DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The present application is a CIP of a parent application 16/343,402, now abandoned.
Election/Restrictions
2. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, 18-20, drawn to a composition/slurry, classified in C08L27/16.
II. Claims 9-10, drawn to a process for making a separator, classified in H01M50/403.
III. Claims 11-17, drawn to electrode/separator, classified in H01M4/02.
3. The inventions are independent or distinct, each from the other because:
Inventions of Group I and Group III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product, i.e. a fluoropolymer composition, is deemed to be useful as gaskets or pipes as in US 2003/0004273, and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions of Group II and Group III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the process of Group II can be used for making other products such as porous filters.
Inventions of Group I and Group II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the fluoropolymer composition of Group I can be used in a different process of using that, such as for making gaskets and pipes.
4. Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
They require different areas of search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
5. During a telephone conversation with Garrett Sternhagen on December 15, 2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-8, 18-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-17 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Priority
6. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/343,402, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Instant claims 1 and 18 of the present application recite the hydrophilic (meth)acrylic monomer (MA) of formula (I)
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wherein the moiety RH is a C2-10 hydrocarbon comprising at least one carboxyl group and comprising no hydroxyl groups, wherein both parent applications 16/343,402 and foreign priority EP 16194835.1 recite the (meth)acrylic monomer (MA) of formula:
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Wherein the group ROH comprises at least one hydroxyl group.
Therefore, the effective filing date of instant claims 1-8, 18-20 is March 31, 2023.
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.
7. Claims 1-8, 18-20 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.
8. In numerous places instant claims 1, 4-5, 8, 18 use the terms “preferably” and “such as”. The phrases “preferably” and "such as" render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
9. Claim 3 refers to formula (II). However, there is a lack of antecedent basis for said limitation, since claims 1 and 2 are silent with respect to formula (II).
10. Claim 1, 4, 7-8, 18 refer to polymer (F1) and polymer (F2) used for the second and further times, but do not have prepositions “the” or “said” in front of those, therefore, it is not clear if polymer (F1) and polymer (F2) used for the second and further times are the same or different from those used previously.
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.
11. Claims 1-8, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Abusleme et al (US 2010/0133482) alone, or alternatively, in view of Gozdz et al (US 5,429,891).
12. As to instant claim 1, Abusleme et al discloses
a binder composition A) comprising:
(a) at least 10%wt ([0063], as to instant claim 1) of a polymer (a) comprising:
recurring units of vinylidene fluoride (VDF) and 0.05-10%mol, or 0.2-3%mol ([0040]-[0041], also as to instant claims 4) of recurring units derived from hydrophilic (meth)acrylic monomer (MA) having the following formula ([0014], [0021], [0026]-[0031]):
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wherein ROH is hydrogen,
specifically acrylic acid ([0031], as to instant claims 1-3),
having intrinsic viscosity of 0.1-5 dl/g ([0042]-[0043], as to instant claim 1)
and
(b) a vinylidene polymer comprising at least 70%mol of VDF units and up to 30%mol of hexafluoropropylene (as to instant claims 5-6), chlorotrifluoroethylene or trifluoroethylene (polymer (b)) ([0062]-[0063], also as to instant claims 5-6).
The composition is used for making membranes, electrodes for lithium battery ([0001], [0073], [0074]).
Based on the teachings of Abusleme et al, it would have been obvious to a one of ordinary skill in the art to choose and use acrylic acid in amount of 0.2-3%mol as the comonomer (MA) to form the polymer (a), since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
As to instant claim 18, Abusleme et al discloses an electrode-forming slurry composition ([0072], [0130]) comprising:
- a powdery electrode material such as an active substance for battery ([0074]-
[0078]); and
- a binder solution comprising:
- the binder composition A) as discussed above and
- an organic solvent such as N-methyl-2-pyrrolidone ([0069], [0072], [0073], as to instant claim 19).
13. The polymer (a) consists essentially of the units from VDF monomer and the monomer (MA) ([0024]. The specific example 2 shows the vinylidene fluoride-acrylic acid copolymer comprising 1.4%mol of acrylic acid, having intrinsic viscosity in DMF at 25C of 3.5 dl/g (Table 1, [0119], as to instant claim 1, 18). Given the copolymer comprises only vinylidene fluoride and acrylic acid units, and the content of the acrylic acid is 1.4%mol, therefore, the content of the vinylidene fluoride unit will intrinsically and necessarily be more than 50%mol, or more than 75%mol as required by instant claims 1, 4. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
14. The exemplified compositions comprise 10-75%wt of the polymer (a), i.e. at least 10%wt or at least 25%wt as required by instant claims 1 and 7, in combination with 90-25%wt of vinylidene fluoride homopolymer SOLEF 1015 having intrinsic viscosity of 1.5 dl/g ([0139], [0138], as to instant claims 1 and 8). Thus, the shown compositions comprise the VDF polymer SOLEF 1015 as the polymer component (b) (corresponding to the polymer (F2) of instant claims) and having intrinsic viscosity of 1.5 dl/g, which value is less than the intrinsic viscosity of the polymer (A) of Example 2 (3.5 dl/g) and less than 2 dl/g, as required by instant claim 8.
15. Though the compositions exemplified in Example 11 and Table 5 are based on vinylidene fluoride homopolymer, but not on vinylidene fluoride copolymer, in light of the teachings of Abusleme et al that the polymer (b) maybe (co)polymer of vinylidene fluoride with up to 30%mol of other fluoromonomers such as hexafluoropropylene ([0062]), it would have been obvious to a one of ordinary skill in the art to choose and include the copolymer of vinylidene fluoride with as high as 30%mol of hexafluoropropylene as the polymer (b) in the composition of Abusleme et al as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
16. In the alternative, though Abusleme et al does not explicitly recite the polymer (b) being a copolymer of vinylidene fluoride with hexafluoropropylene having intrinsic viscosity of less than 2 dl/g,
Gozdz et al discloses a copolymer of 75-92%wt of vinylidene fluoride and 8-25%wt of hexafluoropropylene (col. 6, lines 30-34), having intrinsic viscosity at 25ºC of 1.1-1.6 dl/g (col. 5, lines 45-52) and used as polymeric membranes and electrolytes in lithium batteries (Abstract, col. 4, lines 38-45).
17. Since both Abusleme et al and Gozdz et al are related to vinylidene fluoride copolymer- based compositions used for making membranes and electrolytes for lithium batteries, and thereby belong to the same field of endeavor, wherein Gozdz et al discloses the use of a copolymer of 75-92%wt of vinylidene fluoride and 8-25%wt hexafluoropropylene having intrinsic viscosity at 25ºC of 1.1-1.6 dl/g for making said membranes, therefore, based on the combined teachings of Gozdz et al and Abusleme et al, it would have been obvious to a one of ordinary skill in the art to include, or obvious to try to include the vinylidene fluoride-hexafluoropropylene copolymer of Gozdz et al as the vinylidene fluoride-hexafluoropropylene copolymer (polymer (b)) in the composition of Abusleme et al, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
18. All ranges in the composition of Abusleme et al alone, or in view of Gozdz et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
19. It would have been further obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the relative amounts of the polymers (a) and (b), and further the properties such as relative comonomer content and intrinsic viscosity of each of the polymers (a) and (b), so to produce the final composition having a desired combination of properties, depending on the end-use of the composition, thereby arriving at the present invention.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
20. Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Abusleme et al (US 2010/0133482) alone, or alternatively, in view of Gozdz et al (US 5,429,891), in further view of Sasaki (US 2011/0157773).
21. The discussion with respect to Abusleme et al (US 2010/0133482) alone, or alternatively, in view of Gozdz et al (US 5,429,891), set forth in paragraphs 11-19 above, is incorporated here by reference.
22. Though Abusleme et al discloses an electrode-forming slurry composition ([0072], [0130]) comprising a powdery electrode material such as an active substance for battery ([0074]-[0078]); and a binder solution comprising:
- the binder composition A) and
- an organic solvent such as N-methyl-2-pyrrolidone ([0069], [0072], [0073]),
Abusleme et al does not explicitly recite the viscosity of said slurry.
23. However, Sasaki discloses an electrode forming composition, wherein Sasaki explicitly teaches that the slurry used for coating of the electrode composition depends on the kind of coating machine and shape of coating line, but is most preferably in the range of 5,000-20,000 mPa.s ([0074, Abstract).
24. Since both Sasaki and Abusleme et al are related to slurry compositions for preparation of coatings in electrodes, and thus belong to the same field of endeavor, wherein Sasaki explicitly teaches that the slurries used for said coatings should have viscosity in the most preferable range of 5,000-20,000 mPa.s, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sasaki and Abusleme et al, and to prepare, or obvious to try to prepare the slurry of Abusleme et al having a viscosity of 5,000-20,000 mPa.s as well, since slurries have such viscosities are taught in the art as being used for making coatings in electrodes, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
25. Claims 1-8, 18-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 8,337,725 in view of Gozdz et al (US 5,429,891) and Sasaki (US 2011/0157773).
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
26. US patent 8,337,725 claims a composition C) comprising:
A) a polymer (A) comprising: recurring units of vinylidene fluoride (VDF) and 0.05-10%mol of recurring units derived from hydrophilic (meth)acrylic monomer (MA) having the following formula:
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specifically acrylic acid (as to instant claims 2-3), and
B) a vinylidene polymer comprising at least 70%mol of VDF units and up to 30%mol of hexafluoroethylene of chlorotrifluoroethylene or trifluoroethylene.
Further claimed an electrode-forming composition comprising the above composition C) and a viscosity-modifying agent.
27. The polymer (A) is having intrinsic viscosity of 0.1-20 dl/g (col. 5, lines 22-30).
The polymer (A) is used in amount of at least 10%wt, or 10-75%wt (col. 6, lines 53-55, Table 5). Case law holds that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619,622 (CCPA 1970).
28. Though US 8,337,725 does not explicitly recite the polymer (B) being a copolymer of vinylidene fluoride with hexafluoropropylene having intrinsic viscosity of less than 2 dl/g,
Gozdz et al discloses a copolymer of 75-92%wt of vinylidene fluoride and 8-25%wt hexafluoropropylene (col. 6, lines 30-34), having intrinsic viscosity at 25ºC of 1.1-1.6 dl/g (col. 5, lines 45-52) and used as polymeric membranes and electrolytes in lithium batteries (Abstract, col. 4, lines 38-45).
29. Since both US 8,337,725 and Gozdz et al are related to vinylidene fluoride copolymer- based compositions used for making membranes and electrolytes for lithium batteries, and thereby belong to the same field of endeavor, wherein Gozdz et al discloses the use of a copolymer of 75-92%wt of vinylidene fluoride and 8-25%wt hexafluoropropylene having intrinsic viscosity at 25ºC of 1.1-1.6 dl/g for making said membranes, therefore, based on the combined teachings of Gozdz et al and US 8,337,725, it would have been obvious to a one of ordinary skill in the art to include, or obvious to try to include the vinylidene fluoride-hexafluoropropylene copolymer of Gozdz et al as the vinylidene fluoride-hexafluoropropylene copolymer (polymer (B)) in the composition of US 8,337,725, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
30. Further, though US 8,337,725 does not explicitly recite the viscosity-modifying agent being a N-methyl pyrrolidone or tetrahydrofuran, and does not teach the viscosity of the composition (as to instant claims 19-20),
Sasaki discloses an electrode forming composition in the form of slurry comprising N-methyl pyrrolidone or tetrahydrofuran as solvents, wherein Sasaki explicitly teaches that the slurry used for coating of the electrode composition depends on the kind of coating machine and shape of coating line, but is most preferably in the range of 5,000-20,000 mPa.s ([0074], [0072], Abstract).
31. Since both Sasaki and US 8,337,725 are related to slurry compositions for preparation of coatings in electrodes, and thus belong to the same field of endeavor, wherein Sasaki explicitly teaches the composition being in the form of slurry comprising N-methyl pyrrolidone or tetrahydrofuran as solvents, and that said slurry used for said coatings should have viscosity in the most preferable range of 5,000-20,000 mPa.s, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sasaki and US 8,337,725, and to prepare the composition of US 8,337,725 in a form of slurry using N-methyl pyrrolidone or tetrahydrofuran as the solvents, so that the slurry has a viscosity of 5,000-20,000 mPa.s as well, since slurries have such viscosities are taught in the art as being used for making coatings in electrodes, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
32. All ranges in the composition of US 8,337,725 in view of Gozdz et al and Sasaki are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
33. It would have been further obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the relative amounts of the polymers (A) and (B) in the composition of US 8,337,725 in view of Gozdz et al and Sasaki, and further the properties such as relative comonomer content and intrinsic viscosity of each of the polymers (A) and (B), so to produce the final composition having a desired combination of properties, depending on the end-use of the composition, thereby arriving at the present invention. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
34. Therefore, the limitations claimed in instant invention are obvious variants of the limitations claimed in US 8,337,725 in view of Gozdz et al and Sasaki.
35. Claims 1-8, 18-20 are directed to an invention not patentably distinct from claims 1-11 of commonly assigned US patent 8,337,725 in view of Gozdz et al (US 5,429,891) and Sasaki (US 2011/0157773).
Specifically, see the discussion in paragraphs 25-34 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). Commonly assigned US 8,337,725, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
Conclusion
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764