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
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/07/2026 has been entered.
Response to Amendment
2. Applicant’s amendments with respect to claims filed on 07/07/2026 have been entered. Claims 2-5 and 17-20 remain pending in this application and are currently under consideration for patentability under 37 CFR 1.104. Claims 1 and 6-16 have been withdrawn from consideration.
Claim Rejections - 35 USC § 103
3. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
4. Claim(s) 2-5, 17-18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (Pub. No. US 20230038930 A1) in view of Hibino et al. (Pub. No. US 20210005876 A1).
Regarding claim 2, Fukushima teaches a liquid composition (electrode mixture, see [0122]) comprising: an inorganic oxide (lithium-containing transition metal oxide, see [0122]); and an organic solvent (organic solvent, see [0122], see [0120] where the organic solvent is methyl isobutyl ketone) represented by the following Chemical Formula 1 (methyl isobutyl ketone, see [0120] where the organic solvent is methyl isobutyl ketone, see chemical diagram below), where R.sub.1 (R.sub.1, chemical diagram below) and R.sub.2 (R.sub.2, see chemical diagram below) each independently represent straight (see chemical diagram below, R.sub.2 is a straight chain alkyl) or branched chain alkyl groups (see chemical diagram below, R.sub.1 is a branched chain alkyl) or straight or branched chain alkoxy groups and at least one of R.sub.1 (R.sub.1, chemical diagram below) and R.sub.2 (R.sub.2, see chemical diagram below) represents a branched chain alkyl group (see chemical diagram below, R.sub.1 is a branched chain alkyl) or a branched chain alkoxy group, wherein the organic solvent (organic solvent, see [0122], see [0120] where the organic solvent is methyl isobutyl ketone) has a topological index chi4v of 0.3 or greater (0.57, as evidenced by instant specification Table 2, Example 6, IUPAC name for methyl isobutyl ketone is 4-methyl-2-pentanone which has a chai4v of 0.57), and wherein the liquid composition (electrode mixture, see [0122]) does not contain a dispersant (see [0174], [0188], [0192], [0206], [0208], and [0222] provides specific examples and no dispersant for dispersing the inorganic oxide is present in the mixtures, further Fukushima makes no mention of a dispersant specifically present in the electrode mixture) that disperses the inorganic oxide (lithium-containing transition metal oxide, see [0122], note the electrode mixtures in Fukushima are mixtures of inorganic oxide in a solvent and binder), but fails to teach wherein the liquid composition has a viscosity of 200 mPa.Math.s or less.
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Chemical Diagram provided as additional evidence by PubChem (PubChem 2021)
However, Hibino teaches wherein the liquid composition (composite for forming an electrode, see [0019]) has a viscosity of 200 mPa.Math.s or less (200 mPa/s, see [0019]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Fukushima such that the viscosity of the electrode mixture is 200 mPa/s or less as taught by Hibino to improve the discharge stability (see [0019] of Hibino). Further Fukushima teaches that modifications can be made (see [0141] of Fukushima).
Regarding claim 3, Fukushima in view of Hibino teaches wherein the topological index chi4v is 0.4 or greater (0.57, as evidenced by instant specification Table 2, Example 6, IUPAC name for methyl isobutyl ketone is 4-methyl-2-pentanone which has a chai4v of 0.57).
Regarding claim 4, Fukushima in view of Hibino teaches wherein the topological index chi4v is 0.5 or greater (0.57, as evidenced by instant specification Table 2, Example 6, IUPAC name for methyl isobutyl ketone is 4-methyl-2-pentanone which has a chai4v of 0.57).
Regarding claim 5, Fukushima in view of Hibino teaches wherein, in the Chemical Formula 1 (methyl isobutyl ketone, see [0120] where the organic solvent is methyl isobutyl ketone, see chemical diagram above), R.sub.2 (R.sub.2, see chemical diagram above) represents a straight chain (see chemical diagram above, R.sub.2 is a straight chain alkyl) or branched chain alkyl group and R.sub.1 (R.sub.1, chemical diagram above) represents a branched chain alkyl group (see chemical diagram below, R.sub.1 is a branched chain alkyl group).
Regarding claim 17, Fukushima in view of Hibino teaches wherein the liquid composition (electrode mixture, see [0122]) has a solid content of 60 percent by mass or greater (60 to 80% by mass, see [0121] wherein the lithium-containing transition metal oxide, the binder, and the carbon nanomaterial make up 60-80% by mass of the electrode mixture so it is at least 60-80% by mass solid content).
Regarding claim 18, Fukushima in view of Hibino teaches the liquid composition (electrode mixture, see [0122]) of claim 2 (see rejection of claim 2 above) but is silent regarding an inkjet composition comprising the liquid composition.
However, Hibino teaches an inkjet composition (composite for forming an electrode includes an active material and macromolecular particles, and can be discharged by an inkjet method, see [0010]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Fukushima in view of Hibino such that the electrode mixture as taught by Fukushima in view of Hibino is used in an inkjet method of discharging therefore being an inkjet composition as taught by Hibino to precisely control discharge, and achieve high durability of the discharged composition (see [0006] of Hibino). Further Fukushima in view of Hibino teaches that modifications can be made (see [0141] of Fukushima).
Regarding claim 20, Fukushima in view of Hibino is silent as to wherein an index of dispersibility of the inorganic oxide in the liquid composition is 1.5 or less.
However, Fukushima in view of Hibino teaches a liquid composition with the same composition and characteristics as the claimed invention, and as evidenced by Table 3 Example 6 of the instant published application shows a composition with methyl isobutyl ketone has an index of dispersibility of 1.5 or less. Therefore, it is the Examiners position if the index of dispersibility of inorganic oxide in the liquid composition as taught by Fukushima in view of Hibino were measured in the same way, the liquid composition would exhibit an index of dispersibility of 1.5 or less, or exhibit a range which overlaps the claimed range in a way that obviates the claimed range.
5. Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (Pub. No. US 20230038930 A1) in view of Hibino et al. (Pub. No. US 20210005876 A1) as applied to claim 1 above, and further in view of Kazutaka (Pub. No. JP 2011138760 A).
Regarding claim 19, Fukushima in view of Hibino fails to teach wherein an index of dispersibility of the inorganic oxide in the liquid composition is greater than 1.5 and 2.0 or less.
However, Kazutaka teaches an organic solvent (oxygen-containing organic compound, see [0015]) represented by the following Chemical Formula 1 (isoamyl acetate, see [0016], see chemical diagram below), where R.sub.1 (R.sub.1, chemical diagram below) and R.sub.2 (R.sub.2, see chemical diagram below) each independently represent straight (see chemical diagram below, R.sub.2 is a straight chain alkyl) or branched chain alkyl groups or straight or branched chain alkoxy groups (see chemical diagram below, R.sub.1 is a branched chain alkoxy group) and at least one of R.sub.1 (R.sub.1, chemical diagram below) and R.sub.2 (R.sub.2, see chemical diagram below) represents a branched chain alkyl group or a branched chain alkoxy group (see chemical diagram below, R.sub.1 is a branched chain alkoxy group), wherein the organic solvent (oxygen-containing organic compound, see [0015]) has a topological index chi4v of 0.3 or greater (0.44, as evidenced by instant specification Table 2, Example 5).
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Chemical Diagram provided as additional evidence provided by PubChem (PubChem 2018)
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Fukushima in view of Hibino to substitute methyl isobutyl ketone as taught by Fukushima in view of Hibino for isoamyl acetate as taught by Kazutaka as an art effective equivalent organic solvent for the same purpose of achieving uniform electrode active material layer (see [0015] of Kazutaka, further see [0016] of Kazutaka teaches methyl isobutyl ketone as an equivalent compound). Further, Fukushima in view of Hibino teaches that modifications can be made (see [0141] of Fukushima).
Therefore, although Fukushima in view of Hibino in view of Kazutaka is silent to wherein an index of dispersibility of the inorganic oxide in the liquid composition is greater than 1.5 to 2.0 or less, Fukushima in view of Hibino in view of Kazutaka teaches a liquid composition with the same composition and characteristics as the claimed invention, and as evidenced by Table 3 Example 5 of the instant published application shows a composition with isoamyl acetate has an index of dispersibility of greater than 1.5 to 2.0 or less. Therefore, it is the Examiners position if the index of dispersibility of inorganic oxide in the liquid composition as taught by Fukushima in view of Hibino in view of Kazutaka were measured in the same way, the liquid composition would exhibit an index of dispersibility of greater than 1.5 to 2.0 or less, or exhibit a range which overlaps the claimed range in such a way as to obviate the claimed range.
Response to Arguments
6. Applicant's arguments filed 07/07/2026 have been fully considered but they are not persuasive.
Regarding applicants argument that Fukushima fails to teach the amendment to claim 1 of wherein the liquid composition does not contain a dispersant that disperses the inorganic oxide, and instead Fukushima explicitly indicates a dispersant is necessary. The Examiner respectfully disagrees as first, in examples provided in [0174], [0188], [0192], [0206], [0208], and [0222] of Fukushima there is no indication of any dispersant used in the electrode mixture. The applicant points to [0027] of Fukushima where a dispersion medium is said to be necessary and equates the dispersion medium to a dispersant. However this is an incorrect interpretation of the dispersion medium mentioned in [0027] and is instead the medium in which the inorganic oxide is dispersed or mixed into including a binder, solvent, and nanocarbon material as described in [0122]. Equating the dispersion medium disclosed by Fukushima to a separate dispersant for dispersing the inorganic oxide is improper. In [0042] of the applicant’s instant published specification the organic solvent is also used to disperse the inorganic oxide, therefore equating any dispersion medium to a dispersant would conflict with the applicant’s own disclosure of the purpose of the organic solvent.
Regarding applicant’s argument that nothing in any of the cited references would lead a person of ordinary skill in the art to modify the teachings to arrive at the liquid composition without a dispersant for dispersing the inorganic oxide. This argument is moot in view of the above arguments relating to the supposed dispersion medium being a dispersant, because there is not specific teaching in Fukushima of using a dispersant, and Hibino was not used to teach addition of a dispersing agent.
Regarding applicant's argument that the invention as claimed achieves the technically significant effect of high solid content and low viscosity without the use of any dispersant and such combination of properties was not suggested by Fukushima, Hibino, or Kazutaka, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding applicant’s argument that none of the teachings of the cited references would lead one of ordinary skill in the art to omit a dispersion medium, dispersing agent, or dispersant from the liquid composition. The Examiner respectfully disagrees as first, omitting a dispersion medium is not a limitation presented in the claims and would in fact go against the applicant’s own specification as seen in [0042] of the applicant’s instant published specification the organic solvent is also used to disperse the inorganic oxide and would therefore be the dispersion medium for the inorganic oxide. Further, as detailed above, conflating the disclosed dispersion medium in Fukushima with a dispersant is an improper interpretation of the information presented in Fukushima. Further, omission of a dispersing agent was not a limitation presented in the claims nor was it attempted to be taught by the Examiner.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS CALEB MARROQUIN whose telephone number is (571)272-0166. The examiner can normally be reached Monday - Friday 7:30-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tiffany Legette can be reached at 571-270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOUGLAS C MARROQUIN/Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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