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 .
Claims 1, 3-6, 9, and 11-12 are pending as amended on October 8, 2025.
Claims 13-14 are new and find support in [0068] and [0033].
Claim 10 stands withdrawn from consideration.
The new grounds of rejection set forth below were necessitated by new claims 13-14. Therefore, this action is properly made final.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn.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 the action can be found in a prior Office action.
Response to Arguments
Applicant's arguments filed October 8, 2025 have been fully considered.
Applicant argues (end of page 7) that it is not obvious that Hayashi’s (JP 2017186553 A) polycarbonate diol itself can be used as a binder for sulfide based all-solid-state batteries which is the intended use of the present application. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 1 does not require that the aliphatic polycarbonate be a diol or used in a sulfide based all-solid-state battery. Hayashi teaches a polycarbonate diol that is used as a raw material for producing a polyurethane and the resulting polyurethane is used as a binder (Hayashi, [0068]). The polyurethane of Hayashi comprises aliphatic polycarbonate segments with structures that read on Formula (1) and Formula (2) and therefore reads on the instantly claimed aliphatic polycarbonate (see pages 3-4 of the 7/08/2025 Office action).
Applicant argues (page 8) that the aliphatic polycarbonate of claim 1 differs from Hayashi in that it is formed by a two-stage polymerization process and whereas Hayashi uses a random polymerization. Applicant further notes that while Hayashi teaches an average block size of x=19, random polymerization would likely result in some blocks that are shorter than the claimed size range. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 1 as presently drafted does not require that the polycarbonate be the result of a two-stage polymerization process or that the polycarbonate comprise only one block of formula (1) and one block of formula (2). Because Hayashi teaches an average block size of x=19, it is reasonable to expect that at least some portion of the polycarbonate component has an x within the claimed range of 10-60.
Applicant argues (page 9) that it is unclear whether adding a dopant to Hayashi’s polyurethane would lower the Tg and therefore whether the polyurethane would exhibit higher ionic conductivity. MPEP 716.01(c) II states that arguments by applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Applicant has not established the necessary Tg range for a dopant to be able to improve ionic conductivity and therefore has not demonstrated that adding the dopant of Akimoto to the binder of Hayashi would not improve the ionic conductivity of the binder. Akimoto (JP 2002275234 A) teaches polycarbonate-based polymer binders (Akimoto, [0002]) and teaches reacting polycarbonates to form polyurethane (Akimoto, [0043]). Akimoto teaches that mixing the material with a dopant that provides ions improves ion conductivity (Akimoto, [0039]). Based on the disclosure of Akimoto, it is reasonable to expect that adding the dopant of Akimoto to the binder of Hayashi would provide ions and therefore increase the ion conductivity because both Akimoto and Hayashi teach binders with polycarbonate segments.
Applicant argues (pages 9-10) that new claim 13 is allowable because Hayashi teaches a different polycarbonate molecular weight and does not use the low molecular weight polycarbonate diol itself as a binder. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 13 recites a weight average molecular weight (Mw) range of 5,000-200,000. Hayashi teaches a polycarbonate diol number average molecular weight (Mn) range of 400-10,000. Because Mn is by definition smaller than Mw, one would reasonably expect substantial overlap in the Mw range of the polycarbonate diol of Hayashi and the claimed range. Furthermore, Hayashi teaches that the Mw of the polyurethane is 10,000-500,000 (Hayashi, [0040]). The polyurethane of Hayashi is used in the binder and comprises polycarbonate segments. The molecular Mw range of the polyurethane comprising polycarbonate segments therefore corresponds to the Mw of the aliphatic polycarbonate used in the ion-conducting polymer. A range of 10,000-500,000 overlaps with the claimed range of 5,000-200,000. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. In addition, claims 1 and 13 as presently drafted do not require that the polymer contained in the ion-conducting polymer is a polycarbonate diol. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues (page 10) that new claim 14 is patentable because Hayashi does not disclose the use of 1,10-dedanediol to synthesize aliphatic polycarbonate. Hayashi does not disclose the use of 1,10-dedecandiol; however, claim 14 is obvious over Hayashi and Akimoto in view of Kusano (US 2015/0291724 A1)
Claim Rejections - 35 USC § 103
Claims 1, 3-4, and 9 stand rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (JP 2017186553 A) in view of Akimoto (JP 2002275234 A) as set forth in the prior Office action on July 8, 2025.
Claims 5-6 stand rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (JP 2017186553 A) and Akimoto (JP 2002275234 A) as applied to claim 1 above, and further in view of Odian (Principles of Polymerization, Fourth Edition, Chapter 2, pages 39-197, 2004) as set forth in the prior Office action on July 8, 2025.
Claims 11-12 stand rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (JP 2017186553 A) in view of Akimoto (JP 2002275234 A) and Odian (Principles of Polymerization, Fourth Edition, Chapter 2, pages 39-197, 2004) as set forth in the prior Office action on July 8, 2025.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (JP 2017186553 A, references are made to the English translation provided with the 7/08/2025 Office action) and Akimoto (JP 2002275234 A) as applied to claim 1 above.
Modified Hayashi teaches the polymeric binder according to claim 1. Hayashi further teaches that the weight-average molecular weight (Mw) of the polyurethane is 10,000-500,000 (Hayashi, [0040]). The polyurethane of Hayashi comprises polycarbonate segments and reads on the instantly claimed aliphatic polycarbonate. A range of 10,000-500,000 overlaps with the claimed range of a Mw of 5,000 or greater and 200,000 or less. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (JP 2017186553 A, references are made to the English translation provided with the 7/08/2025 Office action) and Akimoto (JP 2002275234 A) as applied to claim 1 above, and further in view of Kusano (US 2015/0291724 A1).
Modified Hayashi teaches the polymeric binder according to claim 1. Hayashi teaches that the polycarbonate diol has a repeating unit other than the repeating unit (I) (corresponding to instant Formula (2)) and that these repeating unit can be composed of one kind or two or more kinds (Hayashi, [0019]). Hayashi teaches that the diol used to make these repeating units is not particularly limited and teaches that diols such as 1,4-butanediol, 1,5-pentanediol, 1,6-hexanediol, and 1,9-nonanediol are preferred (Hayashi, [0022]), but does not teach 1,10-decanediol as a monomer.
However, Kusano teaches polycarbonate-derived polyurethanes with decane-1,10-diyl groups. Like Hayashi, Kusano teaches polycarbonate-derived polyurethanes with good low-temperature characteristics (Kusano, [0035]; Hayashi, [0045]). Kusano teaches a polycarbonate with structural units derived from a diol with 3-5 carbon atoms (A) and a diol derived from 8-20 carbon atoms (B) (Kusano, [0044]). Kusano teaches that by containing structural units derived from (A) and (B), good chemical resistance and low-temperature characteristics can be obtained when processed into a polyurethane (Kusano, [0049]). In order to balance chemical resistance and low-temperature characteristics when processed into polyurethane, Kusano prefers 1,4-butanediol as diol (A) and 1,10-decandiol as diol (B) (Kusano, [0055-0056]). Kusano further teaches that these monomers can be plant derived and that this is preferable from the standpoint of reducing environmental impact (Kusano, [0058-0059]). Kusano further teaches that the low temperature characteristics will be insufficient if too much (A) is used, but the chemical resistance will be insufficient is too little (A) is used (Kusano, [0049]). This suggests that increasing the amount of 1,10-decanediol would be expected to improve low temperature characteristics at the expense of chemical resistance. As low temperature characteristics, Kusano refers to flexibility, impact resistance, flex resistance and durability, at low temperatures (Kusano, [0177]). The diol component of Kusano can further comprise up to 50 mol% of other dihydroxy compounds (Kusano, [0057]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the diol used as a raw material of the repeating unit other than repeating unit (I) of Hayashi for the combination of 1,4-butanediol and 1,10-decanediol of Kusano in order to balance the chemical resistance and low-temperature characteristics such as flexibility, impact resistance, flex resistance, and durability of the resulting polyurethane. The resulting polyurethane would comprise polycarbonate repeating units derived from 1,4-butanediol and 1,10-decandiol, reading on R1 in Formula (1) contains at least a decane-1,10-diyl group.
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.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766