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 .
DETAILED ACTION
This Office Action is in response to the communication filed on 11/26/25. Applicant’s arguments have been considered but are not found entirely persuasive. Claims 1-8, 10-11, 14, 16 and 18-19 are pending.
This Action is FINAL, as necessitated by amendment.
Claims Analysis
Claim 1 recites an insulating composition “for an electrode for blocking migration of lithium ions form an overlay region of the electrode”, which is an intended use limitation that has not been given patentable weight. The claim is directed toward an insulating composition. The claim is not directed toward an electrode or a battery comprising a liquid electrolyte.
Claim 1 recites “which is solvent substituted…by mixing the aqueous binder dispersed in water and the non-aqueous solvent; and performing solvent substitution by removing the water through a thermal treatment”, which is a product by process limitation that has not been given patentable weight. The claim recites “wherein the insulating composition is substantially free of water”. The water is not present in the claimed insulating composition of at least claim 1. The insulating composition requires the binder, the nonaqueous organic solvent and the inorganic particle having the claimed weight ratio of the inorganic particle to the binder.
In claim 1 the limitation “wherein the insulating composition comprises the inorganic particle and the aqueous binder in an amount of 1-50 parts by weight with respect to 100 parts by weight of the nonaqueous organic solvent” is interpreted as a product-by-process limitation that has not been given patentable weight. See below rejection under 35 USC 112 of the cited limitation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 11 of copending Application No. 18/917,411 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recite an insulating composition for an electrode comprising an aqueous binder, a nonaqueous organic solvent and an inorganic particle wherein a weight ratio of the inorganic particle to the aqueous binder ranges from 1:99 to 95:5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The previous 35 USC 112 rejections of claims 1 and 18 are withdrawn. The amendments to the claims, in addition to Applicant’s argument’s, have overcome all prior 35 USC 112 rejections of record. However, the claims are rejected under new grounds as being indefinite.
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 1-8, 10 and 19 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.
Each of claims 1 and 19 recite “wherein the insulating composition comprises the inorganic particle and the aqueous binder in an amount of 1-50 parts by weight with respect to 100 parts by weight of the nonaqueous organic solvent”, which is indefinite. It is unclear if the claims require the inorganic particle in an amount of 1-50 parts by weight with respect to 100 parts by weight of the nonaqueous organic solvent and the aqueous binder in an amount of 1-50 parts by weight with respect to 100 parts by weight of the nonaqueous organic solvent OR if the claims require the combination of the inorganic particle and the aqueous binder to together be in an amount of 1-50 parts by weight with respect to 100 parts by weight of the nonaqueous organic solvent. Furthermore, the claims do not clearly recite if the “aqueous binder’ (in line 9 of claim 1 and in line 2 of claim 19) is the “aqueous binder” before or after solvent substitution. Specifically , is the “aqueous binder” in line 9 of claim 1 (or line 2 of claim 19) the “aqueous binder which is solvent substituted” or the “aqueous binder dispersed in water and the non-aqueous organic solvent”.
For the purposes of this Action, the limitation “wherein the insulating composition comprises the inorganic particle and the aqueous binder in an amount of 1-50 parts by weight with respect to 100 parts by weight of the nonaqueous organic solvent” is interpreted as a product-by-process limitation that has not been given patentable weight (claim 1-8 and 10 only). Examiner notes Example 1 of the present specification [0110] discloses “the NMP-substituted SBR binder and inorganic particles were mixed in a weight ratio of 50:50 and stirred to prepare an insulating composition. The prepared insulating composition had a viscosity of 5,000 cP”. Thus, the weight ratio of at least claim 1 is interpreted as a weight ratio of the inorganic particle to the solvent substituted aqueous binder (i.e., NMP-substituted SBR) and has been given patentable weight.
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.
Claim(s) 1-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato, US 2021/0159505 A1 in view of Tanaka, US 2018/0301684 A1.
Kato teaches a nonaqueous secondary battery comprising a positive electrode. The positive electrode 30 shown in Figure 4 depicts a current collector 32, a positive electrode active material layer 34 and an insulating layer 36a. The positive electrode active material layer 35 includes a flat region A1, a curved end portion A2 and an end portion E. The current collector 32 includes an uncoated portion 32A. The insulating layer 36a covers at least a portion of the uncoated portion 32A and extends over only a portion A2 of the positive active material layer 34. The current collector 32 may be aluminum, an aluminum alloy, nickel, titanium, and stainless steel [0026].
The insulating layer comprises an inorganic filler and a binder and has an electrical insulation property. Such an insulating layer is typically formed by binding the inorganic filler to each other and to the positive electrode current collector, with the binder. The insulating layer may be a porous layer that enables the charge carriers to pass [0030]. The insulating layer is prepared by dispersing the material forming the insulating layer in an appropriate dispersion medium (such as water or NMP) and adjusting the viscosity and the like [0048-0056]. NMP represents N-methyl-pyrrolidone and is a nonaqueous organic solvent. The materials of the insulating layer may be boehmite (aluminum oxide hydroxide) as the inorganic filler (F), PVdF as the binder (B) mixed in a mass ratio of F:B=90:10 [0071]. As the binder contained in the insulating layer, for example, various binders that can be used in the positive electrode active material layer can be preferably used. Among the binders, a vinyl halide resin such as polyfluoride vinylidene (PVdF) can be preferably used as the binder, from the viewpoint that the insulating layer having an appropriate thickness is preferably formed while the binder imparts flexibility to the insulating layer [0038]. The insulating layer binder may be acrylic resin such as a methacrylic acid ester polymer, vinyl halide resin such as polyvinylidene fluoride (PVdF), and polyalkylene oxide such as polyethylene oxide (PEO) [0027]. Inorganic filler materials are listed at [0037]. The binder proportion contained in the insulating layer is discussed at [0038].
An average particle diameter of the inorganic filler is not particularly limited. From the viewpoint of preferably forming the insulating layer 36 having the thickness, the average particle diameter is typically 3 μm or smaller, preferably 2 μm or smaller, and for example, 1 μm or smaller. However, a too fine inorganic filler is inferior in handleability or uniform dispersibility, and thus not preferable. Therefore, the average particle diameter of the inorganic filler is typically 0.05 μm or larger, preferably 0.1 μm or larger, for example 0.2 μm or larger. The average particle diameter is the cumulative 50% particle diameter in volume-based particle size distribution obtained by a laser diffraction scattering method, indicating the particles do not all have the same particle diameter [0040]. The viscosity of the insulating layer is disclosed at [0058].
Kato teaches the dispersion medium of the insulating layer may be water or NMP. The insulating layer of Kato and the insulating composition of the presently claimed invention appear to be structurally the same. Kato teaches the insulating layer paste is coated and dried (thermal treatment) to form the insulating layer [0048-0052] [0060]. Kato does not explicitly teach the binder of the insulating layer may be styrene-butadiene rubber.
However, Tanaka teaches an insulating layer formed from a slurry composition including inorganic particles, a binder, and a solvent [0047]. The solvent may be an organic solvent such as NMP. The binder may be PVdF, PTFE or an aqueous binder such as SBR or PVA. The inorganic particles may be silica, alumina, boehmite, titania, zirconia, magnesia, yttria, zinc oxide or aluminum hydroxide [0048-0049].
Therefore, the invention as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made because Tanaka teaches it was known in the art to bind inorganic particles of an insulating layer with a binder such as SBR. Tanaka teaches the binder of the insulating layer may be PVdF, PTFE or an aqueous binder such as SBR or PVA. Kato teaches the binder of the insulating layer may be a vinyl halide resin such as polyfluoride vinylidene (PVdF), an acrylic resin such as a methacrylic acid ester polymer, vinyl halide resin such as polyvinylidene fluoride (PVdF), or a polyalkylene oxide such as polyethylene oxide (PEO). Both Tanaka and Kato teach insulating layers comprising the same inorganic particles and a NMP dispersion medium. Thus, one of skill would have been motivated to use the SBR insulating layer binder of Tanaka for the insulating binder of Kato.
Tanaka further teaches the inorganic particles may be different in their average particle sizes (D50). In this case, the average particle size (D50) of the largest inorganic particles is preferably not less than 1 μm and not more than 20 μm, and the average particle size (D50) of the smallest inorganic particles is preferably not less than 0.01 μm and less than 1 μm [0051].
Kato does not explicitly teach the inorganic particle and the binder are in an amount of 1-50 parts by weight with respect to 100 parts by weight of the nonaqueous organic solvent. Note this limitation is interpreted as a product by process limitation that has not been given patentable weight. MPEP 2113. In addition, this limitation has been rejected under 35 USC 112 as indefinite. Furthermore, see at least [0058] and [0071] of Kato that discuss values/varying the viscosity. Kato teaches the viscosity of the insulating layer can be adjusted by varying the amount of solid content (i.e., binder) with respect to the solvent. Therefore, the invention as a whole would have been obvious to one having ordinary skill in the art at the time of filing of the invention because one of skill would have known the amount of binder with respect to the amount of solvent could have been varied to adjust the viscosity. The viscosity of Kato is disclosed at [0058] and reads upon the viscosity of the presently claimed invention.
*
Claim(s) 1-8, 10-11, 14, 16 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka, US 2018/0301684 A1 in view of Motoda, US 2014/0242296 A1.
Tanaka teaches an insulating layer formed from a slurry composition including inorganic particles, a binder, and a solvent [0047]. The solvent may be an organic solvent such as NMP. The binder may be PVdF, PTFE or an aqueous binder such as SBR or PVA (an aqueous binder denotes a binder that is used by being dissolved or dispersed in a solvent whose main component is water). The insulating layer slurry may be dried (thermal treatment) [0047]. The inorganic particles may be silica, alumina, boehmite, titania, zirconia, magnesia, yttria, zinc oxide or aluminum hydroxide [0048-0049]. The average particle size (D50) of the inorganic particles is preferably not more than 20 μm, more preferably not more than 10 μm, and still more preferably not more than 5 μm. Also, the average particle size (D50) of the inorganic particles is preferably not less than 0.01 μm, more preferably not less than 0.1 μm, and still more preferably not less than 0.5 μm [0050]. Tanaka clearly teaches a nonaqueous electrolyte battery.
The content of the inorganic particles in the insulating layer is not specifically limited, and can be appropriately set. The content of the inorganic particles is preferably not more than 99.9 wt. %, more preferably not more than 99 wt. %, and still more preferably not more than 98 wt. %, and still more preferably not more than 95 wt. % with respect to the total amount of the inorganic particles and the binder. Also, the content of the inorganic particles is preferably not less than 50 wt. %, more preferably not less than 80 wt. %, and still more preferably not less than 90 wt. % with respect to the total amount of the inorganic particles and the binder [0054].
Tanaka teaches the average particle size (D50) of the inorganic particles is preferably not more than 20 μm, more preferably not more than 10 μm, and still more preferably not more than 5 μm. Also, the average particle size (D50) of the inorganic particles is preferably not less than 0.01 μm, more preferably not less than 0.1 μm, and still more preferably not less than 0.5 μm [0050]. Tanaka teaches the inorganic particles may be independently used, or may be used by combining not less than two of them [0049]. Tanaka teaches, alternatively, a plurality of inorganic particles different in their average particle sizes (D50) may be included in the insulating layer. In this case, the average particle size (D50) of the largest inorganic particles is preferably not less than 1 μm and not more than 20 μm, and the average particle size (D50) of the smallest inorganic particles is preferably not less than 0.01 μm and less than 1 μm [0051].
Tanaka teaches an insulating composition comprising an aqueous binder, a non-aqueous organic solvent and an inorganic particle. Tanaka teaches the insulating composition is dried (thermal treatment). Thus, one of skill would have known the insulating composition of Tanaka undergoes “solvent substitution” as the insulating composition of Tanaka and the clamed insulating composition appear to be the same.
Tanaka does not explicitly teach the viscosity of the slurry composition of the insulating layer. However, the insulating layer slurry composition of Tanaka and the insulating composition of the claimed invention appear to be the same or similar. Thus, the invention as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made because one of skill would have expected two compositions that are the same or similar to have the same or similar viscosity values. Tanaka teaches the claimed weight ratio of the inorganic particles to the aqueous binder. Tanaka teaches the insulating slurry includes a solvent such as NMP.
Tanaka does not explicitly teach the inorganic particle is added after the solvent substitution. However, Motoda teaches a method for producing a slurry for a heat-resistant layer for a lithium ion secondary battery including a step of producing a polymer aqueous dispersion, a step of obtaining a mixed solution by mixing N-methylpyrrolidone (NMP) and the polymer aqueous dispersion, a step of obtaining a binder composition by removing the aqueous medium from the mixed solution, and a step of obtaining a slurry by dispersing non-conductive microparticles in the binder composition. The step of obtaining the binder composition includes removing the aqueous medium by using a distillation column under a reduced pressure so that the binder composition contains a water content in predetermined amounts (abstract). The binder composition has a water content preferably in an amount of 1500 ppm or less (substantially free of water) [0021]. The mixed solution in the substitution tank is preferably heated to 40 to 130°C., more preferably 50 to 120°C., further preferably to 60 to 110°C [0065]. The material for the inorganic microparticles may be oxides such as aluminum oxide (alumina), hydrates of aluminum oxide (Boehmite (AlOOH), gibbsite (Al(OH)3), Bakelite, magnesium oxide, magnesium hydroxide, iron oxide, silicon oxide, titanium oxide (titania) and calcium oxide, nitrides such as aluminum nitrides and silicon nitride, silica, barium sulfate, barium fluoride, calcium fluoride, and the like are used [0080].
In the method for producing a slurry, a polymer aqueous dispersion is first produced. The polymer contained in the polymer aqueous dispersion is not specifically limited as long as it can bind non-conductive microparticles. Polymer compounds such as diene-based polymers and acrylic-based polymers can be used. Specific examples of the diene-based polymers may include conjugate diene homopolymers such as polybutadiene and polyisoprene; aromatic vinyl-conjugate diene copolymers such as styrene-butadiene copolymers (SBR) that are optionally carboxy-modified; vinyl cyanide-conjugate diene copolymers such as acrylonitrile-butadiene copolymers (NBR); and the like. Copolymers of acrylonitrile and (meth)acrylic acid esters can be preferably used [0022-0047]. See [0167-0168] and [0179] regarding the particle size of the non-conductive microparticles. The slurry may be applied on a predetermined substrate such as a positive electrode of the lithium battery [0102]. Motoda teaches a viscosity adjusting agent may be used [0080] and viscosity is dependent on the solid content concentration of the slurry [0098]. Note also [0129] that discloses the viscosity of the binder solution/dispersion of an electrode.
Motoda teaches, in conducting the distillation in the step of obtaining the binder composition, at first, the pressure in the system that is constituted to allow pressure reduction by the compressor 28 is decreased to a predetermined pressure. The pressure in the system in decreasing the pressure by the compressor 28 is preferably atmospheric pressure to 20 torr, more preferably atmospheric pressure to 30 torr, further preferably atmospheric pressure to 50 torr, from the initiation of the distillation to a predetermined time such as a period during which a low-boiling point component is present. When the pressure in the above-mentioned system is too high, it is necessary to raise the temperature of the heating by the heating jacket 6 so as to remove the water content from the mixed solution. When the pressure in the above-mentioned system is too low, the distillation velocity increases, and thus it is possible that bubbling occurs due to the unreacted monomer and water remaining in the mixed solution. In this period, from the viewpoint of removal of the water from the mixed solvent, it is preferable to gradually reduce the pressure, for example, to adjust the pressure to about 200 torr at the initiation of the distillation and to about 50 torr at the time when the water content amount in the mixed solvent has become about 5% [0063].
Regarding claim 19, Motoda teaches viscosity is dependent on the solid content concentration of the slurry [0098]. Note also [0129] that discloses the viscosity of the binder solution/dispersion of an electrode. Therefore, the invention as a whole would have been obvious to one having ordinary skill in the art at the time of filing of the invention because one of skill would have known the amount of binder with respect to the amount of solvent could have been varied to adjust the viscosity. The viscosity of Motoda is disclosed at [0129] and reads upon the viscosity of the presently claim invention. Thus, one of skill would have found it obvious to provide the weight ratio of claim 19 to achieve the desired viscosity of the composition of the insulating layer
Response to Arguments
Applicant's arguments filed 11/26/25 have been fully considered but they are not entirely persuasive. The prior 35 USC 112 rejections of claims 1 and 18 have been withdrawn as the claims have been amended to overcome the prior indefinite rejections. The 35 USC 103 rejection of claims 11 and 14-16 in view of Matsunobe has been withdrawn. Matsunobe does not teach or suggest claim 11, as amended.
Claim(s) 1-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato, US 2021/0159505 A1 in view of Tanaka, US 2018/0301684 A1. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant argues Tanaka does not teach the viscosity of the insulating composition while Kato does not teach an insulating composition including the aqueous binder recited by at least claim 1. Applicant does not present arguments against the motivation for combining the references provided by the Examiner.
Applicant argues Kato and Tanaka do not teach “the insulating composition comprises the inorganic particle and the aqueous binder in an amount from 1-50 parts by weight with respect to 100 parts by weight of the nonaqueous organic solvent”. Note this limitation is interpreted as a product by process limitation that has not been given patentable weight (MPEP 2113) and has been rejected as indefinite. Furthermore, see at least [0058] and [0071] of Kato that discuss values/varying the viscosity. Kato teaches the viscosity of the insulating layer can be adjusted by varying the amount of solid content (i.e., binder) with respect to the solvent. Therefore, the invention as a whole would have been obvious to one having ordinary skill in the art at the time of filing of the invention because one of skill would have known the amount of binder with respect to the amount of solvent could have been varied to adjust the viscosity. The viscosity of Kato is disclosed at [0058] and reads upon the viscosity of the presently claim invention. Examiner notes a specific example is not required to maintain the obviousness rejection in view of Kato and Tanaka.
Application further argues Tanaka and Kato teach the use of an aqueous binder in water. Examiner points to the claims analysis section above. The “water” is not given patentable weight as it is not present in the produced insulating composition. Furthermore, Kato clearly teaches the insulating layer is prepared by dispersing the material forming the insulating layer in an appropriate dispersion medium (such as water or NMP) and adjusting the viscosity and the like [0048-0056]. In addition, Tanaka clearly teaches an insulating layer formed from a slurry composition including inorganic particles, a binder, and a solvent [0047]. The solvent may be an organic solvent such as NMP. The binder may be PVdF, PTFE or an aqueous binder such as SBR or PVA (an aqueous binder denotes a binder that is used by being dissolved or dispersed in a solvent whose main component is water). The insulating layer slurry may be dried (thermal treatment) [0047].
Applicant argues Tanaka in view of Motoda do not teach “the insulating composition comprises the inorganic particle and the aqueous binder in an amount from 1-50 parts by weight with respect to 100 parts by weight of the nonaqueous organic solvent”. Examiner disagrees. Motoda teaches viscosity is dependent on the solid content concentration of the slurry [0098]. Note also [0129] that discloses the viscosity of the binder solution/dispersion of an electrode. Therefore, the invention as a whole would have been obvious to one having ordinary skill in the art at the time of filing of the invention because one of skill would have known the amount of binder with respect to the amount of solvent could have been varied to adjust the viscosity. The viscosity of Motoda is disclosed at [0129] and reads upon the viscosity of the presently claim invention. Thus, one of skill would have found it obvious to provide the weight ratio of claim 19 to achieve the desired viscosity of the composition of the insulating layer
Regarding claim 11, Applicant argues a person skilled in the art, relying on Motoda, would not perform the thermal treatment at atmospheric pressure because “Motoda mentions that the distillation may start at atmospheric pressure”. Examiner disagrees. The claims have been given the broadest reasonable interpretation. A thermal treatment the starts at atmospheric pressure is considered a “thermal treatment is performed at atmospheric pressure”. Furthermore, Motoda teaches the pressure may be adjusted to vary the speed at which water is removed from the solution/dispersion. Examiner notes [0062] of the present specification.
Regarding the double patenting rejection of record, the presently pending claims and the claims of copending Application 18/917,411 are not patentably distinct from each other because both applications recite an insulating composition for an electrode comprising an aqueous binder, a nonaqueous organic solvent and an inorganic particle wherein a weight ratio of the inorganic particle to the aqueous binder ranges from 1:99 to 95:5. Note the claims analysis section above regarding the added subject matter of amended claim 1. Note also the 35 USC 112 rejection of claims 1-8 and 10.
Prior Arguments Presented by Applicant
Applicant argued Tanaka fails to teach the claimed insulating composition having an aqueous binder which is “solvent substituted” with a non-aqueous organic solvent “by mixing an aqueous binder dispersed in water and a non-aqueous solvent; and performing solvent substitution by removing the water through a thermal treatment”. Applicant cited case law stating the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art. However, Applicant did not provide any evidence or arguments that the claimed insulating composition is structurally distinct from the insulating composition of the cited prior art. It is unclear how Applicant concluded Tanaka fails to teach “substantially free of water”. Furthermore, at least claim 11 does not recite this limitation. Tanaka clearly teaches the insulating slurry is dried. Tanaka clearly teaches a nonaqueous electrolyte battery.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/TRACY M DOVE/Primary Examiner, Art Unit 1725