DETAILED ACTION
This is the first office action for 18/016,404, filed 1/16/2023, which is a national stage entry of PCT/EP2021/069065, filed 7/8/2021, which claims priority to provisional application 63/052,924, filed 7/16/2020, and European application EP20210786.8, filed 11/30/2020, after the request for continued examination filed 3/24/2026.
Claims 1-6 and 8-14 are pending, Claims 1-6 are considered herein.
In light of the claim amendments, the prior art rejections are withdrawn, and new grounds of rejection are presented herein.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/4/2026 has been entered.
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following references, which are not currently applied in a rejection.
Kim, et al. (Japanese Journal of Applied Physics, 2018, 57 0102B2): This reference teaches an aqueous electrode-forming composition comprising a composite silicon-carbon black active material, carbon black, and polyacrylic acid (column 1, page 102B2-2).
U.S. Patent Application Publication 2019/0067685 A1: This reference teaches the use of a mixed binder of lithium polyacrylate and polyacrylamide as a binder for a negative electrode (paragraph [0017]).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “an electrode active material comprising 70 to 90% by weight of one or more carbon-based materials, wherein the weight percentage is based on a total weight of composition (C).”
This limitation introduces new matter into the claims, because the instant specification only provides support for the carbon-based material comprising 70-90 wt% of the final electrode material (i.e. the total solid content of the composition C) (paragraphs [0108]-[0112]), not the composition (C) (which includes solvent) used to form the electrode material. This is illustrated in Example 1 of the instant specification, in which the composition used to form the electrode comprised 42.11 wt% carbon-based active material (graphite) (paragraph [0138]), resulting in the final electrode material comprising 75.2 wt% graphite (paragraph [0141]).
For the purposes of examination, the limitation “an electrode active material comprising 70 to 90% by weight of one or more carbon-based materials, wherein the weight percentage is based on a total weight of composition (C)” will be interpreted to include “an electrode active material comprising 70 to 90% by weight of one or more carbon-based materials, wherein the weight percentage is based on a total weight of the solid content of composition (C)”
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 2 and 4 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 has been amended to recite “an electrode active material comprising 70 to 90% by weight of one or more carbon-based materials, wherein the weight percentage is based on a total weight of composition (C).” This limitation renders the limitations of Claim 2 indefinite, because it is unclear how the composition can comprise 70 to 90% by weight of one or more carbon-based materials, while also comprising 15-70 wt% solids, as recited in Claim 2. The Examiner notes that the recommended amendment to Claim 1 above would also resolve the indefiniteness of Claim 2.
Claim 4 recites “wherein the electrode active material further comprises one or more silicon-based materials in an amount ranging from 5 to 30 wt%.” This limitation is indefinite, because it is unclear what the wt% is relative to (i.e. the total solids of the composition, the total composition, etc.)
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hays, et al. (Journal of Power Sources 384 (2018) 136-144), in view of Yushin, et al. (U.S. Patent Application Publication 2020/0083542 A1).
In reference to Claim 1, Hays teaches an aqueous electrode-forming composition for use in the preparation of electrodes for electrochemical devices, comprising 15 wt% silicon, 73 wt% graphite, 2 wt% carbon black, and 10 wt% lithium polyacrylate (Experimental section, column 1, page 138).
This disclosure teaches the limitations of Claim 1, of an aqueous electrode-forming composition for use in the preparation of electrodes for electrochemical devices, comprising a binder composition comprising a lithium salt of polyacrylic acid (Experimental section, column 1, page 138).
This disclosure teaches the limitations of Claim 1, wherein the composition comprises an electrode active material comprising 70-90% by weight of one or more carbon-based materials (i.e. 73 wt% graphite) based on the total weight of the solids of the composition. The limitation “an electrode active material comprising 70 to 90% by weight of one or more carbon-based materials, wherein the weight percentage is based on a total weight of composition (C)” is considered to introduce new matter into the claims, as described above.
This disclosure teaches the limitations of Claim 1, wherein the composition comprises an aqueous solvent (water) (Experimental section, column 1, page 138).
This disclosure teaches the limitations of Claim 1, wherein the composition comprises at least one electroconductivity-imparting additive, i.e. carbon black (Experimental section, column 1, page 138).
Hays does not teach that the binder comprise at least one polyacrylamide (PAM) having a number average molecular weight (Mn) of at most 1,600,000 g/mol.
To solve the same problem of providing an anode composition for a lithium battery, in which the active material comprises silicon (paragraphs [0041]-[0042]) and a polymeric binder (paragraph [0039]), Yushin teaches that a combination of lithium polyacrylate and polyacrylamide is suitable for use as a binder composition for such an anode (paragraph [0039]).
Yushin further teaches that the molecular weight range of the binder polymers of his invention is within 50 to 50,000,000 g/mol (paragraph [0039]).
Finally, Yushin teaches that binders should be selected based on various parameters, including the voltage range electrodes are exposed to, volume changes during electrochemical cycling, operational temperature range, and electrolyte (paragraph [0039]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the binder of the composition of Hays to replace a portion of the lithium polyacrylate with polyacrylamide having a molecular weight between 50 to 50,000,000 g/mol, based on Yushin’s disclosure that (1) a combination of lithium polyacrylate and polyacrylamide is suitable for use as a binder composition for such an anode, (2) the molecular weights of binders for electrodes are suitably within the range of 50 to 50,000,000 g/mol, and (3) that binders should be selected based on various parameters, including the voltage range electrodes are exposed to, volume changes during electrochemical cycling, operational temperature range, and electrolyte (paragraph [0039]).
Replacing a portion of the lithium polyacrylate of the binder of Hays with a polyacrylamide with a number average molecular weight between 50 to 50,000,000 g/mol in the binder of the composition of Hays teaches the limitations of Claim 1, wherein the binder comprise at least one polyacrylamide (PAM) having a number average molecular weight (Mn) of at most 1,600,000 g/mol.
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 I.
In the instant case, the claimed range of “at most 1,600,000 g/mol” overlaps with the taught range of 50 to 50,000,000 g/mol.
In reference to Claim 2, Hays teaches that the total solid content of the composition is ~36% (paragraph 1, column 2, page 138).
This disclosure teaches the limitations of Claim 2, wherein the total solid content of the composition is comprised between 15-70 wt% (i.e. ~36 wt%) over the total weight of the composition.
In reference to Claim 3, modified Hays is silent regarding the ratios of PAM to PAA-Li in the binder of his invention.
Therefore, he does not explicitly teach the limitations of Claim 3.
However, Yushin teaches that PAA-Li provides the benefit of not swelling substantially upon exposure to electrolytes; however, this material is also brittle (paragraph [0052]).
Therefore, it is the Examiner’s position that one of ordinary skill in the art at the time the instant invention was filed would have been motivated to balance the swelling and brittleness of the binder of modified Hays by tuning the relative amounts of PAM and PAA-Li in the binder composition.
It is the Examiner’s position that this routine optimization would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at the ratio recited in Claim 3, without undue experimentation.
In reference to Claim 4, Hays teaches that the electrode active material further comprises one or more silicon-based materials (i.e. silicon nanoparticles) in an amount ranging from 5-30 wt% (i.e. 15 wt%, Experimental section, column 1, page 138).
In reference to Claim 5, Hays teaches that the carbon-based material is graphite and the silicon based material is silicon (Experimental section, column 1, page 138).
In reference to Claim 6, Hays teaches that the electroconductivity-imparting additive is carbon black (Experimental section, column 1, page 138).
Response to Arguments
Applicant’s arguments with respect to the prior art rejections in the final office action of 12/29/2025 have been fully considered and are persuasive. Therefore, these rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made under 35 U.S.C. 112(a), 112(b) and 103 herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SADIE WHITE whose telephone number is (571)272-3245. The examiner can normally be reached 6am-2:30 pm ET.
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/SADIE WHITE/Primary Examiner, Art Unit 1721
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