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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-5, in the reply filed 7/28/2025 is acknowledged.
Claims 6-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 16 objected to because of the following informalities: In claim 16, the word “acrylamide” is misspelled. Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-5 and 10-20 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sonobe et al. (USPN 9,711,785).
In Col. 2, Lines 9-13, Sonobe et al. discloses a negative electrode slurry composition comprising a composition of a styrene-butadiene copolymer binder a having a glass transition temperature (measured in dynamic viscoelasticity) with a single peak at -30°C to 60°C, from 13 to 58 % of a conjugated diene polymer (1,3-butadiene) and 42 to 58% of an aromatic vinyl compound (styrene), with 0.1 to 6 parts by mass of an unsaturated carboxylic acid (itaconic acid), in a liquid medium (water dispersion) (See Col. 3, lines 25-37 and Col. 4, lines 60-63); wherein the number average particle size of the obtained copolymer is preferably 50 to 500 nm (Col. 5, lines 13-18).
As long as the total amount of the styrene unit and 1,3-butadiene unit exceeds 50% by mass of the monomer units of the polymer, and the unsaturated carboxylic acid is 0.1 to 6 parts by mass of the monomer units, in Col. 4, lines 15-45, Sonobe et al. teach other copolymerizable monomers in the styrene-butadiene-unsaturated carboxylic acid copolymer to include acrylonitrile-based monomers; (meth)acrylamide-based monomers; sulfonic acid group-containing monomers; and unsaturated carboxylic acid esters.
In example 1, Sonobe et al. teach other copolymerizable monomers in the styrene-butadiene copolymer to include 0.95 parts of 2-hydroxyethyl acrylate as a hydroxyl group-containing monomer.
Sonobe et al. further discloses that the binder comprising this composition has a glass transition temperature with a single peak at 10°C (Col. 22, Lines 12-14).
While Sonobe et al. doesn’t explicitly disclose the claimed relationship between tanꟘ(100°C)/tanꟘ(Tp), Sonobe et al. discloses a binder with an equivalent composition to that of the instant invention, and with an equivalent glass transition temperature (single peak at 10°C), and thus it is reasonable that the binder composition of Sonobe et al. would satisfy the claimed relationship, as the composition of Sonobe et al. is essentially the same as the claimed composition. The USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort, and in any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al , 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Response to Arguments
Applicant's arguments filed 1/28/26 have been fully considered but they are not persuasive.
As stated above, while Sonobe et al. doesn’t explicitly disclose any information regarding the tan δ at 100°C, i.e., tan δ (100°C) as claimed Sonobe et al. discloses a binder with an equivalent composition to that of the instant invention, and with an equivalent glass transition temperature (single peak at 10°C), it remains reasonable that the binder composition of Sonobe et al. would satisfy the claimed relationship, as the composition of Sonobe et al. is essentially the same as the claimed composition. The USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort, and in any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al , 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the high degree of crosslinking compared to Sonobe's styrene-butadiene copolymer) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification, like the degree of crosslinking, are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding the argument that “Sonobe is open to an unsaturated carboxylic acid, [but] Sonobe does not specifically require an unsaturated carboxylic acid”, it is well settled that anticipatory teachings are not limited to any particular embodiment/example. In re Boe, 148 USPQ 507 (CCPA 1966). Disclosed examples and preferred embodiments (even if the embodiments tested by appellant were preferred) do not constitute a teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). The claimed styrene-butadiene copolymer with 0.1 to 6 parts by mass of an unsaturated carboxylic acid is still taught by Sonobe et al. This is clear, even if it is not exemplified.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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