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 .
Election/Restrictions
Applicant’s election of carboxylic acid group in the reply filed on 5/15/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Priority
There is no English translation of the foreign priority documents, the claims thusly have an effective date of the filing of the PCT: 3/23/22
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/19/25, 8/15/24, 12/1/23 have been considered by the examiner.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Oota (US 2019/0074517).
Oota discloses compositions for lithium secondary battery electrodes (title). Said compositions comprise an active material, a polyvinyl acetal resin and an organic solvent (abstract).
The polyvinyl acetal resin is exemplified in Table 1 wherein Resin A has a degree of polymerization of 800, a hydroxyl content of 45 mol% and 5 mol% carboxyl group (an acidic group). This anticipates the polyvinyl acetal resin of claim 1. Also-Resin B, C and H-R also anticipate the polyvinyl acetal resin of claim 1.
The active material is exemplified to be acetylene black [0102] but other active materials such as vapor grown carbon fibers are disclosed in [0026], swapping/picking one element from a list anticipates the claim [meeting the fibrous material]. The organic solvents of [0081] are not aqueous. Thus, elements above anticipate claim 1. The carboxyl group discussed above anticipates claim 2 and the mol% of carboxyl groups discussed above and exemplified anticipate claim 3.
Claim Rejections - 35 USC § 103
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oota.
Oota includes elements as set forth above. The Bronsted acidic group is the carboxyl group discussed above. The mol% of Oota is anticipated, thus one expects the Bronsted acid content of claim 4, which is dependent on the mol% of carboxyl groups, to also be anticipated. Alternatively, the acid content is expected to be embraced because the above carboxyl content, degree of polymerization and hydroxy groups are embraced by the reference.
If there is any difference between the product of the reference and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102." See MPEP 2112(III) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oota in view of Fukumine (JP2013179040A, English translation provided).
Oota includes elements as set forth above. Oota discloses compositions for lithium ion secondary battery electrodes, said compositions comprise an active material. When used as a positive electrode the active conductive material may be acetylene black or carbon black [0026]. Oota does not disclose the use of carbon nanotubes.
Fukumine discloses binder compositions for secondary battery positive electrodes (title), thus akin to the type (binder compositions) and use (secondary battery positive electrodes) of Oota. The compositions comprise an active conductive material such as acetylene black and carbon black (last paragraph of page 16 of translation), thus akin to Oota. The active material may also be carbon nanotubes (last paragraph of page 16 of translation). Fukumine thusly teaches carbon nanotubes to function equivalently to acetylene black and carbon black as conductive materials for secondary positive electrodes for lithium ion batteries.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Oota the use of carbon nanotubes, as taught by Fukumine, since they are recognized in the art of active conductive materials for positive electrodes for secondary lithium ion batteries.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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