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 .
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.
Claim(s) 1 and 5-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wakita et al. (US 2010/0183918) in view of Hirawkawa et al. (US 2018/0282909).
Regarding claim 1, Wakita discloses a secondary (i.e. rechargeable) battery ([0018], figure 1) that includes lithium ([0020]-[0021]), a negative electrode (figure 1, reference 22; figure 2, reference 22B; [0023], a current collector with the negative active material positioned on it (Figure 2, reference 22A; [0023]), a silicon-based negative active material ([0030]-[0032]), an ambient (i.e. room) temperature molten salt ([0033]) and a binder material ([0034]-[0036]). While Wakita does not explicitly disclose the binder as “expansion-reducing,” this is not patentability distinguishing from the prior art for a few key reasons. First, a binder, which binds, inherently provides some degree of expansion reduction as it is performing a binding operation by its very name because binding means that it is adhering the components together and preventing a degree of free-flowing outward drift. Second, there is no quantification of the reducing capacity so as to exclude prior art from consideration as such. Third, the same general compositions are disclosed (as articulated below) and identical chemical compositions cannot have mutually exclusive characteristics.
Wakita fails to disclose the exactly claimed expansion reducing polymer binders, but does disclose multiple vinylidene-based polymers and copolymers as suitable options ([0036]). Hirawkawa, drawn also to the battery art, provides an overlapping list of binders with those of Wakita, and then further expands on those choices to include the exactly claimed polyvinyl alcohol and polyacrylic acid varieties ([0126]). The courts have held that a simple substitution of one known element (a binder) for another (another binder) to obtain predictable results (binding) is not patentably distinguishing (MPEP 2143).
Regarding claims 5-8, Wakita discloses the claimed molten salt choices and the identical structural formulas as suitable choices ([0041] – [0054]).
Regarding claim 9, Wakita generally discloses the presence of the molten salt [0033], but does not discloses the exact amount of molten salt. Wakita later discloses that the molten salt amount in the electrolyte regulates the charge acceptance and should generally be used in low amounts ([0040]). In light of the foregoing, it would have been obvious and within the level of ordinary skill to have selected the claimed molten salt amount for two primary reasons. First, the prior art discloses that it is a result effective variable in which it would have been obvious to have selected an amount that enhanced charge acceptance without a deleterious affect on other components ([0040]) – in essence, a balancing act between the electrode active material itself, the binder holding it together, and the salt being added. Second, the courts have generally held that differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[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) (MPEP 2144.05IIA)
Regarding claims 10-12, as provided above in the 103 rejection under Wakita (see claim 9 above), the amount of claimed molten salt is not found to be patentably distinguishing.
Wakita, however, fails to teach the claimed amount of binder and the ratio as presented in claims 10-12.
Hirawkawa, drawn also to the production of secondary batteries ([0001]-[0004]), discloses a binder amount of 1-25% ([0127]) and discloses that the binder is a balance between providing binding and not overly decreasing the energy density by lowering the relative amount of anode material by too much ([0127]).
It would have obvious, at the time the invention was filed, in view of Hirawkawa and Wakita, to have balanced the amount of binder and molten salt in order to achieve the desired balance of energy density, binding and charge acceptance. The examiner additionally notes that the courts have generally held that differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[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) (MPEP 2144.05IIA). The courts have also held that 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).
Regarding claim 13, Wakita discloses a number of the claimed silicon-based choices ([0031]-[0032]).
Regarding claim 14, Wakita discloses the claimed rechargeable lithium battery structure. Figure 1 discloses the entirety of the structure in which the anode and cathode are provided along with an electrolyte. The presence of the electrolyte is also discussed in [0037] and [0038].
Regarding claims 15-17, Hirakawa, relied upon for the binder choices, as articulated above, discloses that the binders can be polyvinyl alcohol, polyacrylic acid or a combination thereof ([0126]).
Response to Arguments
Applicant's arguments filed 05/01/2026 have been fully considered but they are not persuasive.
The applicant argues that the amendments have rectified the prior 112 rejection.
The examiner has fully considered the arguments and agrees. The 112 rejections are hereby withdrawn.
The applicant argues that the claim amendments overcome the prior anticipation rejections.
The examiner has fully considered the arguments/amendments and agrees. The prior 102 rejections are hereby withdrawn.
The applicant argues that the present claims are patentably distinguishing because the instant claims have specific binder compounds which would have required selection from a larger group of choices in Hirakawa.
The examiner has fully considered this argument but respectfully disagrees. Wakita discloses a list of binder choices and Hirakawa merely expands on that list to include other suitable binder choices. The fact that other choices were present doesn’t detract from the reasonable expectation of success and general guidance otherwise present in Hirakawa.
The applicant argues that the prior art fails to disclose the expansion-reducing nature of the binder, thus rendering the claims patentably distinguishing.
The examiner has fully considered this argument but respectfully disagrees. As noted above, a binder, which binds, inherently provides some degree of expansion reduction as it is performing a binding operation. By its very name its binding means that it is adhering the components together and preventing a degree of free-flowing outward drift. Second, there is no quantification of the expansion reducing capacity so as to exclude prior art from consideration as such. Third, the same general compositions are disclosed (as articulated below), and identical chemical compositions cannot have mutually exclusive characteristics. Still further, even if we take the argument on its face, the examiner notes that the MPEP holds that “the fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” (MPEP 2145II).
The applicant argues the specific ratios of salt and binder render the claims patentable.
The examiner has fully considered this argument but respectfully disagrees. As noted above, there is a strong rationale in the art to optimize additive concentrations in order to balance of energy density, binding and charge acceptance. Furthermore, no expected results have been provided, and the courts have held that "[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) (MPEP 2144.05IIA).
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 MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
