DETAILED ACTION
Pending Claims
Claims 1-19 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
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.
Election/Restrictions
Applicant’s election of Group I (claims 1-8 & 14-19) in the reply filed on October 27, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9-13 (Group II) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 27, 2025.
Applicant’s election of:
A) R2 is hydrogen,
B) R2 is hydrogen,
C) R3 is methyl and R4 is hydrogen,
D) R4 is hydrogen, Mn+ is sodium ion, and n is 1, and
E) (3-aminopropyl) triethoxysilane,
in the reply filed on October 27, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). However, the election of species requirement has been withdrawn after further consideration.
Claim Rejections - 35 USC § 103
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 1-8 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto (JP 52-014689 A) in view of Nagasuna et al. (US Pat. No. 6,297,319) and Ito et al. (US Pat. No. 4,755,560).
Regarding claims 14 and 16-19, Fujimoto discloses: (14) a method of preparing a binder, the method comprising the steps of:
step (A) saponifying a copolymer comprising a repeating unit (a) of the following Chemical Formula 1 and a repeating unit (c) of the following Chemical Formula 3 to prepare a saponified copolymer:
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136
210
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162
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(Practical Example 1 on page 5 of the translation: see copolymer of vinyl acetate and methyl acrylate partially saponified with NaOH solution); and
step (B) reacting the saponified copolymer and crosslinking agent to perform crosslinking (Practical Example 1 on page 5 of the translation: see subsequent reaction with ethylene glycol diglycidyl ether; see also third full paragraph on page 4 of the translation); and
(19) wherein the crosslinking agent is comprised at 0.1 to 20 wt% with respect to the binder (Practical Example 1 on page 5 of the translation: see 0.1 g ethylene glycol diglycidyl ether per 10 g of partially saponified copolymer; see also fourth full paragraph on page 4 of the translation).
Fujimoto fails to explicitly disclose: (14) wherein the saponified copolymer comprises the repeating unit (a) of the following Chemical Formula 1, a repeating unit (b) of the following Chemical Formula 2, the repeating unit (c) of the following Chemical Formula 3, and a repeating unit (d) of the following Chemical Formula 4:
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136
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108
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160
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134
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,
wherein: R1 and R3 are independently substituted or unsubstituted hydrocarbyl having 1 to 10 carbon atoms; R2 and R4 are independently hydrogen or substituted or unsubstituted hydrocarbyl having 1 to 10 carbon atoms; Mn+ is a cation having an oxidation number of n except for a hydrogen ion; and n is an integer of 1 to 3. However, the partial saponification (see 90 mol%) in “Practical Example 1” would have converted most of the vinyl acetate units (of Formula 1) to vinyl alcohol units (of Formula 2) and most of the methyl acrylate units (of Formula 3) to acrylic salt units (of Formula 4).
Fujimoto performs crosslinking in the exemplary embodiment with an epoxy crosslinker (see Practical Example 1 on page 5 of the translation: see ethylene glycol diglycidyl ether). The general teachings of Fujimoto contemplate the use of any crosslinking agent that has two or more functional groups capable of reacting with a hydroxyl group or a carboxyl group (see second and third full paragraphs on page 4 of the translation). However, they fail to explicitly disclose: (14) a silane-based crosslinking agent; (16) wherein the silane-based crosslinking agent is represented by the following Chemical Formula 5:
[Chemical Formula 5]
(R5O)xSi(R6)y
(see claim for variable limitations); (17) wherein the silane-based crosslinking agent is one or a combination of two or more selected from the group consisting of (see claim for list); and (18) wherein the silane-based crosslinking agent is one or a combination of two selected from the group consisting of (3-aminopropyl)triethoxysilane and [3-(2- aminoethylamino)propyl] trimethoxysilane.
The background portion of Nagasuna et al. establishes that “silane coupling agents” (see column 1, lines 45-65) are recognized in the art as suitable crosslinking agents for the saponified copolymers disclosed by Fujimoto (see column 1, lines 19-44, particularly lines 23-24). These include “silane coupling agents” disclosed in JP-A-61-211305 (based on application no. JP 60-52357) and JP-A-61-264006 (based on application no. JP 60-104715), which correspond to Ito et al. (US Pat. No. 4,755,560) (claiming foreign priority to JP 60-52357 & JP 60-104715). The “silane coupling agents” of Ito et al. include those set forth in claims (16-18), including (3-aminopropyl)triethoxysilane (gamma-aminopropyltriethoxysilane) and [3-(2-aminoethylamino) propyl] trimethoxysilane (gamma-(2-aminoethyl)aminopropyltrimethoxysilane) (see column 3, line 67 through column 4, line 42). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the binder of Fujimoto with the instantly claimed silane-based crosslinking agent because: (a) Fujimoto performs crosslinking in the exemplary embodiment with an epoxy crosslinker; (b) the general teachings of Fujimoto contemplate the use of any crosslinking agent that has two or more functional groups capable of reacting with a hydroxyl group or a carboxyl group; (c) the background portion of Nagasuna et al. establishes that “silane coupling agents” are recognized in the art as suitable crosslinking agents for the saponified copolymers disclosed by Fujimoto; (d) the “silane coupling agents” of Nagasuna et al. include “silane coupling agents” disclosed in JP-A-61-211305 (based on application no. JP 60-52357) and JP-A-61-264006 (based on application no. JP 60-104715), which correspond to Ito et al. (US Pat. No. 4,755,560) (claiming foreign priority to JP 60-52357 & JP 60-104715); (e) the “silane coupling agents” of Ito et al. include those set forth in claims (16-18), including (3-aminopropyl)triethoxysilane (gamma-aminopropyltriethoxysilane) and [3-(2-aminoethylamino) propyl] trimethoxysilane (gamma-(2-aminoethyl)aminopropyl trimethoxysilane); and (f) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Lastly, the recitation “for a secondary battery” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In the instant case, the preamble merely recites the intended use of the binder produced by the method, wherein the prior art can meet this future limitation by merely being capable of such intended use. In the instant case, the binder produced by the method resulting from the combined teachings of {Fujimoto, Nagasuna et al. & Ito et al.} appears to be capable of performing this intended use because it obviously satisfies all of the material/chemical limitations of the claimed invention.
Regarding claim 15, the combined {Fujimoto, Nagasuna et al. & Ito et al.} are as set forth above and incorporated herein. The primary teachings of Fujimoto fail to explicitly disclose: (15) wherein a degree of saponification in step (A) is more than 0.45 and less than 1.0, and the degree of saponification is calculated by (b+d)/(a+b+c+d), in which a, b, c, and d are mole fractions of the repeating units (a), (b), (c), and (d) in the saponified copolymer. Rather, the exemplary embodiment of Fujimoto discloses a saponification degree of 90 mol%, determined from the alkali (NaOH) consumption. This appears to satisfy the instantly claimed degree of saponification.
Furthermore, the general teachings of Fujimoto contemplate a general range where 30 mol% or more of the vinyl ester (vinyl acetate) units and 30 mol% or more of the unsaturated carboxylic acid ester (methyl acrylate) units are saponified (see second full paragraph on page 3 of the translation). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05. Accordingly, the general range of Fujimoto appears to obviously embrace the instantly claimed degree of saponification.
Therefore if not satisfied by the primary teachings of Fujimoto, the method resulting from the combined teachings of {Fujimoto, Nagasuna et al. & Ito et al.} would have obviously embraced the instantly claimed degree of saponification because: (a) the general teachings of Fujimoto contemplate a general range where 30 mol% or more of the vinyl ester (vinyl acetate) units and 30 mol% or more of the unsaturated carboxylic acid ester (methyl acrylate) units are saponified; and (b) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claims 1 and 3-7, the combined teachings of {Fujimoto, Nagasuna et al. & Ito et al.} are as set forth above and incorporated herein to obviously satisfy the binder of claims (1 & 3-7).
Regarding claim 2, the combined teachings of {Fujimoto, Nagasuna et al. & Ito et al.} are as set forth above and incorporated herein. The exemplary embodiment in the primary teachings of Fujimoto features a partially saponified copolymer of vinyl acetate and methyl acrylate. Prior to saponification, the copolymer has a methyl acrylate content of 62 mol% (and a vinyl acetate content of 38 mol%) (see page 5 of the translation). This corresponds to (a+b):(c+d) of 0.38:0.62, which satisfies: (2) wherein (a+b):(c+d) of the copolymer is 0.05 to 0.95:0.95 to 0.05, in which a, b, c, and d are mole fractions of the repeating units (a), (b), (c), and (d), respectively in the copolymer.
Regarding claim 8, the combined teachings of {Fujimoto, Nagasuna et al. & Ito et al.} are as set forth above and incorporated herein. They fail to disclose: (8) wherein the binder is a binder for a lithium secondary battery negative electrode. However, it has been found that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the binder resulting from the combined teachings of {Fujimoto, Nagasuna et al. & Ito et al.} appears to be capable of performing this intended use because it obviously satisfies all of the material/chemical limitations of the claimed invention.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
January 28, 2026