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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/15/2026 has been entered.
Status of Claims
Claims 1-6 & 8-11 are pending in the application and are presently examined. Claims 1-6 & 8-11 were rejected in the 5/15/2026 office action.
Response to Amendment / Arguments
The 9/15/2026 amendment, in response to the 5/15/2026 office action, has been entered.
Applicant’s claim amendment and argument, regarding the 35 U.S.C. 112(a) rejection, have been fully considered but they are not persuasive. As discussed more fully in the 35 U.S.C. 112(a) rejection below, the present specification [0083] states that R2 has three components, with a linking group in the middle of these three components. Applicant’s claim amendment still has only two components in R2.
Applicant’s claim amendment overcame the 35 U.S.C. 112(b) rejection; however, claim 1 remains rejected 35 U.S.C. 112(b) due to a different claim limitation.
Applicant amended claim 1 by removing “a urethane bond” as an optional functional group in Group A. This amendment failed to overcome the 35 U.S.C. 103 rejection because the previously-cited prior art, US20190372160A1 (Makino), teaches polyurea, which is another optional functional group in Group A, “a urea bond”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-6 & 8-11 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim 1 contains subject matter which was not described in the specification in such a way as to reasonably convey, to one skilled in the relevant art, that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 states:
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, in Formula (1-1)… R2 represents a group having (i) a hydrocarbon group having 4 or more carbon atoms, and (ii) a linking group that links the carbon atom to which R2 is bonded in the Formula (1-1) to the hydrocarbon group having 4 or more carbon atoms
Support for R2 in Formula (1-1) is found in the present specification [0083] & [0084]. Based on the teachings of [0083] & [0084], Formula (1-1) could be represented, with improved clarity, as follows:
Figure A: Examiner’s interpretation of Formula (1-1)
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,
where R2a is a hydrocarbon group with 4 or more carbon atoms, Link is a -CO-O- group or a -CO-N(RN)- group, and R2b is a hydrocarbon group.
Following is present specification [0083], with added notes of the Examiner in square brackets and bold font, showing why Examiner interprets Formula (1-1) as illustrated in Figure A above:
R2 represents a group having a hydrocarbon group having 4 or more carbon atoms [R2a]. In the present invention, the group having a hydrocarbon group includes
a group consisting of the hydrocarbon group itself [R2a] (where the hydrocarbon group is directly bonded to the carbon atom in the above formula, to which R1 is bonded) and
a group consisting of a hydrocarbon group [R2b] and a linking group [Link] (where a hydrocarbon group [R2b] is bonded to the carbon atom in the above formula through a linking group [Link], to which R1 is bonded)...
Examiner interprets [0083] according to Figure A above, with hydrocarbon groups R2a and R2b on both sides of the linking group because [0083] requires —
one hydrocarbon group (with 4 or more carbon atoms) to be “directly bonded to the carbon atom in the above formula, to which R1 is bonded” and
another hydrocarbon group “bonded to the carbon atom in the above formula through a linking group”.
Thus, R2 in Formula (1-1) must include two hydrocarbon groups, on each of two opposite ends of the linking group.
In contrast to Formula (1-1) in [0083] & [0084] of the present specification, which requires R2 to include a hydrocarbon group on both sides of the linking group (represented above as R2a-Link-R2b), claim 1 includes only one hydrocarbon group (i.e. claim 1 is missing R2a).
Claims 2-6 & 8-11 are rejected due to their dependence on claim 1.
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.
Claims 1-6 & 8-11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor(s) regard as the invention.
Claim 1 states:
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…R2 represents a group having (i) a hydrocarbon group having 4 or more carbon atoms, and (ii) a linking group that links the carbon atom to which R2 is bonded in the Formula (1-1) to the hydrocarbon group having 4 or more carbon atoms, wherein the linking group is a -CO-O- group or a -CO-N(RN)- group, and RN represents a hydrogen atom, an alkyl group having 1 to 6 carbon atoms, or an aryl group having 6 to 10 carbon atoms
The claimed “linking group” is a chemical link between two chemical groups. Thus, the linking group must have an available bond at both ends. The linking group “-CO-N(RN)-”, however, has an available bond at only one end (left side), because RN can be a hydrogen atom, which would have only one bond to nitrogen, and no bond available for claimed the hydrocarbon group.
Claims 2-6 & 8-11 are rejected due to their dependence on claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The claims are in bold font, the prior art is in parentheses.
Claims 1-5 & 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20190372160A1 (Makino).
Makino teaches the following claim 1 limitations:
An inorganic solid electrolyte-containing composition for an all-solid state secondary battery (abstract; paragraph 13), comprising:
an inorganic solid electrolyte having an ion conductivity of a metal belonging to Group 1 or Group 2 in the periodic table (abstract; paragraph 13);
a polymer binder (abstract; paragraph 13); wherein a polymer that forms the polymer binder is a (meth)acrylic polymer (paragraphs 17, 42, 108, & 114) containing 0.01 mol% to 50 mol% of a constitutional component having a functional group selected from… a urea bond (Paragraphs 416-421; Table 4: Binders B-39 to B-49 have 50 mol% hard segment. Paragraph 20: the hard segment has a urea bond.)… and
a dispersion medium (paragraph 23)
Claim 1 also states that the polymer binder contains:
a constitutional component represented by Formula (1-1)…
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, in Formula (1-1), R1 represents a hydrogen atom or an alkyl group, R2 represents a group having (i) a hydrocarbon group having 4 or more carbon atoms, and (ii) a linking group that links the carbon atom to which R2 is bonded in the Formula (1-1) to the hydrocarbon group having 4 or more carbon atoms, wherein the linking group is a -CO-O- group or a -CO-N(RN)- group, and RN represents a hydrogen atom, an alkyl group having 1 to 6 carbon atoms, or an aryl group having 6 to 10 carbon atoms
This limitation was rejected under 35 U.S.C. 112(a) and 35 U.S.C. 112(b). It is not possible to analyze this limitation until these rejections are resolved; therefore, this claim limitation is presently disregarded for prior art analysis.
Claim 1 also states:
wherein an adsorption rate of the polymer binder to the inorganic solid electrolyte, measured with the inorganic solid electrolyte present in the dispersion medium, is 50% or less, and the adsorption rate is calculated according to the following expression; and
adsorption rate(%)= [(WB - WA)/WB] x 100, wherein WA is a mass of the polymer binder that is not adsorbed to the inorganic solid electrolyte, and WB is a mass of the polymer binder in a binder solution, wherein the binder solution is obtained by dissolving the polymer binder in the dispersion medium, and
the inorganic solid electrolyte and the polymer binder satisfy a relationship defined by Expression (1) in terms of surface energy,
(Xse - Xba)2 + (Yse - Yba)2 ≤ R2 Expression (1)
in the expression, Xse represents a dispersion element of surface energy of the inorganic solid electrolyte, and Yse represents a polarity element of the surface energy of the inorganic solid electrolyte, Xba represents a dispersion element of surface energy of the polymer binder, and Yba represents a polarity element of the surface energy of the polymer binder, and R is 20
The present specification teaches that the claimed composition results in the claimed adsorption rate and surface energy (paragraphs 7 & 12). Examiner couldn’t find any teaching in the specification that anything beyond the claimed composition is required for achieving the claimed adsorption rate and surface energy. Thus, because Makino teaches the claimed composition, presumably Makino’s will have the claimed adsorption rate and surface energy properties.
MPEP 2112(I) provides further guidance:
“‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
The patent office does not have the ability to test, or to obtain data for, every possible property. Measurement of a property does not make an old substance patentable.
With regard to claim 2, modified Makino teaches the limitations of claim 1 as noted above. Claim 2 recites:
the adsorption rate is 5% or more and less than 30%
As discussed under claim 1, Makino fails to explicitly teach an adsorption rate; however, Makino’s composition is presumed to have this property, because Makino teaches the claimed composition.
With regard to claim 3, modified Makino teaches the limitations of claim 1 as noted above. Makino also teaches the following claim 3 limitation:
an active material (paragraph 24)
Claim 3 also recites:
wherein the active material and the polymer binder satisfy a relationship defined by Expression (2) in terms of surface energy,
(Xam - Xba)2 + (Yam - Yba)2 ≤ r2 Expression (2)
in the expression, Xam represents a dispersion element of surface energy of the active material, and Yam represents a polarity element of the surface energy of the active material,
Xba represents the dispersion element of the surface energy of the polymer binder, and Yba represents the polarity element of the surface energy of the polymer binder, and
r is 30
Makino fails to explicitly teach a relationship between surface energy and polarity as represented by Expression (2). Makino, however, teaches the claimed composition; therefore, Makino’s composition presumably has the claimed properties.
With regard to claim 4, modified Makino teaches the limitations of claims 1 & 3 as noted above. Claim 4 also recites:
the inorganic solid electrolyte, the polymer binder, and the active material satisfy a relationship defined by Expression (3) in terms of surface energy,
RSE + RAM ≤ 30 Expression (3)
in the expression, RSE2 represents a left side of Expression (1), and RAM2 represents a left side of Expression (2)
Makino fails to explicitly teach a relationship of surface energy as represented by Expression (3). Makino, however, teaches the claimed composition; therefore, Makino’s composition presumably has the claimed properties.
With regard to claim 5, modified Makino teaches the limitations of claim 1 as noted above. Makino teaches the following claim 5 limitations:
the dispersion medium contains… an aliphatic compound (paragraph 195: the dispersion medium is octane), and the polymer binder has a molecular weight of 70,000 to 1,000,000 (paragraph 197: binder molecular weight is 5,000 to 500,000)
Makino’s 5,000 to 500,000 range overlaps the claimed 70,000 to 1,000,000 range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Given that Makino’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the polymer molecular weight range in claim 5 is an obvious variant of Makino’s range.
With regard to claim 8, modified Makino teaches the limitations of claim 1 as discussed above. Makino also teaches the following claim 8 limitation:
A sheet for an all-solid state secondary battery, comprising a layer formed of the inorganic solid electrolyte-containing composition according to claim 1. (paragraph 30: “the positive electrode active material layer, the negative electrode active material layer, or the solid electrolyte layer contains an inorganic solid electrolyte”)
With regard to claim 9, modified Makino teaches the limitations of claim 1 as discussed above. Makino also teaches the following claim 9 limitations:
An all-solid state secondary battery comprising, in the following order:
a positive electrode active material layer (paragraphs 30 & 317; figure 1: positive electrode active material layer 4);
a solid electrolyte layer (paragraphs 30 & 317; figure 1: solid electrolyte layer 3); and
a negative electrode active material layer (paragraphs 30 & 317; figure 1: negative electrode active material layer 2),
wherein at least one of the positive electrode active material layer, the negative electrode active material layer, or the solid electrolyte layer has a layer formed of the inorganic solid electrolyte-containing composition according to claim 1. (paragraphs 30 & 318: “the positive electrode active material layer, the negative electrode active material layer, or the solid electrolyte layer contains an inorganic solid electrolyte”)
With regard to claims 10-11, modified Makino teaches the limitations of claim 1 as discussed above. Makino also teaches the following limitations of claims 10-11 (abstract; paragraphs 29 & 31):
Claim 10
A manufacturing method for a sheet for an all-solid state secondary battery, the manufacturing method comprising forming a film of the inorganic solid electrolyte-containing composition according to claim 1.
Claim 11
A manufacturing method for an all-solid state secondary battery, the manufacturing method comprising incorporating a sheet for an all-solid state secondary battery, which is obtained by the manufacturing method according to claim 10, into an all-solid state secondary battery.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US20190372160A1 (Makino), as applied to claim 1, and further in view of US20200235425A1 (Mochizuki). Makino fails to teach the following claim 6 limitation, which is taught by Mochizuki:
a difference between an SP value of the dispersion medium and an SP value of the polymer binder is 3 or less (paragraph 173: difference in SP value between the dispersant and the polymer is 0.5 to 4)
Mochizuki is directed to a solid electrolyte composition with an inorganic solid electrolyte, a binder with a polymer, and a dispersant (abstract). The dispersant and the polymer are selected for dispersion stability, low resistance, strong binding properties, and excellent battery performance. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Makino’s composition to have 0.5 to 4 difference between SP values of the dispersant and the polymer binder, as taught by Mochizuki, for dispersion stability, low resistance, strong binding properties, and excellent battery performance.
Mochizuki’s 0.5 to 4 range overlaps the claimed ≤ 3 range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Given that Mochizuki’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the SP difference range in claim 6 is an obvious variant of Makino’s range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
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