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 .
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.
Status of the Claims
Amendments were filed 5/21/26. Claims 1-2 and 4-10 are pending.
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.
Claim(s) 1-2, 4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xie et al (CN 107778419 A, cited in IDS filed 7/24/23).
Regarding claim 1, Xie et al teaches a copolymer (paragraph [0002], modified acrylic emulsion, paragraph [0004], general term for copolymers of various acrylic monomers), wherein the copolymer is a copolymer of a matrix monomer (paragraph [0012], 30-45 parts soft monomer) and a comonomer (paragraph [0012], 3-5 parts boric acid derivative crosslinking monomer, paragraph [0013], the boric acid derivative crosslinking monomer may be an allylboronic acid, corresponds to Formula 1-5).
Regarding claim 2, Xie et al teaches wherein the matrix monomer is at least one of a methyl acrylate, ethyl acrylate, n-propyl acrylate, n-butyl acrylate (paragraph [0016]), which corresponds to the claimed Formula (2) H2C=CH-R4, where R4 is selected from -C(=O)-O-R6, wherein R6 is a -C1-6alkyl.
Regarding claim 4, Xie et al teaches wherein the copolymer is a copolymer of the matrix monomer, the comonomer shown in Formula (1-4) and a functional monomer (paragraph [0012], soft monomer, boric acid derivative crosslinking monomer, and hard monomer), the matrix monomer is selected from at least one of alkyl (meth)acrylate (paragraph [0017], methyl methacrylate, ethyl methacrylate).
Regarding claim 7, Xie et al teaches a binder comprising the copolymer according to claim 1 (abstract, coating film prepared from the acrylic emulsion, paragraph [0004], acrylic emulsions are a general term for copolymers of various acrylic monomers and widely used in various industries).
Claim(s) 1-2, 4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishiguro (US 2016/0223719 A1).
Regarding claim 1, Ishiguro teaches a copolymer (abstract, polymerizing and curing a boronic acid monomer and a polymerizable group and a multifunctional monomer), wherein the copolymer is a copolymer of a matrix monomer (abstract, multifunctional monomer) and a comonomer (abstract, boronic acid monomer having a polymerizable group).
Ishiguro’s boronic acid monomer includes a polymerizable group such as a (meth)acryloyl group, a vinyl group, a styryl group, an allyl group, and the like (paragraph [0053]). Ishiguro discloses an embodiment (Formula (2)) where X1 can be a linking group such as -O- or an arylene group or combinations thereof (paragraph [0060]), and Z represents a polymerizable group (paragraph [0059]).
Note that in Formula (1), Ishiguro’s boronic acid monomer, where R1 and R2 are hydrogen, and the polymerizable group is an allyl group, would correspond to the claimed Formula (1-5), which is an allylboronic acid.
Note that in Formula (2), Ishiguro’s boronic acid monomer, where R1 and R2 are hydrogren, X1 is a linking group of a combination of an arylene and -O-, and Z is a polymerizable group such as (meth)acryloyl, would correspond to Formula (1-4). Ishiguro discloses several examples of the comonomer in the structures shown in paragraph [0062], including a vinylphenyl boronic acid (see second compound in row 1 of paragraph [0062], corresponding to Formula 1-1) as well as an acryloyloxyphenyl boronic acid (see third compound in row 2 of paragraph [0062]). Note that Ishiguro discloses in paragraph [0053-0054] where the polymerizable group may be acryloyl or methacryloyl, thus further teaching Formula (1-4).
Regarding claim 2, Ishiguro teaches wherein the matrix may be one of the polymerizable groups discussed above (paragraph [0065]), which includes a styryl group (paragraph [0053]). Note that styrene corresponds to the claimed Formula (2) H2C=CH-R4, where R4 is selected from a C6 aryl.
Regarding claim 4, Ishiguro teaches wherein the copolymer is a copolymer of the matrix monomer, the comonomer shown in at least one of Formulas (1-4) and Formula (1-5) and a functional monomer (paragraph [0066], the number of polymerizable groups in the multifunctional monomer may be two or more), the functional monomer may be an acrylamide (paragraph [0053]).
Regarding claim 7, Ishiguro teaches a binder (paragraph [0040], curable resin layer obtained by polymerizing and curing a boronic acid monomer having a boronic acid group and a polymerizable group and a multifunctional monomer) comprising the copolymer according to claim 1 (see rejection of claim 1 above, paragraph [0043], boronic acid monomer, paragraph [0044], R1 and R2 may be hydrogen, paragraph [0053], the polymerizable group is an allyl group).
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.
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.
Claim(s) 5-6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishiguro (US 2016/0223719 A1).
Regarding claim 5, Ishiguro teaches wherein the comonomer shown in at least one of Formulas (1-4) and (1-5) accounts for 0.1-10 wt% of a total mass of the copolymer (paragraph [0070], 0.05-9 wt%, thus overlapping the claimed range) the matrix monomer accounts for 90-99.9 wt% of the total mass of the copolymer (paragraph [70], note the ratio of boronic acid monomer to multifunctional monomer is 0.05-9%, thus the remaining mass of the copolymer, which would be 91-99.95%, overlapping the claimed range), and the functional monomer accounts can account for 0-10% of the total mass of the copolymer (note that 0% falls within the claimed range).
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 6, Ishiguro is quiet to a glass transition temperature of the copolymer is 20°C to 80°C. However, as Ishiguro teaches a structure substantially identical to that of the claims (comonomer, matrix monomer, overlapping wt%), claimed properties are presumed to be inherent. 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).
Regarding claim 8, Ishiguro teaches wherein the binder is an emulsion-type binder (paragraph [0099], composition for forming a resin layer may contain a solvent as necessary), a solid content of the emulsion-type binder is 1-70 wt% (paragraph [0164-0172] and Table 1, note examples where the curable resin compositions include 100 parts by mass of solids to 100 parts by mass of solvent (paragraph [0172]), thus 50% and falling within the claimed range).
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arikawa et al (JP 2015-187935 A) in view of Ishiguro (US 2016/0223719 A1).
Regarding claim 9, Arikawa et al teaches a lithium-ion battery (paragraph [0001-0002]), comprising an electrode piece (paragraph [0107], negative electrode), wherein the electrode piece comprises a current collector (paragraph [0107], current collector) and an active material layer (paragraph [0107], active material and binder in a dispersion medium forming a slurry) located on a surface of at least one side of the current collector (paragraph [0107], slurry applied to a current collector), and the active material layer comprises a binder (paragraph [0107], active material mixed with a binder).
Arikawa teaches the active material layer (paragraph [0107], slurry which is applied to current collector and dried) comprises an active material (A, paragraph [0021]), layered compound (B, paragraph [0021]), organic compound (C, paragraph [0021]), and a binder (paragraph [0107]). Arikawa further teaches that the organic compound C may include boronic acid groups (paragraph [0060]) which may include allylboronic acid (paragraph [0066]).
Arikawa is quiet to the copolymer of claim 1, in particular, the binder including the copolymer of a matrix monomer and a comonomer corresponding to Formula (1-4) and Formula (1-5).
Ishiguro teaches a copolymer of a boronic acid monomer with a polymerizable group such as an allyl group (paragraph [0043-0044, 0051-0053]) and a multifunctional monomer (paragraph [0064-0065]), having good adhesiveness (paragraph [0006]).
It would have been obvious to one of ordinary skill in the art to modify Arikawa such that the binder comprises a copolymer of a matrix monomer and comonomer such as allylboronic acid, as Arikawa is not specific to the type of binder (paragraph [0102], not particularly limited) and that the binder is already mixed with the active material which includes an organic compound C that may be a copolymer of a boronic acid group such as allylboronic acid (paragraph [0061-0062], [0066]), and that Ishiguro teaches that the curable resin of the multifunctional monomer and boronic acid monomer exhibits excellent adhesiveness (Ishiguro, abstract), where Arikawa recognizes insufficient adhesion would result in unsatisfactory initial discharge efficiency, cycle characteristics and stability in batteries (Arikawa, paragraph [0006]).
Regarding claim 10, the combination teaches wherein a mass of the binder accounts for 10% by mass or less of a total mass of the active material layer (Arikawa, paragraph [0109], thereby overlapping the claimed range of 0.5-5 wt%).
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Response to Arguments
Applicant's arguments filed 5/21/26 have been fully considered but they are not persuasive.
Independent claim 1 has been amended to further require that the comonomer is selected from at least one of compounds shown in Formulas (1-4) and (1-5).
Applicant argues that neither Wang, Xie, nor Matsugi anticipate amended claim 1, as Wang only discloses Formulas (1-1, 1-2, and 1-3), Xie only discloses Formula (1-1), and Matsugi only discloses Formula (1-1).
The examiner disagrees. Wang and Matsugi are no longer cited in the rejections above. However, with respect to independent claim 1, Xie not only teaches a p-vinylphenylboronic acid (corresponding to Formula 1-1), but additionally teaches the boronic acid derivative crosslinking monomer may be an allylboronic acid (paragraph [0013]), which corresponds to Formula 1-5, thus anticipating the claim.
Applicant’s arguments with respect to claim(s) 5-6 and 8-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKY YUEN whose telephone number is (571)270-5749. The examiner can normally be reached 9:30 - 6:00.
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/JACKY YUEN/
Examiner
Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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