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 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 1 recites the limitation "the binder" in the second to last line. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination “the binder” is being interpreted as “a binder”.
Regarding claims 2-14, they are being rejected under the same issues as described above due to their dependence upon or inclusion of claim 1.
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(s) 1-8 and 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kushida et al. (US 20190319303 A1).
Regarding claim 1, Kushida teaches a sulfide-based inorganic solid electrolyte that has an ion conductivity of metals belonging to group I or II of the periodic table (Kushida 0053). Further, a polymer binder (Kushida 0009) and a dispersion medium (Kushida 0134) can be mixed with the electrolyte. Regarding the permanent tensile strain of the polymer within a binder, Kushida teaches that the yield elongation of the polymer within the binder can be between 0.5% and 100% (Kushida 0081). In this case, if the yield elongation of the polymer is set to 100% then the permanent tensile strain is necessarily 0% as the polymer has not yielded when stretched to 2 times its original length. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, See MPEP 2144.05. Regarding the adsorption rate of the polymer binder, Kushida only directly teaches a preferential embodiment that enhances the wettability and/or adsorption properties (Kushida 0116) but is silent to any further specifics. Kushida does, however, teach that the solid electrolyte in the solid electrolyte composition is a sulfide-based inorganic solid electrolyte and has the composition as described in paragraphs 0054-0060 of Kushida which is substantially identical to the instant application’s sulfide solid electrolyte compositions shown in paragraphs 0069-0075 of the instant application. Further, both Kushida and the instant application discuss using polyvinyl alcohol as a binder in the solid electrolyte composition (Kushida 0084) and the instant application refers to polyvinyl alcohol as suitable for making up the low adsorption binder which meets the criteria of having an adsorption of less than 60% in respect to the solid electrolyte (Instant 0263). Therefore, while Kushida does not explicitly teach a polymer binder having an adsorption rate of less than 60% in relation to the inorganic solid electrolyte, these properties are considered inherent in the prior art barring any differences shown by objective evidence between the polyvinyl alcohol and the sulfide electrolyte disclosed in the prior art and the applicant. As the polyvinyl alcohol and the sulfide electrolyte taught by the prior art and the applicant are identical within the scope of claim 1, Kushida inherently teaches that the polyvinyl alcohol is a low adsorption binder and necessarily has an adsorption rate of less than 60% in relation to the inorganic solid electrolyte. 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) MPEP 2112.01.
Kushida further teaches that multiple binders may be combined, so, for example, a binder containing butyl (meth)acrylate, acrylonitrile, and styrene (Kushida 0144) can be combined with a binder containing polyvinyl alcohol (0084) and the combination is rendered obvious (Kushida 0146).
Regarding claim 2, Kushida teaches claim 1 as described above and, as the yield elongation can be 100% which results in the tensile permanent strain being 0%, it meets the criteria of less than 25%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 3, Kushida teaches claim 1 as described above and meets the limitation of this claim as the breaking elongation can be between 10% to 1000% (0047) which makes 400% or more obvious to a person of ordinary skill in the art. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 4, Kushida teaches claim 1 as described above which contains butyl (meth)acrylate and acrylonitrile which both have an ester bond, and styrene which has an aryl group (Kushida 0144).
Regarding claim 5, Kushida teaches claim 4 as described above, Kushida further teaches the overall binder is between .01% by mass to 10% by mass (Kushida 0153) and, as all of the constitutional components contain a described functional group there is significant overlap with the claimed limitation, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, See MPEP 2144.05.I.
Regarding claim 6, Kushida teaches claim 1 as described above and meets the limitation of this claim as the polymer is a block polymer (Kushida 0144).
Regarding claim 7, Kushida teaches claim 1 as described above and meets the limitation of the polymer having a constitutional component derived from a (meth)acrylic acid ester compound as butyl (meth)acrylate (Kushida 0144) is described as a (meth)acrylic acid ester compound (instant 0061).
Regarding claim 8, Kushida teaches claim 1 as described above and meets the limitation of a segment A containing a constitutional component derived from a vinyl compound or (meth)acrylic acid ester compound having a glass transition temperature of 50°C or higher, as well as a segment B containing a constitutional component derived from a (meth)acrylic acid ester compound having a glass transition temperature of 15°C or lower. In this case, Kushida teaches a combination of butyl (meth)acrylate, acrylonitrile, and styrene (Kushida, 0144) in the form of a block copolymer (Kushida 0146). Acrylonitrile is a vinyl compound, as it contains a vinyl group, and has a glass transition temperature over 50-oC, and butyl acrylate is a (meth) acrylic acid ester and has a glass transition temperature under 15oC.
Regarding claim 10, Kushida teaches claim 1 as described above and further teaches that there is an active material (Kushida 0007).
Regarding claim 11, Kushida teaches claim 1 as described above and further teaches that there is a conductive auxiliary agent (Kushida 0206).
Regarding claim 12, Kushida teaches claim 1 as described above which teaches a sulfide-based inorganic solid electrolyte (Kushida 0051).
Regarding claim 13, Kushida teaches claim 1 as described above and further teaches that there is a secondary battery containing the composition of claim 1 (Kushida 0008).
Regarding claim 14, Kushida teaches claim 1 as described above and further teaches that there is a positive electrode, the solid electrolyte layer as described in claim 1, and a negative electrode (Kushida 0041).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kushida et al. (US 20190319303 A1) as applied to claim 1 above, and further in view of Teng (US 20070172766 A1).
Regarding claim 9, Kushida teaches claim 1 as described above. Kushida is silent to the chain polymerization aspect of the limitation which prompts one of ordinary skill to look into similar art describing the formation of polymers. Teng teaches the chain polymerization of polymers including (meth)acrylate units (Teng 0033) which is also present in Kushida in the form of copolymers of acrylic acid and methyl acrylate that form a binder that can be combined with two or more other binders (Kushida 0144, 0146). It would have been obvious to one of ordinary skill in the art that the copolymers of acrylic acid and methyl acrylate that form a binder can be made via chain polymerization as known in the art to produce high molecular weight polymers having diverging properties as shown and used by Teng.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mochizuki et al. (WO 2019/074076 A1) in view of Lesuffleur et al. (US 2019/0062608 A1).
Regarding claims 1 and 6-8, Mochizuki teaches an inorganic solid electrolyte containing composition comprising an inorganic solid electrolyte having an ion conductivity of a metal belonging to Group 1 or Group 2 in the periodic table (pg 9), a polymer binder (A) or (D) (pg 9, 15) and a dispersion medium (pg 18, dispersant). The particular inorganic solid electrolyte is the same inorganic solid electrolyte of applicant (applicant’s specification ¶ 0021+ discussing a sulfide based solid electrolyte which is the same as discussed in Mochizuki pg 9-10). Mochizuki teaches that the polymer binder (A) is preferably a thermoplastic elastomer exhibiting elasticity and having hard and soft segments (pg 7). Mochizuki does not explicitly teach that the binder includes a polymer having the claimed stress-strain curve or the particular adsorption rate.
The particular problem faced by the inventors is described in ¶ 0005-0008 of the specification in which the adhesion of the polymer binder to solid materials is at issue due to stress during the cycling of the battery. Reasonably pertinent to the particular problem faced by the inventors, Lesuffleur teaches a binder or adhesive composition (Abstract) that is for use in electronic devices and can be subjected to stress with good recoverability to reduce defects and delamination (¶ 0002-0006, 0007). Lesuffleur teaches an advantageous thermoplastic elastomer compound comprising an ABA block copolymer (¶ 0016) of hard methacrylic acid monomer segments and soft segments (¶ 0016) which can comprise an alkyl methacrylate, a vinyl ester, heteroalkyl methacrylate or combination (¶ 0007) similar to the polymer binder of applicant. Lesuffleur teaches that a property of the block copolymer is a difference in glass transition temperature in which the A block has a Tg of at least 50 degrees Celsius (¶ 0017) and a B block having a Tg of lower than 15 degrees Celsius (¶ 0017) similar to the polymer binder P1 of applicant.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize an advantageous thermoplastic elastomer ABA block copolymer of methacrylic acid ester A blocks and methacrylic acid ester based B blocks as taught by Lesuffleur in the composition of Mochizuki as both relate to thermoplastic elastomer binders for electronic devices presenting a reasonable expectation of success, Mochizuki teaches using elastomeric compounds comprising hard and soft segments prompting one of ordinary skill to look to related art, and doing so utilizes a simple substitution of one known prior art thermoplastic elastomer for another yielding predictable results of elastomeric binding properties.
Regarding the particular properties claimed, the modification of Mochizuki in view of Lesuffleur provides an inorganic solid electrolyte that is the same as applicant’s with a similar binder polymer included in the composition that is an ABA block copolymer made of the same monomers with the same Tg range. As discussed in MPEP 2112.01 where the claimed prior art products are identical or substantially identical in structure or composition a prima facie case of obviousness exists and has been established as a material and its properties are inseparable.
Regarding the claim construction of the polymer binder comprising a polymer P1 possessing a first property and a polymer binder PB1 having a different property, a review of applicant’s specification notes that the polymer P1 makes up the polymer binder PB1 (¶ 0039 of applicant’s specification).
Regarding claims 2 and 3, the modification of Mochizuki in view of Lesuffleur provides an inorganic solid electrolyte that is the same as applicant’s with a similar binder polymer included in the composition that is an ABA block copolymer made of the same monomers with the same Tg range. As discussed in MPEP 2112.01 where the claimed prior art products are identical or substantially identical in structure or composition a prima facie case of obviousness exists and has been established as a material and its properties are inseparable.
Regarding claim 4, Lesuffleur teaches the copolymer is made of monomers (constitutional component of a resulting copolymer) which posses functional groups such as amides (¶ 0025) and esters (¶ 0032-0035).
Regarding claim 5, Mochizuki teaches that amount of Binder (A) is up to 5% by mass (pg 9). It would have been obvious to one of ordinary skill to utilize 0.1-5% through routine optimization of the workable range taught by Mochizuki.
Regarding claim 9, Mochizuki teaches also including a methacrylic polymer binder (pg 15).
Regarding claim 10, Mochizuki teaches including an active material (pg 12-13).
Regarding claim 11, Mochizuki teaches including a conductive auxiliary agent (pg 19).
Regarding claim 12, Mochizuki teaches including a sulfide-based inorganic solid electrolyte (pg 9-10).
Regarding claims 13-14, Mochizuki teaches an all-solid state battery comprising a positive electrode active material, solid electrolyte layer and negative electrode active material layer in which at least one comprises the composition (pg 1, 3, 6).
Response to Arguments
Applicant’s arguments filed 07/03/2026, with respect to the 103 rejection(s) of claim(s) 1-14 have been fully considered and are persuasive due to lack of specificity in the prior rejection supporting the inherency of the adsorption and tensile permanent strain. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kushida et al. (US 20190319303 A1) as well as Mochizuki et al. (WO 2019/074076 A1) in view of Lesuffleur et al. (US 2019/0062608 A1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN ROBERT BROWN whose telephone number is (571)272-0640. The examiner can normally be reached M-F, 9-5 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at (571)270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN R. BROWN/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
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