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
This office action is in reply to applicant’s responses dated 10/29/25 and 06/16/25. The applicant has made an election of species (see paper dated 10/29/25); and has overcome most of the 35 USC 112 rejections (see paper dated 06/16/25). However, applicant’s amendment has not yet satisfactorily overcome the prior art rejections. Refer to the aforementioned amendment for specific details on applicant's rebuttal arguments and/or remarks. Therefore, the present claims (including new claims 16-17) are now finally rejected over the same art as well as a new ground of rejection (for claims 16-17) as formulated hereinbelow and for the reasons of record:
Election/Restrictions and Claim Disposition
Applicant’s election of Species I-A-1 and Species I-A-1-a (i.e., claims 5-6 and 16; and claim 1 per se) in the reply filed on 10/29/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant’s election of Group and Species I-A-1, I-B-1 and I-C-1 (i.e., claims 1-7 and 10) in the reply filed on 12/23/24 and 09/18/24 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-8, 10 and 16-17 are under examination; of which claims 1-8 and 10 are original and claims 16-17 are new. Claims 8, 11-15 and 18-20 have been withdrawn from consideration. Claim 9 had been previously cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8, 10 and 16-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In particular, independent claim 1 now recites added material which is not supported by the original disclosure is as follows: the new limitation "the composition contains no positive electrode active material", that is to say, such negative limitation/proviso per se is not recited or disclosed in the as-filed specification. A detailed examination of the as-filed specification reveals that applicant's disclosure only supports the inclusion or combination of the claimed composition with the positive electrode active material. Furthermore, for instance, withdrawn claims 11-14 positively recite the positive electrode mixture or the positive electrode structure comprising the positive electrode active material and the claimed composition. Therefore, the as-filed specification does not show how applicant is arriving at or how applicant had possession of the above-mentioned newly added/amended limitation (i.e., the negative limitation/proviso is not recited or disclosed in the as-filed specification). Thus, the specification as filed lacks reasonable descriptive basis for supporting the above-mentioned limitation (i.e., the negative limitation/proviso is not recited or disclosed in the as-filed specification) which was amended in an attempt to further limit the present claims, or to overcome the ground(s) of rejection.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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, 4-7 and 10 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yazami et al 2016/0336598.
As to claim 1, 4-7 and 10:
Yazami et al disclose that it is known in the art to make an electrode composition for an electrochemical cell comprising a single-walled carbon nanotube, a binder comprising a copolymer of vinylidene fluoride and hexafluoropropylene wherein the amount of hexafluoropropylene is more than 1.0 mol % and the amount of vinylidene fluoride is more than 50.0 mol %; and a N-methyl-2-pyrrolidone (NMP) as a solvent (0201-0204; see Example 12). It is noted that the amount the copolymer monomer units is an inherent property of the PVDF-HFP copolymer disclosed by Yazami et al. Further, since the present claims fail to define the specific amount of each fluorine-containing monomer unit as well as the specific amount of carbon nanotube, binder and solvent materials in the claimed composition, it is deemed that the teachings of Yazami et al are sufficient to satisfy applicant’s broadly claimed invention.
Examiner’s note: as to the specific storage elastic modulus (E’) of the fluorine-containing copolymer and the amount of respective copolymer monomer units (if so intended): MPEP 2112.01 Composition, Product, and Apparatus Claims establishes the following: I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971); Northam Warren Corp. v. D. F. Newfield Co., 7 F. Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934). Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed characteristics are necessarily present in the prior art material. “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 Composition, Product, and Apparatus Claims. See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) “From the standpoint of patent law, a compound and all its properties are inseparable.”
As per MPEP 2112 Requirements of Rejection Based on Inherency; Burden of Proof: "V. ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW INHERENCY, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE ....[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same... [footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433- 34 (CCPA 1977)).
All in all, A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC, PROPERTY OR FUNCTION Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims. Refer to MPEP 2112 Requirements of Rejection Based on Inherency; Burden of Proof.
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.
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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Yazami et al 2016/0336598 as applied to claim 1 above, and further in view of the publication JP 2017-050465 (heretofore JP’465).
Yazami et al are applied, argued and incorporated herein for the reasons manifested supra. However, the preceding reference does not expressly disclose the specific average outer diameter and G/D ratio of the single-walled carbon nanotube.
As to claims 2-3:
JP’465 discloses that it is known in the art to make carbon nanotubes such as single-walled carbon nanotube with an average outer diameter of less than 2.nm; and a G/D ratio greater than 2 (0029; 0027-0030; see EXAMPLES 1-2).
In view of the above, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to use the single-walled carbon nanotube of JP’645 having the specific average outer diameter and G/D ratio as the carbon nanotube in the composition of Yazami because JP’645 teaches assists in providing an electrode for an electrochemical device having good dispersibility of the carbon nanotube in a solvent and polymer-based material, thereby achieving superior cycle characteristics. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yazami et al 2016/0336598 as applied to claim 1 above, and further in view of the publication JP 2010-287497 (heretofore JP’497).
Yazami et al are applied, argued and incorporated herein for the reasons manifested supra. However, the preceding reference does not expressly disclose the specific copolymer comprising a tetrafluoroethylene unit and its specific amount.
As to claims 16-17:
JP’497 discloses that it is known in the art to make a composition for a positive electrode of a battery including a binder comprising a copolymer comprising a tetrafluoroethylene unit in a molar ratio of 3:7 and 7:3 (Abstract; Examples Batteries B, C, D, E, F & G; see Claims 1-4).
In view of the above, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to use the specific copolymer comprising a tetrafluoroethylene unit and its specific amount in the composition of Yazami et al as taught by JP’497 because JP’497 teaches that such specifically disclosed tetrafluoroethylene-based copolymer is used as a binder material for a positive electrode active material which exhibits minimized deterioration of charge-discharge characteristics and cycle characteristics, thereby providing enhanced adhesion and mechanical stability of such positive electrode active material. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Response to Arguments
Applicant's arguments filed 06/16/25 have been fully considered but they are not persuasive.
Applicant has made the allegation that “the present application repeatedly states that the disclosure provides a composition that does not contain the active material. Rather, an active material is separately added to the composition.”; and “claim 1 is amended herein to exclude a positive electrode active material from the composition”. With respect to the limitation “the composition contains no positive electrode active material”, the same has been considered to be new matter as such specific negative limitation/proviso is not supported by the as-filed specification (i.e., such specific negative limitation/proviso is not recited or disclosed in the as-filed specification). Further, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies [i.e., (i) “an active material is separately added to the composition”) are not recited in the rejected claim(s). 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). Thus, applicant’s argument is not commensurate in scope with the instantly claimed subject matter. If applicant wishes to have such limitation considered for patentability, independent claim 1 must be amended to include or recite the same. Further, if applicant intends to recite that “an active material is separately added to the composition after the production, fabrication or manufacturing of the composition”, applicant is reminded that such language is not recited or included in independent claim 1, and thus, it cannot be considered for patentability. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas A. Smith can be reached on (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752