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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-6, 14-16 in the reply filed on 06/23/2026 is acknowledged. Claims 7-13 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/23/2026.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 10/21/2025 and 04/29/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 6 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 6 recites the limitation "a porous coating" and depends upon claim 5. Claim 5 already states “a porous coating” and thus it is indefinite if the porous coating of claim 6 is a different porous coating or the same porous coating of claim 5. Examiner notes that claim 6 appears to be referencing claim 5 and thus will be interpreted as such in view of the 112B rejection.
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).
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 0.45 cc/g to 1.5 cc/g ([20] pore volume 0.3-1 ml/g).
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, 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, 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, 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, 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 ([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, Endo discloses an electrochemical device comprising the electrode assembly according to claim 14 and a case configured to accommodate the electrode assembly ([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 Reinartz et al. (US 2022/0216568 A1).
Regarding claim 5, 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 a 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xu et al. (US 2025/0066568 A1)-discloses a polyolefin based film and preparation method and is analogous with the instant invention as being within the same field of endeavor of separators.
Nishimura et al. (US 2003/0108796 A1)- discloses a separator for metal halogen cell and is analogous with the instant invention as being within the same field of endeavor of separators.
Guo et al. (US 2019/0267596 A1)- discloses a separator and lithium ion battery wherein a coating layer is applied to a separator and is analogous with the instant invention as being within the same field of endeavor of separators.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Martin can be reached at (571)270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM J FRANCIS/Primary Examiner, Art Unit 1728
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