POLYAMIC ACID COMPOSITION
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 .
Response to Amendment
In response to communication filed on 7/21/2026:
Claim 1 has been amended; claims 2-7 have been canceled. No new matter has been entered.
Previous rejection under 35 USC 112(b) has been withdrawn.
Previous rejections under 35 USC 102(a)(1) and 103 have been upheld.
Response to Arguments
Applicant's arguments filed 7/21/2026 have been fully considered but they are not persuasive.
The Applicant discloses: “Specifically, none of Fukui, Washio, or Nishiura provide for the organosilane compound being a compound represented by Chemical Formula 1, the diamine monomer being a compound represented by Chemical Formula 2 and the dianhydride monomer being a compound represented by Chemical Formula 4. The Office Action notes that "[p]roducts of identical chemical composition cannot have mutually exclusive properties." (See Office Action, page 10). However, as the cited references fail to provide for a composition meeting all the requirements of amended independent claim 1, the feature of the polyamic acid composition having a modulus of 4.5 Gpa or more after curing cannot be inherent to any of the cited references. Further, the present application elucidates that the modulus of the polyamic acid composition being improved by the combination of chemical formulas 1, 2, and 4 is a nontrivial and unexpected feature of the present claims.”
The Examiner respectfully traverses. The cited references disclose the chemical formulas 1, 2, and 4. The only change in the amendments is for chemical formula 4 which is still disclosed in Fukui (see rejection below).
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)(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.
Claims 1, 2, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukui et al. (US 2012/0129048 A1).
Regarding claims 1, 2, 11, and 12, Fukui et al. teach a polyamic acid composition for an electrode binder (Abstract; paragraphs 0066; 0071-0080 disclose producing a negative electrode comprising an electrode binder, electrode active material, and a current collector.), comprising:
a polyamic acid including a diamine monomer (Paragraph 0075 discloses using a diamine monomer such as m-phenylenediamine
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93
244
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which reads on Chemical Formula 2.) and a dianhydride monomer as polymerization units (Paragraph 0047discloses the diamine can be mixed with a dianhydride monomer such as 3,3′,4,4′-Biphenyltetracarboxylic dianhydride
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180
429
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which reads on Chemical Formula 4.) ; and
0.1 to 20 parts by weight of an organosilane compound based on 100 parts by weight of the polyamic acid (Paragraph 0075 further discloses mixing the diamine and dianhydride with an organosilane such as 3-aminopropyl triethoxy silane
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82
227
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which reads on Chemical Formula 1. The (3,3′,4,4′-Biphenyltetracarboxylic dianhydride):(m-phenylenediamine):(3-aminopropyl triethoxy silane) molar ratio was 100:95:10.).
Claims 1, 2 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Washio et al. (JP 2013-058361 A1).
Regarding claims 1-7, 11, and 12, Washio et al. teach a polyamic acid composition for an electrode binder (Abstract; paragraphs 0157-158 disclose producing a negative electrode comprising an electrode binder, electrode active material, and a current collector.), comprising:
a polyamic acid including a diamine monomer (Paragraphs 00128, 0131, and 0132 disclose making a polyamic acid using a diamine monomer such as p-phenylenediamine
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101
271
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which reads on Chemical Formula 2.) and a dianhydride monomer as polymerization units (Paragraph 0129, 0131, and 0132 discloses the diamine is mixed with a dianhydride monomer such as 3,3',4,4'-biphenyltetracarboxylic acid dianhydridedianhydride
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272
272
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which reads on Chemical Formula 4.) ; and
0.1 to 20 parts by weight of an organosilane compound based on 100 parts by weight of the polyamic acid (Paragraph 0136 further discloses mixing the diamine and dianhydride with an organosilane such as 3-aminopropyltrimethoxysilane
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82
227
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which reads on Chemical Formula 1. 0.227 g of 3-aminopropyltrimethoxysilane is added to 42.5g of the polyamic acid made from diamine and dianhydride which is 0.5 parts by weight.).
Regarding claim 9, Washio et al. teach the polyamic composition of claim 1, comprising a solid content of 1 to 20% by weight based on the total weight (Paragraph 0136 discloses 15%.).
Regarding claim 10, Washio et al. teach the polyamic composition of claim 1, having a weight average molecular weight of 10,000 g/mol to 300,000 g/mol after curing (Paragraph 0041 discloses 5.0 x 103 to 5.0 x 105.).
Claims 1, 2, and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishiura et al. (JP 2015-005391 A).
Regarding claims 1-7, 11, and 12, Nishiura et al. teach a polyamic acid composition for an electrode binder (Abstract; claims 10-13 disclose producing a negative electrode comprising an electrode binder, electrode active material, and a current collector.), comprising:
a polyamic acid including a diamine monomer (Claim 1 discloses the binder resin is composed of a diamine compound. Paragraph 0012 discloses using a diamine monomer such as p-phenylenediamine
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101
271
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which reads on Chemical Formula 2.) and a dianhydride monomer as polymerization units (Claim 1 further discloses the binder resin is composed of a dianhydride compound. Paragraph 0013 discloses using a dianhydride compound such as 3,3',4,4'-biphenyltetracarboxylic acid dianhydride
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272
272
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which reads on Chemical Formula 4.) ; and
0.1 to 20 parts by weight of an organosilane compound based on 100 parts by weight of the polyamic acid (Paragraph 0019 further discloses the polyamic acid can contain silane coupling agents like an organosilane such as 3-aminopropyltrimethoxysilane
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which reads on Chemical Formula 1. Further, they can be added at 0.1 to 20 parts by mass of the polyamic acid composition.)
Regarding claim 8, Nishiura et al. teach the polyamic composition of claim 1, further comprising metal ions in an equivalent range of 0.01 to 1.25 times relative to 1 equivalent of a carboxyl group in the polyamic acid (Paragraph 0067 discloses an amount of lithium acetate added was 10 mol% relative to 100 mol% of the tetracarboxylic dianhydride constituting the polyamic acid.).
Regarding claim 9, Nishiura et al. teach the polyamic composition of claim 1, comprising a solid content of 1 to 20% by weight based on the total weight (Paragraph 0067 discloses 13.4%.).
Regarding claim 10, Nishiura et al. teach the polyamic composition of claim 1, having a weight average molecular weight of 10,000 g/mol to 300,000 g/mol after curing (Paragraph 0018 discloses 1.0 x 103 to 5.0 x 105.).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 10 is 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 Fukui et al. (US 2012/0129048 A1).
Regarding claim 10, Fukui et al. teach the polyamic composition of claim 1. However, they do not teach the composition having a weight average molecular weight of 10,000 g/mol to 300,000 g/mol after curing.
MPEP 2112.01 Composition, Product, and Apparatus Claims
I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT
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). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
II. COMPOSITION CLAIMS — IF THE COMPOSITION IS PHYSICALLY THE SAME, IT MUST HAVE THE SAME PROPERTIES
"Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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.
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fukui et al. (US 2012/0129048 A1) or Washio et al. (JP 2013-058361 A1) as applied to claim 1 above, and further in view of Bae et al. (US 2017/0155151 A1).
Regarding claim 8, Fukui or Washio teach the polyamic acid composition of claim 1. However, neither teach further comprising metal ions in an equivalent range of 0.01 to 1.25 times relative to 1 equivalent of a carboxyl group in the polyamic acid.
Bae et al. teach an electrode binder comprising a polyamic acid (Claims 1 and 5). Further, the polyamic acid is lithiated by using lithium hydroxide (LiOH); and the ion substitution degree of a lithium ion is 0.2-1.0 in the equivalent ratio of carboxylic acid groups.
Therefore, it would have been obvious to one of ordinary skill in the art to modify either Fukui or Washio with Bae in order to improve prelithiation and lifespan on the battery.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL S GATEWOOD whose telephone number is (571)270-7958. The examiner can normally be reached M-F 8:00-5:30.
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, Ula Tavares-Crockett can be reached at 571-272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel S. Gatewood, Ph.D.
Primary Examiner
Art Unit 1729
/DANIEL S GATEWOOD, Ph. D/Primary Examiner, Art Unit 1729 July 31st, 2026
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