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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/20/2026 has been entered.
Response to Amendment
The amendment filed on 05/20/2026 has been entered. Claim 1 has been amended, 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 Aida et al. (JP 2018006333 A – Machine Translation referenced for citations), hereinafter “Aida”. Ozaki et al. and Aida 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]). While 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% it is silent as to a binder composition with a liquid content below 67%.
Aida et a. discloses a binder composition comprising a water-compatible copolymer (Aida, Abstract), wherein a process step for producing the binder composition is obtained by means of spray drying. Aida et al. also discloses the state of the binder derived from the spray drying technique being described as a powder (Aida, [43-44]). Thus, by definition the liquid content of the dry powdery 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. Aida et al. later discloses using the powder to form an electrode slurry (Aida, Claims 3 and 5) and that a dry powder form binder is easily re-dissolved in water, which provides a uniform aqueous binder solution and has the advantages of long-term storage being possible, and transportation costs are superior (Aida, [43-44]). 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 process step of converting the binder composition of Ozaki to a dry powder form as taught in Aida et al. as doing so would give the skilled artisan the reasonable expectation of achieving the benefits of a dry powder biner composition taught in Aida and as doing so would amount to nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claims 7-8, Ozaki in view of Aida 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 Aida 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 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.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection relies on a different secondary reference than the rejection of record Aida et al. (JP 2018006333 A). Ozaki in view of Aida et al. discloses all of the limitations of amended claim 1 as discussed above and applicants’ arguments are directed to the combination of Ozaki and Pan et al.
In regard to applicants’ argument that 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 and drying 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 Aida et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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/K.M.O./Examiner, Art Unit 1725
/JONATHAN CREPEAU/Primary Examiner, Art Unit 1725
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