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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-12, 14 and 15, drawn to an electrode or battery.
Group II, claim 13, drawn to a method of manufacture.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the electrode of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Kinugawa et al. as cited and applied in the rejection of claim 1 below.
During a telephone conversation with Song Jung on 9 February 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-12, 14 and 15. Affirmation of this election must be made by applicant in replying to this Office action. Claim 13 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Relevant MPEP Sections
MPEP 2112.01 relating to Composition, Product, and Apparatus Claims: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim Rejections - 35 USC § 102/103
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.
(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.
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.
Claims 1-6, 11, 12, 14 and 15 are rejected under 35 U.S.C. 102(a) (1 or 2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kinugawa et al. (US Pub 2015/0303478 which corresponds to USP 9,312,542 cited in the IDS).
In regard to claims 1, 14 and 15, Kinugawa et al. teach a secondary battery (title) including a negative electrode, comprising: a current collector (copper core); and an active material layer both sides of the current collector (paragraph [0051]), wherein the active material layer comprises an electrode active material and a binder intentionally dispersed in a uneven manner such that the amount of binder increases continuously from the portion toward the core and an outer surface of the electrode active material layer (see paragraphs [0018-0031]) creating a wave form of the amount of binder (see figure 1).
While the prior art does not specifically disclose that “wherein, after a standard peel test, a ratio of an area occupied by the binder on a predetermined area of the current collector to the predetermined area along one direction on the current collector shows a wave graph, and wherein the standard peel test: is a process of attaching a tape on the active material layer and then peeling off the tape from the active material layer, which is repeated until no component of the active material layer is observed on the tape”, the prior art is presumed to have the claimed properties when tested in by the standard peel test as required by the claim (see MPEP 2112.01 above) as the distribution of binder in the prior art will result in a wave graph when tape is applied and peeled. The method of testing the electrode does not distinguish from the prior art. In the alternative, the prior art teaches a structure which obviates the claimed properties.
In regard to claims 2, 3, 5 and 6, “a ratio is 55% or more at a crest portion of the wave graph and a ratio is 50% or less at a valley portion of the wave graph” is presumed present in the prior art based on the distribution shown in figure 1 and discussed in paragraphs [0023-0032]). Similarly, the prior art product is presumed to have the properties required by claims 5 and 6 when tested (MPEP 2112.01) or properties which overlap the claimed ranges in a manner which provides a prima facie case of obviousness (see MPEP 2144.05). Further the Examiner notes that the particular type of tape used is not specified by the claims as currently written therefore tapes of various strengths may be used.
In regard to claim 4, a wavelength of the wave graph is on the scale of microns as the wave is formed over the thickness of the current collector which may have a thickness such as 10 microns (see paragraph [0051]).
In regard to claims 11 and 12, a ratio of the binder in the active material layer is 1 part by mass to 100 parts by mass graphite active material (paragraph [0048]). Broader ranges for binder content are disclosed in paragraph [0034].
Claim Rejections - 35 USC § 103
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kinugawa et al. as applied to claim 1, and further in view of Miyauchi et al. (US Pub 2015/0187516 newly cited).
In regard to claims 7-10, Kinugawa et al. teach the electrode according to claim 1, but does not describe sizes of the electrode material particles. However, Miyauchi et al. teach a similar secondary battery including a carbon containing negative electrode active material and the desirability for the binder to be a particulate binder with an average size of 50 to 400nm (paragraph [0090]) and the carbon active material particles to be a size such as 1 to 100 microns as such allows for a small binder content relative to the active material which results in a electrode with excellent adhesion, low resistance and excellent charge-discharge characteristics (paragraphs [0119-0122]).
Therefore, it would have been obvious to one of ordinary skill in the art at the before the effective filing date of the claimed invention filed to use particulate binder and active materials within the claimed ranges in the electrode of Kinugawa et al. as such results in enhanced properties for the electrode as taught by Miyauchi et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub 2017/0263927 newly cited, teaches a similar electrode where binder content is varied across multiple layers (see figure 3).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS P D'ANIELLO whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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, Milton Cano can be reached at 313-446-4937. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723