 5, modified Endo discloses all the claim limitations of claim 1. Endo is silent with respect to wherein a porous coating layer is applied on at least one surface of the polyolefin based porous substrate, and includes inorganic particles and a binder and has a thickness of the coating layer is 20-45 % relative to the thickness of the separator.
Reinartz discloses an improved coated battery separator and is analogous with the instant invention as being within the same field of endeavor of battery separators. Reinartz further discloses wherein a coating is applied to at least one side of the separator and wherein the coating layer can be made of a ceramic material that contains inorganic materials and a binder and wherein the coating has a thickness from 0.1 to 10 micrometers in thickness ([0027-0029], [0045]). Reinartz further discloses that the coating blocks the growth of lithium dendrites and help to prevent shorts caused by the dendrites and thus improve the safety of the battery separator ([0004]).
Therefore, it would have been obvious in view of a skilled artisan to apply the separator coating layer having a thickness of 0.1-10 micrometers as taught by Reinartz onto the separator of Endo in order to prevent dendrite growth and prevent shorts caused by the dendrites and improve the safety of the battery separator. The resulting modification would render obvious the porous coating layer and contains a thickness range that would be between 20-45% of a thickness of the separator. Thus all the claim limitations of claim 5 are rendered obvious in view of the combination. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 6, modified Endo discloses all the claim limitations of claim 5. Modified Endo further discloses wherein the separator includes the porous coating layer on each of the two surfaces of the polyolefin based porous substrate (Reinartz [0005] coating can be applied to both surfaces of the polyolefin separator),
The sum of thicknesses of the porous coating layers is about 40-80% relative to the thickness of the separator ([0027-0029], [0045], see modification of claim 5 as the porous coating layer can be applied to both surfaces of the separator and can contain a thickness range that would be between 40-80 % of a thickness of the separator). Thus all the claim limitations of claim 6 are rendered obvious in view of the combination of claim 5. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 16, modified Endo discloses all the claim limitations of claim 5. The claim limitations of claim 5 state “wherein the porous coating layer is manufactured by a safety reinforced separator (SRS) manufacturing method.” This is deemed to be a product by process limitation as the product according to claims 5 and 16 does not depend upon the process of making the product. The product-by-limitations of claim 16 are not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claim 16 as written does not distinguish the product of the instant application from the product of the prior art.
Response to Arguments
Applicant's arguments filed 10/02/2026 have been fully considered but they are not persuasive. Applicant argues that the amended claims overcome the rejection of record due to the narrowing of the independent claim 1. This argument is noted, however, the rejection has been updated rendering the arguments moot as Endo in view of Gao would disclose the pore volume as claimed in view of the combination.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Itahashi et al. (US 2008/0094777 A1)- discloses an electric double layer capacitor wherein an electrode can be made of an activated carbon having a pore volume of 1.5 cc/g or less.
Otsuka et al. (US 2021/0280889 A1)-discloses a redox flow battery wherein a separator has a total pore volume of 0.050 cc/g or larger and smaller than or equal to 0.250 cc/g and that the pore volume is not critical.
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 Adam J Francis whose telephone number is (571)272-1021. The examiner can normally be reached M-Th: 7 am-4 pm EST.
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/ADAM J FRANCIS/Primary Examiner, Art Unit 1728
