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 12/19/2025 has been entered. Claim 1 has been amended, Claim 4 has been canceled and Claims 1-3 and 5-11 are pending.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ozaki et al (KR 20200028854 A - Machine Translation), hereinafter “Ozaki” in view of Pan et al. (WO2018032665A1 – (US 20210189037 A1 referenced for citations), hereinafter “Pan”. Ozaki et al. and Pan et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely electrode binder compositions.
In regard to Claim 1-3 and 5-6 Ozaki et al. discloses a binder composition comprising a water-compatible copolymer (Ozaki, Paragraphs [13-14]). Ozaki et al. also discloses wherein the water-compatible copolymer comprises a structural unit (a) that is derived from an acid group-containing monomer comprising carboxylic, sulfonic or phosphoric acids or their salts included in 1-30 mol% (Ozaki, [52, 54, 137]) and wherein the water-compatible copolymer also comprises a structural unit (b) that is derived from amide group at 20-70 mol% (Ozaki, [136]) and a structural unit (c) that is derived from nitrile group included at 10-45% (Ozaki, [138]), which overlaps the claimed ranges and which does not require a structural unit derived form an ester group-containing monomer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. 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.
Further, Ozaki et al. discloses one embodiment wherein the content of compound (A) is up to 25 mass% of the binder composition and may further include additives in addition to compound A which are in a range of 0-5% which brings the solid content of the binder composition to 30% and a liquid content of 70% (Ozaki, [101, 122-124]). Ozaki et al. also discloses drying the binder composition after polymerization (Ozaki, [208, 219]), which would reasonably reduce the liquid content below 70% and provide a binder composition with liquid content below 70%.
Pan et a. discloses a binder composition comprising a water-compatible copolymer further comprising an acid group containing monomer (carboxylic acid), an amide containing monomer, and a nitrile group containing monomer (Pan, Examples 3-4, and 6) wherein a process step for producing the binder composition is obtained by means of precipitation, filtration, washing, drying, crushing and sieving in sequence (Pan, Paragraphs [0023-0024, 0051-0052]), which is substantially similar to the process described in the original specification that produces a binder content with a liquid content less than 1% (Original Specification, Paragraph [0115]). Pan et al. also discloses the state of the binder derived from the examples being described as a powder (Pan, Paragraph [0072]). Thus, by definition the liquid content of the binder composition is less than 50% or less than 25% or less than 1% by weight, based on the total weight of the binder composition. Pan et al. later discloses using the powder to dissolve in NMP and form an electrode slurry (Pan, Example 8). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to perform the routine process step of converting the binder composition to a dry powder as taught in Pan et al. as doing so would be obvious to try for the skilled artisan given the predictable results and as doing so would amount to nothing more than a variation of it for use the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
In regard to Claims 7-8, Ozaki in view of Pan et al. discloses the binder composition according to claim 1. Ozaki et al. also discloses a specific example wherein the liquid content is derived from an aqueous solvent comprising water (Ozaki, Example 1).
In regard to Claims 9-11, Ozaki in view of Pan et al. discloses the binder composition according to claim 1. Ozaki et al. discloses a water compatible poly(meth)acrylamide with an acid group, amide group and nitrile group wherein the weight-average molecular weight of the water-compatible copolymer in the binder composition is in a preferable range of about 350,000 to 6,600,000 (Ozaki, Paragraph [106]), which overlaps the claimed range. Ozaki et al. also discloses wherein the number-average molecular weight of the water-compatible copolymer in the binder composition is in a preferable range of about 10,000 to 6,000,000 (Ozaki, Paragraph [107]), which overlaps the claimed range and from that information a range of PDI can be calculated which is equivalent to 1 to 35, which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide a binder composition with a molecular weight within the ranges taught in Ozaki as the binder composition of Pan et al., as doing so would amount to nothing more than selecting the overlapping portion of the ranges disclosed by the reference, which has been held to be a prima facie case of obvious. 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.
Terminal Disclaimer
The terminal disclaimer filed on 12/19/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 17/927,750 and U.S. Patent No. 12160002 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection was changed from a 35 U.S.C 102(a)(1) rejection to a 35 U.S.C. 103 rejection and relies on a different primary reference than the rejection of record Ozaki et al. (KR 20200028854 A - Machine Translation). Ozaki in view of Pan et al. discloses all of the limitations of amended claim 1 as discussed above.
In regard to applicants’ argument against Pan et al. in view if Ozaki et al. in view of the previous 35 U.S.C 103 rejection the arguments have been fully considered but they are not persuasive. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Further, while Ozaki et al. discloses an optional ester group containing compound examples 1-8 do not comprise an ester group containing compound which by definition are water-compatible copolymers that do not comprise a structural unit derived from an ester group-containing monomer. Further still, the current application discloses structural unit (c) derived from an ester group containing monomer and that “in some embodiments, the ester group-containing monomer is Ci-C20 alkyl acrylate, Ci-C20 alkyl methacrylate, cycloalkyl acrylate, or combinations thereof.” (Original Specification, [0087, 0089]). Lastly, in regard to the liquid content disclosed in Ozaki, this has been addressed in the 35 U.S.C. rejection above and would fall within the claimed ranges in view of Pan et al.
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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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725