DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment of claim 1 is supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 6/26/2025. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shioya et al (JP2016166288).
Claim 1, 3-5: Shioya teaches a composition comprising a fluoropolymer, a solvent, and an inorganic filler, such as a carbon fiber [0008, 0095]. The fluoropolymer can be tetrafluoroethylene/vinylpyrrolidone copolymer (TFE/VP=50:50) [0111]. It is noted that instant specification does not define or exemplify a positive electrode active material. While both the prior arts cited in the background and applicant’s argument disclose carbon filler is a positive electrode active material. Therefore, the carbon fiber also reads on the positive electrode active material, and instant claim does not distinguish the inorganic filler and the electrode active material.
Shioya does not expressly name a single embodiment having the claimed composition. However, each of the components of the composition is described in the reference. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have made any of the compositions suggested by the reference, including the claimed composition, thereby arriving at the presently claimed invention.
Claim 2: Shioya teaches the filler in an amount of 0.1-25wt% based on the fluoropolymer [0095]. Case law holds that 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).
Claims 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shioya et al (JP2016166288) in view of Sekiya et al (JP2011068709).
Shioya teaches the limitation of claim 1, as discussed above. Shioya further teaches the composition can be used to make optical films [0102].
Shioya does not teach the filler includes a carbon nanotube.
However, Sekiya discloses an optical film and teaches the carbon fiber used can be carbon nanotubes or carbon nanofibers (p7-8). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize carbon nanotube in the composition of Shioya for preparing optical films because it is recognized in the art that carbon nanotube is a suitable carbon fiber for optical films.
Response to Arguments
Applicant's arguments filed 6/26/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the inorganic filler and the electrode active material are separate and distinct components, the argument is not persuasive because 1) neither instant specification nor claims define or exemplify the positive electrode active material; 2) neither instant specification nor claims distinguish the inorganic filler and the electrode active material; 3) prior arts cited in the background and applicant’s argument disclose carbon filler is a positive electrode active material; 4) given the broadest reasonable interpretation, the carbon fiber also reads on the positive electrode active material.
Conclusion
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 extension fee 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 date of this final action.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763