DETAILED ACTION
This Office Action is responsive to the March 17th, 2026 arguments and remarks (“Remarks”).
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
Response to Amendment
In response to the amendments received on March 17th, 2026:
Claims 1, 5-6, and 8-12 are pending in the current application. Claim 1 has been amended. Claim 7 has been cancelled.
Claim 1 was amended to include subject matter from original Claim 7 based on the disclosure in Preparation Example 1 of the specification in which is the composition for the polymer (A) that did not include styrene.
No new matter has been introduced. Support for the amended limitations is found in the applicant’s disclosure including the originally filed claims and examples provided in the specification.
The new grounds of rejection are necessitated by amendment.
Status of Claims
Claims 1 and 5-12 stand rejected under 35 U.S.C. 103 as described below:
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (U.S. Pat. No. 20180351177 A1) as further evidenced by Kim et al. (U.S. Pat. No. 20130216906 A1). The rejections are withdrawn based on the amendment to Claim 1 and cancellation of Claim 7.
Claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (U.S. Pat. No. 20180351177 A1) as further evidenced by Kim et al. (U.S. Pat. No. 20130216906 A1) as applied to Claim 1 above, in view of Sasaki (E.P. Pat. No. 2752927 A1). The rejections are withdrawn based on the amendment to Claim 1.
Cited Prior Art
Previously Cited Kang et al. (U.S. Pat. No. 20180351177 A1) (“Kang et al.”)
Previously Cited Sasaki et al. (U.S. Pat. No. 20180069247 A1) (“Sasaki et al.”)
Previously Cited Kim et al. (U.S. Pat. No. 20130216906 A1) (“Kim et al.”)
Response to Arguments
Applicant’s arguments filed March 17th, 2026 have been fully considered as further described below:
Regarding Claim 1 as amended, applicant argues that the prior art does not disclose an example comprising the acrylamide of the claimed invention nor identify the technical significance or effect thereof (see pg. 6-7 of the “Remarks”).
"The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)" (MPEP 2144.07).
As applicant notes, the prior art reference Kang discloses that the monomer having a solubility in water of 100 g/L or less can include the claimed monomer, an alkyl (meth)acrylate having 1 to 10 carbon atoms such as methyl acrylate (para. 42), in which is provided within a list of suitable compounds. Applicant further points to Examples 9 and 10 of Kang to show that styrene is used instead of an acrylamide; however, applicant’s analysis inadequately narrows the scope of Kang’s disclosure. Kang does not require the use of styrene; and Examples 9-10 of Kang (as cited by the applicant) are only example embodiments. For example, styrene is not used in Example 2 of Kang. Therefore, Kang’s disclosure encompasses a case in which the monomer is equivalent to the claimed monomer absent evidence of unexpected results.
“Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results … See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)” (see MPEP 716.01(c)).
“An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)” (see MPEP 716.02(e)).
Evidence of unexpected results must be factually supported by an affidavit or declaration to be of probative value; further, the evidence of unexpected results must include a comparison with the closest prior art, and must be in commensurate with the scope of the claims.
Additionally, applicant’s arguments regarding the advantages of the claimed invention not being disclosed by the prior art, "the fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (see MPEP 2145(II)). The advantages (inhibiting side reactions and gas generation, improving long-term cycle life, enhancing durability) disclosed by the applicant would flow naturally from utilizing the binder composition as disclosed by the prior art.
Applicant further cites Federal Circuit Case, In re Stepan, in which is based on the consideration and persuasiveness of evidence provided on the record (see pgs. 8-9 of the “Remarks”); however, in this case, applicant has not adequately provided evidence to effectively rebut the obviousness rejection. Therefore, the results of the court case can not be correlated to the issues of the present application.
Therefore, applicant’s arguments are deemed unpersuasive. The new grounds of rejection are necessitated by amendment.
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.
Claims 1 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (U.S. Pat. No. 20180351177 A1) as further evidenced by Kim et al. (U.S. Pat. No. 20130216906 A1).
Regarding Claim 1, Kang et al. teaches a negative electrode binder composition for a secondary battery (para. 14) used in the formation of the negative electrode (para. 114). Kang et al. teaches a polymer (A) (referred to as copolymer B in the prior art) comprising a first monomer mixture in which can include:
1 to 60 parts by weight of a (meth)acrylamide group-containing monomer ((meth)acrylamide-based monomer), overlapping the claimed range of 50 to 90 parts by weight;
1 to 20 parts by weight of an unsaturated carboxylic acid-based monomer, overlapping the claimed range of 5 to 45 parts by weight;
10 to 97.9 parts by weight of a (meth)acrylic acid ester-based monomer such as methyl acrylate (para. 42) (inherently possessing a solubility of about 60 g/L in water, within the claimed range of 100 g/L or less), overlapping the claimed range of 1 to 25 parts by weight (para. 39).
As described, the monomer having a solubility in water of 100 g/L or less can include an alkyl (meth)acrylate having 1 to 10 carbon atoms such as methyl acrylate (para. 42). Further, the polymer (A) does not require styrene and Kang discloses a case in which the equivalent polymer (A) does not contain styrene (see Example 2 of Kang).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (see MPEP § 2144.05, I).
Further, the negative electrode binder composition can include a polymer (B) (referred to as copolymer A in the prior art) made of particles forming a particulate polymer (para. 32). The weight ratio of polymer (A) (copolymer B in the prior art) and the particulate polymer (B) (copolymer A in the prior art) is 1:99 to 99:1, overlapping the claimed range of 60:40 to 90:10 (para. 34) (see MPEP § 2144.05, I). One of ordinary skill in the art would be motivated to utilize the teachings of Kang et al. to prevent the binder composition from deteriorating high-temperature battery characteristics (para. 35).
As the occurrence of swelling at high temperatures can be inhibited and deteriorating high temperature characteristics can be prevented by adjusting said weight ratio of the polymer (A) (copolymer B) to polymer (B) (copolymer A), with said swelling inhibition and prevention of deteriorating high temperature characteristics increasing as the weight ratio is increased, the precise weight ratio would have been considered a known result effective variable by one having ordinary skill in the art at the time the invention was made.
Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the weight ratio of polymer A to polymer B of Kang et al. to obtain the desired balance between enhancing battery resistance and prevention of swelling and deteriorating high-temperature characteristics (Kang et al., para. 35) (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Additionally, a moisture content is a well-known property in which can be measured by drying a film of a negative electrode binder film for an electrode as further evident by Kim et al. (para. 75).
“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).”
“‘Products of identical chemical composition cannot 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. Id” (see MPEP 2112.01).
As prior art reference Kang et al. teaches a binder composition (polymer A and particulate polymer B mixed in a ratio as claimed, utilizing a monomer having low solubility) substantially identical to the claimed composition, one of ordinary skill in the art would expect to observe a moisture content within the claimed range of 3.1 wt.% to 8 wt.%. Further, the moisture content does not further limit the structure or manufacturing process of applicant’s invention, but rather defines a property and measurement method of said property of the claimed composition; therefore, as the prior art teaches the same composition, one would expect to observe said moisture content.
One of ordinary skill in the art would have been motivated to utilize the teachings of Kang et al. to provide a binder composition for the negative electrode active material capable of enhancing performance of a secondary battery and exhibiting improved adhesion (para. 8).
Regarding Claim 5, Kang et al. teaches all claim limitations as applied to Claim 1 above. Kang et al. teaches a particulate polymer (B) (copolymer A) with an average particle diameter of 50 nm to 300 nm (0.05 µm to 0.3 µm), within the claimed range of 1 µm or less (para. 32). One of ordinary skill in the art would be motivated to utilize the teachings of Kang et al. to provide the binder composition with improved adhesion (para. 32).
Regarding Claim 6, Kang et al. teaches all claim limitations as applied to Claim 1 above. Kang et al. teaches the particulate polymer (B) (copolymer A) being a polymer of a second monomer mixture containing a conjugated diene-based monomer, a vinyl-based monomer (such as styrene in which is aromatic, para. 44), and an unsaturated carboxylic acid-based monomer (para. 37). One of ordinary skill in the art would be motivated to utilize the teachings of Kang et al. to provide a binder composition for the negative electrode active material capable of enhancing performance of a secondary battery and exhibiting improved adhesion (para. 8).
Claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (U.S. Pat. No. 20180351177 A1) as further evidenced by Kim et al. (U.S. Pat. No. 20130216906 A1) as applied to Claim 1 above, in view of Sasaki (E.P. Pat. No. 2752927 A1).
Regarding Claim 8, Kang et al. teaches all claim limitations as applied to Claim 1 above.
Kang et al. does not teach a weight average molecular weight of the polymer (A) of 100,000 g/mol to 2,000,000 g/mol.
Sasaki teaches a weight average molecular weight of a binder polymer of 10,000 [g/mol] to 1,000,000 [g/mol] (para. 41).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polymer (A) of Kang et al. to include a molecular weight between 10,000 g/mol and 1,000,000 g/mol as taught by Sasaki, overlapping the claimed range of 100,000 g/mol to 2,000,000 g/mol (see MPEP § 2144.05, I). One of ordinary skill in the art would be motivated to utilize the molecular weight specified by Sasaki to provide a negative electrode with improved strength and dispersibility of the negative electrode active material (Sasaki, para. 41).
Regarding Claim 9, Kang et al. teaches all claim limitations as applied to Claim 1 above. Kang et al. teaches a negative electrode active material layer comprising the binder composition (para. 108).
Kang et al. does not teach the negative electrode active material layer containing a silicon-based negative electrode active material.
Sasaki teaches a silicon-based negative electrode active material (para. 132).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the negative electrode active material layer of Kang et al. to include a silicon-based negative electrode active material as taught by Sasaki. One of ordinary skill in the art would be motivated to perform the described modification as Sasaki teaches an active material containing silicon provides advantages such as increasing the electric capacity of the secondary battery (para. 132).
Regarding Claim 10, Kang et al. is modified by Sasaki teaching all claim limitations as applied to Claim 9 above. Kang et al. teaches the negative electrode active material slurry or layer comprising graphite as the negative electrode active material in which is a material other than a silicon-based negative electrode active material (para. 108).
Regarding Claim 11, Kang et al. is modified by Sasaki teaching all claim limitations as applied to Claim 10 above.
Kang et al. does not teach a weight percentage of the silicon based negative electrode active material.
Sasaki further teaches a silicon- and carbon- based negative electrode active material (para. 133). The weight ratio of the silicon-based negative electrode material to the graphite material (carbon active material) is 5:95 to 50:50 (5 wt.% to 50 wt.% of silicon- based) of the total negative electrode active material (para. 143), within the claimed range of 5 wt.% or greater.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the negative electrode active material of Kang et al. to include a silicon- based negative electrode active material as taught by Sasaki included in an amount of 5 wt.% to 50 wt.% of the total active material, within the claimed range of 5 wt.% or greater. One of ordinary skill in the art would be motivated to perform the described modification as Sasaki teaches a weight ratio as described achieving a balance between high capacity and improved cycle property (para. 143).
Regarding Claim 12, Kang et al. is modified by Sasaki teaching all claim limitations as applied to Claim 9 above. As applied to claim 1, Kang et al. teaches a binder composition for a secondary battery (para. 14) in which the secondary battery can be a lithium secondary battery (para. 2). One of ordinary skill in the art would be motivated to utilize the teachings of Kang et al. to provide a binder composition for the negative electrode active material capable of enhancing performance of a secondary battery and exhibiting improved adhesion (para. 8).
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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/C.R.D./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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