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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 20, 2026 has been entered.
Response to Amendment
In response to the amendment received March 20, 2026:
Claims 1-13 are pending.
The core of the previous rejection is maintained with slight changes made in light of the amendment in view of Gerasopoulos et al. (US 2020/0411906) . All changes to the rejection are necessitated by the amendment.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami et al. (JP 2020/076024A) in view of Meng (“Poly(Capro-Lactone) Networks as Actively Moving Polymers”, 2016), cited and provided by Applicant in the Information Disclosure Statement provided February 17, 2023 and Gerasopoulos et al. (US 2020/0411906). The English machine translation of Kawakami et al. is attached in a prior Office action and is referenced below.
Regarding Claim 1, Kawakami et al. teaches an electrolyte composition comprising an ionic liquid and a network polymer obtained (i.e. a precursor composition for a polymer electrolyte) by reacting a polyfunctional reactive monomer with a polyfunctional thiol (Para. [0006]) wherein the polymer electrolyte is synthesized using PEMP as a polyfunctional thiol (i.e. comprising a first crosslinking agent comprising a compound containing at least two thiol groups) (see page 5 of Kawakami et al., Japanese version) and a polyfunctional reactive monomer (i.e. a second crosslinking agent) and an ionic liquid comprising G4 [tetraglyme] as a solvent and LiTFSI as a lithium salt (Para. [0021]) (i.e. a nonaqueous electrolyte solution comprising a lithium salt and an organic solvent) and the mixing ratio of the network polymer and the ionic liquid is 20 to 400 parts by weigh of the ionic liquid per 100 parts by weight of the total amount of the polyfunctional reactive monomer and the polyfunctional thiol (Para. [0014]) (i.e. wherein a total amount of the first crosslinking agent and the second crosslinking agent is in a range of about 20 wt% to about 83 wt% based on a total weight of the precursor composition and thus, does not overlap with claimed range of 3 wt% to 19 wt% but are merely close). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
Kawakami 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) 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 Kawakami 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).
Kawakami et al. does not teach the organic solvent is a cyclic carbonate-based organic solvent, a linear carbonate-based organic solvent or a mixed organic solvent thereof.
However, Gerasopoulos et al. teaches a gel polymer electrolyte (GPE) composition (Para. [0029]) wherein a solvent can be added to reduce the viscosity of the GPE-compositions pre-cured (i.e. a precursor composition for a polymer electrolyte) comprising an organic solvent such as propylene carbonate, ethylene carbonate, or
trimethylene carbonate (Para. [0102]) (i.e. the organic solvent is a cyclic carbonate-based solvent).
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 the precursor composition of Kawakami et al. to incorporate the teaching of an organic solvent such as propylene carbonate, ethylene carbonate, or trimethylene carbonate as taught by Gerasopoulos et al. as such a solvent reduces the viscosity for the composition which facilitates penetration of the electrolyte into pores of an electrode and improves conductivity (Para. [0102]).
Regarding Claim 2, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the current invention in claim 1 as explained above.
Kawakami et al. further teaches polymer electrolyte is synthesized using PEMP as a polyfunctional thiol (Para. [0021] and see page 5 of Kawakami et al., Japanese version) (i.e. wherein the compound containing at least two thiol groups, -SH, represented by Formula 1 of the instant claim wherein R1 to R4 are each an alkylene group having 2 carbon atoms)
Regarding Claim 3, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the current invention in claim 1 as explained above.
Kawakami et al. further teaches polymer electrolyte is synthesized using PEMP as a polyfunctional thiol (Para. [0021] and see page 5 of Kawakami et al., Japanese version) (i.e. wherein the compound represented by Formula 1 comprises a compound represented by Formula 1-1 of the instant claim).
Regarding Claim 4, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the current invention in claim 1 as explained above.
Kawakami 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 R0 is an alkylene group having 5 carbon atoms) 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 Kawakami 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, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the current invention in claim 1 as explained above.
Kawakami 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 Kawakami 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, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the current invention in claim 1 as explained above.
Kawakami et al. further teaches the mixing ratio of the network polymer and the ionic liquid is 20 to 400 parts by weigh of the ionic liquid per 100 parts by weight of the total amount of the polyfunctional reactive monomer and the polyfunctional thiol (Para. [0014]) (i.e. wherein a total amount of the first crosslinking agent and the second crosslinking agent is in a range of about 20 wt% to about 83 wt% based on a total weight of the precursor composition and thus, does not overlap with claimed range of 4 wt% to 19 wt% but are merely close). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
Regarding Claim 7, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the current invention in claim 1 as explained above.
Kawakami et al. further teaches the mixing ratio of the network polymer and the ionic liquid is 20 to 400 parts by weigh of the ionic liquid per 100 parts by weight of the total amount of the polyfunctional reactive monomer and the polyfunctional thiol (Para. [0014]) (i.e. wherein a total amount of the first crosslinking agent and the second crosslinking agent is in a range of about 20 wt% to about 83 wt% based on a total weight of the precursor composition and thus, does not overlap with claimed range of 5 wt% to 19 wt% but are merely close). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
Regarding Claim 11, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the precursor composition for a polymer electrolyte of claim in claim 1 as explained above.
Kawakami et al. further teaches the electrolyte composition formed is a network polymer swollen with ionic liquid and gelled (Para. [0017]) (i.e. a gel polymer electrolyte comprising a polymer matrix).
Kawakami 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, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the gel polymer electrolyte of claim 11 as explained above.
Kawakami 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, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the gel polymer electrolyte of claim 11 as explained above.
Kawakami et al. further teaches the electrolyte composition comprises lithium salt compounds such as LiTFSI (Para. [0013]) and a secondary battery (Para. [0007]) (i.e. a lithium secondary battery comprising the gel polymer electrolyte of claim 11).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami et al. (JP 2020/076024A) in view of Meng (“Poly(Capro-Lactone) Networks as Actively Moving Polymers”, 2016) and Gerasopoulos et al. (US 2020/0411906), as applied to claim 1 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 8, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the current invention in claim 1 as explained above.
Kawakami et al. does not explicitly teach the precursor composition comprising a polymerization initiator.
However, Suk et al. teaches t-Butyl peroxypivalate (t-BPP) (pg. 155, section 2.1, line 9) used as a thermal initiator in a crosslinking reaction for forming a polymer electrolyte (i.e. a precursor composition comprising a polymerization initiator) (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 Kawakami et al. to incorporate the teaching of a thermal initiator (i.e. polymerization initiator) 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).
Regarding Claim 9, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the current invention in claim 8 as explained above.
Kawakami et al. does not explicitly 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 Kawakami 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).
Regarding Claim 10, Kawakami et al. as modified by Meng and Gerasopoulos et al. teaches all of the elements of the current invention in claim 8 as explained above.
Kawakami 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 Kawakami 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).
Response to Arguments
Applicant's arguments filed March 20, 2026 have been fully considered but they are not persuasive.
Applicant appears to be arguing unexpected results for Example 1 regarding superior conductivity achieved by the combination of a multifunctional monomer having a specific structure and specific solvent.
The Declaration under 37 CFR 1.132 filed March 26, 2026 is insufficient to overcome the rejection of claims 1-13 based upon Kawakami et al. (JP 2020/076024A) in view of Meng (“Poly(Capro-Lactone) Networks as Actively Moving Polymers”, 2016) as set forth in the last Office action because: The evidence in the Declaration is not convincing, as the Declaration does not provide sufficient unexpected results commensurate in scope with the claimed invention and thus, the burden to show unexpected results as required by MPEP 716.02 has not been met.
Specifically, the Applicant has not demonstrated unexpected results commensurate in scope with the claimed invention, as Table 1-1 of The Declaration provides a first and second crosslinker comprising 6 wt% of a composition of the precursor composition and the experiments are limited to an organic solvent of dimethyl carbonate and glyme. However, claim 1 recites wherein a total amount of the first crosslinking agent and the second crosslinking agent is in a range of 3 wt% to 19 wt% based on a total weight of the precursor composition for a polymer electrolyte and the organic solvent is a cyclic-carbonate-based organic solvent, a linear carbonate-based organic solvent or a mixed organic solvent thereof. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d). Additionally, the Declaration does not establish that the differences in results are of both statistical and practical significance. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” See MPEP 716.02(d). In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. Therefore, the Examiner maintains the obviousness rejections and upholds the rejection to the independent claim, as above.
Applicant argues Kawakami and Meng fail to disclose the claimed invention as Meng does not address an electrolyte for secondary batteries nor an overall content range of compounds within the electrolyte composition, nor enhancement in ionic conductivity and Suk does not disclose Chemical Formula 2 nor cures the deficiencies of Kawakami and Meng.
Examiner respectfully disagrees. 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). Suk is not relied upon to render obvious Formula 2. Applicant does not argue how the combination with Suk is not proper. Furthermore, Meng teaches PCL-triacrylate as a crosslinking agent (pg. 118) (i.e. the same function as the second crosslinking agent of claim 1 and polyfunctional reactive monomer of Kawakami et al.) which 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) (i.e. is directed towards improving mechanical properties of a precursor composition comprising a crosslinking agent, which is the same problem faced by the inventor, see instant specification para. [0088]). Thus, there is a reasonable expectation of success and the argument is not persuasive.
Conclusion
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/ARMINDO CARVALHO JR./Primary Examiner, Art Unit 1729
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