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 Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
Applicant argues that the claims are now commensurate in scope with the alleged unexpected results. This argument is not convincing. Firstly, Examiner is not convinced that the results are unexpected, and arguments from the Appeal Brief are reiterated below. Now addressing the scope of the claims with the alleged unexpected results, the claims are still not commensurate in scope. A showing of unexpected results (which, as discussed below, the Examiner is not convinced of) must be commensurate in scope with the claim language.
Applicant has alleged unexpected results for 1) dispersions of 10 g of carbon black in a dispersion of NMP solvent with 0.25 to 0.75 g of PVP dispersant and 0.25 to 1.07 g of a dispersant that is a comb copolymer with a styrene-maleic anhydride backbone and polyethylene glycol or EO/PO polyether [Table 1, p10-11 of Specification as filed] and 2) dispersions of 0.5 g of CNT in a dispersion of NMP solvent with 0.13 g of PVP dispersant and 0.13 to 0.36 g of a dispersant that is a comb copolymer with a styrene-maleic anhydride backbone and polyethylene glycol or EO/PO polyether [Table 2, p10-11 of Specification as filed] as well as 3) lithium batteries comprising the above dispersions in cathode mixture.
Meanwhile, the broadest claim 1 merely discloses a composition (not even a dispersion). Each of the independent claims still claims a) a polymer comprising polymerized units of N-vinyl lactam, b) any carbon-based material. This is much more generic for each component. Finally, the claims do not include amounts of each component, nor the solvent which is the most abundant component in the examples.
Regarding whether the results are unexpected:
Regarding the dispersions comprising carbon black [Tables 1], there is more variation in of the viscosity within the inventive examples [Table 3] than there is between the inventive examples and the comparative examples [Table 4]. In particular, Comparison Example 4 comprising only the polyvinylpyrrolidone (PVP) that reads on claimed polymer a), has a viscosity 65 mPas which is nearly identical to the viscosity of 63 mPas of Inventive Example 5. Comparative Examples 1 through 3, which use only the comb copolymer b) have such high viscosity that they are not measured. However, this appears to be because the comb copolymers are not used in an effective amount. The examples use between 10 and 20wt% of comb copolymer b) dispersant based upon the weight of the carbon black material [CD-1, CD-2 and CD-3 in Table 1], whereas the secondary reference Zhang (CN 106519249 A) teaches that the comb copolymer should be used in 40% of the total mass of the dispersed solid particles [see attached Espacenet Translation of CN 106519249 A, p. 3, highlighted text]. So Applicant’s have not shown that the inventive examples have lower viscosity when using the combination of the two claimed dispersing agents, but merely that there appears to be a lot of variation in the viscosity of the of the dispersions, including within the inventive ranges.
Regarding the dispersions comprising CNTs [Table 2], the same pattern emerges: the Comparison Example 8 comprising only the PVP polymer a) is closer in viscosity at 60 mPas to the Inventive Example 7 at 52 mPas than the Inventive Example 7 is to Inventive Examples 8 and 9 at 42 and 35 mPas, respectively. And again, the Comparison Examples 5 through 7 appear to include less than the effective amount of comb copolymer b). Again, the claimed combination of polymer a) and comb copolymer b) does not show improvement over the closest prior art of polymer a) alone (which is represented by the primary reference Ma et al (US 20140332731 A1).
The same pattern emerges again for the battery properties in Tables 7-10: Comparison Example 9 in Table 8 is nearly indistinguishable from the Inventive Example 12 in Table 7; and Comparison Example 10 in Table 10 appears to perform as well and slightly better than Inventive Example 15 in Table 9.
Inventive Examples 16 and 17 in Table 11 do appear to improve over Comparison Example 11 in Table 12, but this is a very small sample size and hardly seems convincing a pattern. Furthermore, and this can be said for he results in Tables 3 through 10 as well, the alleged improvement is very small. It is only at 400 and 500 cycles of the Cycle test [Tables 11 and 12] that there is a noticeable improvement in the inventive examples. Now, there are plenty of technologies in which what appear to be marginal improvements to an outsider are actually hard-won victories for the inventors and the ordinarily skilled artisan would recognize their significance. In those instances, showing that the marginal improvement is “unexpected” requires a showing of evidence from the available prior art. Appellant has not shown any evidence that these small differences in battery properties are significant, nor even argued that they are. For his part, the Examiner often uses rechargeable batteries at home, and he is sure that he would probably not notice whether the discharge capacity had degraded to 64.4% [Comparison Example 11] or if it had degraded to 76.4% [Inventive Example 16].
Furthermore, the primary reference Ma teaches that the claimed polymer a) PVP and the carbon-based material c) will provide a dispersion, and the secondary references Gobelt and Zhang teach that adding a comb polymer would likely improve the dispersion. The improvement is not big enough to be unexpected.
Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. V. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989); Richardson-Vicks, Inc., v. The Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997).
The only possible exception is Tables 11 and 12, which show somewhat significant improvement of the cycle test performance when using the claimed combination of dispersants compared to a dispersion which contains PVP only. However, this is likely just secondary result of the improved dispersion. And more importantly, the “unexpected” nature is undermined by Zhang (CN 106519249 A) (submitted on the IDS of 07/01/2024). Zhang discloses that the comb polymers of the claims is suitable for dispersing carbon black and other solid powders (just like Gobelt) but in particular teaches that it is good for battery material and batter slurry dispersing [claims 7-8, Tables 4 and 5, p3].
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.
Claim(s) 1-6, 8-11, 14-17 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al (US 20140332731 A1) in view of Gobelt et al (US 20100099813 A1).
Ma discloses an electrode composition for a battery comprising a carbon nanotube (CNT) or other carbon-based material and a polyvinyl pyrrolidone (N-vinyl lactam polymer) as a dispersing agent having a molecular weight preferably between about 55,000 to 80,000 Daltons [abstract, 0037-0038]. The CNT are dispersed in a solvent with the other components using shear force [0043] and wherein the solvent includes n-methyl pyrrolidone [0041] and the composition is dried above the boiling point of water [0040]. The electrode is used in rechargeable batteries [0028, 0046, 0055].
Ma does not disclose the claimed comb copolymer b). Ma does disclose that the dispersant may be used in combination [0037].
Gobelt discloses comb block copolymers prepared from styrene and maleic anhydride units comprising grafted side chains of polyalkylene oxide [abstract]. The side chains are attached via amide groups [abstract, 0026]. The comb polymer includes free carboxyl groups [claim 1] as well as salified carboxyl groups from tertiary amines, i.e. tertiary amine salts [0021]. The Mn of the styrene-maleic anhydride backbone is preferably between 1000 g/mol and 20,000 g/mol [0013] and the Mn of the polyalkylene oxide monoamines used is preferably between 500 g/mol and 3000 g/mol[0019], so the Mn of the comb polymer with be within the range of claim 6.
The comb polymers are suitable dispersing agents for carbon-based materials [0039-0041] in polyamide containing compositions [0027].
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have added the comb polymer b) of the claims to the CNT composition of Ma because Gobelt teaches that comb polymers are suitable dispersing agents for carbon-based materials in polyamide containing compositions.
The most immediately envisaged embodiment of the weight ratio of two functional components used in combination is a 50:50 ratio, which reads on the claimed weight ratios of polymer a) to comb copolymer b).
Claim(s) 1-6, 8-11, 14-17 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al (US 20140332731 A1) in view of Zhang (CN 106519249 A).
Ma discloses an electrode composition for a battery comprising a carbon nanotube (CNT) or other carbon-based material and a polyvinyl pyrrolidone (N-vinyl lactam polymer) as a dispersing agent having a molecular weight preferably between about 55,000 to 80,000 Daltons [abstract, 0037-0038]. The CNT are dispersed in a solvent with the other components using shear force [0043] and wherein the solvent includes n-methyl pyrrolidone [0041] and the composition is dried above the boiling point of water [0040]. The electrode is used in rechargeable batteries [0028, 0046, 0055].
Ma does not disclose the claimed comb copolymer b). Ma does disclose that the dispersant may be used in combination [0037].
Zhang discloses comb block copolymers prepared from styrene and maleic anhydride units comprising grafted side chains of polyalkylene oxide [abstract] having the formula
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202
539
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Wherein R1 is a polyether structure EOp-POq-R3 wherein p and q are 0-100 [p2] which one can see these polyether side chains are attached via amide groups, and the R2 group may include OH SO3, COOH and phosphate [p2], and w + m + n=100, wherein w=1-15, n is not equal to 0 [p2]. Zhang discloses that the comb polymers of the claims is suitable for dispersing carbon black and other solid powders but in particular teaches that it is good for battery material and battery slurry dispersing [claims 7-8, Tables 4 and 5, p3].
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have added the comb polymer b) of the claims to the CNT composition of Ma because Zhang teaches that comb polymers are suitable dispersing agents for carbon-based materials and produce improved battery material and battery slurry dispersions.
The most immediately envisaged embodiment of the weight ratio of two functional components used in combination is a 50:50 ratio, which reads on the claimed weight ratios of polymer a) to comb copolymer b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/ Primary Examiner, Art Unit 1766