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 .
Response to Amendment and Claim Status
The amendment filed 13 October 2025 has been entered. Applicant’s amendment to the Claim 26 has overcome the 112 Rejection set forth in the Office Action mailed 11 July 2025. Claims 1, 2, 7, 19, 22, 23, 26, 28, 34–37, 41, and 43–56 are pending in the application.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 7, 19, 22, 23, 28, 34–36, 41, 44–47, 49, 50, 53, and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (JPWO 2013/065738 A1; see attached machine translation) in view of Kim et al. (KR 2015/0115538 A; see attached machine translation), as evidenced by Blank et al. (Blank, F.; Janiak, C. Metal catalysts for the vinyl/addition polymerization of norbornene, Coordination Chemistry Reviews, 253, p. 827–861, available online 23 May 2008).
Regarding Claim 1, Yoshida discloses an electrode material (see positive electrode active material layer, [0017]) comprising an electrochemically active material (see positive electrode active material, [0086]), a binder (see “another polymer”, [0090]; note that Yoshida also refers to the binder as “other polymer” in e.g. [0087]), and a polymer as an electrode material additive (see alicyclic structure-containing polymer, [0090]; more specifically, see norbornene-based polymer, [0022]) wherein the polymer comprises norbornene-based monomeric units (see norbornene-based polymers… obtained by addition polymerization, [0023]; note that addition polymerization refers to vinyl-/addition-type polymerization of norbornene which results in norbornene-based monomeric units as evidenced by Blank (Fig. 1 and p. 829, ¶ beginning with “It is also possible…”)).
Yoshida does not explicitly disclose wherein the norbornene-based monomeric units are derived from the polymerization of a norbornene-based monomer of Formula I:
PNG
media_image1.png
319
319
media_image1.png
Greyscale
Formula I of the Instant Application
wherein,
R1 and R2 are independently in each occurrence selected from a hydrogen atom, -COOH, -SO3H, -OH, and -F, and wherein at least one of R1 or R2 is selected from -COOH, -SO3H, -OH, and -F, but does disclose ([0025]) examples of norbornene-based monomers include norbornene derivatives (having a substituent on the ring), and that examples of the substituent include an alkyl group, an alkylene group, a vinyl group, an alkoxycarbonyl group, and an alkylidene group. Furthermore, Yoshida discloses ([0016]) that the polymer as an electrode material additive improves the coating properties of slurry compositions and imparts excellent flexibility and strength to the electrode material, thereby improving the initial discharge capacity and high-temperature retention characteristics of the battery.
Kim discloses a polymer (see polynorbornene (PNB)-based polymer, [0020]) as a current collector coating layer ([0020]).
Further, Kim discloses wherein the polymer comprises norbornene-based monomeric units by teaching ([0021]–[0026]) that the polymer is represented by <Chemical formula 1> (note that while Kim describes n in [0024] as being an integer from 1 to 4, this appears to be in reference to the number of different monomers which can be utilized to form the polymer, not a description of the number of total monomeric units in the final polymer; as support for this interpretation, [0034] discloses that the molecular weight of the polymer is on the scale of 50000 to 200000 g/mol):
PNG
media_image2.png
134
132
media_image2.png
Greyscale
<Chemical formula 1> of Kim
Finally, Kim discloses wherein the norbornene-based monomeric units are derived from the polymerization of a norbornene-based monomer of Formula I wherein R1 is an -OH group and R2 is a hydrogen atom, by first teaching ([0025]) that R1 in <Chemical formula 1> can be selected from a group which includes a hydrogen and a hydroxyl (i.e. -OH) group ([0025]), amongst a list of other options including a substituted or unsubstituted C1 to C20 alkyl group, a carboxylic acid ester group, a silyl group, an alkoxysilyl group, a siloxy group, and an amine group.
One of ordinary skill will understand, therefore, that one polymer represented by Kim’s <Chemical formula 1> could be for instance a polynorbornene as numbered below:
PNG
media_image3.png
106
183
media_image3.png
Greyscale
product of the vinyl addition polymerization shown in <Reaction formula I> of Kim, with carbon numbering added by the Examiner
wherein C5 is functionalized with an -OH group, and C6 is a methylene carbon (i.e. -CH2- group) as shown.
Secondly, Kim teaches that the polymer is formed by vinyl addition polymerization ([0027]–[0031]; middle scheme of <Reaction formula 1>, [0028]):
PNG
media_image4.png
379
690
media_image4.png
Greyscale
<Reaction formula 1> of Kim
thus proceeding from polymerization of a general norbornene-based monomer as illustrated by the reactant in <Reaction formula 1>. In light of these teachings from Kim, one of ordinary skill in the art will understand that the norbornene-based monomer will have the same functionality as is present in the vinyl addition polymerization product, i.e. the R1 group(s) present in the polymer described by Kim will be present in the norbornene-based monomer (note that Kim exemplifies using functionalized norbornene-based monomers for polymerization in e.g. [0071] and [0083]).
One of ordinary skill in the art can therefore reasonably conclude that the polymer of Kim described above would be derived from the polymerization of a functionalized norbornene monomer as numbered below:
PNG
media_image5.png
103
128
media_image5.png
Greyscale
reactant of the vinyl addition polymerization shown in <Reaction formula I> of Kim, with carbon numbering added by the Examiner
wherein C5 is functionalized with an -OH group, and C6 is a -CH2- group as shown. Such a norbornene-based monomer is identical to that claimed above in Formula I, wherein R1 is an -OH group and R2 is a hydrogen atom.
Kim teaches ([0032]) that a current collector coating layer including the polymer enhances adhesion with the electrode material, reducing contact resistance to the current collector and improving performance and cycle characteristics of the battery.
Yoshida and Kim are analogous to the claimed invention as they are in the same field of electrochemical cells capable of cycling lithium. Furthermore, KSR Rationale B (MPEP § 2141) states that it is obvious to perform “simple substitution of one known element for another to obtain predictable results”. In the instant case, both the polymer of Yoshida and the polymer of Kim are of the same general structure (i.e. carbon skeleton), are derived from vinyl addition polymerization, and are disclosed to enhance the contact properties of the electrode material (i.e. the coating properties of the slurry composition, as disclosed by Yoshida, and the adhesion between the electrode material and the current collector, as disclosed by Kim). As such, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the Instant Application to modify Yoshida by substituting the polymer of Yoshida with the polymer of Kim, with the reasonable expectation that the contact properties of the electrode material would be similar.
Regarding Claims 2 and 45, modified Yoshida discloses the electrode material of Claim 1. Modified Yoshida further discloses wherein the polymer is of Formula II:
PNG
media_image6.png
315
277
media_image6.png
Greyscale
Formula II of the Instant Application
wherein,
R1 is an -OH group and R2 is a hydrogen atom (note this satisfies the limitation of Claim 45) because modified Yoshida teaches ([0021]–[0026] of Kim), as described for the rejection of Claim 1 above and repeated here for completeness, that the polymer is represented by <Chemical formula 1>:
PNG
media_image2.png
134
132
media_image2.png
Greyscale
<Chemical formula 1> of Kim
wherein R1 can be selected from a group which includes a hydrogen and a hydroxyl (i.e. -OH) group. One of ordinary skill will understand, therefore, that one polymer represented by Kim’s <Chemical formula 1> could be for instance a polynorbornene as numbered below:
PNG
media_image3.png
106
183
media_image3.png
Greyscale
product of the vinyl addition polymerization shown in <Reaction formula I> of Kim, with carbon numbering added by the Examiner
wherein C5 is functionalized with an -OH group, and C6 is a methylene carbon (i.e. -CH2- group) as shown. Such a polymer is identical to that claimed above in Formula II, wherein R1 is an -OH group and R2 is a hydrogen atom.
Yoshida does not explicitly disclose wherein n is an integer selected such that the number average molecular weight is about 20000 g/mol to about 100000 g/mol, limits included, but does teach ([0055]) that the polymer preferably has a weight average molecular weight (Mw) of 50000 g/mol to 100000 g/mol, and ([0056]) that the molecular weight distribution (Mw/Mn, wherein Mn is the number average molecular weight of the polymer) is preferably in the range of 1 to 1.4. Thus, the minimum possible value of Mn implicitly disclosed by Yoshida is 35700 g/mol (i.e. 50000 g/mol [Symbol font/0xB8] 1.4), while the maximum possible value of Mn implicitly disclosed by Yoshida is 100000 g/mol (i.e. 100000 g/mol [Symbol font/0xB8] 1). This implicitly disclosed range wherein the number average molecular weight is about 35700 g/mol to 100000 g/mol anticipates the claimed range of about 20000 g/mol to about 100000 g/mol, limits included. Note that while Yoshida does not specifically disclose wherein n is an integer selected such that the number average molecular weight falls within the range, one of ordinary skill in the art will understand that the number of repeating units n will necessarily be selected in order to achieve a certain Mn.
Regarding Claim 7, modified Yoshida discloses the electrode material of Claim 1. Modified Yoshida further discloses wherein the polymer is a homopolymer, as Kim discloses ([0033]) that the polymer may include one or a mixture of two or more selected from a group of variants of polynorbornene; one of ordinary skill in the art will understand that in the case that one polynorbornene variant is selected, the polymer will be a homopolymer.
Regarding Claim 19, modified Yoshida discloses the electrode material of Claim 1. Yoshida further discloses wherein the electrochemically active material is metal oxide particles (see transition metal oxides, [0092]), lithiated metal oxide particles (see composite oxides of lithium and transition metals, [0092]), or lithiated metal phosphate particles (see LiFePO4, [0092]); note that Yoshida discloses ([0094]) that the electrochemically active material is in particle form.
Regarding Claim 22, modified Yoshida discloses the electrode material of Claim 1. Yoshida further discloses wherein the electrochemically active material further comprises at least one doping element, by teaching ([0092]) that the electrochemically active materials can be partially element-substituted.
Regarding Claim 23, modified Yoshida discloses the electrode material of Claim 1. Yoshida further discloses ([0098]–[0099]) the electrode material further comprising an electronically conductive material (see conductive agent) selected from the group consisting of acetylene black and graphite.
Regarding Claims 28, modified Yoshida discloses the electrode material of Claim 1. Yoshida further discloses wherein the binder is a synthetic or natural rubber (see silicone rubber and fluorosilicone rubber, [0076], disclosed by Yoshida to be examples of silicone polymers; note that Yoshida discloses in [0087] that silicone-based polymers can be utilized as binders in the electrode material) or a fluorinated polymer (see fluorine-based polymer, [0087]).
Regarding Claim 34, modified Yoshida discloses the electrode material of Claim 1. Yoshida further discloses an electrode (see positive electrode, [0017]) comprising the electrode material as defined in Claim 1 on a current collector ([0086] discloses that the electrode material is applied as a slurry to the current collector and dried; one of ordinary skill in the art will understand that this constitutes formation of the positive electrode).
Regarding Claim 35, modified Yoshida discloses the electrode material of Claim 1. Yoshida further discloses an electrochemical cell (see all-solid-state secondary battery element, [0122]) comprising a negative electrode (see negative electrode, [0017], [0122]), a positive electrode (see positive electrode, [0017], [0122]), and an electrolyte (see solid electrolyte layer, [0017], [0122]), wherein the positive electrode comprises an electrode material as defined in Claim 1.
Regarding Claim 36, modified Yoshida discloses the electrode of Claim 34. Yoshida further discloses an electrochemical cell (see all-solid-state secondary battery element, [0122]) comprising a negative electrode (see negative electrode, [0017], [0122]), a positive electrode (see positive electrode, [0017], [0122]), and an electrolyte (see solid electrolyte layer, [0017], [0122]), wherein the positive electrode is as defined in Claim 34.
Regarding Claim 41, modified Yoshida discloses the electrochemical cell of Claim 35. Yoshida further discloses a battery (see all-solid-state secondary battery, [0128]) comprising at least one electrochemical cell as defined in Claim 35.
Regarding Claim 44, modified Yoshida discloses the electrochemical cell of Claim 36. Yoshida further discloses a battery (see all-solid-state secondary battery, [0128]) comprising at least one electrochemical cell as defined in Claim 36.
Regarding Claim 46, modified Yoshida discloses the electrode material of Claim 1. Yoshida further discloses ([0092]) wherein the electrochemically active material is a manganese-containing oxide (see LiMnO2, LiMn2O4).
Regarding Claim 47, modified Yoshida discloses the electrode material of Claim 19. Yoshida further discloses ([0092]) wherein the metal is a transition metal selected from the group consisting of iron (Fe), manganese (Mn), nickel (Ni), and cobalt (Co).
Regarding Claim 49, modified Yoshida discloses the electrode material of Claim 28, but does not explicitly disclose wherein the fluorinated polymer is polytetrafluoroethylene or polyvinylidene fluoride. However, Yoshida does disclose polytetrafluoroethylene and polyvinylidene fluoride as examples of fluorine-based polymers which can be used as binders in the electrolyte of the assembly. Thus it would be reasonable to expect that fluorinated polymers which are appropriate as binders for one component would also be appropriate for use in another component. It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention when utilizing a fluorinated polymer as the binder for the electrode material to select polytetrafluoroethylene or polyvinylidene fluoride, as Yoshida lists these fluorinated polymers as appropriate for use as binders in the electrolyte, and it would be reasonable to expect that these polymers would also be appropriate for use as binders in the electrode material.
Regarding Claim 50, modified Yoshida discloses the electrode material of Claim 28. Yoshida does not disclose wherein the synthetic or natural rubber is ethylene propylene diene monomer rubber. However, utilizing ethylene propylene diene monomer rubber as a binder in electrode material is a well-known practice in the field of electrochemical cells capable of cycling lithium, as taught by Kim (see ethylene-propylene-diene polymer (EPDM), [0058]). It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention when utilizing a synthetic or natural rubber as the binder for the electrode material to select ethylene propylene diene monomer rubber, as utilizing ethylene propylene diene monomer rubber as a binder in electrode material is a well-known practice in the field.
Regarding Claims 53 and 56, modified Yoshida discloses the batteries of Claims 41 and 44. Yoshida further discloses wherein said battery is a lithium-ion battery (see all-solid-state lithium ion secondary battery, [0001]).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (JPWO 2013/065738 A1; see attached machine translation) in view of Kim et al. (KR 2015/0115538 A; see attached machine translation), as evidenced by Blank et al. (Blank, F.; Janiak, C. Metal catalysts for the vinyl/addition polymerization of norbornene, Coordination Chemistry Reviews, 253, p. 827–861, available online 23 May 2008), as applied to Claim 1 above, and as further evidenced by Zhang et al. (Zhang, Z.; Zeng, T.; Lai, Y.; Jia, M.; Li, J. A comparative study of different binders and their effects on electrochemical properties of LiMn2O4 cathode in lithium ion batteries, Journal of Power Sources, 247, p. 1–8, available online 27 August 2013) and Hu et al. (Hu, S.; Li, Y.; Yin, J.; Wang, H.; Yuan, X.; Li, Q. Effect of different binders on electrochemical properties of LiFePO4/C cathode material in lithium ion batteries, Chemical Engineering Journal, 237, p. 497–502, available online 29 October 2013).
Regarding Claim 26, modified Yoshida discloses the electrode material of Claim 1. However, Yoshida does not disclose wherein the weight ratio of the binder to the polymer is within the range of from about 6:1 to about 2:1. Instead, Yoshida discloses ([0077], [0090]) wherein the weight ratio of the binder to the polymer is usually 1:1 or less.
Poly(vinylidene difluoride), a widely used binder, is for instance well-known in the field of electrochemical cells capable of cycling lithium to have the advantages of excellent electrochemical stability and bonding strength, but the disadvantages of deleterious side reactions with lithium, swelling/gelation/dissolution in liquid electrolyte, and low flexibility, as evidenced by Zhang (p. 1, ¶ beginning with “Traditional poly(vinylidene difluoride) PVDF)…”).
Kim discloses ([0031]) that the polymer has excellent dispersion stability as well as excellent thermal stability due to the fact that it contains a multi-ring compound having a high glass transition temperature (Tg) as a main chain. However, it is well-known in the field of electrochemical cells capable of cycling lithium that increasing Tg is associated with diminished penetration of the electrolyte into the polymeric structure and thus diminished Li-ion mobility, as evidenced by Hu et al. (p. 499–500, ¶ beginning with “The lithium diffusion…” and p. 501, ¶ beginning with “In general…”).
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the weight ratio of the binder to the polymer is a variable that achieves the recognized results of affecting the electrochemical stability, bonding strength, frequency of deleterious side reactions, swelling/gelation/dissolution characteristics, flexibility, dispersion stability, thermal stability, and Li-ion mobility, as taught and evidenced by Kim, Zhang, and Hu, thus making the weight ratio of the binder to the polymer a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the weight ratio of the binder to the polymer to within the range of from about 6:1 to about 2:1 via routine experimentation, for the purpose of achieving an electrode material with suitable electrochemical stability, bonding strength, frequency of deleterious side reactions, swelling/gelation/dissolution characteristics, flexibility, dispersion stability, thermal stability, and Li-ion mobility.
Claims 37, 43, 51, 52, 54, and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (JPWO 2013/065738 A1; see attached machine translation) in view of Kim et al. (KR 2015/0115538 A; see attached machine translation), as evidenced by Blank et al. (Blank, F.; Janiak, C. Metal catalysts for the vinyl/addition polymerization of norbornene, Coordination Chemistry Reviews, 253, p. 827–861, available online 23 May 2008), as applied to Claims 35 and 36 above, and further in view of Zaghib et al. (US 2011/0287325 A1).
Regarding Claims 37 and 43, modified Yoshida discloses the electrochemical cells of Claims 35 and 36. Yoshida does not disclose wherein the electrolyte is (i) a liquid electrolyte comprising a salt in a solvent, (ii) or a gel electrolyte comprising a salt in a solvent, (iii) or a solid polymer electrolyte comprising a salt in a solvating polymer, and instead discloses ([0068]) wherein the electrolyte comprises an inorganic solid electrolyte, a polymer serving as a binder, and an organic solvent.
Zaghib discloses ([0032]) an electrochemical cell (see electrochemical cell) comprising a negative electrode (see anode), positive electrode (see cathode), and an electrolyte (see gel electrolyte), wherein the electrolyte is a gel electrolyte comprising a polymer gelled by a solvent (see liquid solvent) and a salt (see lithium salt). Zaghib discloses (([0002]) that it is advantageous to utilize gel electrolytes over liquid or solid polymer electrolytes in lithium-cycling electrochemical cells, because gel electrolytes have no free liquid, and the absence of free liquid guarantees a higher safety while maintaining a high ionic conductivity.
Zaghib is analogous to the claimed invention as it is in the same field of electrochemical cells capable of cycling lithium. It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrochemical cell of modified Yoshida such that the electrolyte is the gel electrolyte comprising a salt in a solvent as taught by Zaghib, for the purpose of producing an electrochemical cell with no free liquid, which will guarantee a higher safety while maintaining a high ionic conductivity.
Regarding Claims 51 and 54, modified Yoshida discloses the electrochemical cells of Claims 37 and 43. Modified Yoshida further discloses wherein the gel electrolyte further comprises a solvating polymer (see polymer, [0011]–[0020], [0032] of Zaghib).
Regarding Claims 52 and 55, modified Yoshida discloses the electrochemical cells of Claims 37 and 43. Modified Yoshida further discloses wherein the salt is a lithium salt (see lithium salt, [0032] of Zaghib).
Claim 48 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (JPWO 2013/065738 A1; see attached machine translation) in view of Kim et al. (KR 2015/0115538 A; see attached machine translation), as evidenced by Blank et al. (Blank, F.; Janiak, C. Metal catalysts for the vinyl/addition polymerization of norbornene, Coordination Chemistry Reviews, 253, p. 827–861, available online 23 May 2008) as applied to Claim 23 above, in further view of Anada et al. (US 2009/0325069 A1).
Regarding Claim 48, modified Yoshida discloses the electrode material of Claim 23. Yoshida does not disclose wherein the electronically conductive material is a combination of acetylene black and carbon fibers, but does disclose ([0099]) wherein the electronically conductive material is acetylene black.
Anada discloses an electrode material (see slurry for electrode formation, [0094]) comprising an electrochemically active material (see active material, [0094]) and a binder (see binder for electrode formation, [0043], [0094]) that comprises a polymer (see polyolefin resin, ([0043]). Anada discloses that the electrode material further comprises an electronically conductive material (see conductive material, [0094]) selected from the group consisting of carbon black ([0099]), acetylene black ([0095]), graphite ([0095]), carbon fibers ([0095]), carbon nanofibers ([0095]), and combinations thereof ([0096]). Finally, Anada discloses ([0096]) that when a carbon material is used as the conductive material, it is preferable to use a combination of two or more of graphite, carbon black (note that [0099] identifies acetylene black as a type of carbon black), or carbon fiber, for the purpose of decreasing the electric resistance value of the layer formed by the electrode material.
Anada is analogous to the claimed invention as it is in the same field of electrochemical cells capable of cycling lithium. It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrode material of modified Yoshida such that the electronically conductive material is a combination of acetylene black and carbon fibers as taught by Anada, for the purpose of decreasing the electric resistance value of the layer formed by the electrode material.
Response to Arguments
Applicant’s arguments filed 13 October 2025 have been fully considered but they are not persuasive for the following reasons:
Applicant argues on p. 7–8 of Remarks that Yoshida neither discloses nor suggests an electrode material comprising a binder, in addition to a polymer being present as an electrode material additive comprising norbornene-based monomeric units as defined in Claim 1. This argument is not persuasive. As set forth in the rejection of Claim 1 above, Yoshida discloses in [0090] that the positive electrode active material layer can comprise a mixture of an alicyclic structure-containing polymer (which is a polymer comprising norbornene-based monomeric units as also set forth in the rejection of Claim 1 above) and another polymer, and that this mixture may serve as a binder. Thus it can be considered that the “another polymer” referred to by Yoshida in [0090] and described in more detail in [0069]–[0076] acts as a binder in the positive electrode material layer of Yoshida, and therefore it is appropriate in the rejection of Claim 1 to map the “another polymer” of Yoshida specifically to the claim element “binder”. While, as stated above, Yoshida does also refer in [0090] to the alicyclic structure-containing polymer as a “binder”, the alicyclic structure-containing polymer can appropriately be mapped to the claim element “electrode material additive” because it is a component, separate from the “another polymer” that serves as a binder, which is added to the positive electrode material layer as an “additive”. Put another way, while Yoshida refers to the alicyclic structure-containing polymer as a binder, this does not preclude it from being mapped to the claim element “electrode material additive”, as it is indeed an electrode material additive and a separate component from the “another polymer” described by Yoshida to be a binder.
Applicant argues on p. 8–9 of Remarks that Yoshida does not disclose the specific functional groups provided in Claim 1 and provides no indication of their advantages, that there is no disclosure to teach, suggest, or motivate a person of ordinary skill in the art to modify the polymer containing an alicyclic structure in Yoshida by introducing the substituents defined in Claim 1, and finally that Kim does not cure the deficiencies of Yoshida because the polynorbornene-based polymer in Kim is present as a coating on a current collector, and not as an electrode material additive in the electrode material. This argument is not persuasive. As set forth in the rejection of Claim 1 above, while Kim is directed to use of the norbornene-based polymer as a current collector coating while Yoshida is directed to its use as an electrode additive, the polymers of Kim and Yoshida both produce the same benefit to an electrochemical cell, i.e. enhancing the contact properties of the electrode material (Kim [0032] teaches improved adhesion between the electrode active material and the current collector, and Yoshida [0016] teaches coating properties of the slurry; one of ordinary skill in the art will understand that both benefits are directed to contact properties). Thus because the norbornene-based polymer of Yoshida and that of Kim are both known elements for the improvement of contact properties of electrode material in electrochemical cells, it is appropriate to apply KSR Rationale B (MPEP § 2141) which states that it is obvious to perform “simple substitution of one known element for another to obtain predictable results”, and as such, it can be understood that one of ordinary skill in the art would have found it obvious to modify Yoshida by substituting the polymer of Yoshida with the polymer of Kim, with the reasonable expectation that the contact properties of the electrode material would be similar.
Applicant argues on p. 8 of Remarks that Yoshida does not recognize the problems addressed by the instant claims, does not provide sufficient details to be able to achieve the claimed solution, and thus a person of ordinary skill in the art would not have relied on Yoshida to develop an electrode material containing a binder and a polymer additive to reduce or suppress any parasitic reactions between the binder and metallic lithium. This argument is not persuasive. The fact that the Inventor has recognized other advantages, i.e. the reduction and suppression of parasitic reactions between the binder and metallic lithium, which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, as described previously in this Office Action in detail, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious given the references Kim and Yoshida (as evidenced by Blank) to modify Yoshida in view of the teachings of Kim as set forth above. As such, the fact that an additional advantage may result from this obvious combination of references cannot be the basis for patentability.
Applicant argues on p. 9 of Remarks that Kim does not recognize the problems addressed by the instant claims, and, therefore, it does not provide sufficient details to be able to achieve the solution, and thus a person of ordinary skill in the art would not have combined Yoshida and Kim to arrive at an electrode material comprising a conventional binder and a polymer additive to reduce or suppress any parasitic reactions between the conventional binder and metallic lithium. This argument is not persuasive. The fact that the Inventor has recognized other advantages, i.e. the reduction and suppression of parasitic reactions between the binder and metallic lithium, which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, as described previously in this Office Action in detail, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious given the references Kim and Yoshida (as evidenced by Blank) to modify Yoshida in view of the teachings of Kim as set forth above.
Applicant argues on p. 9 of Remarks that Blank does not rectify the deficiencies of Yoshida in view of Kim, and thus a person skilled in the art reading these documents would have no reason to combine their teachings in a manner to arrive at the present combination of elements as defined in Claim 1. This argument is not persuasive. As described previously in this Office Action in detail, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious given the references Kim and Yoshida to modify Yoshida in view of the teachings of Kim as set forth above. Furthermore, it is noted that Blank is an evidentiary reference used to provide evidence regarding a certain concept, namely the concept of addition polymerization disclosed by Yoshida, which is in reference to vinyl-/addition-type polymerization of norbornene which results in a polymer with norbornene-based monomeric units. Thus Blank is not used in this case to cure a deficiency, but merely to provide further information and context for the disclosure of Yoshida.
Applicant argues on p. 10 of Remarks that Zhang does not rectify deficiencies of Yoshida in view of Kim as evidenced by Blank as related to the electrode material defined in Claim 1, and that Zhang is merely a comparative study of polymeric binders and their influence on the properties of LiMn2O4 cathodes in lithium-ion batteries. This argument is not persuasive. As described previously in this Office Action in detail, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious given the references Kim and Yoshida (as evidenced by Blank) to modify Yoshida in view of the teachings of Kim as set forth above in regards to Claim 1. The reference Zhang is not meant to be applied regarding the limitations of Claim 1, but is rather an evidentiary reference used to provide evidence regarding a certain concept relating to Claim 26, namely the well-known advantages and disadvantages of utilizing poly(vinylidene difluoride) as a binder in electrochemical cells capable of cycling lithium.
Applicant argues on p. 10 of Remarks that Hu does not rectify the deficiencies of Yoshida in view of Kim as evidenced by Blank as related to the electrode material defined in Claim 1. This argument is not persuasive. As described previously in this Office Action in detail, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious given the references Kim and Yoshida (as evidenced by Blank) to modify Yoshida in view of the teachings of Kim as set forth above in regards to Claim 1. The reference Hu is not meant to be applied regarding the limitations of Claim 1, but is rather an evidentiary reference used to provide evidence regarding a certain concept relating to Claim 26, namely the effects of increasing Tg.
Applicant argues on p. 11 of Remarks that Zaghib does not rectify the deficiencies of Yoshida in view of Kim as evidenced by Blank as related to the electrode material defined in Claim 1. This argument is not persuasive. As described previously in this Office Action in detail, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious given the references Kim and Yoshida (as evidenced by Blank) to modify Yoshida in view of the teachings of Kim as set forth above in regards to Claim 1. The reference Zaghib is not meant to be applied regarding the limitations of Claim 1, but is rather a teaching reference used to teach a certain concept relating to Claims 37, 43, 51, 54, 52, and 55, namely the advantages of utilizing gel electrolytes over liquid or solid polymer electrolytes in lithium-cycling electrochemical cells.
Applicant argues on p. 11–12 of Remarks that Anada does not rectify the deficiencies of Yoshida in view of Kim as evidenced by Bank as related to the electrode material defined in Claim 1. This argument is not persuasive. As described previously in this Office Action in detail, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious given the references Kim and Yoshida (as evidenced by Blank) to modify Yoshida in view of the teachings of Kim as set forth above in regards to Claim 1. The reference Anada is not meant to be applied regarding the limitations of Claim 1, but is rather a teaching reference used to teach a certain concept relating to Claim 48, namely the advantages of utilizing a combination of carbon materials including carbon fiber as conductive material.
Conclusion
THIS ACTION IS MADE FINAL. 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 JULIA MARIE FEHR, Ph.D. whose telephone number is (571)270-0860. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BASIA RIDLEY can be reached at (571)272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725