www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/275,289
`
`03/11/2021
`
`Takafumi Tsukagoshi
`
`P210187US00
`
`5155
`
`WHDA,LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`FREEMAN, EMILY ELIZABETH
`
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/29/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`171275,289
`Tsukagoshi et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`EMILY E FREEMAN
`1724
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 12/18/2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-2 and 4-22 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C) Claim(s)
`is/are allowed.
`Claim(s) 1-2 and 4-22 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)7) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.1.) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240325
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`2.
`
`This is a final office action in response to Applicant's remarks and amendmentsfiled on
`
`12/18/2023. Claims 1, 4, and 6 are currently amended. Claim 3 is canceled. Claims 1-2 and 4-
`
`22 are pending review in this action. The previous 35 U.S.C. 102 and 35 U.S.C. rejections are
`
`withdrawnin light of Applicant's amendment to Claims 1 and 6, howeverthe use of the same
`
`prior art references used in the previous office action have been upheld as reading on the
`
`claims. New grounds of rejection are detailed below.
`
`Claim Objections
`
`3.
`
`Claim 9 is objected to because of the following informalities:
`
`e Claim 9, line 12 recites “one or more lateral noncovered regions”. All other recitations of
`
`“noncovered”are formatted as “non-covered”. All recitations of “noncovered’/“non-
`
`covered” should be consistent throughout the claims.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found
`
`in a prior Office action.
`
`5.
`
`Claims 1-2 and 4-15 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Mineoet al. (WO 2013118627 A1) (disclosed by Applicant on IDS dated 04/05/2021), as applied
`
`to Claim 1 above, and further in view of Lee et al. (US 2021/0242538 A1).
`
`In Regardsto Claim 1:
`
`Mineo discloses a separator comprising: a resin substrate (microporous resin film, 29a),
`
`a first heat-resistant layer (heat resistant porous layer, 29b) covering the first surface (upper
`
`surface of microporous resin film, 29a) of the resin substrate (microporous resin film, 29a): a
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 3
`
`second heat-resistant layer (heat resistant porous layer, 29b) covering part of a second surface
`
`(lower surface of microporous resin film, 29a) of the resin substrate (microporous resin film,
`
`29a) (Figure 5, [0055]). Mineo further discloses a non-covered region (non-formedportion, 29C)
`
`on the second surface (lower surface of microporous resin film, 29a) of the resin substrate
`
`(microporous resin film, 29a), the non-covered region (non-formed portion, 29C) not being
`
`covered with the second heat-resistant layer (heat resistant porous layer, 29b) and being in
`
`communication with an edge of the resin substrate (microporous resin film, 29a) (Figure 5,
`
`[0055]). Mineo further discloses thatthe first heat-resistant layer (heat resistant porous layer,
`
`29b) maycoverthe whole first surface (upper surface of microporous resin film, 29a) of the
`
`resin substrate (microporous resin film, 29a) [0062]. Mineo further discloses that the first heat-
`
`resistant layer (heat resistant porous layer, 29b) and the second heat-resistant layer (heat
`
`resistant porous layer, 29b) each include inorganic particles (ceramic) and a binder [0033-0036].
`
`Mineo further discloses that a content of the binder in each heat-resistant layer (heat resistant
`
`porous layer, 29b) is between 0.5 mass% and 15 mass%[0036]. As such, it would be
`
`understoodbythe skilled artisan that the content of the inorganic particles (ceramic) in each
`
`heat-resistant layer (heat resistant porous layer, 29b) is between 85 mass%and 99.5 mass%.
`
`Mineois deficient in disclosing that the non-covered region includesa plurality of lateral
`
`non-covered regions each extending from one lateral edge to the otherlateral edge of the resin
`
`substrate, wherein the plurality of lateral non-covered regions are arranged at predetermined
`
`intervals in a longitudinal direction of the resin substrate.
`
`Lee discloses a separator (100) comprising a porous polymer substrate (140), wherein
`
`an electrode adhesivelayer (110) is coated on the surface of the porous polymer substrate
`
`(140) (Figure 1, [0026, 0034]). Lee further discloses that the electrode adhesive layer (110) may
`
`be applied to the porous polymersubstrate (140) in a pattern such that the porous polymer
`
`substrate (140) contains a plurality of uncoated regions (120) (Figure 1, [0026, 0034]). Lee
`
`further discloses that the plurality of uncoated regions (120) each extend from one lateral edge
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 4
`
`to the other lateral edge of the porous polymer substrate (140), and that the plurality of
`
`uncoated regions (120) are arranged at predeterminedintervals in a longitudinal direction of the
`
`porous polymer substrate (140) (see Figure 1).
`
`Therefore, it would be obvious to one of ordinary skill in the art at the time of the filing of
`
`the invention to include in the non-covered region of Mineo, a plurality of uncoated regions each
`
`extending from one lateral edge to the other lateral edge of the substrate and each arranged at
`
`predeterminedintervals in a longitudinal direction of the substrate, as is it known in the art as a
`
`suitable arrangementfor a layer having a non-covered region to be placed on a substrate for a
`
`separator, as taught by Lee. By making such a selection, all of the limitations of Claim 1 are
`
`met.
`
`In Regards to Claim 2 (Dependent Upon Claim 1):
`
`Mineo as modified by Lee discloses the separator of Claim 1 as set forth above. Mineo
`
`further discloses that the binder may be polvvinylidene fluoride [0036]. Thus, all of the limitations
`
`of Claim 2 are met.
`
`In Regards to Claim 4 (Dependent Upon Claim 1):
`
`Mineo as modified by Lee discloses the separator of Claim 1 as set forth above.
`
`Modified Mineo further discloses that the respective forms of the plurality of lateral non-covered
`
`regions (non-formed portion, 29C) are linear (see Figure 5). Thus, all of the limitations of Claim
`
`4 are met.
`
`In Regards to Claim 5 (Dependent Upon Claim 1):
`
`Mineo as modified by Lee discloses the separator of Claim 1 as set forth above. Mineo
`
`further discloses that the resin substrate (microporous resin film, 29a) has a substantially square
`
`shape [0017]. Mineo further discloses that the width of the resin substrate (microporous resin
`
`film, 29a) may have a width between 2 mm and 15 mm [0019]. As such, the skilled artisan
`
`would appreciate that the area of the resin substrate (microporous resin film, 29a) (andfirst
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 5
`
`surface and second surface) may be between 4 mm? and 225 mm?. Mineo further discloses that
`
`the width of the non-covered region (non-formed portion, 29C) is 5 mm or less [0020].
`
`Assuch, the skilled artisan would appreciate that there are many possible embodiments
`
`wherein the area of the non-covered region (non-formedportion, 29C) is between 5% and 20%
`
`of the area of the second surface (lower surface of microporous resin film, 29a) of the resin
`
`substrate (microporous resin film, 29a). For example, if the width of the resin substrate
`
`(microporous resin film, 29a) (and therebythe first surface and second surface) is 10 mm, the
`
`area of the second surface (lower surface of microporous resin film, 29a) is 100 mm?.
`
`Furthermore, if the total (additive) width of the non-covered region (non-formed portion, 29C)is
`
`1 mm andthe total (additive) length of the non-covered region (non-formed portion, 29C) is 10
`
`mm, the area of the non-covered region (non-formed portion, 29C) is 10 mm?, which is 10%of
`
`the area of the second surface (lower surface of microporous resin film, 29a). Thus, all of the
`
`limitations of Claim 5 are met.
`
`In Regards to Claim 6 (Dependent Upon Claim 1):
`
`Mineo as modified by Lee discloses the separator of Claim 1 as set forth above.
`
`Mineois deficient in disclosing that the non-covered region includesa lateral non-
`
`covered region being oblique relative to the lateral direction of the resin substrate and extending
`
`from one lateral edge to the other lateral edge between the plurality of lateral non-covered
`
`regions.
`
`Lee further discloses that the uncoated regions (120) may be present on the surfaceof
`
`the porous polymersubstrate (140) in a direction which is oblique relative to the lateral direction
`
`of the porous polymer substrate (140) (see Figure 1).
`
`Therefore, it would be obvious to one of ordinary skill in the art at the time ofthe filing of
`
`the invention to select for the non-covered region of Mineo, the arrangement of the uncoated
`
`regions of Lee wherein the uncoated regions are positioned oblique relative to the lateral
`
`direction of the substrate, as is it known in the art as a suitable arrangementfor a layer having a
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 6
`
`non-covered region to be placed on a substrate for a separator, as taught by Lee. By making
`
`such a selection, all of the limitations of Claim 6 are met.
`
`In Regards to Claim 7 (Dependent Upon Claim 1):
`
`Mineo as modified by Lee discloses the separator of Claim 1 as set forth above. Mineo
`
`further discloses a non-aqueous electrolyte secondary battery (1) comprising an electrode
`
`laminate (10”) which comprises: a positive electrode (23a), a negative electrode (23b), anda
`
`separator according to Claim 1 (see above) being disposed betweenthe positive electrode
`
`(23a) and the negative electrode (23b) (Figures 11 and 12, [0098, 0107]). Thus, all of the
`
`limitations of Claim 7 are met.
`
`In Regards to Claim 8 (Dependent Upon Claim 1):
`
`Mineo as modified by Lee discloses the separator of Claim 1 as set forth above. Mineo
`
`further discloses that the first heat-resistant layer (heat resistant porous layer, 29b) faces the
`
`positive electrode (23a) (see Figure 11). Thus, all of the limitations of Claim 8 are met.
`
`In Regardsto Claim 9:
`
`Mineo discloses a separator comprising: a resin substrate (microporous resin film, 29a),
`
`a first heat-resistant layer (heat resistant porous layer, 29b) covering the first surface (upper
`
`surface of microporous resin film, 29a) of the resin substrate (microporous resin film, 29a): a
`
`second heat-resistant layer (heat resistant porous layer, 29b) covering part of a second surface
`
`(lower surface of microporous resin film, 29a) of the resin substrate (microporous resin film,
`
`29a) (Figure 5, [0055]). Mineo further discloses a non-covered region (non-formedportion, 29C)
`
`on the second surface (lower surface of microporous resin film, 29a) of the resin substrate
`
`(microporous resin film, 29a), the non-covered region (non-formed portion, 29C) not being
`
`covered with the second heat-resistant layer (heat resistant porous layer, 29b) and being in
`
`communication with an edge of the resin substrate (microporous resin film, 29a) (Figure 5,
`
`[0055]). Mineo further discloses thatthe first heat-resistant layer (heat resistant porous layer,
`
`29b) maycoverthe whole first surface (upper surface of microporous resin film, 29a) of the
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 7
`
`resin substrate (microporous resin film, 29a) [0062]. Mineo further disclosesthat the first heat-
`
`resistant layer (heat resistant porous layer, 29b) and the second heat-resistant layer (heat
`
`resistant porous layer, 29b) each include inorganic particles (ceramic) and a binder [0033-0036].
`
`Mineo further discloses that a content of the binder in each heat-resistant layer (heat resistant
`
`porous layer, 29b) is between 0.5 mass% and 15 mass%[0036]. As such, it would be
`
`understoodbythe skilled artisan that the content of the inorganic particles (ceramic) in each
`
`heat-resistant layer (heat resistant porous layer, 29b) is between 85 mass% and 99.5 mass%.
`
`Mineois deficient in disclosing that the non-covered region includes one or morelateral
`
`non-covered regions each being oblique relative to the lateral direction of the resin substrate
`
`and extending from one lateral edge to the otherlateral edge.
`
`Lee discloses a separator (100) comprising a porous polymer substrate (140), wherein
`
`an electrode adhesive layer (110) is coated on the surface of the porous polymer substrate
`
`(140) (Figure 1, [0026, 0034]). Lee further discloses that the electrode adhesive layer (110) may
`
`be applied to the porous polymersubstrate (140) in a pattern such that the porous polymer
`
`substrate (140) contains a plurality of uncoated regions (120) (Figure 1, [0026, 0034]). Lee
`
`further discloses that the plurality of uncoated regions (120) each extend from one lateral edge
`
`to the other lateral edge of the porous polymer substrate (140), and that the plurality of
`
`uncoated regions (120) are arranged at predetermined intervals in a longitudinal direction of the
`
`porous polymer substrate (140) (see Figure 1). Lee further discloses that the uncoated regions
`
`(120) may be present on the surface of the porous polymer substrate (140) in a direction which
`
`is oblique relative to the lateral direction of the porous polymer substrate (140) (see Figure 1).
`
`Therefore, it would be obvious to one of ordinary skill in the art at the time ofthe filing of
`
`the invention to include in the non-covered region of Mineo, a plurality of uncoated regions each
`
`extending from one lateral edge to the other lateral edge of the substrate and wherein the
`
`uncoated region is positioned oblique relative to the lateral direction of the substrate, asis it
`
`knownin the art as a suitable arrangement for a layer having a non-covered region to be placed
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 8
`
`on a substrate for a separator, as taught by Lee. By making such a selection, all of the
`
`limitations of Claim 9 are met.
`
`In Regards to Claim 10 (Dependent Upon Claim 9):
`
`Mineo as modified by Lee discloses the separator of Claim 9 as set forth above. Mineo
`
`further discloses that the binder may be polvvinylidene fluoride [0036]. Thus, all of the limitations
`
`of Claim 10 are met.
`
`In Regards to Claim 11 (Dependent Upon Claim 9):
`
`Mineo as modified by Lee discloses the separator of Claim 9 as set forth above. Upon
`
`the modification outlined abovein the rejection of Claim 9, modified Mineo further discloses that
`
`the non-covered region (non-formed portion, 29C) includes a lateral non-covered region (non-
`
`formed portion, 29C) extending from one lateral edge to the otherlateral edge of the resin
`
`substrate (microporous resin film, 29a) (see Figure 5). Thus, all of the limitations of Claim 11 are
`
`met.
`
`In Regards to Claim 12 (Dependent Upon Claim 9):
`
`Mineo as modified by Lee discloses the separator of Claim 9 as set forth above.
`
`Modified Mineo further discloses that the respective forms of the plurality of lateral non-covered
`
`regions (non-formed portion, 29C) are linear (see Figure 5). Thus, all of the limitations of Claim
`
`12 are met.
`
`In Regards to Claim 13 (Dependent Upon Claim 9):
`
`Mineo as modified by Lee discloses the separator of Claim 9 as set forth above. Mineo
`
`further discloses that the resin substrate (microporous resin film, 29a) has a substantially square
`
`shape [0017]. Mineo further discloses that the width of the resin substrate (microporous resin
`
`film, 29a) may have a width between 2 mm and 15 mm [0019]. As such, the skilled artisan
`
`would appreciate that the area of the resin substrate (microporous resin film, 29a) (andfirst
`
`surface and second surface) may be between 4 mm? and 225 mm?. Mineo further discloses that
`
`the width of the non-covered region (non-formed portion, 29C) is 5 mm or less [0020].
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 9
`
`Assuch, the skilled artisan would appreciate that there are many possible embodiments
`
`wherein the area of the non-covered region (non-formedportion, 29C) is between 5% and 20%
`
`of the area of the second surface (lower surface of microporous resin film, 29a) of the resin
`
`substrate (microporous resin film, 29a). For example, if the width of the resin substrate
`
`(microporous resin film, 29a) (and thereby the first surface and second surface) is 10 mm, the
`
`area of the second surface (lower surface of microporous resin film, 29a) is 100 mm?.
`
`Furthermore, if the total (additive) width of the non-covered region (non-formed portion, 29C)is
`
`1 mm andthe total (additive) length of the non-covered region (non-formed portion, 29C) is 10
`
`mm, the area of the non-covered region (non-formed portion, 29C) is 10 mm?, which is 10%of
`
`the area of the second surface (lower surface of microporous resin film, 29a). Thus, all of the
`
`limitations of Claim 13 are met.
`
`In Regards to Claim 14 (Dependent Upon Claim 9):
`
`Mineo as modified by Lee discloses the separator of Claim 9 as set forth above. Mineo
`
`further discloses a non-aqueous electrolyte secondary battery (1) comprising an electrode
`
`laminate (10”) which comprises: a positive electrode (23a), a negative electrode (23b), anda
`
`separator according to Claim 9 (see above) being disposed betweenthe positive electrode
`
`(23a) and the negative electrode (23b) (Figures 11 and 12, [0098, 0107]). Thus, all of the
`
`limitations of Claim 14 are met.
`
`In Regards to Claim 15 (Dependent Upon Claim 14):
`
`Mineo as modified by Lee discloses the separator of Claim 14 as set forth above. Mineo
`
`further discloses that the first heat-resistant layer (heat resistant porous layer, 29b) faces the
`
`positive electrode (23a) (see Figure 11). Thus, all of the limitations of Claim 15 are met.
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 10
`
`6.
`
`Claims 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over Mineoetal.
`
`(WO 2013118627 A1) (disclosed by Applicant on IDS dated 04/05/2021), as applied to Claim 1
`
`above, andfurtherin view of Hirai et al. (US 2019/0221880 A1).
`
`In Regards to Claim 16:
`
`Mineo discloses a separator comprising: a resin substrate (microporous resin film, 29a),
`
`a first heat-resistant layer (heat resistant porous layer, 29b) covering the first surface (upper
`
`surface of microporous resin film, 29a) of the resin substrate (microporous resin film, 29a): a
`
`second heat-resistant layer (heat resistant porous layer, 29b) covering part of a second surface
`
`(lower surface of microporous resin film, 29a) of the resin substrate (microporous resin film,
`
`29a) (Figure 5, [0055]). Mineo further discloses a non-covered region (non-formedportion, 29C)
`
`on the second surface (lower surface of microporous resin film, 29a) of the resin substrate
`
`(microporous resin film, 29a), the non-covered region (non-formed portion, 29C) not being
`
`covered with the second heat-resistant layer (heat resistant porous layer, 29b) and being in
`
`communication with an edge of the resin substrate (microporous resin film, 29a) (Figure 5,
`
`[0055]). Mineo further discloses thatthe first heat-resistant layer (heat resistant porous layer,
`
`29b) maycoverthe whole first surface (upper surface of microporous resin film, 29a) of the
`
`resin substrate (microporous resin film, 29a) [0062]. Mineo further discloses that the first heat-
`
`resistant layer (heat resistant porous layer, 29b) and the second heat-resistant layer (heat
`
`resistant porous layer, 29b) each include inorganic particles (ceramic) and a binder [0033-0036].
`
`Mineo further discloses that a content of the binder in each heat-resistant layer (heat resistant
`
`porous layer, 29b) is between 0.5 mass% and 15 mass%[0036]. As such, it would be
`
`understoodbythe skilled artisan that the content of the inorganic particles (ceramic) in each
`
`heat-resistant layer (heat resistant porous layer, 29b) is between 85 mass% and 99.5 mass%.
`
`Mineois deficient in disclosing that a content of the inorganic particles in each heat
`
`resistant layer is 50 mass% to 80 mass%, and a content of the binder in each heat-resistant
`
`layer is 10 mass%to 50 mass%.
`
`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 11
`
`Hirai discloses a separator (17) comprising a substrate (resin film) and a heat resistant
`
`insulating layer (Figure 1, [0027, 0089-0090)). Hirai further discloses that the heat resistant
`
`insulating layer includes inorganic particles and a binder [0090]. Hirai further discloses that the
`
`content of the binder in the heat resistant insulating layer is between 2%to 20%by masswith
`
`respect to 100%by massof the heat resistant insulating layer [0094]. As such, the skilled
`
`artisan would appreciate that the content of the inorganic particles in the heat resistant
`
`insulating layer is between 80%to 98%by masswith respect to 100%by massof the heat
`
`resistant insulating layer.
`
`In the case wherethe claimed ranges “overlap orlie inside ranges disclosed by the prior
`
`art” a prima facie case obviousness exists (MPEP §2144.05 |). Therefore, it would be obvious to
`
`one of ordinary skill in the art at the time of the filing of the invention to modify the composition
`
`of the heat-resistant layers of Mineo, the composition of the heat resistant insulating layer taught
`
`by Hirai, wherein the content of the binder is between 2%to 20%by massand the contentof
`
`the inorganic particles is between 80%to 98% by mass, as such a composition is knownin the
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`art as a Suitable composition for a heat resistant insulating layer of a separator, as taught by
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`Hirai. Furthermore, the skilled artisan would appreciate that a change from the binder:inorganic
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`particle composition being potentially 15:85 (taught as suitable by Mineo) to 20:80 (taught as
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`suitable by Hirai) is a relatively small change and would not be expected to havea significant
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`impact on the performanceof the heat-resistant layers. By making the above modification, all of
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`the limitations of Claim 16 are met.
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`In Regards to Claim 17 (Dependent Upon Claim 16):
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`Mineo as modified by Hirai discloses the separator of Claim 16 as set forth above. Mineo
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`further discloses that the binder may be polvvinylidene fluoride [0036]. Thus, all of the limitations
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`of Claim 17 are met.
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`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`In Regards to Claim 18 (Dependent Upon Claim 16):
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`Page 12
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`Mineo as modified by Hirai discloses the separator of Claim 16 as set forth above. Mineo
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`further discloses that the non-covered region (non-formed portion, 29C) includes a lateral non-
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`covered region (non-formed portion, 29C) extending from one lateral edge to the otherlateral
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`edge of the resin substrate (microporous resin film, 29a) (see Figure 5). Thus, all of the
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`limitations of Claim 18 are met.
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`In Regards to Claim 19 (Dependent Upon Claim 16):
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`Mineo as modified by Hirai discloses the separator of Claim 16 as set forth above. Mineo
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`further discloses that the form of the non-covered region (non-formed portion, 29C)is linear
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`(see Figure 5). Thus, all of the limitations of Claim 19 are met.
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`In Regards to Claim 20 (Dependent Upon Claim 16):
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`Mineo as modified by Hirai discloses the separator of Claim 16 as set forth above. Mineo
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`further discloses that the resin substrate (microporous resin film, 29a) has a substantially square
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`shape [0017]. Mineo further discloses that the width of the resin substrate (microporous resin
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`film, 29a) may have a width between 2 mm and 15 mm [0019]. As such, the skilled artisan
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`would appreciate that the area of the resin substrate (microporous resin film, 29a) (andfirst
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`surface and second surface) may be between 4 mm? and 225 mm?. Mineofurther discloses that
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`the width of the non-covered region (non-formed portion, 29C) is 5 mm or less [0020].
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`Assuch, the skilled artisan would appreciate that there are many possible embodiments
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`wherein the area of the non-covered region (non-formedportion, 29C) is between 5% and 20%
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`of the area of the second surface (lower surface of microporous resin film, 29a) of the resin
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`substrate (microporous resin film, 29a). For example, if the width of the resin substrate
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`(microporous resin film, 29a) (and therebythe first surface and second surface) is 10 mm, the
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`area of the second surface (lower surface of microporous resin film, 29a) is 100 mm?.
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`Furthermore, if the width of the non-covered region (non-formedportion, 29C) is 1 mm and the
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`length of the non-covered region (non-formed portion, 29C) is 10 mm, the area of the non-
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`

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`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 13
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`covered region (non-formed portion, 29C) is 10 mm?, which is 10%of the area of the second
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`surface (lower surface of microporous resin film, 29a). Thus, all of the limitations of Claim 20 are
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`met.
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`In Regards to Claim 21 (Dependent Upon Claim 16):
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`Mineo as modified by Hirai discloses the separator of Claim 16 as set forth above. Mineo
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`further discloses a non-aqueous electrolyte secondary battery (1) comprising an electrode
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`laminate (10”) which comprises: a positive electrode (23a), a negative electrode (23b), anda
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`separator according to Claim 1 (see above) being disposed betweenthe positive electrode
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`(23a) and the negative electrode (23b) (Figures 11 and 12, [0098, 0107]). Thus, all of the
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`limitations of Claim 21 are met.
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`In Regards to Claim 22 (Dependent Upon Claim 21):
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`Mineo as modified by Hirai discloses the separator of Claim 21 as set forth above. Mineo
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`further discloses that the first heat-resistant layer (heat resistant porous layer, 29b) faces the
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`positive electrode (23a) (see Figure 11). Thus, all of the limitations of Claim 22 are met.
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`7.
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`Applicant's argumentsfiled 12/18/2023 have been fully considered but they are not
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`Response to Arguments
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`entirely persuasive.
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`e The Applicant argues that Mineo et al. (WO 2013118627 A1) alone fails to discloseall of
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`the limitations of independent Claim 1 as currently amended, and thus does not meetthe
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`requirementsfor rejection under 35 U.S.C. 102.
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`o The examiner agrees and has withdrawn the 35 U.S.C. 102 rejections. New
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`claim rejections are detailed above.
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`e
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`Inreference to amended Independent Claim 1 and new Independent Claim 9, the
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`Applicant further argues that the skilled artisan would not have modified the separator of
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`Mineo to have the arrangementof Lee et al. (US 2021/0242538 A1) wherein multiple
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`non-covered regions extend from one lateral edge to anotherlateral edge of the resin
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`

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`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 14
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`substrate, that the multiple non-covered regions are arranged at predeterminedintervals,
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`and/or that the multiple non-covered regions are oblique relative to the lateral direction of
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`the resin substrate. The Applicant further notes that the non-formed portion (29c) of
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`Mineois intendedto allow for the formation of a bag-like separator, which differs from
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`the intended function of the non-covered regions of Lee.
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`° The examiner respectfully disagrees. Mineo doesdisclose that the non-formed
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`parts do function to form a bag-like separator [0063-0064]. Mineo further
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`discloses that configurations including the heat-resistant layers (29b) and the
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`non-formed portion (29c) serve to improve the productivity while maintaining
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`high-heat resistance for the battery [0060].
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`The disclosure of Leeis relied upon to teach a suitable arrangementfor the non-
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`covered region of Mineo, specifically that the non-covered region includes
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`multiple non-covered regions extending from one lateral edge to anotherlateral
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`edge of the resin substrate, that the multiple non-covered regions are arranged at
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`predetermined intervals (Claim 1), and that the multiple non-covered regions are
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`oblique relative to the lateral direction of the resin substrate (Claim 9).
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`As both Mineo and Leearerelated to separators having heat-resistant layer(s)
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`with non-covered regions, the skilled artisan would reasonably look towards the
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`disclosure of Lee to teach suitable arrangements of non-covered regions when
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`looking to optimize the coverage of the non-covered region such that the overall
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`productivity and heat resistance of the separator are both high, which is taught by
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`Mineo to be an important consideration.
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`The examinerfurther notes that the addition of the lateral non-covered regions
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`does not exclude the perimeter of the substrate from also having non-covered
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`regions, thus still capable of forming a bag-like separator.
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`

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`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 15
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`e
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`Inreference to new Independent Claim 16, the Applicant further argues that the
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`disclosure of Mineo fails to reach the required content of the inorganic particles in each
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`heat-resistant layer.
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`o The examiner agrees and notes that the above 35 U.S.C. 103 rejection
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`addressesthe narrowed content range.
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`Conclusion
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`8.
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`THIS ACTION IS MADE FINAL. Appli