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 .
Response to Amendment
In response to the amendment received August 4, 2026:
Claims 1-13 are pending.
The previous prior art rejection has been withdrawn in light of the amendment. However, a new prior art rejection has been made below. All changes to the rejection are necessitated by the amendment.
Claim Rejections - 35 USC § 103
Claims 1-8 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR102093129B1) in view of Meng (“Poly(Capro-Lactone) Networks as Actively Moving Polymers”, 2016). The English machine translation of Lee et al. is attached and is referenced below.
Regarding Claim 1, Lee et al. teaches a gel electrolyte having cross-linked polymers forming a network structure within the organic electrolyte (Para. [0022]) prepared by a first photocrosslinking agent (i.e. a precursor composition for a polymer electrolyte, comprising a second crosslinking agent), a second photocrosslinking agent (i.e. a first crosslinking agent) dissolved in an organic solution in which an electrolyte is dissolved (i.e. and a nonaqueous electrolytic solution) (Para. [0026]), pentaerythritol tetrakis(3-mercaptoproprionate) may be the second photocrosslinking agent (i.e. a compound containing at least two thiol groups), trimethylolpropane triacrylate may be the first photocrosslinking agent (Para. [0094]), the organic electrolyte comprises a dissociable salt and an organic solvent (Para. [0012]) wherein the dissociable salt may be LiPF6, LiCl, LiI, LiB, LiBOB (Para. [0013]) and the organic solvent comprises carbonate-based solvents (Para. [0015]) (i.e. the non-aqueous electrolyte solution comprises a lithium salt and an organic solvent, the organic solvent is a cyclic carbonate-based organic solvent, a linear carbonate-based organic solvent or a mixed organic solvent thereof), wherein a photopolymerization initiator and the first and second photocrosslinking agents are mixed in a weight ratio of 1:100 (Para. [0082], [0094]), and the ratio of the weight of the organic electrolyte to the weight of the first photocrosslinking agent and the second crosslinking agent is 70:30 to 90:10 (Para. [0063]) (i.e. the total amount of the first crosslinking agent and the second crosslinking agent is in a range of about 10 wt% to about 30 wt% based on a total weight of the precursor composition for a polymer electrolyte, overlapping with the claimed range of 3 wt% to 12 wt). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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).” See MPEP §2144.05(I).
Lee et al. does not teach the second crosslinking agent is a compound represented by Formula 2 as claimed.
However, Meng teaches PCL-triacrylate (i.e. polycaprolactone triacrylate) (i.e. a second crosslinking agent represented by Formula 2 of the instant claim) mixed with PETMP (i.e. pentaerythritol tetrakis(3-mercaptoproprionate) ) (pg. 27, lines 16-21).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lee et al. to incorporate the teaching of PCL-triacrylate, as such a precursor is able to form a polymer network exhibit high gel fraction and resulting in tougher more elastic materials with a high degree of crystallinity and outstanding shape-memory properties (pg. 118).
Regarding Claim 2, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 1 as explained above.
Lee et al. further teaches pentaerythritol tetrakis(3-mercaptoproprionate) may be the second photocrosslinking agent (Para. [0094]). (i.e. wherein the compound containing at least two thiol groups comprises a compound represented by Formula 1 as claimed).
Regarding Claim 3, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 2 as explained above.
Lee et al. further teaches pentaerythritol tetrakis(3-mercaptoproprionate) may be the second photocrosslinking agent (Para. [0094]). (i.e. wherein the compound containing at least two thiol groups comprises a compound represented by Formula 1 as claimed).
Regarding Claim 4, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 1 as explained above.
Lee does not teach the second crosslinking agent including a compound represented by Formula 2.
However, Meng teaches PCL-triacrylate (i.e. polycaprolactone triacrylate) (i.e. a second crosslinking agent represented by Formula 2 of the instant claim, wherein R0 is an alkylene group having 5 carbon atoms) mixed with PETMP (pg. 27, lines 16-21).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lee et al. to incorporate the teaching of PCL-triacrylate, as such a precursor is able to form a polymer network exhibit high gel fraction and resulting in tougher more elastic materials with a high degree of crystallinity and outstanding shape-memory properties (pg. 118).
Regarding Claim 5, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 1 as explained above.
Lee et al. does not teach the second crosslinking agent including a compound represented by Formula 2.
However, Meng teaches PCL-triacrylate (i.e. polycaprolactone triacrylate) (i.e. a second crosslinking agent represented by Formula 2 of the instant claim, wherein Formula 2 is polycaprolactone triacrylate) mixed with PETMP (referred to in Kawakami et al. as PEMP) (pg. 27, lines 16-21).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lee et al. to incorporate the teaching of PCL-triacrylate, as such a precursor is able to form a polymer network exhibit high gel fraction and resulting in tougher more elastic materials with a high degree of crystallinity and outstanding shape-memory properties (pg. 118).
Regarding Claim 6, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 1 as explained above.
Lee et al. further teaches a photopolymerization initiator and the first and second photocrosslinking agents are mixed in a weight ratio of 1:100 (Para. [0082], [0094]), and the ratio of the weight of the organic electrolyte to the weight of the first photocrosslinking agent and the second crosslinking agent is 70:30 to 90:10 (Para. [0063]) (i.e. the total amount of the first crosslinking agent and the second crosslinking agent is in a range of about 10 wt% to about 30 wt% based on a total weight of the precursor composition for a polymer electrolyte, overlapping with the claimed range of 4 wt% to 12 wt). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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).” See MPEP §2144.05(I).
Regarding Claim 7, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 1 as explained above.
Lee et al. further teaches a photopolymerization initiator and the first and second photocrosslinking agents are mixed in a weight ratio of 1:100 (Para. [0082], [0094]), and the ratio of the weight of the organic electrolyte to the weight of the first photocrosslinking agent and the second crosslinking agent is 70:30 to 90:10 (Para. [0063]) (i.e. the total amount of the first crosslinking agent and the second crosslinking agent is in a range of about 10 wt% to about 30 wt% based on a total weight of the precursor composition for a polymer electrolyte, overlapping with the claimed range of 5 wt% to 12 wt). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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).” See MPEP §2144.05(I).
Regarding Claim 8, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 1 as explained above.
Lee et al. further teaches a photopolymerization initiator (Para. [0075]) (i.e. a polymerization initiator).
Regarding Claim 10, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 8 as explained above.
Lee et al. does not explicitly teach the polymerization initiator is included in an amount of 0.01 part by weight to 20 parts by weight based on 100 parts by weight of the second crosslinking agent.
However, Meng teaches mixing 1.0 g of PCL-triacrylate (i.e. the second crosslinking agent ) with 10 mg thermal initiator (i.e. the polymerization initiator is included in an amount of 1 part by weight based on 100 parts by weight of the second crosslinking agent).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lee et al. to incorporate the teaching of a 1 part by weight thermal initiator based on 100 parts by weight of PCL-triacrylate, as such a precursor is able to form a polymer network exhibit high gel fraction and resulting in tougher more elastic materials with a high degree of crystallinity and outstanding shape-memory properties (pg. 118).
Regarding Claim 11, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 1 as explained above.
Lee et al. further teaches a gel electrolyte having cross-linked polymers forming a network structure within the organic electrolyte (Para. [0022]) (i.e. a gel polymer electrolyte comprising a polymer matrix).
Lee et al. does not explicitly teach a thiol-ene click reaction. However, this limitation of the instant claim is a product by process limitation. The manner in which the product is formed (via a thiol-ene click reaction) is a product by process limitation which does not further limit the claimed product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted).
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
Regarding Claim 12, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 11 as explained above.
Lee et al. does not explicitly teach a thiol-ene click reaction. However, the limitation of the instant claim is a product by process limitation. The manner in which the product is formed (via a thiol-ene click reaction at 50 to 80 degrees Celsius) is a product by process limitation which does not further limit the claimed product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted).
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
Regarding Claim 13, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 11 as explained above.
Lee et al. further teaches the gel electrolyte realized in an electronic device (Para. [0009], [0024]) such as secondary batteries (Para. [0003]) wherein the electrolyte contains a dissociable salt comprising lithium (Para. [0013]) (i.e. a lithium secondary battery comprising the gel polymer electrolyte).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR102093129B1) in view of Meng (“Poly(Capro-Lactone) Networks as Actively Moving Polymers”, 2016) as applied to claim 8 above, and further in view of Suk et al. (“Semi-interpenetrating solid polymer electrolyte based on thiol-ene cross-linker for all-solid-state lithium batteries”, 2016), cited and provided by Applicant in the Information Disclosure Statement provided February 17, 2023 and referenced below.
Regarding Claim 9, Lee et al. as modified by Meng et al. teaches all of the elements of the current invention in claim 8 as explained above.
Lee et al. does not teach the polymerization initiator comprises tert-butyl peroxypivalate.
However, Suk et al. teaches t-Butyl peroxypivalate (t-BPP or tert-butyl peroxypivalate) (pg. 155, section 2.1, line 9) used as a thermal initiator in a crosslinking reaction for forming a polymer electrolyte (pg. 155, section 2.3, lines 1-5).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lee et al. to incorporate the teaching of a t-Butyl peroxypivalate as taught by Suk et al., as it would provide a precursor composition that forms a polymer electrolyte with self-supporting mechanical strength and excellent shape retention (pg. 156, section 3, para. 3).
Response to Arguments
Applicant’s arguments filed August 4, 2026 have been fully considered but are moot because the arguments do not apply to any of the combination of references being used in the current rejection in light of the amendment.
Applicant’s arguments are drawn to a previous prior art combination and thus, are not persuasive in light of the newly cited prior art.
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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/ARMINDO CARVALHO JR./Primary Examiner, Art Unit 1729
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