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 .
Claim Rejections - 35 USC § 103
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.
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 12-14, and 16-29 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata et al. (US 2012/0231337).
Considering Claims 12, 15, and 17: Miyata et al. teaches a copolymer containing binder comprising a random propylene copolymer 50 to 85 weight percent of propylene and 15 to 50 weight percent of a comonomer (¶0063) and having a crystallinity of less than 30% (¶0058). Miyata et al. teaches the composition as comprising the copolymer, polyvinyl alcohol/a non-ionic emulsifier, a polyether modified silicone surfactant/defoamer, and water (Table 2). Miyata et al. teaches the surfactant as acting as a defoamer (¶0089).
Miyata et al. teaches the copolymer as being 10 to 70 percent by weight of the dispersion (¶0057), the surfactant (defoamer) as being 0 to 100 parts per 100 parts of the copolymer, and the polyvinyl alcohol as being 10 to 100 parts per 100 parts of the copolymer (¶0103), with 1.2 weight percent being used in the example (¶0193). Miyata et al. does to teach the specific ranges claimed. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As the amount of polymer and emulsifiers in the composition would control the emulsion stability, a person of ordinary skill in the art would recognize the concentrations as being a result effective variable. Further, Miyata et al. teaches the amount of polymer as affecting the electrode plate adhesion (¶0057), the amount of surfactant (defoamer) as affecting the compatibility with an electrolyte solution (¶0090) and the amount of polyvinyl alcohol as affecting the coatability and workability (¶0103). It would have been obvious to a person of ordinary skill in the art to have optimized the amount of the components through routine experimentation, and the motivation to do so would have been to control the emulsion stability of the adhesive, the electrode plate adhesion, the compatibility with the electrolyte stability and the coatability and workability of the dispersion.
Considering Claim 13: Miyata et al. teaches the comonomer as being maleic anhydride (¶0067-68).
Considering Claim 14: Miyata et al. teaches the weight average molecular weight as being 50,000 to 500,000 (¶0062).
Considering Claim 18: Miyata et al. teaches the adhesive of claim 1 as shown above.
Miyata et al. is silent towards the viscosity of the adhesive. However, as Miyata et al. includes a viscosity modifying agent, the reference recognizes the viscosity as being a critical feature of the adhesive. It would have been obvious to a person of ordinary skill in the art to have optimized the viscosity through routine experimentation, and the motivation to do so would have been to allow for the adhesive to flow during application to substrate.
Considering Claim 19: Miyata et al. teaches the binder as having a swelling degree of 10% in an electrolytic solution (Table 1).
Considering Claim 20: Miyata et al. teaches an electrochemical device comprising an electrode plate comprising the binder (¶0012).
Considering Claim 21: Miyata et al. teaches the electrode plate as comprising a metal collector and an electrode (¶0011).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the bonding force, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 22: Miyata et al. teaches a battery/electronic device comprising the electrochemical device (¶0211-13).
Considering Claim 23: Miyata et al. teaches the comonomer as being maleic anhydride (¶0067-68).
Considering Claim 24: Miyata et al. teaches the weight average molecular weight as being 50,000 to 500,000 (¶0062).
Considering Claims 25-26: Miyata et al. teaches the composition as comprising the copolymer, polyvinyl alcohol/a non-ionic emulsifier, a polyether modified silicone surfactant/defoamer, and water (Table 2).
Considering Claim 27: Miyata et al. is silent towards the viscosity of the adhesive. However, as Miyata et al. includes a viscosity modifying agent, the reference recognizes the viscosity as being a critical feature of the adhesive. It would have been obvious to a person of ordinary skill in the art to have optimized the viscosity through routine experimentation, and the motivation to do so would have been to allow for the adhesive to flow during application to substrate.
Considering Claim 28: Miyata et al. teaches the binder as having a swelling degree of 10% in an electrolytic solution (Table 1).
Considering Claim 29: Miyata et al. teaches the electrode plate as comprising a metal collector and an electrode (¶0011).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the bonding force, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Response to Arguments
Applicant's arguments filed June 22, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Miyata et al. teaches the polyether modified silicone surfactant as being a surfactant rather than a defoamer is not persuasive. Miyata et al. teaches the surfactant as acting as a defoamer (¶0089).
B) The applicant’s argument that Miyata et al. does not establish the amount of surfactant (defoamer) as being a result effective variable is not persuasive. Miyata et al. teaches the copolymer as being 10 to 70 percent by weight of the dispersion (¶0057), the surfactant (defoamer) as being 0 to 100 parts per 100 parts of the copolymer, and the polyvinyl alcohol as being 10 to 100 parts per 100 parts of the copolymer (¶0103), with 1.2 weight percent being used in the example (¶0193). Miyata et al. does to teach the specific ranges claimed. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As the amount of polymer and emulsifiers in the composition would control the emulsion stability, a person of ordinary skill in the art would recognize the concentrations as being a result effective variable. Further, Miyata et al. teaches the amount of polymer as affecting the electrode plate adhesion (¶0057), the amount of surfactant (defoamer) as affecting the compatibility with an electrolyte solution (¶0090) and the amount of polyvinyl alcohol as affecting the coatability and workability (¶0103). It would have been obvious to a person of ordinary skill in the art to have optimized the amount of the components through routine experimentation, and the motivation to do so would have been to control the emulsion stability of the adhesive, the electrode plate adhesion, the compatibility with the electrolyte stability and the coatability and workability of the dispersion.
As the amount of defoamer is taught to control the compatibility with an electrolyte solution, and the claimed range is within the range disclosed in Miyata et al., a person of ordinary skill in the art would consider the amount to be a result effective variable.
C) The applicant’s argument that Miyata et al. does not teach the claimed comonomer is not persuasive. Miyata et al. teaches the comonomer as being maleic anhydride (¶0067-68).
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 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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