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
Upon entry of the amendment filed on 18 February 2026, Claim(s) 1-6 is/are amended and Claim(s) 7-20 is/are added. The currently pending claims are Claims 1-20.
Based on applicants’ remarks and amendments (e.g. the specific conductive material), the 112, 102 and 103 rejections are withdrawn. However, new grounds of rejections are provided necessitated by the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a formula with a R variable; however, the R variable is not defined. Claims 2-20 are dependent on claim 1 thus inherit the same deficiency.
Claim 16 recites various conductive material components different from the components recited in claim 1 – thus leading to an ambiguity regarding the claimed limitation.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-12, 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ochi in view of Lee (KR-20160115327-A, a translation is provided).
Claims 1, 7, 8 and 16: Ochi discloses a conductive paste comprising a conductive material, a solvent, a polyvinyl acetal resin and cellulose resin (abs, pg. 1-5 and Tables 1-3 with accompanying text). See the tables for various loading amounts. The difference between the Ochi reference and the claimed subject matter is that the Ochi reference does not disclose the conductive material comprising carbon black, carbon nanotubes, carbon nanofibers, graphite, graphene, and/or hard carbon. The Ochi reference teaches a metal powder conductive material such as nickel or aluminum and the claim calls for the conductive material comprising carbon black, carbon nanotubes, carbon nanofibers, graphite, graphene, and/or hard carbon. The secondary reference of Lee discloses a slurry with polyvinyl acetal, a cellulose resin and a conductive material comprising “natural graphite, artificial graphite, carbon black, acetylene black, ketjen black, channel black, Or a mixture of two or more selected from the group consisting of carbon black, carbon black, thermoplastic black, carbon black, carbon fiber, metal fiber, carbon fluoride, aluminum, nickel powder” and the substitution of art-recognized equivalents. Thus, it would have been well within the purview of a skilled artisan at the time of the invention to substitute the carbon-based conductive material of Lee in the composition of Ochi since they are recognized in the art as structural and chemical equivalents. See MPEP 2144.
Claims 1, 3, 7, 8 and 19: The Morita and Lee reference(s) disclose(s) the claimed invention but do(es) not explicitly disclose the claimed degree of polymerization range and the n variable. It is noted that the claimed polymerization degree and number of functional group are construed as a result-effective variable, i.e., a variable which achieves a recognized result. Here, Ochi discloses optimizing the polymerization degree to improve the dispersion, the flexibility, the adhesiveness and/or printability (pg. 4). Given that the Ochi and Lee references disclose a similar composition, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. the polymerization degree, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claim 4: Ochi and Lee disclose various MW values for the cellulose resin such as 23K (Ochi: pg. 3, 4, 8 and Tables 1-3 with accompanying text).
Claims 5 and 6: Ochi and Lee disclose mixing the components with a binder and applying to an electrode substrate for lithium batteries (Ochi: pg. 6-8 and Lee: pg. 6-8). It is noted that the phrase “for a lithium ion secondary battery” is construed as an intended use of the electrode thus the disclosed electrode needs only be able to employed in the claimed implementation.
Claims 9-12: Ochi and Lee disclose the claimed dispersant such as polyethylene, PVA and hydroxyethyl cellulose resin (Ochi: pg. 4 & Lee: pg. 3).
Claims 14, 15, 18 and 20: Ochi and Lee disclose the claimed invention but do not explicitly disclose the claimed loading amounts. It is noted that the claimed loading amount is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Here, Ochi and Lee disclose various loading amounts such as 1-30 wt. % and optimizing the amount to improve the dispersion, conductivity and/or printability (Ochi: pg. 4 and examples & Lee: pg. 3 and examples). Given that the Ochi and Lee references disclose a similar composition, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. loading amounts, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claim 17: Ochi and Lee disclose a diameter of less than 100 nm (Ochi: pg. 2). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. size of the particles, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claim(s) 2 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ochi and Lee as applied to claim 1 above, and further in view of Takebayashi (US20160293936A1, cited in the IDS).
The Ochi and lee references disclose the claimed invention but do not explicitly disclose the feature of the conductive material being carbon black with the size of less than 30 nm and DBP value of 16-250 ml/100g and the NMP dispersion medium. It is noted that the Ochi and Lee references disclose the carbon black conductive material and known dispersion medium and the claim(s) call(s) for a specific carbon black and NMP. In an analogous art, the Takebayashi reference discloses that conductive materials such as a carbon black with a size of 1-200 nm and DBP value of 16-0-220 ml/100g and an NMP dispersion medium are well known in the art (¶ 39-42, 66 and 67 and examples). In particular, Takebayashi discloses the benefit of good dispersion, enhanced capacity and/or conductivity (abs, ¶6, 19, 39-42 and examples). One of ordinary skill in the art would have recognized that applying the known technique and component of Takebayashi to the teachings of Ochi and Lee would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 7-9, filed 18 February 2026, with respect to the 112, 102 and 103 rejections have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant's arguments filed 18 February 2026 regarding the Ochi reference have been fully considered but they are not persuasive.
Applicant argues that Ochi does not disclose the carbon based conductive material and dispersant and requires a dielectric powder (pg. 8-10).
The examiner respectfully notes that the Lee secondary reference is relied upon to teach that metallic/Ni powder can be substituted with carbon-based conductive material and the specific dispersant (see above). Further, Ochi discloses the dielectric powder being an optional component (pg. 3).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. TACHIBANA discloses a slurry with carbon black, butyral-type polymer, cellulose polymer and NMP.
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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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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