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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The references cited in the PCT international search report by the Japan Patent Office have been considered.
The information disclosure statements (IDS)’s submitted on 07/20/2023, 09/16/2024, 02/07/2025, and 04/03/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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.
Claim 7 is 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.
Claim 7 specifies an amount of the contained additional monomer of 0 to 80%. It is unclear if said composition is based upon a weight or volume percentage. Appropriate correction is required.
Claim Interpretation
Regarding Claim 7, the amount of the contained additional monomer of 0 to 80% is assumed to be based on the weight of the binder composition for examination purposes (see rejection under 35 U.S.C. 112(b) above).
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Matsuo et al. (U.S. Pat. No. 20200411867 A1).
Regarding Claim 1 as related to anticipation, Matsuo et al. teaches a negative electrode binder composition (para. 142-143) comprising a copolymer having a hydroxyl group-containing monomer (a) (hydroxyl group-containing vinyl monomer unit, para. 13) and an acid group-containing monomer (b) (Ethylenically unsaturated carboxylic acid monomer, para. 51) as essential components,
wherein the copolymer has a weight average molecular weight of 7.41 x 106 within the claimed range of 700,000 or more (Table 1, Example 10), as measured using an aqueous GPC measurement apparatus ([206]),
and wherein a dried polymer film of the negative electrode binder composition has a swelling ratio of 10%, within the claimed range of 0 to 10% by weight (Table 1, Example 10 provides a degree of swelling factor of 1.1 calculated by formula wafter swelling/wfilm (para. 215), in which is equal to 10% based on Formula 1 of applicant’s disclosure (spec: pg. 14, [0048]), as measured after being immersed in a carbonate mixed solvent of (EC/EMC/VC) at 60°C for 72 hours (para. 215).
“Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure” (see MPEP 2111.04). As the claimed means for observing the swelling ratio (comprising an immersion solution of a carbonate mixed solvent of EC/DEC in a 50/50 wt. ratio at 45 deg. C for 72 hours) does not limit the binder composition to a particular structure, the claim scope is not limited by said claim language.
Further, as related to obviousness, one of ordinary skill in the art would expect insignificant variation between the swelling ratio when observed as claimed (utilizing EC/DEC in 50/50 wt. at 45°C for 72 hours) and using the method of Matsuo et al. (utilizing (EC/EMC/VC) at 60°C for 72 hours). In this case, Matsuo et al. teaches the general conditions of the claim language including immersing a dried polymer film in a carbonate mixed solvent at a suitable temperature for a duration of 72 hours (para. 215). However, in the case that the measurement methods provide some variation in the determined swelling ratio, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (see MPEP 2144.05(I)).
One of ordinary skill in the art would be motivated to utilize the teachings of Matsuo et al. to provide a binder composition for a non-aqueous secondary battery electrode that can inhibit electrode swelling associated with repeated charging and discharging while also causing a secondary battery to display excellent cycle characteristics (para. 9).
Regarding Claim 2, Matsuo et al. teaches all claim limitations as applied to Claim 1 above. Matsuo et al. teaches that the hydroxyl group-containing monomer can include 2-hydroxyethyl acrylate. "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)" (MPE 2144.07). One of ordinary skill in the art would have been motivated to select 2-hydroxyethyl acrylate from the list of suitable compounds to improve the peel strength of the electrode and ensure viscosity stability of a slurry composition (para. 47-48). Therefore, all claim limitations are met. One of ordinary skill in the art would be motivated to utilize the teachings of Matsuo et al. to provide a binder composition for a non-aqueous secondary battery electrode that can inhibit electrode swelling associated with repeated charging and discharging while also causing a secondary battery to display excellent cycle characteristics (para. 9).
Regarding Claim 3, Matsuo et al. teaches all claim limitations as applied to Claim 1 above. Matsuo et al. teaches that the acid group-containing monomer is acrylic acid (Example 1, para. 265). Therefore, all claim limitations are met. One of ordinary skill in the art would be motivated to utilize the teachings of Matsuo et al. to provide a binder composition for a non-aqueous secondary battery electrode that can inhibit electrode swelling associated with repeated charging and discharging while also causing a secondary battery to display excellent cycle characteristics (para. 9).
Regarding Claim 4, Matsuo et al. teaches all claim limitations as applied to Claim 1 above. Matsuo et al. teaches that the acid group-containing monomer is neutralized by a basic composition ([0265] teaches that lithium hydroxide aqueous solution is added to the product containing the acid-group containing monomer to adjust pH to 8). Therefore, all claim limitations are met. One of ordinary skill in the art would be motivated to utilize the teachings of Matsuo et al. to provide a binder composition for a non-aqueous secondary battery electrode that can inhibit electrode swelling associated with repeated charging and discharging while also causing a secondary battery to display excellent cycle characteristics (para. 9).
Regarding Claim 5, Matsuo et al. teaches all claim limitations as applied to Claim 1 above. Matsuo et al. teaches that an amount of the hydroxyl group-containing monomer (a) (N-hydroxyethylacrylamine) is 25 wt.%, within the claimed range of 10 to 80 % by weight; and an amount of the acid group-containing monomer (b) (acrylic acid) is 35 wt.%, within the claimed range of 10 to 80 % by weight ([0265]). One of ordinary skill in the art would be motivated to utilize the teachings of Matsuo et al. to provide a binder composition for a non-aqueous secondary battery electrode that can inhibit electrode swelling associated with repeated charging and discharging while also causing a secondary battery to display excellent cycle characteristics (para. 9).
Regarding Claim 6, Matsuo et al. teaches all claim limitations as applied to Claim 1 above. The electrode binder composition can further include an additional monomer such as (meth)acrylamide monomer (Example 1, [0265]). Therefore, all claim limitations are met. One of ordinary skill in the art would be motivated to utilize the teachings of Matsuo et al. to provide a binder composition for a non-aqueous secondary battery electrode that can inhibit electrode swelling associated with repeated charging and discharging while also causing a secondary battery to display excellent cycle characteristics (para. 9).
Regarding Claim 7, Matsuo et al. teaches all claim limitations as applied to Claim 6 above. Matsuo et al. teaches an amount of the contained additional monomer as 40 parts by weight (Example 1, [0265]), within the claimed range of 0 to 80%. Therefore, all claim limitations are met. One of ordinary skill in the art would be motivated to utilize the teachings of Matsuo et al. to provide a binder composition for a non-aqueous secondary battery electrode that can inhibit electrode swelling associated with repeated charging and discharging while also causing a secondary battery to display excellent cycle characteristics (para. 9).
Regarding Claim 8, Matsuo et al. teaches all claim limitations as applied to Claim 1 above. Matsuo et al. teaches a negative electrode comprising the electrode binder composition (para. 273-274). Therefore, all claim limitations are met. One of ordinary skill in the art would be motivated to utilize the teachings of Matsuo et al. to provide a binder composition for a non-aqueous secondary battery electrode that can inhibit electrode swelling associated with repeated charging and discharging while also causing a secondary battery to display excellent cycle characteristics (para. 9).
Regarding Claim 9, Matsuo et al. teaches all claim limitations as applied to Claim 8 above. Matsuo et al. teaches a secondary battery comprising the negative electrode (para. 273-274). Therefore, all claim limitations are met. One of ordinary skill in the art would be motivated to utilize the teachings of Matsuo et al. to provide a binder composition for a non-aqueous secondary battery electrode that can inhibit electrode swelling associated with repeated charging and discharging while also causing a secondary battery to display excellent cycle characteristics (para. 9).
Conclusion
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/C.R.D./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729