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 .
Election/Restrictions
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected film and battery, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/1/2025.
Claim Rejections - 35 USC § 112
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 1-9 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.
The instant claims are drawn to a polymer binder comprising a first monomer, a second monomer, and a third monomer, wherein the second monomer is selected from formulas (III) and (IV). All claims depend from claim 1 and include the three monomers as the scope of the claim. The second monomer, formula (III), comprises “M”, defined by the claim (and specification) as hydrogen or an alkali metal cation. However, claim 2 recites that the second monomer may be an alkyl (meth)acrylate, which has a structure similar to (III) wherein M is alkyl. Formula (IV), which is also a second monomer option must include -CN, therefore the methyl methacrylate, etc listed as being the second monomer is referring to formula (III). Alkyl is not listed as an option of “M” in claim 1 or in the specification ([0010], [0042]), however the alkyl (meth)acrylates are included in the list of options ([0011], [0046]). Therefore, the scope of “M” is unclear. For purposes of examination, given the support in the specification and claims, the “M” substituent of formula (III) will be interpreted as being selected from hydrogen, alkyl, or an alkali metal cation.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The instant claim 1, from which claims 7 and 8 ultimately depend, is drawn to a polymer binder comprising a first monomer, a second monomer, and a third monomer. Claim 6, dependent upon claim 1, limits the polymer binder to being a core-shell binder, wherein the specification defines this as polymer particles which may have a hollow spherical or quasi-spherical structure, which would be the polymer binder is particle or bead form (specification [0051]). However, claims 7 and 8 are to the polymer binder of claims 1 and 6, wherein the core-shell structure includes a core comprising an inorganic heat-resistant filler, and claim 8 limits the type of inorganic heat-resistant filler material. The polymer binder and inorganic particles form a composite particle which fails to further limits the polymer binder of claim 1 (and 6). The polymer binder is prepared and combined with the inorganic particles to form coated particles, and the specification is clear that the two components are combined, with the polymer binder being its own distinct component ([0069]-[0073], [0164]). The composite coated particles are the product of using the polymer binder, not a further limitation of the polymer binder. For purposes of examination, the claims will be interpreted as having the same scope as claim 6 from which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (8,841,031).
Kim et al disclose a coating layer comprising a styrene-butadiene (SBR) polymer (instant third monomer of (V) and instant first monomer of (I)) , wherein the SBR rubber polymer preferably further comprises a hydrophilic functional group-containing monomer selected from the group consisting of those including acrylic acid, acrylates, and nitriles (instant second monomer of formulas (III) and (IV) wherein instant R21 is H, M is H and R22 is H, column 4, lines 27-55; instant claims 1 and 2). While the reference mentioned acrylic acid, acrylates, and nitriles broadly, it is well established in the art that such compounds are generally inclusive and interchangeable with their methylated counter parts, e.g., methacrylic acid, methacrylate, and methacrylonitrile. Thus, one of ordinary skill in the art would envisage the broad lasses of groups mentioned as also including those compounds where R21 and R22 and alkyl/ methyl. The inclusion of these monomers to increase the adhesion to a substrate.
The reference teaches the styrene is present in the polymer in ratio to butadiene of 1:99 to 99:1, preferably in an amount of 50 wt % or less (column 4, lines 56-60), wherein the amount of styrene in the polymer overlaps the claimed range of the instant claim 3 (10 to 50%). While the reference is silent with respect to the amount of the hydrophilic monomer, the reference teachings that the adhesive properties are adjusted by the unit would lead one of skill in the art to arrive at an amount of the hydrophilic group-containing monomer falling within the range of 25 to 75% (and the range of the first monomer, butadiene) through routine experimentation and optimization of the adhesive properties of the polymer.
When the monomers are as claimed, and the amounts of the monomer are within the ranges as set forth by the instant claim 3, the instant specification teaches that the polymer will possess a softening point of 60 to 100 o C as set forth by the instant claim 1, and a melting point as set forth by the instant claim 4 (less than or equal to 120 o C).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare a polymer having a hydrophilic group as discussed above, and wherein the units were included in amounts falling within the claimed ranges of the instant claim 3, wherein the resultant polymer also has a softening point meeting the limitations of the instant claim 1 (60 to 100 o C). The resultant polymer would meet the limitations of the instant claims 1-4.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Dusen et al (2003/0064314).
VanDusen et al disclose a core-shell polymer particle wherein the polymer may be selected from those comprising styrene, butadiene (R11 is alkyl; 1,3diene, isoprene also taught; (instant formula (I)), and a (meth)acrylic unit (instant formula III, M is hydrogen or alkyl) including (meth)acrylic acid, acrylonitrile (instant formula (IV)), alkyl (meth)acrylates (methyl, propyl, butyl, ethyl; [0036], [0048], claims 12 and 13; instant claims 1 and 2 for specific polymers and formulas (I), (III), (IV), and (V); R21 and R22 and H or methyl) with the same polymers listed as preferable for both of the core and shell. The reference is silent with respect to the softening temperature, but it is established in the art that the softening temperature of the polymer is a bit higher than the Tg, where the polymer begins to melt and flow. While the reference is silent with respect to the softening temperature, it does provide the general Tg range, which is about 20 o C to about 50 o C for the core and 50 to about 70 o C for the shell ([0056]). Therefore, one of ordinary skill in the art would have expected the softening temperature to be reasonably within a range of over the highest Tg of 70 to 100 o C as it is known in the art for the softening temperature to be slightly higher than the Tg which would fall within the range of the instant claim 1 of 60 to 100 o C.
Furthermore, the reference is silent with the proportions of each monomer, and therefore one of ordinary skill in the art would have assumed equal amounts, thus about 33 wt % per unit, which falls within the scope of the instant claim 4. One of ordinary skill in the art would have expected a polymer having a polymer core and shell having monomers as claimed, in amounts as claimed, to inherently possess similar properties, including the softening point and melting point of the polymer of the instant claims absent evidence to the contrary. Therefore, one of ordinary skill in the art would have expected the polymer of the reference material to meet the limitations of the instant claims 1-4.
The reference further teaches that the core has an average particle diameter of 0.05 to 0.5, preferably 0.1 to 0.3 microns (50 to 500nm, 100 to 300 nm), and the shell a thickness of 0.01 to 0.3 nm (10 to 300 nm; [0039]; instant claim 9). The average particle diameter (D50) of the combined core and shell would fall within the range of 110 to 600 nm, overlapping the claimed range of 200 to 3000nm as set forth by the instant claim 5.
The claimed polymer has a core-shell polymer particle structure and would meet the limitations of the instant claims 6-8.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the material of VanDusen et al, choosing as the core and shell polymers, those taught and claimed by the reference as cited above which comprise units of the instant formulas (I), (III/(IV), and (V). The resultant polymers and polymer particles would meet the limitations of the instant claims 1-9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior at on the PTO-892 includes additional references broadly teaching similar polymers or particles, but fail to fairly teach the claimed invention. One such reference, Ohmura et al, disclose core-shell hollow polymer particles for a porous ceramic filter, wherein the polymer particles have an average particles diameter of 15 microns (abstract). The composition can be mixed with a ceramic filler, and the hollow polymer particles comprise a shell having improved plasticity to expand and have greater strength. The particles are formed of a polymer comprising a hydrophilic monomer includes (meth)acrylonitrile (instant formula (IV), methyl (meth)acrylate, and (meth)acrylic acid (both of formula (III) wherein M is alkyl or hydrogen) in an amount of 10 to 99.9%, preferably 30 to 99.9% (column 6, lines 3 to 21). The polymer further comprises a multifunctional monomer in an amount of 0.1 to 30 wt% including butadiene (instant formula (I), column 6, lines 22-52). Other monomers including styrene are included in an amount of 0 to 69.9% (instant formula (V); column 6, line 53 to column 7, line 8). The reference teaches similar units in very broad amounts, however, the reference examples of “other” monomers do not include styrene, and use very low amounts of the multi-functional monomer which may include butadiene (not used in examples) from a long list of options.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA C WALKE whose telephone number is (571)272-1337. The examiner can normally be reached Monday to Thursday 5:30am to 4pm.
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/AMANDA C. WALKE/Primary Examiner, Art Unit 1722