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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 30th, 2026 has been entered.
Claim Status
Applicant’s claim amendments submitted on March 30th, 2026 have been
entered into the file.
Currently claim 1 is amended and claim 11 is cancelled, resulting in claims 1-10, 12-15 pending for examination.
Response to Amendment
The amendments submitted on March 30th, 2026 have been entered into the file.
Claim Rejections - 35 USC § 112(b)
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.
Claim 13 is 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.
Regarding claim 13, the instant claim recites “the conjugated diene-based rubber polymer is dissolved in a butyl butyrate solvent at room temperature.” However, it is unclear if the recitation of “a butyl butyrate solvent” of the instant claim refers to the identity of “the solvent” recited in the independent claim 1, where butyl butyrate is exemplified as a suitable solvent, or if the recitation of “a butyl butyrate solvent” of the instant claim indicates an additional solvent in which the conjugated diene-based rubber polymer is dissolved. For the purposes of examination, the former interpretation is understood and the claimed limitation is interpreted by the Examiner as met if the conjugated diene-based rubber polymer of the prior art is capable of being dissolved in butyl butyrate at room temperature.
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.
Claims 1-6, 8, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over of Matsuo (U.S. Patent Publication No. 20210344043 A1) in view of Yamamoto (U.S. Patent Publication No. 20180261845 A1).
Regarding claim 1, Matsuo teaches a binder composition for an all-solid-state battery (Abstract), comprising a conjugated diene-based rubber polymer (second polymer) (Paragraphs 0084-0086) and a solvent (Paragraph 0016).
Matsuo teaches the solvent is at least one selected from xylene, toluene, cyclohexane, and butyl butyrate (Paragraphs 0021, 0109).
Matsuo teaches the conjugated diene-based rubber polymer is highly soluble in the solvent and (Paragraph 0016) is dissolved in the solvent in the process of making the binder composition (Paragraph 0113).
Matsuo is silent as to a content of a cis bond in the conjugated diene-based rubber polymer is 90% by weight or more.
However, Yamamoto discloses a binder composition for a battery (Paragraph 0008) which comprising a conjugated diene-based rubber polymer and a solvent (Paragraphs 0012, 0015, 0031). Yamamoto teaches the conjugated diene-based rubber polymer contains at least one monomer selected from the group consisting of 1,3-butadiene, isoprene, 2,3-dimethyl-1,3-butadiene (Paragraph 0039), which overlaps with the conjugated diene-based rubber polymer of Matsuo (Paragraph 0091) and the instant disclosure (Page 3, Lines 18-22).
Yamamoto teaches the conjugated diene monomer (such as 1,3-butadiene) can form at least cis-1,4-bonded, trans-1,4-bonded, and vinyl-bonded monomer units through a polymerization reaction. Yamamoto teaches that in the first particulate polymer of the binder composition, it is preferable for the proportion of cis-1,4-bonding to be from 90 mol% to 100 mol%. Yamamoto teaches when the proportion of cis-1,4-bonded monomer units among all aliphatic conjugated diene monomer units (100 mol %) in the first particulate polymer is at least the lower limit of any of the ranges set forth above, the peel strength of an electrode produced using the binder composition can be further improved, and cycle characteristics of a secondary battery including the electrode can be further improved (Paragraph 0041).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conjugated diene-based rubber polymer of Matsuo to incorporate the teachings of Yamamoto in which the proportion of cis-1,4-bonding in the conjugated diene-based rubber polymer in from 90 mol% to 100 mol% among all aliphatic conjugated diene monomer units. Doing so would advantageously result in the desired electrode peel strength and secondary battery cycle characteristics, as recognized by Yamamoto.
Absent unexpected results, it would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the weight proportion of cis bonds in the conjugated diene monomer units in the first particulate polymer of the binder composition of Matsuo in view of Yamamoto since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
In the present invention, one would have been motivated to optimize the amount of cis bonds in the conjugated diene-based rubber polymer to be within the claimed ranges of instant claim 1 in order to achieve the desired electrode peel strength and secondary battery cycle characteristics, as recognized by Yamamoto. For example, the ordinary artisan would recognize that the amount (weight %) of cis-1,4-bonded monomers may be tuned in order to obtain the desired features of the electrode and the battery.
Regarding claim 2, Matsuo teaches the binder composition of claim 1, wherein the conjugated diene-based rubber polymer is a polymer of at least one monomer selected from the group consisting of 1,3-butadiene, isoprene, and 2,3-dimethyl-1,3-butadiene (Paragraph 0091).
Regarding claim 3, Matsuo teaches the binder composition of claim 1.
Matsuo is silent as to the content of the cis bond in the conjugated diene-based rubber polymer is 95% by weight or more.
However, as discussed above in the modification of Matsuo by Yamamoto, the content of the cis bond taught by Yamamoto which modified Matsuo was 90 mol% to 100 mol%, more preferably 95 mol % or more among all aliphatic conjugated diene monomer units. Further, the rejection established it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the weight proportion of cis bonds in the conjugated diene monomer units in the first particulate polymer of the binder composition of Matsuo to be within the claimed ranges of instant claim 1 in order to achieve the desired electrode peel strength and secondary battery cycle characteristics, as recognized by Yamamoto. For example, the ordinary artisan would recognize that the amount (weight %) of cis-1,4-bonded monomers may be tuned in order to obtain the desired features of the electrode and the battery, meeting the instant claimed limitations.
Regarding claims 4-6, Matsuo teaches the binder composition of claim 1.
Claim 4 is a product-by-process claim, thus claims 5-6 which depend from claim, 4 are also product by process claims.
Although Matsuo does not teach the conjugated diene-based rubber polymer is produced using a neodymium-based catalyst or a nickel-based catalyst, wherein the neodymium-based catalyst includes a neodymium salt compound, a conjugated diene-based monomer, an organoaluminium chloride compound, and one or more organoaluminium compounds and the nickel-based catalyst includes a nickel salt compound, a conjugated diene-based monomer, an aluminum compound, and a boron fluoride complex compound, it is noted that “Even 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-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process”. Further, “the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” See MPEP 2113.
The structure resulting in a conjugated diene-based rubber polymer such as 1,3-butadiene, isoprene, 2,3-dimethyl-1,3-butadiene with a content of the cis bond is 90% or more, as claimed in claims 1-3 is taught by Matsuo in view of Yamamoto, which reads on the structural limitations of the claim.
Regarding claim 8, Matsuo teaches the binder composition of claim 1 comprising the conjugated diene-based rubber polymer.
Matsuo is silent as to the solution viscosity of the conjugated diene-based rubber polymer having a solution viscosity of 80 to 1,200 cps wherein the solution viscosity is measured by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25 °C.
However, as discussed above in the rejection of claim 2, Matsuo teaches conjugated diene-based rubber polymers which overlap with those of the instant disclosure such as 1,3-butadiene, isoprene, and 2,3-dimethyl-1,3-butadiene. As discussed above in the rejection of claim 1, Matsuo teaches the solvent of the binder composition containing xylene, toluene, cyclohexane, and butyl butyrate, which overlaps with the solvent of the instant disclosure.
It is reasonable to presume that the solution viscosity (measured by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25ºC) of the conjugated diene-based rubber polymer is inherent to Matsuo in view of Yamamoto. Support for said presumption is found in that Matsuo teaches the conjugated diene-based rubber polymer (second polymer) of the binder composition imparts suitable viscosity to the slurry composition for a solid-electrolyte containing layer produced using the binder composition. Additionally, Matsuo in view of Yamamoto teaches conjugated diene-based rubber polymers and solvents which overlap those of the instant disclosure, and therefore when one of the polymers of Matsuo is dissolved in a solvent of Matsuo, and both the identity of the solvent and the polymer is the same as the instant disclosure, the viscosity of that solution of Matsuo, when prepared by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt%, is expected to have the same viscosity at 25ºC as the claimed invention.
However, additionally, the limitation of “a solution viscosity…measured by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25 °C” is a method limitation and does not determine patentability of the product, unless the method produces a structural feature of the product. The method of measuring a feature of the project is germane to the issue of patentability of the product itself, unless applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113.
Regarding claim 12, Matsuo teaches the binder composition of claim 1.
As discussed above, Matsuo teaches the binder composition contains a first polymer, a second polymer, and a solvent (Abstract).
Further, Matsuo teaches the proportion constituted by the first polymer among the total of the first polymer and the second polymer is preferably 10 mass % or more, more preferably 20 mass % or more, and even more preferably 30 mass % or more, and is preferably 90 mass % or less, more preferably 80 mass % or less, and even more preferably 70 mass % or less (Paragraph 107). The ordinary artisan would recognize that by adjusting the proportion of the first polymer among the total of the first polymer and the second polymer, the proportion of the second polymer (conjugated diene-based rubber polymer) is also adjusted.
Matsuo teaches that when the first polymer is within the aforementioned ranges, aggregation can be prevented, leading to improved ion conductivity and output characteristics, and a slurry containing the binder composition has a desirable viscosity (Paragraph 0107).
Absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the content of the conjugated diene-based rubber polymer (second polymer) of the binder composition of Matsuo since it has been held that where general conditions of a claim are discloses in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
In the present invention, one would have been motivated to optimize the content of the conjugated diene-based rubber polymer in the conjugated diene-based rubber polymer to be within the claimed ranges of instant claim 1 in order to achieve the desired conductivity, output, and viscosity, as recognized by Matsuo. For example, the ordinary artisan would recognize that the content (weight %) of the conjugated diene-based rubber polymer may be tuned in order to obtain the desired features of the electrode and the battery
Regarding claim 13, Matsuo teaches the binder composition of claim 1, comprising the conjugated diene-based rubber polymer.
As discussed above, Matsuo teaches the conjugated diene-based rubber polymer is dissolved in the solvent of the binder composition (Paragraph 0113) and that butyl butyrate is a suitable solvent for the binder composition.
Therefore, the conjugated diene-based rubber polymer of Matsuo is taught to be dissolved in a butyl butyrate solvent, and is thus capable of being dissolved in butyl butyrate at a variety of temperatures, including at room temperature (see above 112b interpretation), meeting the instant claimed limitations.
Regarding claim 14, Matsuo teaches a slurry composition for an all-solid-state battery, comprising:
The binder composition of claim 1;
And at least one selected from the group consisting of a conductive material, a positive electrode active material, a negative electrode active material, and a solid electrolyte (Paragraphs 0022, 0239).
Regarding claim 15, Matsuo teaches an all-solid-state battery, comprising: a positive electrode; a negative electrode; and a solid electrolyte, wherein at least one of the positive electrode, the negative electrode, and the solid electrolyte is prepared by applying a slurry composition containing the binder composition of claim 1, (Paragraphs 0192-0195) and drying a solvent (Paragraph 0173).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuo in view of Yamamoto as applied to claims 1-6, 8, and 12-15 above, and further in view of Adachi (W.O. 2013147007 A1).
Regarding claim 7, Matsuo teaches the binder composition of claim 1.
Matsuo is silent as to the weight average molecular weight of the conjugated diene-based rubber polymer being 100,000 to 2,000,000.
However, Adachi discloses a slurry composition for a secondary battery negative electrode containing a binder (Paragraphs 1-2). Adachi teaches the binder comprising a conjugated diene monomer unit (Paragraph 9), including monomers such as 1,3-butadiene, 2-methyl-1,3-butadiene, 2,3-dimethyl-1,3-butadiene, 2-chloro- 1,3-butadiene (Paragraph 31), which align with the examples of conjugated diene-based rubber polymer of the binder composition of the instant disclosure. Adachi further teaches that it is preferable for the weight average molecular weight of the conjugated diene copolymer used as the binder to be between 10,000 to 1,000,000, as when the weight average molecular weight of the binder is in this range, the strength of the obtained negative electrode for the secondary battery can be improved (Paragraph 51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conjugated diene-based rubber polymer of Matsuo to incorporate the teachings of Adachi in which the weight average molecular weight is between 10,000 and 1,000,000. Doing so would advantageously result in a negative electrode with high strength, as recognized by Adachi.
The resulting range of molecular weight of the conjugated diene-based rubber polymer of Matsuo in view of Adachi overlaps that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Claim 8 is alternately rejected under 35 U.S.C. 103 as being unpatentable over Matsuo in view of Yamamoto as applied to claims 1-6, 8, and 12-15 above, and further in view of Tanaka (W.O. 2019124263).
Regarding claim 8, Matsuo teaches the binder composition of claim 1.
In the event that the viscosity of the solution of dissolved conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25 °C is found to not be inherent to Matsuo, an alternate rejection in view of Tanaka is presented below.
Tanaka discloses a binder solution for a battery electrode comprising a polymer (resin) and a solvent (Paragraph 1). Tanaka teaches that the viscosity of the binder solution at 25 °C is preferably 100 cP or more and 5000 cP (range of 100 to 5000 cps). Tanaka teaches that when the viscosity of the binder solution is within the disclosed range, the coating property of the binder is improved, the formation of aggregates can be suppressed, and the productivity of the electrode is enhanced without a large increase in viscosity (Paragraph 30).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the viscosity of the binder solution of Matsuo to incorporate the teachings of Tanaka in which the viscosity is between 100 and 5000 cps at 25 °C when the conjugated diene-based rubber polymer is dissolved in toluene at a concentration of 5.23 wt%. Doing so would advantageously result in improved coating property of the binder, suppressed formation of aggregates, and the enhanced productivity of the electrode without a large increase in viscosity, as recognized by Tanaka.
The resulting range of solution viscosity of the conjugated diene-based rubber polymer at 25 °C of Matsuo in view of Tanaka overlaps that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
However, additionally, the limitation of “a solution viscosity…measured by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25 °C” is a method limitation and does not determine patentability of the product, unless the method produces a structural feature of the product. The method of measuring a feature of the project is germane to the issue of patentability of the product itself, unless applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuo in view of Yamamoto as applied to claims 1-6, 8, 12-15 above, and further in view of Takahashi (U.S. Patent Publication No. 20180183064 A1).
Regarding claim 9, Matsuo teaches the binder composition of claim 1.
Matsuo is silent as to the Mooney viscosity of the conjugated diene-based rubber polymer being 30 to 100.
However, Takahashi discloses a binder composition for a secondary battery electrode comprising a polymer (Paragraph 0031). Takahashi teaches that the binder composition for a secondary battery electrode may have favorable dispersion of electrode active material in the electrode slurry when the Mooney viscosity of the polymer is 50 or more while also ensuring coatability of the slurry when the Mooney viscosity is 200 or less (Paragraph 0032).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conjugated diene-based rubber polymer of Matsuo to incorporate the teachings of Takahashi in which the Mooney viscosity is between 50 and 200. Doing so would advantageously result in favorable dispersion of the electrode active material in the slurry as well as ensuring coatability, as recognized by Takahashi.
The resulting range of Mooney viscosity of the conjugated diene-based rubber polymer of Matsuo in view of Takahashi overlaps the instant claimed range of Mooney viscosity. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuo in view of Yamamoto as applied to claims 1-6, 8, and 12-15 above, further in view of Choi (U.S. Patent Publication No. 2010167166 A1)
Regarding claim 10, Matsuo teaches the binder composition of claim 1.
Matsuo is silent as to the conjugated diene-based rubber polymer having a branching degree of 0.8 to 4.
However, Choi discloses a hyper-branched polymer included in an electrode (Paragraph 1). Choi teaches the degree of branching of the hyperbranched polymer is 0.05 to 1 (Paragraph 0013). Choi further teaches the hyper-branched polymer improves the performance of the electrode as well as has excellent binding properties which enables the electrode to be formed without a common binder (Paragraph 0040).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conjugated diene-based rubber polymer of Matsuo to incorporate the teachings of Choi in which the degree of branching is 0.05 to 1. Doing so would advantageously result in desirable electrode performance and binding properties, as recognized by Choi.
The resulting range of branching degree of the conjugated diene-based rubber polymer of Matsuo in view of Choi overlaps the instant claimed range of branching degree. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Claim 10 is alternately rejected under 35 U.S.C. 103 as being unpatentable over Matsuo in view of Yamamoto as applied to claims 1-6, 12, and 14 above, as evidenced by Lee (U.S. Patent Publication No. 20220127403 A1).
Regarding claim 10, Matsuo teaches the binder composition of claim 1.
Matsuo is silent as to the conjugated diene-based rubber polymer having a branching degree of 0.8 to 4.
As evidenced by Lee, the degree of branching of a rubber polymer may be measured by multiplying the ratio of the Mooney viscosity (MV) to the solution viscosity (SV) at 25ºC by 10, i.e. ((MV/SV)*10) (Paragraph 0040).
As discussed above, the modification of Matsuo by Takahashi resulted in a range of the Mooney viscosity of the conjugated diene-based rubber polymer from 50 to 200.
As discussed above, the modification of Matsuo by Tanaka resulted in a range of the solution viscosity at 25ºC from 100 to 5000 cps.
Therefore, according to the evidence of Lee, the upper and lower limit of the degree of branching of the conjugated diene-based rubber polymer may be calculated:
when Mooney viscosity = 50, solution viscosity = 5000 cps:
degree of branching = ((50/5000)*10) = 0.1
when Mooney viscosity = 200, solution viscosity = 100 cps:
degree of branching = ((200/100)*10) = 20
Therefore, the degree of branching of the conjugated diene-based rubber polymer according to the teachings of Mooney viscosity and solution viscosity of Takahashi and Tanaka, respectively, is calculated to be 0.1 to 20. This range of degree of branching overlaps the range given in the instant claim. Therefore, prima facie obviousness is established and the claimed limitations are met. See MPEP 2144.05 (I).
Claims 1-6, 8, 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Itai (U.S. 20240120489 A1) in view of Yamamoto.
Regarding claim 1, Itai teaches a binder composition for an all-solid-state battery (Paragraph 0001), comprising a conjugated diene-based rubber polymer (Paragraph 0017) and a solvent (liquid medium), wherein the conjugated diene-based rubber polymer is dissolved in the solvent (Paragraph 0024, 0113).
Itai teaches wherein the solvent is at least one selected from the group consisting of toluene, xylene, hexane, cyclohexane, nonane, decane, tetralin, dodecane, butyl butyrate, and hexyl butyrate (Paragraph 0108).
Itai is silent as to a content of a cis bond in the conjugated diene-based rubber polymer is 90% by weight or more.
However, Yamamoto discloses a binder composition for a battery (Paragraph 0008) which comprising a conjugated diene-based rubber polymer and a solvent (Paragraphs 0012, 0015, 0031). Yamamoto teaches the conjugated diene-based rubber polymer contains at least one monomer selected from the group consisting of 1,3-butadiene, isoprene, 2,3-dimethyl-1,3-butadiene (Paragraph 0039), which overlaps with the conjugated diene-based rubber polymer of Matsuo (Paragraph 0091) and the instant disclosure (Page 3, Lines 18-22).
Yamamoto teaches the conjugated diene monomer (such as 1,3-butadiene) can form at least cis-1,4-bonded, trans-1,4-bonded, and vinyl-bonded monomer units through a polymerization reaction. Yamamoto teaches that in the first particulate polymer of the binder composition, it is preferable for the proportion of cis-1,4-bonding to be from 90 mol% to 100 mol%. Yamamoto teaches when the proportion of cis-1,4-bonded monomer units among all aliphatic conjugated diene monomer units (100 mol %) in the first particulate polymer is at least the lower limit of any of the ranges set forth above, the peel strength of an electrode produced using the binder composition can be further improved, and cycle characteristics of a secondary battery including the electrode can be further improved (Paragraph 0041).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conjugated diene-based rubber polymer of Itai to incorporate the teachings of Yamamoto in which the proportion of cis-1,4-bonding in the conjugated diene-based rubber polymer in from 90 mol% to 100 mol% among all aliphatic conjugated diene monomer units. Doing so would advantageously result in the desired electrode peel strength and secondary battery cycle characteristics, as recognized by Yamamoto
Absent unexpected results, it would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the weight proportion of cis bonds in the conjugated diene monomer units in the first particulate polymer of the binder composition of Itai in view of Yamamoto since it has been held that where general conditions of a claim are discloses in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
In the present invention, one would have been motivated to optimize the amount of cis bonds in the conjugated diene-based rubber polymer to be within the claimed ranges of instant claim 1 in order to achieve the desired electrode peel strength and secondary battery cycle characteristics, as recognized by Yamamoto. For example, the ordinary artisan would recognize that the amount (weight %) of cis-1,4-bonded monomers may be tuned in order to obtain the desired features of the electrode and the battery.
Regarding claim 2, Itai teaches the binder composition of claim 1, wherein the conjugated diene-based rubber polymer is a is a polymer of at least one monomer selected from the group consisting of 1,3- butadiene, isoprene, 2,3-dimethyl-1,3-butadiene, 1,3-pentadiene (Paragraph 0040).
Regarding claim 3, Itai teaches the binder composition of claim 1.
Itai is silent as to the content of the cis bond in the conjugated diene-based rubber polymer is 95% by weight or more.
However, as discussed above in the modification of Itai by Yamamoto, the content of the cis bond taught by Yamamoto which modified Itai was 90 mol% to 100 mol%, more preferably 95 mol % or more among all aliphatic conjugated diene monomer units. Further, the rejection established it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the weight proportion of cis bonds in the conjugated diene monomer units in the first particulate polymer of the binder composition of Itai to be within the claimed ranges of instant claim 1 in order to achieve the desired electrode peel strength and secondary battery cycle characteristics, as recognized by Yamamoto. For example, the ordinary artisan would recognize that the amount (weight %) of cis-1,4-bonded monomers may be tuned in order to obtain the desired features of the electrode and the battery, meeting the instant claimed limitations.
Regarding claims 4-6, Itai teaches the binder composition of claim 1.
Claim 4 is a product-by-process claim, thus claims 5-6 which depend from claim 4 are also product by process claims.
Although Itai does not teach the conjugated diene-based rubber polymer is produced using a neodymium-based catalyst or a nickel-based catalyst, wherein the neodymium-based catalyst includes a neodymium salt compound, a conjugated diene-based monomer, an organoaluminium chloride compound, and one or more organoaluminium compounds and the nickel-based catalyst includes a nickel salt compound, a conjugated diene-based monomer, an aluminum compound, and a boron fluoride complex compound, it is noted that “Even 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-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process”. Further, “the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” See MPEP 2113.
The structure resulting in a conjugated diene-based rubber polymer such as 1,3-butadiene, isoprene, 2,3-dimethyl-1,3-butadiene, 1,3-pentadiene with a content of the cis bond is 90% or more, as claimed in claims 1-3 is taught by Itai in view of Yamamoto, which reads on the structural limitations of the claim.
Regarding claim 8, Itai teaches the binder composition of claim 1 comprising the conjugated diene-based rubber polymer.
Itai is silent as to the solution viscosity of the conjugated diene-based rubber polymer having a solution viscosity of 80 to 1,200 cps wherein the solution viscosity is measured by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25 °C.
However, as discussed above in the rejection of claim 2, Itai teaches conjugated diene-based rubber polymers which overlap with those of the instant disclosure such as 1,3-butadiene, isoprene, 2,3-dimethyl-1,3-butadiene, 1,3-pentadiene. As discussed above in the rejection of claim 1, Itai teaches the solvent of the binder composition containing toluene, xylene, hexane, cyclohexane, nonane, decane, tetralin, dodecane, butyl butyrate, and hexyl butyrate, which overlaps with the solvent of the instant disclosure.
It is reasonable to presume that the solution viscosity (measured by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25ºC) of the conjugated diene-based rubber polymer is inherent to Itai in view of Yamamoto. Support for said presumption is found in that Itai in view of Yamamoto teaches conjugated diene-based rubber polymers and solvents which overlap those of the instant disclosure, and therefore when one of the polymers of Itai is dissolved in a solvent of Itai, and both the identity of the solvent and the polymer is the same as the instant disclosure, the viscosity of that solution of Itai, when prepared by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt%, is expected to have the same viscosity at 25ºC as the claimed invention.
However, additionally, the limitation of “a solution viscosity…measured by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25 °C” is a method limitation and does not determine patentability of the product, unless the method produces a structural feature of the product. The method of measuring a feature of the project is germane to the issue of patentability of the product itself, unless applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113.
Regarding claim 12, Itai teaches the binder composition of claim 1.
Itai teaches the binder composition containing the conjugated diene-based polymer (A) and a liquid medium, as discussed above. Itai teaches the content of the liquid medium (B) in the binder composition is particularly preferably from 300 to 3,000 parts by mass with respect to 100 parts by mass of the conjugated diene-based polymer (A) (Paragraph 0109).
Thus, Itai teaches the ratio of the conjugated diene-based polymer (A) to the solvent (B) is from 1:3 to 1:30. As such, Itai teaches the content of the conjugated diene-based rubber polymer is 3% (1/31) to 25% (1/4) by weight based on the total weight of the binder composition.
This range overlaps the range of the content of the conjugated diene-based rubber polymer based on a total weight of the binder composition of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 13, Itai teaches the binder composition of claim 1, comprising the conjugated diene-based rubber polymer.
As discussed above, Itai teaches the conjugated diene-based rubber polymer is dissolved in the solvent of the binder composition (Paragraph 0113) and that butyl butyrate is a suitable solvent for the binder composition.
Therefore, the conjugated diene-based rubber polymer of Itai is taught to be dissolved in a butyl butyrate solvent, and is thus capable of being dissolved in butyl butyrate at a variety of temperatures, including at room temperature (see above 112b interpretation), meeting the instant claimed limitations.
Regarding claim 14, Itai teaches a slurry composition for an all-solid-state battery, comprising: the binder composition of claim 1; and at least one selected from the group consisting of a conductive material (Paragraph 0251), a positive electrode active material, a negative electrode active material, and a solid electrolyte (Paragraphs 0025-0026).
Regarding claim 15, Itai teaches an all-solid-state battery, comprising: a positive electrode; a negative electrode; and a solid electrolyte, wherein at least one of the positive electrode, the negative electrode, and the solid electrolyte is prepared by applying a slurry composition containing the binder composition of claim 1, and drying a solvent (Paragraph 0027).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Itai in view of Yamamoto as applied to claims 1-6, 8, and 12-15 above, and further in view of Adachi.
Regarding claim 7, Itai teaches the binder composition of claim 1.
Itai is silent as to the weight average molecular weight of the conjugated diene-based rubber polymer being 100,000 to 2,000,000.
However, Adachi discloses a slurry composition for a secondary battery negative electrode containing a binder (Paragraphs 1-2). Adachi teaches the binder comprising a conjugated diene monomer unit (Paragraph 9), including monomers such as 1,3-butadiene, 2-methyl-1,3-butadiene, 2,3-dimethyl-1,3-butadiene, 2-chloro- 1,3-butadiene (Paragraph 31), which align with the examples of conjugated diene-based rubber polymer of the binder composition of the instant disclosure. Adachi further teaches that it is preferable for the weight average molecular weight of the conjugated diene copolymer used as the binder to be between 10,000 to 1,000,000, as when the weight average molecular weight of the binder is in this range, the strength of the obtained negative electrode for the secondary battery can be improved (Paragraph 51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conjugated diene-based rubber polymer of Itai to incorporate the teachings of Adachi in which the weight average molecular weight is between 10,000 and 1,000,000. Doing so would advantageously result in a negative electrode with high strength, as recognized by Adachi.
The resulting range of molecular weight of the conjugated diene-based rubber polymer of Itai in view of Adachi overlaps that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Claim 8 is alternately rejected under 35 U.S.C. 103 as being unpatentable over Itai in view of Yamamoto as applied to claims 1-6, 8, and 12-15 above, and further in view of Tanaka.
Regarding claim 8, Itai teaches the binder composition of claim 1.
In the event that the viscosity of the solution of dissolved conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25 °C is found to not be inherent to Itai, an alternate rejection in view of Tanaka is presented below.
Tanaka discloses a binder solution for a battery electrode comprising a polymer (resin) and a solvent (Paragraph 1). Tanaka teaches that the viscosity of the binder solution at 25 °C is preferably 100 cP or more and 5000 cP (range of 100 to 5000 cps). Tanaka teaches that when the viscosity of the binder solution is within the disclosed range, the coating property of the binder is improved, the formation of aggregates can be suppressed, and the productivity of the electrode is enhanced without a large increase in viscosity (Paragraph 30).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the viscosity of the binder solution of Itai to incorporate the teachings of Tanaka in which the viscosity is between 100 and 5000 cps at 25 °C when the conjugated diene-based rubber polymer is dissolved in toluene at a concentration of 5.23 wt%. Doing so would advantageously result in improved coating property of the binder, suppressed formation of aggregates, and the enhanced productivity of the electrode without a large increase in viscosity, as recognized by Tanaka.
The resulting range of solution viscosity of the conjugated diene-based rubber polymer at 25 °C of Itai in view of Tanaka overlaps that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
However, additionally, the limitation of “a solution viscosity…measured by dissolving the conjugated diene-based rubber polymer in toluene at a concentration of 5.23 wt% at 25 °C” is a method limitation and does not determine patentability of the product, unless the method produces a structural feature of the product. The method of measuring a feature of the project is germane to the issue of patentability of the product itself, unless applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Itai in view of Yamamoto as applied to claims 1-6, 8, 12-15 above, and further in view of Takahashi.
Regarding claim 9, Itai teaches the binder composition of claim 1.
Itai is silent as to the Mooney viscosity of the conjugated diene-based rubber polymer being 30 to 100.
However, Takahashi discloses a binder composition for a secondary battery electrode comprising a polymer (Paragraph 0031). Takahashi teaches that the binder composition for a secondary battery electrode may have favorable dispersion of electrode active material in the electrode slurry when the Mooney viscosity of the polymer is 50 or more while also ensuring coatability of the slurry when the Mooney viscosity is 200 or less (Paragraph 0032).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventio to have modified the conjugated diene-based rubber polymer of Itai to incorporate the teachings of Takahashi in which the Mooney viscosity is between 50 and 200. Doing so would advantageously result in favorable dispersion of the electrode active material in the slurry as well as ensuring coatability, as recognized by Takahashi.
The resulting range of Mooney viscosity of the conjugated diene-based rubber polymer of Itai in view of Takahashi overlaps the instant claimed range of Mooney viscosity. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Itai in view of Yamamoto as applied to claims 1-6, 8, and 12-15 above, further in view of Choi.
Regarding claim 10, Itai teaches the binder composition of claim 1.
Itai is silent as to the conjugated diene-based rubber polymer having a branching degree of 0.8 to 4.
However, Choi discloses a hyper-branched polymer included in an electrode (Paragraph 1). Choi teaches the degree of branching of the hyperbranched polymer is 0.05 to 1 (Paragraph 0013). Choi further teaches the hyper-branched polymer improves the performance of the electrode as well as has excellent binding properties which enables the electrode to be formed without a common binder (Paragraph 0040).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conjugated diene-based rubber polymer of Itai to incorporate the teachings of Choi in which the degree of branching is 0.05 to 1. Doing so would advantageously result in desirable electrode performance and binding properties, as recognized by Choi.
The resulting range of branching degree of the conjugated diene-based rubber polymer of Itai in view of Choi overlaps the instant claimed range of branching degree. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Claim 10 is alternately rejected under 35 U.S.C. 103 as being unpatentable over Itai in view of Yamamoto as applied to claims 1-6, 8, and 12-15 above, as evidenced by Lee.
Regarding claim 10, Itai teaches the binder composition of claim 1.
Itai is silent as to the conjugated diene-based rubber polymer having a branching degree of 0.8 to 4.
As evidenced by Lee, the degree of branching of a rubber polymer may be measured by multiplying the ratio of the Mooney viscosity (MV) to the solution viscosity (SV) at 25ºC by 10, i.e. ((MV/SV)*10) (Paragraph 0040).
As discussed above, the modification of Itai by Takahashi resulted in a range of the Mooney viscosity of the conjugated diene-based rubber polymer from 50 to 200.
As discussed above, the modification of Itai by Tanaka resulted in a range of the solution viscosity at 25ºC from 100 to 5000 cps.
Therefore, according to the evidence of Lee, the upper and lower limit of the degree of branching of the conjugated diene-based rubber polymer may be calculated:
when Mooney viscosity = 50, solution viscosity = 5000 cps:
degree of branching = ((50/5000)*10) = 0.1
when Mooney viscosity = 200, solution viscosity = 100 cps:
degree of branching = ((200/100)*10) = 20
Therefore, the degree of branching of the conjugated diene-based rubber polymer according to the teachings of Mooney viscosity and solution viscosity of Takahashi and Tanaka, respectively, is calculated to be 0.1 to 20. This range of degree of branching overlaps the range given in the instant claim. Therefore, prima facie obviousness is established and the claimed limitations are met. See MPEP 2144.05 (I).
Response to Arguments
For clarity of the record, the Examiner submits that applicant has not submitted any additional arguments with the Request for Continued Examination filed April 30th, 2026. Therefore, the most recent arguments of record were received by the Office on March 30th, 2026 and responded to by the Examiner in the Advisory Action mailed April 8th, 2026.
The Examiner submits that the amendments to claim 1 facilitated a new grounds of rejection, which are presented above in this Office Action.
Conclusion
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/O.A.J./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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