DETAILED ACTION
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.
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 and 23-29 are rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama et al. (JP 2000-095823), machine translation.
Regarding claims 1, 6, 23, 25, and 28, Uchiyama teaches a water-absorbing gel solution comprising: a modified polyvinyl alcohol having a repeating unit represented by formula (I) heat-treated with a peroxide-based polymerization initiator that generates oxy radicals, and then, with respect to 100 parts by weight of said modified polyvinyl alcohol, 10 to 90 parts by weight of a crosslinkable monomer (A) represented by formula (II) is graftcopolymerized in water, and indicates: that, in said formula (I), the ratio n/m (molar ratio) of n and m (where n indicates the degree of saponification (mol%) of the modified polyvinyl alcohol) is in the range from 80/20 to 95/5 (paragraph 0016); that, in said formula (I), n + m (indicating the degree of polymerization of the modified polyvinyl alcohol) is an integer between 300 and 700 (paragraph 0017); and that an ethylenically unsarurated monomer (B) such as an acidic monomer such as (meth)acrylic acid or a nitrogen-containing monomer such as N,N-dimethylaminoethyl (meth)acrylate or the like, which is graft-copolymerizable with the modified polyvinyl alcohol or copolymerizable with the crosslinkable monomer (A), is subjected to graft copolyrnerization with the crosslinkable monomer (A) in an amount of 0.1 parts to 25 parts per 100 parts of modified polyvinyl alcohol (paragraphs 0028-0030). Uchiyama further teaches an example in which PEGDA and PEGDMA were used for said crosslinkable monomer, and AA, MAA and DMMA were used
for said ethylenically unsarurated monomer (B) to obtain water-absorbent gel solution (Example 4). The water-absorbent gel being such that 10 parts by weight of the crosslinkable monomer (A) is graftcopolymerized with respect to 100 parts by weight of the modified polyvinyl alcohol (para 0026).
Uchiyama does not expressly teach a component ratio and relaxation time of component S180.
However, the water-absorbent gel solution taught by Uchiyama is not considered to be different, as a composition, from the composition including the graft copolymer of the present application, and thus it would have been obvious to one of ordinary skill in the art before the effective filing date to that it is highly probable that this gel solution satisfies the recited characteristics.
Regarding claims 2-5, similar to claim 1 above, Uchiyama does not teach H180, H27, and M180. However, as presented above, based on the composition it is highly probable that this gel solution satisfies the recited characteristics.
Regarding claim 24, Uchiyama teaches the crosslinkable monomer (A) in an amount of 0.1 parts to 25 parts per 100 parts of modified polyvinyl alcohol (paragraphs 0028)-(0030), which overlaps Applicant’s claimed range of 0.2 to 10 parts by mass.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the recited concentration because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. 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). Furthermore, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
Regarding claim 26, Uchiyama teaches polyvinyl alcohol with a degree of saponification of 86.5 to 89 mol% (para 0046).
Regarding claim 27, Uchiyama teaches polyvinyl alcohol with an average polymerization of about 500 (para 0046).
Regarding claim 29, the composition of Uchiyama could be used for a positive electrode since the claim does not recite any further components; moreover, the composition of Uchiyama as-is would not be detrimental used in a positive electrode. See MPEP 2111.02: Effect of Preamble.
Allowable Subject Matter
Claims 21, 22, and 30-34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS BARCENA whose telephone number is (571)270-5780. The examiner can normally be reached Monday-Thursday 8-5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milton I Cano can be reached at (313)446-4937. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CARLOS BARCENA/Primary Examiner, Art Unit 1723