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 .
Claim Objections
Claim 13 is objected to objected to for being dependent upon a rejected independent base claim, but would be indicated as allowable if rewritten in independent form, including all the limitations established in the independent claim and any intervening claims, as detailed herein.
Response to Arguments
In response to the non-final Office Action (dated 9 March 2026), the Applicant submits the following:
-- Claims 1, 2, 5, 7, 9, 11 have been amended.
-- New dependent claim 35 has been added.
-- No new matter has been entered.
The arguments presented by the Applicant specifically directed to Jin et al. (US 2016/0211548) have been fully considered but are moot in view of the new grounds of rejection presented below.
The Applicant’s arguments regarding allegations of unexpected results have been fully considered but are not persuasive. Whether 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. See MPEP 716.02(d). Additionally, applicants have the burden of explaining the data proffered as evidence of non-obviousness. See MPEP 716.02(b).
The examples in the specification are not reasonably commensurate in scope with the claims, and the Applicant has provided no explanation regarding how the exemplified results could reasonably be extended to the full scope of the claims. The examples are therefore insufficient to establish non-obviousness of the claims.
This rejection is FINAL.
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 – 3, 5, 7, 9, 11 & 35 are rejected under 35 U.S.C. § 103 as being unpatentable over Su et al. (US 2022/0344712 A1) in view of Sato et al. (US 2004/0139587 A1).
Regarding claims 1, 3, 5 & 35, Su teaches compositions for preparing electrolyte precursors, wherein said compositions are able to form an in-situ polymer electrolyte (Abstract). Su provides monomers for preparing said polymer electrolyte precursor composition and teaches vinylene carbonate (VC) as the preferred (A1) monomer (p. 1 & 2, [0015]). The second monomer is preferably trimethylolpropane ethoxylate triacrylate (ETPTA), trimethylolpropane triacrylate (TMPTA) or pentaerythritol triacrylate (PETA) (p. 3, [0059]). Su also expressly discloses that the combination of VC and cross-linking agent may form an excellent polymer skeleton (p. 1, [0005]).
The monomers are present in amounts of 10-80 wt.%, based on the weight of the precursor composition and, present in a weight ratio of the first monomer to the second monomer, preferably in weight ratios of 20:0.5 – 20:10 (p. 2 [0027]). This indicates that the crosslinking agent will be included in amounts of approximately 0.24-26.7 wt.%, as required by the claim. Thus, VC and any of the above ‘second monomers/crosslinking agents’ read on the gel skeleton monomer and the crosslinking agent, as required by the claims
Su also teaches the composition further comprises a polymerization initiator in amounts of 0.1-3 wt.% of the composition (p. 3 & 4, [0064]-[0065]) and further comprises a lithium salt (p. 4, [0067]-[0068]), as required by the claim.
As such, Su teaches almost everything of the instant application, however, Su is silent on the flexible additive as required by the claim.
In the same field of endeavor, Sato teaches a polymer gel electrolyte-forming composition (Abstract). Said composition comprises a compound having a reactive double bond (p. 3, [0043]). Examples thereof include polyethylene glycol diacrylate having an average molecular weight of 200 – 1,000 (p. 3, [0045]). Compounds suitable for this purpose include poly(ethylene glycol) diacrylate and trimethylolpropane triacrylate (p. 3, [0044]-[0046]).
As the inventions of both Su and Sato pertain directly to polymer gel electrolytes and processes of making them, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the poly(ethylene glycol) diacrylate (having an average molecular weight of 200 – 1,000) taught by Saito, with the crosslinking agent/second monomer (i.e., trimethylolpropane triacrylate) taught by Su, as the prior art recognizes their equivalence & suitability for the same purpose. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It would have been further obvious to one of ordinary skill in the art at the time of filing to include poly(ethylene glycol) diacrylate and trimethylolpropane triacrylate in individual amounts of greater than 0 wt% and less than 26.7 wt.% such that the sum total falls within the range prescribed by Su, as amounts within this range are expressly recognized as being suitable.
In the alternative, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, the cited prior art discloses poly(ethylene glycol) diacrylate and trimethylolpropane triacrylate as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine poly(ethylene glycol) diacrylate and trimethylolpropane triacrylate in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio falls within the claimed ratio.
Combining the crosslinking agents of Su (reading on the claimed crosslinking agent) and Sato (reading on the claimed flexible additive), as detailed above, results in inclusion of each component in amounts of approximately 0.12-13.35 wt.% when combined as equivalents in a 1:1 ratio or alternatively, in amounts of greater than 0 to less than 26.7 wt.% when combined such that the sum total of crosslinking agents remains within the range prescribed by Su.
Modification of Su in view of Sato as detailed above reads on limitations established by claims 1, 3, 5 & 35.
Regarding claim 7, maintaining the modification of Su in view of Sato previously detailed, Su teaches various azo compounds as suitable polymerization initiators, including azobisisobutyronitrile and azobisisoheptanenitrile (p. 3, [0063]-[0064]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 9, maintaining the modification of Su in view of Sato previously detailed, Su teaches various lithium salts, with preference given to lithium bis(trifluoromethanesulfonyl)imide (p. 4, [0069]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 11, maintaining the modification of Su in view of Sato previously detailed, Sato provides guidance for the appropriate amount of the salt in relation to the amount (i.e., volume) of the composition to preferably be in the range of 0.1 – 2 mol/L (p. 7, [0100]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Allowable Subject Matter
Claim 13 is objected to for being dependent upon a rejected base claim, but would be allowable if rewritten in independent form, including all of the limitations established in the independent claim and any intervening claims.
Regarding claim 13, the claim is drawn to a gel electrolyte precursor comprising:
-- a gel skeleton monomer in amounts of 80-95%,
-- a flexible additive in amounts of 2-10%,
-- a crosslinking agent in amounts of 2-10%, and
-- a polymerization initiator in amounts of 0.1-3%.
The closest prior art is attributed to Su et al. (US 2022/0344712 A1) and Sato et al. (US 2004/0139587 A1).
Su teaches compositions for preparing electrolyte precursors comprising vinylene carbonate (VC) (p. 1 & 2, [0015]) and trimethylolpropane triacrylate (TMPTA) (p. 3, [0059]), reading on the gel skeleton monomer and the crosslinking agent, respectively. These monomers are present in weight ratios of 20:0.5 – 20:10 (p. 2 [0027]) and present in a combined total amount of 10-80 wt.%. This indicates that the crosslinking agent will be included in amounts of approximately 0.24-26.7 wt.%. A polymerization initiator is included in amounts of 0.1-3 wt.% (p. 3 & 4, [0064]-[0065]).
Su, however, is silent on the flexible additive as required by the claim.
In the same field of endeavor, Saito teaches a polymer gel electrolyte-forming composition (Abstract). Sato states that a compound having at least 2 reactive double bonds is needed in order to form a three-dimensional network (i.e., porous) structure (p. 3, [0048]). Compounds suitable for this purpose include poly(ethylene glycol) diacrylate and trimethylolpropane triacrylate (p. 3, [0044]-[0046]).
Saito fails to remedy the deficiencies of Su, as combining the crosslinking agents of Su (reading on the claimed crosslinking agent) and Sato (reading on the claimed flexible additive), as detailed above, results in inclusion of each component in amounts of approximately 0.12-13.35 wt.% when combined as equivalents in a 1:1 ratio. However, the gel skeleton monomer will be limited to a maximum amount of 80 wt.%, whereas the instant claim requires said gel skeleton monomer in a minimum amount of 80 wt.%.
A thorough search of the prior art neither revealed nor identified any other reference or combination of references, including the closest prior art of Su et al. (US 2022/0344712 A1) and Sato et al. (US 2013/0230779 A1), which would anticipate, fairly teach, suggest or otherwise motivate one of ordinary skill in the art to arrive at the claimed invention. The teachings of Su & Saito are inadequate & insufficient (independently or in view of one another) for one of ordinary skill in the art to anticipate or render obvious the composition that is claimed in the instant application.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
