DETAILED ACTION
Claims 1-4, 7, 9-12, and 14-19 are presented for examination, wherein claims 1-4, 7, 12, and 16-19 are currently amended; plus, claims 12-14 are withdrawn. Claims 5-6, 8, and 13 are cancelled.
The objections to claims 1-8, 15, and 17-19 are withdrawn, as a result of the amendments to claims 1-4, 7, 15, and 17-19 plus cancellation of claims 5-6 and 8.
The provisional NSDP rejection of claims 1-2, 4, 6-9, and 15-19 over claims 1-2, 5-7, 9-14, and 16 of copending Application No. 18/515290 is withdrawn, as a result of the amendments to claim 1, from which the other claims depend or incorporate by reference, and amendment to claim 19. However, see infra.
The 35 U.S.C. § 112(b) rejections of claims 3, 5-6, 8, 16, and 19 are withdrawn, as a result of amendments to said claims and 1, 3, 16, and 19 plus cancellation of claims 5-6 and 8.
The 35 U.S.C. § 103 rejection of claims 1-2, 4-11, and 15-19 over Fukumine is withdrawn, a result of the amendments to claim 1, from which the other claims depend or incorporate by reference, and cancellation of claims 5-6 and 8.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over newly added claim 20 of copending Application No. 18/515290 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 1, from which the other claims depend or incorporate by reference, is broader than claim 1 of the reference application. Further, the copolymer B of the reference claims three structural monomer units, reading on the newly amended limitation in the instant application “copolymer C is a terpolymer.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-4, 7, 9, 11 and 15-19 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 battery cell is tested using different charging and discharging performances
(e.g. ¶¶ 0005-06, 11-23, 36-44, 93, and 95-98), reading on “binder,” said adhesive comprising said copolymer, reading on “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)(E);
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)(E); 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)(E),
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 newly 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 newly 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 claim 3, Kuo teaches said adhesive 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 adhesive 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 adhesive 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 adhesive 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 15-19, Kuo is applied as provided supra, with the following modifications.
Still regarding independent claim 15, Kuo teaches said lithium cell with said adhesive providing improved charging/discharging performance, said battery cell tested using different charging and discharging performance, said lithium cell comprising said anode plate, said cathode plate, said separator, and said electrolyte gel, wherein said cathode plate may include said Li(NiCoMn)O2 positive electrode material and said adhesive (e.g. supra), wherein said battery cell tested using different charging and discharging performance indicating the battery is a secondary battery; and, said electrolyte gel being a “gel” includes some electrolyte solution, corresponding with the claimed “electrolyte solution,” reading on “secondary battery comprising an electrode assembly and an electrolyte solution, 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 the binder according to claim 1;” 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).
Still regarding newly amended claim 16, Kuo teaches said lithium cell of claim 15, wherein cathode plate may include said Li(NiCoMn)O2 positive electrode material and said adhesive (e.g. supra), reading on the newly 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 adhesive copolymer composition 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, 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 Kuo 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 adhesive copolymer composition of claim 1, 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).
Response to Arguments
Applicant’s arguments filed January 13, 2025 have been fully considered but they are not persuasive.
First, the applicant alleges the following.
In the Office Action, claims 1, 2, 4, 6-9, and 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-7, 9-14, and 16 of copending Application No. 18/515,290. By the instant amendment, the instant claims are amended, changing the scope thereof. The subject matter presently recited in the instant claims has not been shown to be taught or suggested by claims 1, 2, 5-7, 9-14, and 16 of copending Application No. 18/515,290. Therefore, it is respectfully requested that the double patenting rejection be withdrawn.
(Remarks, at e.g. 7:4.)
In response, the examiner respectfully refers supra.
Second, the applicant alleges the following.
The rejection of claims 1, 3,4,7, 9, 11, and 15-19 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 is amended to include the subject matter of claims 5, 6, and 8, and now recites additional details regarding mass contents and ratios of the structural units of the copolymer C.
The outstanding Office action 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 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 I now 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.5 This feature also flows from the claimed subject matter and has not been shown to be realized or appreciated by the cited references.
Finally, as may be seen in the Examples from the instant application, a binder including the structural units in the claimed amounts exhibits excellent bonding force and capacity retention, compared with binders falling just outside of the scope of the instant claims (and even closer in scope than that of the closest prior art, vic., Kuo).6 This evidence of superiority of the properties of the claimed binder shared with the prior art is evidence of non-obviousness and can rebut a prima facie case of obviousness. Accordingly, it is respectfully submitted that any prima facie case of obviousness that has been established is effectively rebutted. Therefore, it is respectfully submitted that Kuo fails to render obvious the subject matter presently recited in the instant claims.
(Remarks, at e.g. 8:3-10:1, 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).
Further, 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.
Further, the unexpected property or result must actually be unexpected and of statistical and practical significance. MPEP § 716.02(a).
Currently no data has been provided.
Third, the applicant alleges the following.
The rejection 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 fails 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 rejection of claims 2 and 9-11 under 35 U.S.C. § 103 be favorably reconsidered and withdrawn.
(Remarks, at e.g. 10:4.)
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).
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 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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