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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-2 & 4-11 are pending in the application. Claims 7-11 are withdrawn. Claims 1-2 & 4-6 were rejected in the 4/28/2026 office action. Claims 1-2 & 4-6 are presently examined.
Response to Amendment / Arguments
The 7/7/2026 amendment, in response to the 4/28/2026 office action, has been entered. Applicant’s claim 1 amendment overcame the 35 U.S.C. 112(b) rejection. Applicant's arguments, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive.
Claim 1 states:
“the compound… includes an element belonging to either or both of group 13 and group 14 of the periodic table, excluding carbon and germanium”
Later in the claim, a calculation is required based on a mass of that element.
Applicant argues that the “element belonging to either or both of group 13 and group 14” must include all elements in that category (group 13 & group 14 but not C or Ge), which are in the compound. Applicant argues that this is supported by a teaching of the present specification that the element content must be “based on the total ‘metal ion concentration’ of the qualifying elements (paragraph 83).
Examiner disagrees. First, the specification doesn’t state that the element content must be based on total metal ion concentration in the compound. Here is the wording of the paragraph referred to by the Applicant:
“Based on an obtained value for the metal ion concentration, the content of an element belonging to either or both of group 13 and group 14 of the periodic table (excluding carbon and germanium) relative to a polymer in the binder composition was calculated.” paragraph 83
This merely states “the content of an element” in that category. It does not require the content of all elements in that category. In the 35 U.S.C. 103 rejection below, Examiner selected an element, within the category, for the calculation.
Second, although claims are interpreted in light of the specification, specification limitations should not be read into the claims “absent clear disclaimer in the specification” MPEP 2111.01(I). Here, there is no clear disclaimer in the specification requiring all elements in the category to be in the calculation.
Claim Objections
Claim 1 is objected to because of the following informalities. Claim 1 states “the compound is includes at least one…”. Examiner suggests deleting “is” for proper grammar and clarification of the meaning of the claim.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over US20180287134A1 (Ledwoch).
Ledwoch teaches the following claim 1 limitations:
A binder composition (paragraph 79: slurry for cathode includes a binder) for a secondary battery (intended use does not limit the claim) comprising:
a polymer (paragraph 79: polyacrylic acid);
an organic solvent (paragraph 79: N-Methylpyrrolidone); and
a compound formed of an organic material or an inorganic material (paragraph 79: zeolite), wherein
the compound has a solubility of 10 mass% or less in water (zeolite / aluminosilicate is insoluble in water1) at a temperature of 25°C and includes an element belonging to either or both of group 13 and group 14 (Si) of the periodic table (zeolite is Al2O3 & SiO2, or Al2O5Si1), excluding carbon and germanium…
the compound includes at least one compound selected from a group consisting of zeolites (paragraph 79: zeolite), silica gel, polydimethylsiloxane
Claim 1 also states:
a mass ratio of the element to the polymer is not less than 5 mass ppm and not more than 1,500 mass ppm
Ledwoch’s electrode can include 0.1 wt% to 10 wt% zeolite (paragraph 58) and 1 wt% to 30 wt% polymer (paragraph 59). Following are calculations showing the ppm of the element silicon:
Zeolite is Al2O5Si. Element Si mass fraction in the compound:
28
2
*
27
+
5
*
16
+
28
=
0.1728
.
Element Si mass ratio, in ppm, relative to the polymer:
0.1
*
0.1728
30
*
1,000,000
=
576
p
p
m
and
10
*
0.1728
1
*
1,000,000
=
1,728,000
p
p
m
Therefore, Ledwoch’s 576 to 1,728,000 range overlaps the claimed 5 to 1,500 range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Given that Ledwoch’s range substantially overlaps the claimed range, the range in claim 1 is an obvious variant of Ledwoch’s range.
With regard to claim 2, modified Ledwoch teaches the limitations of claim 1 as described above. Ledwoch also teaches the following claim 2 limitation:
the polymer includes one or more functional groups selected from the group consisting of a carbonyl group, an ether group, a carboxy group (paragraph 79: polyacrylic acid), and a hydroxy group
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US20180287134A1 (Ledwoch), as applied to claim 1, and further in view of US20180233728A1 (Ohkubo). Ledwoch teaches the limitations of claim 1 as described above. Ledwoch, however, fails to teach the following claim 4 limitation, which is taught by Ohkubo:
the polymer includes a vinyl cyanide monomer unit in a proportion of not less than 2 mass% and not more than 35 mass% (paragraph 11: ≥ 20 mass% (meth)acrylonitrile monomer unit)
Ohkubo is directed to a binder, for a secondary battery, for high transition metal capturing ability (paragraph 11). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Ledwoch’s polymer to include ≥ 20 mass% (meth)acrylonitrile, as taught by Ohkubo, for high transition metal capturing ability.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over US20180287134A1 (Ledwoch), as applied to claim 1, and further in view of US20210167389A1 (Maeda).
Ledwoch teaches the limitations of claim 1 as described above. Ledwoch, however, fails to teach the following limitations of claims 5-6, which are taught by Maeda:
Claim 5
the polymer includes an aromatic monomer unit in a proportion of not less than 5 mass% and not more than 40 mass% (Table 1, example 4: 30 mass% styrene)
Claim 6
the polymer includes either or both of a conjugated diene monomer unit and an alkylene structural unit in a proportion of not less than 20 mass% and not more than 60 mass% (Table 1, example 4: 59 mass% 1,3-butadiene)
Maeda is directed to a battery binder composition for good battery characteristics (abstract). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Ledwoch’s polymer to include 30 mass% styrene (claim 5) or 59 mass% 1,3-butadiene (claim 6), as taught by Maeda, for good battery characteristics.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
1 https://www.chemicalbook.com/ChemicalProductProperty_EN_CB6330194.htm
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