DETAILED ACTION
This Office Action is responsive to the December 1st, 2025 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/20/2025 has been entered.
Response to Amendment
In response to the amendments received on December 1st, 2025:
Claims 1 and 5-12 are pending in the current application. Claim 1 has been amended. Claims 2-4 have been cancelled.
Claim 1 was amended to further limit a moisture content to a range of 3.1 wt.% to 8 wt.%.
No new matter has been introduced. Support for the amended limitations is found in the applicant’s disclosure including the originally filed claims and Table 1 of applicant’s specification.
The new grounds of rejection are necessitated by amendment.
Status of Claims
Claims 1 and 3-12 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). The rejections are withdrawn based on the amendment to Claim 1.
Claims 3-4 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (U.S. Pat. No. 20180351177 A1) 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 The rejections are withdrawn based on the amendment to Claim 1.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.”)
Kim et al. (U.S. Pat. No. 20130216906 A1) (“Kim et al.”)
Response to Arguments
Applicant’s arguments filed December 1st, 2025 have been fully considered as further described below:
Regarding Claim 1 as amended, applicants argues that the moisture content as claimed is not taught by Sasaki (see pgs. 6-7 of the “Remarks”). Applicant’s arguments have been considered but are moot because the new grounds of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. As the applicant asserts that the specific binder composition and the use of monomers having low solubility in water forms a film that “fundamentally suppresses moisture ingress” and provides the claimed moisture content (para. 2 of pg. 6 of the “Remarks”) as further supported by the specification (para. 15, 173), the moisture content is deemed an inherent property of the binder composition in which is taught by primary reference Kang et al.; therefore, Sasaki is not relied upon for said teachings (see rejection below).
Further, applicant argues that the claimed invention’s use of monomers with low water solubility (defined by a solubility of 100 g/L or less, para. 27 of applicant’s specification) is a brand new design concept; however, Kang et al. teaches a negative electrode binder composition comprising a methyl acylate monomer (para. 42) in which inherently possesses a solubility of approximately 60 g/L, meeting the definition of low solubility provided by applicant’s disclosure. Therefore, the concept is not deemed as new.
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.
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 5-7 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).
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).
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.
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).
Regarding Claim 7, Kang et al. teaches all claim limitations as applied to Claim 1 above. As applied to claim 1, 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). 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
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/C.R.D./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729