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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the phrase “expansion-reduced binder” is confusing as it seems to insinuate something has been done to the binder itself such that it is reduced. Furthermore, there does not appear to be any generally accepted definition for what is encompassed by an “expansion-reduced” binder. It appears from the specification that the applicant intends the binder to impart expansion reducing capabilities. For the purpose of examination, the examiner will interpret the binder as though it is expansion reducing and imparts a level of expansion reduction to the system when in operation.
Regarding claim 2, the claim refers to the binder being a unit derived from chemical compounds. The foregoing imparts a level of confusion for a couple reasons. First, “unit” in this context appears to refer to a discrete structural component under BRI. The phrasing is at best confusing and at worst problematic since we are talking about a composition, not a physical structure/body. Second, the binder is defined only as “derived from a monomer and a copolymer,.” The foregoing product-by-process language fails to recite or convey structural or objectively measurable characteristics of the binder itself. The phrase “derived from” provides no objective boundary and does not exclude further downstream processing, leaving an indeterminate set of materials within scope and failing to apprise the public of the metes and bounds. The general classes of binders appear well established in the prior art as provided below. Any further specificity seems to be lacking in the instant disclosure that would properly apprise the public as to the metes and bounds.
Regarding claims 2-4, the claims refer a “volume” expansion reduced binder. It is unclear if this is referring to the same binder in claim 1 or not. The difference in terminology imparts questions of antecedent basis and ambiguity.
Regarding claims 11 and 12, the claims refer to a weight ratio, but they compare a decimal point to a ratio. Should 0.3 be 0:3?
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5-8, 13 and 14 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wakita et al. (US 2010/0183918).
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 silcon-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-reduced,” this is not patentability distinguishing from the prior art for four key reasons. First, the term remains ambiguous as defined above. Second, a binder, which binds, inherently provides some degree of expansion reduction as it is performing a binding operation by its very name, meaning that it is adhering the components together and preventing a degree of free-flowing outward drift. Third, there is no quantification excluding the prior art from consideration as such. Fourth, many of the exact same binders in claims 2-4 are explicitly recited as choices in Wakita ([0035]-[0036]) and identical compositions cannot have different characteristics.
Regarding claims 5-8, Wakita discloses the claimed molten salt choices and the identical structural formulas as suitable choices ([0041] – [0054]).
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].
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Wakita et al. (US 2010/0183918).
Regarding claim 9, Wakita generally discloses the presence of the molten salt [0033], but does not discloses the exact amount of moleten 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)
Claim(s) 2-4 and 10-12 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 claims 2-4, the claims are directed toward how the product could be derived, but this fails to fully inform the reader as to what the binder compound actually is. Any compound could conceivably start from the claimed derivation and be continually processed to achieve nearly every conceivable compound. The claims only require broad derivation that fails to exclude any other downstream steps. This appears to be a product by process claim, but it only provides for one processing step while failing to exclude the present of others. The claims, being drawn to a product, are not beholden to the method, but merely the structural requirements thereof, which would seemingly be endless in the absence of further qualifications. Nonetheless, the examiner notes that Wakita discloses multiple vinylidene-based polymers and copolymers ([0036]) and Hirawkawa provides an overlapping list that expands on these binder choices to further 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 is not patentably distinguishing (MPEP 2143).
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).
Conclusion
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.
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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