DETAILED ACTION
Claims 1-4, 7, 9-12, 14, and 16-20 are presented for examination, wherein claims 1-4, 7, 9-11, and 16 are currently amended; claims 12 and 14 are withdrawn; plus, claim 20 is newly added. Claims 5-6, 8, 13, and 15 are cancelled.
The NSDP rejection of claims 1 and 3 is withdrawn, as a result of the amendments to claim 1, from which claim 3 depends.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 17, 2026 has been entered.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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.
Claims 1, 3-4, 7, 9, 11 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kuo et al (US 2020/0343594).
Regarding newly amended independent claim 1, Kuo teaches a lithium cell with an adhesive providing improved charging/discharging performance, said lithium cell comprising:
an anode plate,
a cathode plate,
a separator, and
an electrolyte gel,
wherein said adhesive may be in at least one of said anode plate, cathode plate, separator, and electrolyte gel,
wherein said cathode plate may include an Li(NiCoMn)O2 positive electrode material and said adhesive,
wherein said adhesive comprising a copolymer functioning as a non-aqueous adhesive, said adhesive copolymer comprising a structure that may generally be represented as follows:
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GI: is derived from 2-propenenitrile or a cyano-containing monomer;
GII: may be selected from a limited number of expressly taught working options that include e.g. n-vinylpyrrolidone;
GIII: is derived from monomers which contains a reactive group; and,
GIV: is derived from olefinic monomers and includes a limited number of expressly taught working options that include e.g. butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof,
wherein said number “a” of repeat units is 100-50,000; said number “b” of repeat units is 100-10,000; said number “c” of repeat units is 100-10,000; and said number “d” of repeat units is 100-10,000, and further:
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; plus,
wherein said lithium cell is tested using different charging and discharging performances
(e.g. ¶¶ 0005-06, 11-23, 36-44, 93, and 95-98), said lithium cell with improved charging/discharging performance and further tested using different charging and discharging performance indicating the battery is a secondary battery, reading on the newly amended preamble “secondary battery,” said battery comprising:
(1) said anode plate, said cathode plate, and said separator, wherein said cathode plate may include said Li(NiCoMn)O2 positive electrode material and said adhesive (e.g. supra), reading on the newly added limitation incorporating subject matter of cancelled claim 15, “an electrode assembly…wherein the electrode assembly includes a positive electrode plate, a separator and a negative electrode plate, and the positive electrode plate comprises a positive electrode active material, and a binder…;”
alternatively, the limitation “plate” does not patentably distinguish the instant invention from the art, see instant specification, at e.g. ¶¶ 0018, 112, and 118, see further e.g. MPEP § 2144.04(IV)(B); and,
(2) said electrolyte gel (e.g. supra), wherein said electrolyte gel being a “gel” includes some electrolyte solution, corresponding with the claimed “an electrolyte solution,”
said adhesive comprising said copolymer, reading on “a binder comprising a copolymer C,” said copolymer functioning as a non-aqueous adhesive, said adhesive copolymer comprising said structure that may generally be represented as follows:
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GI: is derived from 2-propenenitrile or said cyano-containing monomer;
GII: may be selected from said limited number of expressly taught working options that include e.g. n-vinylpyrrolidone;
GIII: is derived from monomers which contains said reactive group; and,
GIV: is derived from olefinic monomers and includes said limited number of expressly taught working options that include e.g. butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof (e.g. supra),
noting that for GI, since said cyano-containing monomer is expressly taught as one of said limited number of working options, it would have been obvious to a person of ordinary skill in the art to try copolymerizing said cyano-containing monomer in said adhesive, see also e.g. MPEP § 2143.(I)I;
noting that for GII, since said n-vinylpyrrolidone is expressly taught as one of said limited number of working options, it would have been obvious to a person of ordinary skill in the art to try copolymerizing said n-vinylpyrrolidone in said adhesive, see also e.g. MPEP § 2143.(I)I; and,
noting that for GIV since said butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof is expressly taught as one/some of said limited number of working options, it would have been obvious to a person of ordinary skill in the art to try copolymerizing said butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof in said adhesive, see also e.g. MPEP § 2143.(I)I,
said GI cyano-containing monomer corresponding with the claimed “a structural unit derived from a monomer containing a cyano group;”
said GII n-vinylpyrrolidone corresponding with the claimed “a structural unit derived from a monomer containing a group shown in formula I; and,
said GIV butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof corresponding with the claimed “a structural unit derived from a monomer containing an ester group,”
Further noting that while GI and GII must be present, GIII may be absent and GIV may be present, see the disclosure:
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a/(a+b+c+d) > 0 may be written a > 0 (by multiplying both sides by a+b+c+d);
b/(a+b+c+d) > 0 may be written b > 0 (by multiplying both sides by a+b+c+d);
c/(a+b+c+d) ≥ 0 may be written c ≥ 0 (by multiplying both sides by a+b+c+d), which includes c = 0; and,
d/(a+b+c+d) ≥ 0 may be written d ≥ 0 (by multiplying both sides by a+b+c+d), which includes d > 0,
noting the absence of GIII is provided in express embodiments, as provided in express non-limiting examples:
Embodiment 1-1: GI and GII present, while GIII is absent, ratio of a to b is 9:1,
Embodiment 1-2: GI and GII present, while GIII is absent, ratio of a to b is 9:1, and
Embodiment 1-3: GI and GII present, while GIII is absent, ratio of a to b is 9:1
(e.g. ¶¶ 0043-57), and further noting that while embodiments 1-1 to 1-3 do not teach GIV being present, the broad disclosure provides for GIII being absent (i.e. c = 0) while GIV is present (i.e. d > 0),
said adhesive copolymer including GI, GII, and GIV, wherein GIII is absent, reading on the previously amended limitation “the copolymer C is a terpolymer including a structural unit derived from a monomer containing a cyano group, a structural unit derived from a monomer containing an ester group, and a structural unit derived from a monomer containing a group shown in formula I,
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in which, n is selected from 0, 1, 2, or 3;” and,
severably establishing a prima facie case of obviousness of the claimed ranges in the previously added limitations incorporating the subject matter of cancelled claims 5-6 and 8, reading on
“a mass content of the structural unit derived from the monomer containing the ester group is 8%-12%, based on a total mass of the copolymer C;”
“a mass ratio of the structural unit derived from the monomer containing the cyano group to the structural unit derived from the monomer containing the ester group in the copolymer C is 8:1-12:1;” and,
“a mass content of the structural unit derived from the monomer containing the group shown in formula I is 0.1%-2%, based on the total mass of the copolymer C.”
Regarding the newly added limitation “provided the binder does not include a fluoropolymer” in the newly added limitation “the positive electrode plate comprises a positive electrode active material and a binder comprising a copolymer, provided the binder does not include a fluoropolymer,” the cathode plate of Kuo does not teach nor require the presence of a fluoropolymer, reading on said newly added limitations.
Regarding claim 3, Kuo teaches said lithium cell of claim 1, wherein said adhesive comprising said copolymer comprising said structure that may generally be represented as follows:
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GI: may be e.g. said cyano-containing monomer;
GII: may be e.g. n-vinylpyrrolidone;
GIII: is derived from monomers which contains said reactive group; and,
GIV: may be e.g. butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof,
wherein said number “a” of repeat units is 100-50,000; said number “b” of repeat units is 100-10,000; said number “c” of repeat units is 100-10,000; and said number “d” of repeat units is 100-10,000, and further:
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said adhesive copolymer including GI, GII, and GIV, wherein GIII is absent (e.g. supra),
said GI cyano-containing monomer corresponding with the claimed “a structural unit derived from a monomer containing a cyano group;”
said GII n-vinylpyrrolidone corresponding with the claimed “a structural unit derived from a monomer containing a group shown in formula I; and,
said GIV butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof corresponding with the claimed “a structural unit derived from a monomer containing an ester group,”
establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “a mass content of the structural unit derived from the monomer containing the cyano group is 80%-95%, based on the total mass of the copolymer C.”
Regarding claims 4 and 7, Kuo teaches said lithium cell of claim 1, wherein said adhesive comprising said copolymer comprising said structure that may generally be represented as follows:
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GII: may be e.g. n-vinylpyrrolidone; and,
GIV: may be e.g. butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof
(e.g. supra), reading on “the monomer containing the ester group is selected from one or more of methyl acrylate, ethyl acrylate, propyl acrylate, butyl acrylate, isoamyl acrylate, isooctyl acrylate, methyl methacrylate, ethyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate” (claim 4) and “the monomer containing a group shown in formula I is selected from one or more of N-vinylpyrrolidone and N-allyl-2-pyrrolidone” (claim 7).
Regarding claim 9, Kuo teaches said lithium cell of claim 1, wherein said adhesive comprising said copolymer comprising said structure that may generally be represented as follows:
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GI: may be e.g. said cyano-containing monomer;
GII: may be e.g. n-vinylpyrrolidone;
GIII: is derived from monomers which contains said reactive group; and,
GIV: may be e.g. butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof,
wherein said number “a” of repeat units is 100-50,000; said number “b” of repeat units is 100-10,000; said number “c” of repeat units is 100-10,000; and said number “d” of repeat units is 100-10,000, and further:
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said adhesive copolymer including GI, GII, and GIV, wherein GIII is absent (e.g. supra),
said GI cyano-containing monomer corresponding with the claimed “a structural unit derived from a monomer containing a cyano group;”
said GII n-vinylpyrrolidone corresponding with the claimed “a structural unit derived from a monomer containing a group shown in formula I; and,
said GIV butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof corresponding with the claimed “a structural unit derived from a monomer containing an ester group,”
establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “the copolymer C has a weight average molecular weight of 400,000-700,000.”
Regarding claim 11, Kuo teaches said lithium cell of claim 1, wherein said adhesive comprising said copolymer comprising said structure that may generally be represented as follows:
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GI: may be e.g. said cyano-containing monomer;
GII: may be e.g. n-vinylpyrrolidone;
GIII: is derived from monomers which contains said reactive group; and,
GIV: may be e.g. butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof,
wherein said number “a” of repeat units is 100-50,000; said number “b” of repeat units is 100-10,000; said number “c” of repeat units is 100-10,000; and said number “d” of repeat units is 100-10,000, and further:
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said adhesive copolymer including GI, GII, and GIV, wherein GIII is absent (e.g. supra),
said GI cyano-containing monomer corresponding with the claimed “a structural unit derived from a monomer containing a cyano group;”
said GII n-vinylpyrrolidone corresponding with the claimed “a structural unit derived from a monomer containing a group shown in formula I; and,
said GIV butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof corresponding with the claimed “a structural unit derived from a monomer containing an ester group,”
but does not expressly teach the limitation “the copolymer C has an intrinsic viscosity of 0.8-1.1 dl/g.”
However, said adhesive copolymer composition is substantially identical to the instant invention (e.g. supra, compared with instant specification, at e.g. ¶¶ 0005-08, 17, and 100-103 plus e.g. claim 1), establishing a prima facie case of obviousness, see also e.g. MPEP § 2112.01, reading on said limitation.
Regarding claims 16-19, Kuo is applied as provided supra, with the following modifications.
Still regarding newly amended, previously amended claim 16, Kuo teaches said lithium cell of claim 1, wherein cathode plate may include said Li(NiCoMn)O2 positive electrode material and said adhesive (e.g. supra), reading on the previously amended limitation “the positive electrode active material is a lithium-containing transition metal oxide, a conductive carbon-coated modified material, a conductive metal-coated modified material, or a conductive polymer-coated modified material.”
Still regarding independent claims 17-18, Kuo teaches said lithium cell (e.g. supra), wherein a battery pack and a battery module may consist of one cell, said cell reads on “battery module” and “battery pack,” as claimed, reading on “battery module comprising the secondary battery according to claim 16” (claim 17) and “battery pack comprising the battery module according to claim 17” (claim 18).
Still regarding independent claim 19, Kuo teaches said lithium cell, wherein examples were charged and discharged (e.g. ¶¶ 95-97), wherein such testing equipment reads on “power consuming device comprising the battery pack according to claim 18,” see also supra.
Claim 2 plus alternatively claims 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kuo et al (US 2020/0343594), as provided supra, in view of Fukumine et al (US 2015/0050555).
Regarding claim 2, 9, and 11, Kuo teaches said lithium cell of claim 1, wherein said adhesive copolymer composition comprising said copolymer comprising said structure that may generally be represented as follows:
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GI: may be e.g. said cyano-containing monomer;
GII: may be e.g. n-vinylpyrrolidone;
GIII: is derived from monomers which contains said reactive group; and,
GIV: may be e.g. butyl acrylate, isobutyl acrylate, methyl acrylate, methyl methacrylate, and a combination thereof
wherein said number “a” of repeat units is 100-50,000; said number “b” of repeat units is 100-10,000; said number “c” of repeat units is 100-10,000; and said number “d” of repeat units is 100-10,000, and further:
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,
said adhesive copolymer including GI, GII, and GIV, wherein GIII is absent, as provided supra, but does not expressly teach the claimed limitation “the monomer containing a cyano group is selected from one or more of acrylonitrile, methacrylonitrile, halogenated acrylonitrile, and methoxyacrylonitrile” (claim 2).
However, Fukumine teaches a lithium ion secondary battery, said battery comprising a positive electrode plate with an improved binder composition,
wherein said binder composition providing high flexibility and binding property within said positive electrode, resulting in improved the cycle characteristic and output characteristic of said battery,
wherein said improved binder comprising a first polymer and a second polymer, said second polymer comprising
a nitrile group preferably polymerized from acrylonitrile, and methacrylonitrile monomers;
a polymer unit having a hydrophilic group, in an amount of 0.05 to 20 wt % of said second polymer;
a (meth)acrylate polymer unit polymerized from e.g. methyl acrylate, ethyl acrylate, propyl acrylate, butyl acrylate, methyl methacrylate, and ethyl methacrylate;
a polymer unit of linear alkylene having carbon atoms of 4 or more; plus,
a monomer copolymerizable therewith, wherein one of the expressly taught working options includes e.g. N-vinyl pyrrolidone,
said second polymer may have an average particle diameter of 50-500 nm;
said second polymer may have a weight average molecular weight of 10,000-700,000; and,
said second polymer may have said weight average molecular weight of 10,000-700,000 in order to optimize a viscosity of said second polymer so that may be “regulated so that it can be easily coated during the production of the positive electrode slurry” (e.g. ¶¶ 0001, 12, 15-16, 18-20, 24-25, 32-39, 62-66, 68-72, 78, 93, 98, 100, 109, 156, 198, and 228-233).
Still regarding claim 2, as a result, it would have been obvious to substitute the acrylonitrile and/or methacrylonitrile monomer units of Fukumine for the cyano-containing monomers of Kuo, since Fukumine teaches said acrylonitrile and/or methacrylonitrile monomer units are suitable for use in binder copolymer compositions, reading on “the monomer containing a cyano group is selected from one or more of acrylonitrile, methacrylonitrile, halogenated acrylonitrile, and methoxyacrylonitrile.”
In the alternative, still regarding claims 9 and 11, it would have been obvious to a person of ordinary skill in the art to optimize the molecular weight of the adhesive of Kuo to a weight average molecular weight of 10,000-700,000, as taught by Fukumine, since Fukumine teaches a copolymer with such average molecular weight optimizes a viscosity of said second polymer so that may be “regulated so that it can be easily coated during the production of the positive electrode slurry,” establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “the copolymer C has a weight average molecular weight of 400,000-700,000” (claim 9); and, Fukumine teaches said viscosity of said second binder is result-effective on the coating characteristics of the positive electrode slurry (e.g. supra, compared with instant specification, at e.g. ¶¶ 0016 and 97-99), so it would have been obvious to optimize its viscosity of the adhesive of Kuo as modified to within the claimed range, see also e.g. MPEP § 2144.05(II), reading on “the copolymer C has an intrinsic viscosity of 0.8-1.1 dl/g” (claim 11).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kuo et al (US 2020/0343594), as provided supra, in view of Mochizuki et al (US 2020/0235424).
Regarding claim 10, Kuo teaches said lithium cell of claim 1, said cell comprising said adhesive copolymer composition, as provided supra, but does not expressly teach the limitation “the copolymer C has an average particle size Dv50 of 5-20 μm.”
However, Mochizuki teaches an electrode active material layer that includes polymer binder particles with an average particle size of 1 nm to 10 µm (e.g. ¶ 0187-188 and 215).
As a result, it would have been obvious to a person of ordinary skill in the art to shape the adhesive of Kuo into particles with an average particle size of 1nm to 10 µm, as taught by Mochizuki, since Mochizuki teaches size particle sizes are suitable for polymer binder, establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on said limitation; further, while the upper endpoint of the claimed range has patentable significance (instant specification, at e.g. ¶¶ 0016 and 97-99), there does not appear to be patentable significance associated with the lower endpoint of the claimed range (5 µm), establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.04(IV)(A).
Allowable Subject Matter
Newly added claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner's statement of reasons for allowance: none of the timely art of record teaches or suggests the claimed battery of claim 1 with the specifically claimed binder with the specifically claimed components in the claimed proportions (see limitations in both claim 20 and independent claim 1).
Response to Arguments
Applicant’s arguments filed March 17, 2026 have been fully considered but they are not persuasive.
First, the applicant alleges the following.
In the Office Action, claims 1, 3, 4, 7, 9, 11 and 15-19 are rejected under 35 U.S.C. §103 as unpatentable over Kuo (US 2020/0343594). By the instant amendment, claim 15 is cancelled. Thus, the rejection of claims 1, 3, 4, 7, 9, 11 and 16-19 is respectfully traversed for at least the reasons set forth below.
The rejection of claims 1, 3, 4, 7, 9, 11 and 16-19 under 35 U.S.C. §103 should be withdrawn because one of ordinary skill in the art would not have found the claimed subject matter obvious. In particular, the presently claimed subject matter provides a surprising and unexpected improvement in properties, relative to the closest prior art, viz., Kuo.
Claim 1 recites additional details regarding mass contents and ratios of the structural units of the copolymer C.
The outstanding Office action still contends that the extremely broad teachings of Kuo, i.e., in which a copolymer includes 100-50,000 structural units derived from a monomer containing a cyano group, 100-10,000 structural units derived from a monomer containing a group shown in formula I, and 100-10,000 structural units derived from a monomer containing an ester group, renders the claimed mass contents and ratios of the structural units of the copolymer C prima facie obvious. However, it is respectfully submitted that the instant application provides ample evidence rebutting any such prima facie case of obviousness.
As an initial matter, Kuo has still not been shown to recognize any significance in the number of structural units or the mass content of the structural units within the copolymer.
In addition, claim 1 recites, inter alia, “a mass content of the structural unit derived from the monomer containing the ester group is 8% - 12%, based on a total mass of the copolymer C.” Within this range, the copolymer C can further improve the bonding performance of the binder and the cycling performance of the battery. This feature flows from the claimed subject matter and has not been shown to be realized or appreciated by the cited references.
Claim 1 now also recites, inter alia, “a mass content of the structural unit derived from the monomer containing the group shown in formula I is 0.1% - 2%, based on the total mass of the copolymer C.” The dispersion of the copolymer B can be improved by containing the above-described amount of a group shown in formula I, such that the prepared slurry is not easy to precipitate, which is helpful to increase the solid content of the slurry and further improve the load of the electrode. This feature also flows from the claimed subject matter and has not been shown to be realized or appreciated by the cited references.
The above-described evidence clearly and unambiguously shows the beneficial effects that flow from including the structural units within the much narrower ranges recited in the instant claims, as compared with amounts outside of the range (and still within the extremely broad teachings of Kuo). Because Kuo fails to recognize any significance in the cycling performance and the improved load of the electrode, these results are necessarily surprising and unexpected.
The outstanding Office action attempts to completely dismiss the above-described evidence from the present application as mere arguments of counsel, and that applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. However, the MPEP unambiguously states that, “When an applicant submits evidence, whether in the specification as originally filed or in reply to a rejection, the examiner must reconsider the patentability of the claimed invention.” There is simply no need to file additional evidence showing unexpected results of the claimed subject matter, when the evidence provided in the application as originally filed is easily understood and sufficient.
Furthermore, nothing in any of the cited references would lead one of ordinary skill in the art to modify the teachings thereof to arrive at the claimed secondary battery. Therefore, it is respectfully submitted that the cited references fail to render obvious the subject matter recited in the instant claims.
(Remarks, at e.g. 7:4-10:2, emphasis in the original.)
In response, the examiner respectfully notes that the binder composition disclosed by Kuo is for the same utility (binder composition) in the whole disclosed range, and further teaches an improved charge-discharge performance (e.g. ¶0005), compared with improved cycling performance disclosed by the instant specification (e.g. ¶¶ 0007-12).
The examiner respectfully notes that all of the evidence of record has been considered, including the scopes and disclosures of the art, those of the initial disclosure, and those of the claims.
In light of all of the evidence of record, a proper prima facie case of obviousness has been established, shifting the burden of going forward to the applicant.
An argument of counsel is insufficient to overcome a prima facie showing of obviousness. Since a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments or evidence to rebut the prima facie case. See e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented by way of an affidavit or declaration under 37 CFR 1.132. However, arguments of counsel cannot take the place of factually supported objective evidence. See e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also MPEP § 2145.
Here, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP § 716.02(d). Absent such showing, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” MPEP § 2144.05.
Finally, the unexpected property or result must actually be unexpected and of statistical and practical significance. MPEP § 716.02(a).
Here, no data has been currently provided.
Second, the applicant alleges the following.
The rejections of claims 2 and 9-11 under 35 U.S.C. § 103 should be withdrawn because even assuming, arguendo, that the references could be properly combined, which is not conceded, the proposed combination would nonetheless fail to render obvious the subject matter of claims 2, 9, and 11. In particular, as described above, the Kuo fails to render obvious the subject matter of claim 1. Fukumine and Mochizuki fail to cure the deficiencies of Kuo. Claims 2 and 9-11 ultimately depend from claim 1. Therefore, it is respectfully submitted that claims 2 and 9-11 are allowable for at least the reasons that claim 1 is allowable. Accordingly, it is respectfully requested that the rejections of claims 2 and 9-11 under 35 U.S.C. § 103 be favorably reconsidered and withdrawn.
(Remarks, at e.g. 10:4-11:1.)
In response, the examiner respectfully refers supra.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
Duan et al (US 2024/0124699);
Pan et at (US 2023/0068865);
Kuo et al (US 2020/0343555);
Sasaki (US 2016/0126551);
Sugimoto et al (US 2015/0357648); and,
Ha et al (US 2013/0017429).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOSHITOSHI TAKEUCHI whose telephone number is (571)270-5828. The examiner can normally be reached M-F, 8-4.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TIFFANY LEGETTE-THOMPSON can be reached at (571)270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YOSHITOSHI TAKEUCHI/Primary Examiner, Art Unit 1723
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