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 .
Response to Amendment
The amendment filed on 07/20/2026 does not place the application in condition for allowance.
In view of the amendment to claim 1 the rejection of claims 1-5 and 7-10 under 35 U.S.C. 103 is withdrawn.
New analysis follows.
Response to Arguments
Applicant argues claim 1 is commensurate with unexpected binding force shown in the examples in Table 1, however these examples show a wide range of Hazen colors(36 to 312) with similar binding forces (examples 1-4) where only example 3(production example 4 polymer) is commensurate in scope with the newly amended claims including divinyl crosslinking agents, epoxy crosslinking agents, and metal crosslinking agents. Comparative examples 1 and 2 also do not have the claimed crosslinking agents. Furthermore, comparative example 1 changes one of the monomers as well as the polymerization catalyst, making the cause of the significant change in Hazen color and binding force difficult to ascertain and compare to the other examples. Comparative example 2 shows a completely different polymer with no crosslinking mentioned with a much higher Hazen Color but only a slightly lower binding force. Given the lack of crosslinking agent and the number of variables changing in each of the examples and comparative examples the arguments for unexpected results are not found persuasive.
Applicant also argues that the Hazen color is not necessarily inherent in Mukai however, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Furthermore, applicant argues the Hazen color is dependent on a number of variables including crosslinking, monomer residues and other operations during the production process however it has not been shown what structure or operation within the polymer of modified Mukai, which meets all the limitations of claim 1, is not expected to be within the identified Hazen color range.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 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 considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mukai et. al. (US20150280237A1, in IDS) in view of Oshima et. al. (US20220336815A1).
Regarding claims 1 and 10, Mukai discloses a mixture comprising a binder for a secondary battery (¶[0045]) comprising a polymer compound, wherein the polymer compound contains an acrylic repeating unit (¶[0131]-[0133] see methyl acrylate copolymer), wherein the polymer compound contains
a) a repeating unit represented by formula (1):
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64
107
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wherein each R1 is independently a hydrogen atom and each R2 is an ONa group (see saponification step with sodium hydroxide producing the copolymer of First Formula with sodium in place of potassium (¶0050] and [0067]) and
b} a repeating unit represented by formula 2:Formula 2
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85
156
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wherein a molar ratio of the monomer forming the repeating unit represented by formula (1) to the monomer forming the repeating unit represented by formula (2) is 5/95 to 95/5(¶[0052]),
and inherently a 3% by mass aqueous solution of the polymer compound has a Hazen color of 10 or more and 400 or less as it is the same material (vinyl alcohol/acrylic acid copolymer) produced by the same method as presented in the instant specification (¶[0072] of specification) with a Hazen color of 53 (¶[0083], Table 1 of specification).
Regarding 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. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP §2144.05.
Mukai does not disclose a first negative electrode active material consisting of silicon monoxide, and a second negative electrode material consisting of artificial graphite, wherein a mass ratio of the first negative electrode active material to the second negative electrode active material is 5/95 to 95/5, and wherein the polymer compound has a cross-linked structure formed by a crosslinking agent selected from the group consisting of divinyl crosslinking agents, epoxy crosslinking agents, metal crosslinking agents and a combination thereof.
Oshima, related to secondary battery electrode materials, teaches a polyacrylic acid and polyvinyl alcohol based binder(¶[0238]) which may be crosslinked with an epoxy(¶[0103] or metal(¶[0073]) crosslinking agent and is useful to prepare a negative electrode containing artificial graphite and SiOx in a mass ratio of 5/95 to 95/5 where the SiOx may be silicon monoxide (SiO, ¶[0165]) and that this structure improves strength and flexibility of the electrode(¶[0103]).
One of ordinary skill in the art would have recognized using the crosslinked binder of Mukai in the negative electrode of Oshima would improve strength and flexibility of the electrode.
Therefore, it would have been obvious to have used the crosslinked binder of Mukai in the negative electrode of Oshima to improve strength and flexibility of the electrode.
Regarding claims 7-9, Oshima further discloses a lithium-ion secondary battery comprising an electrode (¶[0033]) comprising the mixture of claim 1.
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 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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/K.J.A./Examiner, Art Unit 1726 /RYAN S CANNON/Primary Examiner, Art Unit 1726
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