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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/06/2026 has been entered.
Response to Amendment
The amendment filed on 01/06/2026 does not place the application in condition for allowance.
In view of the amendment to claim 1 the rejection of claims 1-5 and 7-9 under 35 U.S.C. 102 is withdrawn. In view of them amendment to claim 1 the rejection of claim 6 under U.S.C 103 is withdrawn.
New analysis follows.
Response to Arguments
Applicant argues Mukai provides no basis for inclusion of formula (1) and formula (2), let alone that 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, and wherein a 3% by mass aqueous solution of the polymer compound has a Hazen color of 10 or more and 400 or less however as shown in the rejection of claim 1 below Mukai discloses a mixture meeting these claim limitations and while Mukai does not directly discuss use within a negative electrode, inclusion of this type of mixture is known within negative electrodes(see Son et. al. (US20120070737A1) in the rejection of claim 1).
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, 3, and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mukai et. al. (US20150280237A1, in IDS) in view of Son et. al. (US20120070737A1).
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.
But does not disclose the binder the mixture is for a negative electrode and contains a negative electrode active material.
Son, related to secondary battery electrode materials, teaches a crosslinked polyacrylic acid and polyvinyl alcohol binder(¶[0083]) which is useful to prepare an electrode such as a positive electrode or a negative electrode(¶[0044]) and that the mixture for the negative electrode may contain a negative electrode active material(¶[0016]).
On of ordinary skill in the art would have recognized using the binder of Mukai in the negative electrode of Son would result in a functional negative electrode.
Therefore it would have been obvious to have combined the binder of Mukai with the negative electrode active material of Son to result in a functional negative electrode.
The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding claim 3, modified Mukai discloses a mixture for a secondary battery according to claim 1, wherein the polymer compound has a crosslinked structure (¶0049]).
Regarding claim 5, Mukai discloses a mixture according to claim 1, and Son further discloses wherein the active material contains a carbon material (¶[0051]).
Regarding claim 6, modified Mukai discloses a mixture for a secondary battery according to claim 1, and Son further discloses the active material contains silicon or silicon oxide(¶[0016]).
Regarding claims 7-9, Son further discloses a lithium-ion secondary battery comprising an electrode (¶[0094]-[0096]) comprising the mixture of claim 1.
Conclusion
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/K.J.A./Examiner, Art Unit 1726 /RYAN S CANNON/Primary Examiner, Art Unit 1726