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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 7, 2026 has been entered.
Response to Amendment
In response to the amendment received January 7, 2026:
Claims 1-2, 7-10, 13-16 and 19-20 are pending. Claims 3-6, 11-12 and 17-18 have been cancelled as per applicant’s request. Claims 13 and 15-16 are withdrawn.
The previous rejection has been withdrawn in light of the amendment. However, a new prior art rejection has been made in view of Matsuzaki et al. (WO 2016/171028A). Examiner notes Matsuzaki et al. qualifies as prior art under both 102(a)(1) and 102(a)(2) and no exceptions under 102(b) have been established.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 7-10, 14 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzaki et al. (WO 2016/171028A) in view of Matsuzaki (2) (WO2016/158964) and Saito et al. (WO2016/043225). The U.S. versions of the references Matsuzaki et al. (US 2018/0102542), Matsuzaki (2) (US 2018/0108917) and Saito et al. (US 2017/0298205) are used as the English translations and are referenced below.
Regarding Claim 1, Matsuzaki et al. teaches a binder for a secondary battery electrode (Para. [0034]), the binder contains an acrylic crosslinked polymer and salt thereof (i.e. containing a crosslinked polymer or salt thereof), wherein the crosslinked polymer is manufactured by precipitation polymerizing (Para. [0008]) and obtained in powder form (Para. [0122]) (i.e. wherein the crosslinked polymer or salt thereof is a powder synthesized by precipitation polymerization) having water swellability (Para. [0041]) (i.e. wherein the crosslinked polymer is configured to have a water swelling degree), the acrylic crosslinked polymer contains component (a) which is an ethylenically unsaturated carboxylic acid monomer and component (b) which is an ethylenically unsaturated monomer lacking carboxylic groups wherein component (a) include acrylic acid (Para. [0039]) and component (b) includes dimethyl acrylamide (Para. [0042]) (i.e. N,N-dimethyl acrylamide) wherein component (a) is 50 to 90% by weight as a percentage of the total constituent monomer of the acrylic crosslinked polymer (Para. [0041], lines 1-5)(i.e. overlapping with the claimed range of the crosslinked polymer has a structural unit derived from an acrylic acid monomer in an amount of 80 mass% or more and 100 mass% or less of the total structural units of the crosslinked polymer) and component (b) is in the range of 10% to 70% by weight as a percentage of the total constituent monomers (Para. [0046]) (i.e. overlapping with the claimed range of the crosslinked polymer has a structural unit derived from an at least one compound selected from the group consisting of N,N-dimethyl acrylamide and isobornyl acrylate in an amount of 0 mass% or more and 20 mass% or less of the total structural units of the crosslinked polymer) and the crosslinked polymer having degree of neutralization of 90 mol% (Para. [0027]).
Matsuzaki et al. does not explicitly teach a water swelling degree at pH 8 nor at pH 4.
However, Matsuzaki (2) teaches a binder comprising a crosslinked polymer (Para. [0008]), that teaches the crosslinked polymer swells in water to become a microgel (i.e. the polymer absorbs water) and the interactions of the microgel differ depending on the water swelling degree which is controlled by the degree of crosslinking of the polymer, and limited water-swelling ability (i.e. the ability of the crosslinked polymer to absorb water) causes a decline in viscosity and binding properties may be insufficient (Para. [0062]) (i.e. water swelling ability affects viscosity and binding properties), therefore one of ordinary skill in the art would have been motivated to optimize the water swelling ability in order to achieve desirable viscosity, dispersion stabilization and sufficient binding properties (Para. [0062]). Thus, the water swelling degree at pH 8 or pH4 being measured in pH 8 or pH4 water and calculated by the formula claimed in instant claim 1 (which quantifies the ability of the crosslinked polymer to absorb water) is a result effective variable (i.e. a variable that achieves a recognized result) and modifying a water swelling degree at pH 8 and pH 4 to achieve a water swelling degree at pH 8 of 25.1 or more and 91.9 or less and at pH 4 of 8.8 or more and 21.5 or less would be discovering the optimum range through routine experimentation.
It has been held that when the general conditions are disclosed in the art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (See MPEP §2144.05).
Absent any showing of critical or unexpected results, such limitations appear to be routine optimization within the skill of the ordinary artisan before the effective filing date of the invention are therefore prima facie obvious.
Matsuzaki et al. does not teach an average particle diameter is greater than 1.02 micrometers and 1.54 micrometers or less as the volume-based median diameter.
However, Saito et al. teaches polymer microparticles produced using monomers such as acrylic acid (Para. [0072]) wherein a crosslinked polymer is produced (Para. [0112]) and neutralized (Para. [0101]) wherein the crosslinked polymer microparticles (Para. [0139]) have a volume average particle diameter of preferably 1.0 to 2.0 micrometers (Para. [0140]) (overlapping with the claimed range).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the average particle diameter Matsuzaki et al. as modified above to incorporate the teaching of an average particle diameter of 1.0 micrometer or 2.0 micrometers as it would enable the polymer microparticles to be smoothly produced with favorable productivity and at low cost without causing aggregation (Para. [0011], [0012], [0140]). 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” See MPEP §2144.05(I).
Regarding Claim 7, Matsuzaki et al. as modified by Matsuzaki (2) and Saito et al. teaches all of the elements of the current invention in claim 1 as explained above.
Matsuzaki et al. further teaches an electrode mixture layer composition for a secondary battery (i.e. a secondary battery electrode mixture layer composition) comprising the binder (i.e. the binder according to claim 1), an active material and water (Para. [0029]).
Regarding Claim 8, Matsuzaki et al. as modified by Matsuzaki (2) and Saito et al. teaches all of the elements of the current invention in claim 1 as explained above.
Matsuzaki et al. further teaches silicon (i.e. a silicon material) used as negative electrode active materials (Para. [0095]).
Regarding Claim 9, Matsuzaki et al. as modified by Matsuzaki (2) and Saito et al. teaches all of the elements of the current invention in claim 7 as explained above.
Matsuzaki et al. further teaches a secondary battery electrode including a mixture layer formed from the electrode mixture layer composition for a secondary battery on the surface of a collector (Para. [0030]) (i.e. a secondary battery electrode comprising a mixture layer formed from the secondary battery electrode mixture layer composition according to claim 7 on a surface of a collector).
Regarding Claim 10, Matsuzaki et al. as modified by Matsuzaki (2) and Saito et al. teaches all of the elements of the current invention in claim 8 as explained above.
Matsuzaki et al. further teaches a secondary battery electrode including mixture layer formed from the electrode mixture layer composition for a secondary battery on the surface of a collector (Para. [0030]) (i.e. a secondary battery electrode comprising a mixture layer formed from the secondary battery electrode mixture layer composition according to claim 8 on a surface of a collector).
Regarding Claim 14, Matsuzaki et al. as modified by Matsuzaki (2) and Saito et al. teaches all of the elements of the current invention in claim 1 as explained above.
Matsuzaki et al. further teaches a secondary battery electrode including a mixture layer formed from the electrode mixture layer composition on a surface of a collector (Para. [0030]) containing the binder (Para. [0029]) (i.e. a secondary battery electrode comprising a mixture layer containing the binder according to claim 1 on a surface of a collector).
Regarding Claim 19, Matsuzaki et al. as modified by Matsuzaki (2) and Saito et al. teaches all of the elements of the current invention in claim 7 as explained above.
Matsuzaki et al. further teaches negative electrode active materials include carbon materials (Para. [0094]) (i.e. further comprising a carbon material as a negative electrode active material).
Regarding Claim 20, Matsuzaki et al. as modified by Matsuzaki (2) and Saito et al. teaches all of the elements of the current invention in claim 19 as explained above,
Matsuzaki et al. further teaches a secondary battery electrode including a mixture layer formed from the electrode mixture layer composition for a secondary battery on the surface of a collector (Para. [0030]) (i.e. a secondary battery electrode comprising a mixture layer formed from the secondary battery electrode mixture layer composition according to claim 19 on a surface of a collector).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuzaki et al. (WO 2016/171028A) in view of Matsuzaki (2) (WO2016/158964) and Saito et al. (WO2016/043225) as applied to claim 1 above, and further in view of Masuoka et al. (WO2014171415A). The English machine translation of Masuoka et al. provided in a previous Office Action is referenced below.
Regarding Claim 2, Matsuzaki et al. as modified by Matsuzaki (2) and Saito et al. teaches all of the elements of the current invention in claim 1 as explained above.
Matsuzaki et al. does not teach a particle size distribution of 1.2 or less.
However, Masuoka et al. teaches a water-soluble resin binder (lines 236-40) such as methacrylic emulsion comprising a crosslinked polymer (lines 265-266) having a structural unit derived from ethylenically unsaturated carboxylic acid monomer (such as methacrylic acid) (lines 434-439) wherein the water-soluble resin binder forms a base layer of an electrode for an electricity storage device (lines 92-106) which is a secondary battery (line 978) (i.e. a crosslinked binder for a secondary battery electrode), wherein a particle size distribution of the polymer becomes narrow (i.e. closer to zero) and thus, when used as a binder for a secondary battery electrode, the electrolyte solution resistance can be improved (lines 492-500) (i.e. the particle size distribution of the binder affects the electrolyte resistance), therefore one of ordinary skill in the art would have been motivated to optimize the particle size distribution in order to achieve improved electrolyte resistance (lines 492-500). Thus, the teaching of a particle size distribution of a crosslinked polymer (obtained by dividing a volume average particle size measured in the aqueous medium by the number average particle size measured together with the average particle diameter) is recognized as a result effective variable (i.e. a variable that achieves a recognized result) and modifying the range of a particle size distribution obtained by diving a volume average particle size measured in the aqueous medium by the number average particle size to a particle size distribution of 1.2 or less would be discovering the optimum or workable range through routine experimentation.
It has been held that when the general conditions are disclosed in the art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (See MPEP §2144.05).
Absent any showing of critical or unexpected results, such limitations appear to be routine optimization within the skill of the ordinary artisan before the effective filing date of the invention are therefore prima facie obvious.
Response to Arguments
Applicant argues Saito is not relevant to the development of the instant composition as it does not disclose electrolyte, electrode, batteries, binder or derivatives thereof (the intended application of the references are different), hindsight, and there is no reason why a particular particle size would be beneficial for a binder for a secondary battery electrode.
Examiner respectfully disagrees. When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. Furthermore, Saito et al. is considered analogous art as it reasonably pertinent to the problem faced by the inventor, which is cost of production (see instant specification para. [0080] and Saito et al. – Para. [0012]). The reason why a particular particle size would be beneficial for a binder would be due to lower production costs as explained in the rejection to claim 1. Furthermore, Saito also teaches a crosslinked polymer such as acrylic acid (Para. [0072], [0012]). In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As the current rejection of record takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not rely upon knowledge gleaned only from applicant’s disclosure, no improper hindsight reasoning was used.
Applicant argues a person of ordinary skill in the art could not optimize for particle distribution and arriving the claimed combination of elements would require screening a vast design space which does not constitute a finite number of identified predictable solutions and a person of ordinary skill in the art would not have been motivated to pursue the claimed combination absent of hindsight benefit.
Examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As the current rejection of record takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not rely upon knowledge gleaned only from applicant’s disclosure, no improper hindsight reasoning was used. Regarding the optimization, Masuoka et al. teaches a water-soluble resin binder (lines 236-40) such as methacrylic emulsion comprising a crosslinked polymer (lines 265-266) having a structural unit derived from ethylenically unsaturated carboxylic acid monomer (such as methacrylic acid) (lines 434-439) wherein a particle size distribution of the polymer becomes narrow (i.e. closer to zero) by using fine particles and thus, when used as a binder for a secondary battery electrode, the electrolyte solution resistance can be improved (lines 492-500) (i.e. the particle size distribution of the binder affects the electrolyte resistance), and thus the teaching is sufficient to find the variable result effective (i.e. a result-effective variable). Discovering the optimum or workable ranges by routine experimentation is obvious and a narrow particle size distribution (i.e. closer to zero) would have been predictable and the argument is not persuasive.
Applicant’s arguments regarding the newly amended limitations (regarding the structural unit mass percentages and unexpected results) have been fully considered but are moot because the arguments do not apply to any of the combination references being used in the current rejection in light of the amendment.
Conclusion
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/ARMINDO CARVALHO JR./Primary Examiner, Art Unit 1729