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 .
The Applicant’s amendment filed on 8/12/2026 was received. Claims 1, 16 were amended. Claims 19, 20 were newly added.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office action issued on 12/29/2025.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/12/2026 has been entered.
Claim Rejections - 35 USC § 102/103
The claim rejections under 35 U.S.C. 102 (a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as being obvious over Hatanaka (CN 1728439 A) on claims 1-4, 7-10, 12, 13, 15-18 are withdrawn because Applicant amended independent claim 1.
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 as being unpatentable over Hatanaka (CN 1728439 A) in view of Liu et al. (CN 111139002 A) on claims 5, 6 are withdrawn because Applicant amended independent claim 1. The claim rejection under 35 U.S.C. 103 as being unpatentable over Hatanaka (CN 1728439 A) in view of Liu et al. (US 20220123444 A1) on claim 11 is withdrawn because Applicant amended independent claim 1. The claim rejection under 35 U.S.C. 103 as being unpatentable over Hatanaka (CN 1728439 A) in view of Togashi et al. (JP 2020161426 A) on claim 14 is withdrawn because Applicant amended independent claim 1.
Claims 1-10, 12, 13, 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hatanaka (CN 1728439 A) in view of Liu et al. (CN 111139002 A), hereinafter Liu 002.
Regarding claims 1, 16: Hatanaka discloses lithium-ion secondary batteries (par. 2). The lithium-ion secondary batteries (equivalent to an electrochemical apparatus) comprise: a positive electrode (11) (par. 46, fig. 2) (equivalent to an electrode), wherein the positive electrode (11) comprises a positive current collector (11a) (par. 46, fig. 2) and a positive electrode flux layer (11b) (par. 46, fig. 2). The positive electrode flux layer (11b), containing an active material (par. 70), is on the positive current collector (11a) (equivalent to a coated region). A porous heat-resistant layer (14) (par. 47, fig. 2) (equivalent to an insulation layer) is provided along the boundary between the positive electrode flux layer and the exposed portion of the positive electrode current collector (par. 47, fig. 2) (equivalent to an uncoated region provided with no active material). (fig. 2). The porous heat-resistant layer (14) comprises a binder and insulating fillers (equivalent to inorganic particles) (par. 61). The binder contains acrylonitrile (par. 65). The insulating fillers can be bauxite, magnesium oxide, titanium dioxide, and/or silica (par. 64). The amount of binder contained in the porous heat-resistant layer is preferably 1 to 5 parts by weight relative to 100 parts by weight of insulating filler (par. 69) (equivalent to a mass percentage of the binder is 0.99% to 4.7%, and a mass percentage of the inorganic particles is approximately 95% to 99% based on a total mass of the insulation layer). Hatanaka further discloses the lithium-ion secondary battery comprise an electrolyte which is a solution containing EC, DEC, and DMC (dimethyl carbonate) in Example 1 (par. 119).
Hatanaka does not specifically disclose the binder comprises an acrylate. However, Liu 002 discloses a water-soluble binder for lithium-ion batteries (par. 6). The water-soluble binder comprises a monomer of formula 1, a monomer of formula 2, and a monomer of formula 3, forming a multi-component copolymer (par. 7, 35), and wherein the monomers of the formulas can be the following species (with the following mass percentages within the water- soluble adhesive in parentheses): the monomer of Formula 1 of the present invention can be acrylic acid, methacrylonitrile, or acrylonitrile (5-75% monomer); the monomer of Formula 2 is N,N diethylacrylamide, acrylamide, or 2-acrylamide-2-phenylethanesulfonic acid (1-35% monomer); and the monomer of Formula 3 is acrylonitrile, sodium acrylate, acrylic acid, or methacrylic acid (5-65% monomer) (par. 7, 19, 20). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the water-soluble binder (comprising sodium acrylate) of Liu 002 in the porous heat-resistant layer (14) of Hatanaka because Liu 002 teaches that the water-soluble binder has low electrolyte swelling characteristics and can improve high-temperature cycling performance (par. 48, 128).
Hatanaka and Liu 002 fail to explicitly disclose in the acrylate, metal ions replace at least some hydrogen ions. However, it is the position of the examiner that other properties of said material, such as metal ions replacing at least some hydrogen ions, are inherent, given that the acrylate disclosed by Liu 002 and the present application are the same. A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Hatanaka and Liu 002 fail to explicitly disclose a swelling rate of the insulation layer is not higher than 8% after the insulation layer is immersed in dimethyl carbonate as an electrolyte at 85°C for 24h. However, it is the position of the examiner that such properties are inherent, given that both Liu 002 and the present application utilize the same binder (comprising acrylonitrile, acrylate, and acrylamide) and have similar mass percentage of the binder in the porous heat-resistant layer (14). A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. In re Robertson, 49 USPQ2d 1949 (1999).
Alternatively, Hatanaka recognizes the binders swell after absorbing the electrolyte. Therefore, the less binder added to the porous heat-resistant layer (14), the less the porous heat-resistant layer (14) swells (par. 65). Hatanaka further recognizes less binder leads to better ion conductivity but poor mechanical strength of the porous heat-resistant layer (par. 69). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the weight percentage of the binder in the porous heat-resistant layer (14) to yield more or less swelling rate of the porous heat-resistant layer (14), thereby achieving an optimal balance between ion conductivity and poor mechanical strength. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 2: Hatanaka in view of Liu 002 discloses lithium-ion secondary batteries as described above. Hatanaka and Liu 002 do not specifically disclose a swelling rate of the insulation layer is not higher than 5% after the insulation layer is immersed in as an electrolyte at 85°C for 24h. However, it is the position of the examiner that such properties are inherent, given that both Liu 002 and the present application utilize the same binder (comprising acrylonitrile, acrylate, and acrylamide) and have similar mass percentage of the binder in the porous heat-resistant layer (14). A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. In re Robertson, 49 USPQ2d 1949 (1999).
Alternatively, Hatanaka recognizes the binders swell after absorbing the electrolyte. Therefore, the less binder added to the porous heat-resistant layer (14), the less the porous heat-resistant layer (14) swells (par. 65). Hatanaka further recognizes less binder leads to better ion conductivity but poor mechanical strength of the porous heat-resistant layer (par. 69). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the weight percentage of the binder in the porous heat-resistant layer (14) to yield more or less swelling rate of the porous heat-resistant layer (14), thereby achieving an optimal balance between ion conductivity and poor mechanical strength. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 3: Hatanaka discloses the binder contains acrylonitrile (par. 65).
Regarding claim 4: Hatanaka discloses the binder contains acrylonitrile (par. 65). It is noted that limitation of “formed by polymerization of monomers” in claim 4 is a product-by-process limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 5: Hatanaka discloses the lithium-ion secondary batteries as described above. Hatanaka fails to explicitly disclose the polymer is formed by polymerization of the monomers of the acrylonitrile, the acrylate, acrylamide, and the acrylic ester; and based on a total mass of the polymer, a mass percentage of the acrylonitrile is 25% to 70%, a mass percentage of the acrylate is 10% to 60%, a mass percentage of the acrylamide is 10% to 60%, and a mass percentage of the acrylic ester is 0% to 10%. However, Liu 002 discloses a water-soluble binder for lithium-ion batteries (par. 6). The water-soluble binder comprises a monomer of formula 1, a monomer of formula 2, and a monomer of formula 3, forming a multi-component copolymer (par. 7, 35), and wherein the monomers of the formulas can be the following species (with the following mass percentages within the water- soluble adhesive in parentheses ): the monomer of Formula 1 of the present invention can be acrylic acid, methacrylonitrile, or acrylonitrile (5-75% monomer); the monomer of Formula 2 is N,N diethylacrylamide, acrylamide, or 2-acrylamide-2-phenylethanesulfonic acid (1-35% monomer); and the monomer of Formula 3 is acrylonitrile, sodium acrylate, acrylic acid, or methacrylic acid (5-65% monomer) (par. 7, 19, 20). The copolymer does not include acrylic ester, therefore the mass percentage is 0%. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the water-soluble binder of Liu 002 in the porous heat-resistant layer (14) of Hatanaka because Liu 002 teaches that the water-soluble binder has low electrolyte swelling characteristics and can improve high-temperature cycling performance (par. 48, 128). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP §2144.05(I).
In addition, it is noted that limitation of “formed by polymerization of monomers” in claim 5 is a product-by-process limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 6: Hatanaka discloses the lithium-ion secondary batteries binder as described above. Hatanaka fails to explicitly disclose a swelling rate of the binder in the electrolyte is 0% to 5%. However, Liu 002 discloses a water-soluble binder for lithium-ion batteries (par. 6). The water-soluble binder comprises a monomer of formula 1, a monomer of formula 2, and a monomer of formula 3, forming a multi-component copolymer (par. 7, 35). The water-soluble binder for lithium-ion batteries of the present invention has an electrolyte swelling degree of <10% after soaking at 70°C for 7 days (par. 128). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the water-soluble binder of Liu 002 in the porous heat-resistant layer (14) of Hatanaka because Liu 002 teaches that the water-soluble binder has low electrolyte swelling characteristics and can improve high-temperature cycling performance (par. 48, 128). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP §2144.05(I).
In addition, Liu 002 recognizes that the lower electrolyte swelling characteristics result in better adhesion (par. 48). Liu 002 further recognizes the swelling degree can be controlled by the mass percentage of the three types of monomers (par. 102). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the mass percentage of the three types of monomers to yield a desired swelling rate of the binder and a desired adhesion. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claims 7, 8: Hatanaka discloses the binder contains acrylonitrile (par. 65). The weight average molecular weight of an acrylonitrile polymer can be 50,000 to 1,000,000 as evidenced by Tatsuno et al. (US 20190148739 A1) (par. 118 in Tatsuno). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP §2144.05(I).
Regarding claim 9: Hatanaka discloses the amount of binder contained in the porous heat-resistant layer is preferably 1 to 5 parts by weight relative to 100 parts by weight of insulating filler (par. 69) (equivalent to a mass percentage of the binder is 0.99% to 4.7%, and a mass percentage of the inorganic particles is approximately 95% to 99% based on a total mass of the insulation layer). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP §2144.05(I).
Regarding claim 10: Hatanaka discloses the porous heat-resistant layer should be applied to where the cutting burrs are generated in the electrode to prevent short circuit (par. 48, 49, 50, 58). Therefore, one of ordinary skill in the art at the time of filing would have found it obvious and have been motivated to form the porous heat-resistant layer insulation layer of Hatanaka with sufficient coverage on the uncoated region of the collector to avoid the risk of short circuit. If the insulation layer neither falls off the current collector nor has cracks or breaks, then it has continuous film coverage over its region on the current collector and would overlap with a cover rate of not less than 95%.
Regarding claim 12: Hatanaka discloses the insulating fillers have an average particle diameter of 0.5 μm (par. 116, 124).
Regarding claim 13: Hatanaka discloses the thickness of the porous heat-resistant layer is set to 0.8μm, 1μm, 10μm or 12μm (par. 122).
Regarding claim 15: Hatanaka discloses the lithium-ion secondary batteries (par. 2) as described above. Hatanaka fails to explicitly disclose compared with another electrochemical apparatus of the same specifications without the insulation layer and stored at 85°C for 24h or 60°C for 30 days, the electrochemical apparatus stored at 85°C for 24h or 60°C for 30 days satisfies at least one of the following characteristics: (a) a difference between thickness growth rates of the electrochemical apparatus and the another electrochemical apparatus being within ±8%; or (b) a difference between internal resistance growth rates of the electrochemical apparatus and the another electrochemical apparatus being within ±8%. Hatanaka recognizes the binders swell after absorbing the electrolyte. Therefore, the less binder added to the porous heat-resistant layer (14), the less the porous heat-resistant layer (14) swells (par. 65) (the less the porous heat-resistant layer (14) swells, the lower the thickness growth rate of the batteries is). Hatanaka further recognizes less binder leads to better ion conductivity but poor mechanical strength of the porous heat-resistant layer (par. 69). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the weight percentage of the binder in the porous heat-resistant layer (14) to yield more or less swelling rate of the porous heat-resistant layer (14) (which influences the thickness growth rate of the batteries), thereby achieving an optimal balance between ion conductivity and poor mechanical strength. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claims 17, 18: Hatanaka discloses the binder contains acrylonitrile (par. 65). The weight average molecular weight of an acrylonitrile polymer can be 50,000 to 1,000,000 as evidenced by Tatsuno et al. (US 20190148739 A1) (par. 118 in Tatsuno). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP §2144.05(I).
Regarding claim 19: Hatanaka discloses the lithium-ion secondary batteries binder as described above. Hatanaka fails to explicitly disclose the binder comprises a polymer comprising acrylonitrile, acrylate, and acrylamide; and wherein the polymer is formed by polymerization of monomers of the acrylonitrile, the acrylate, and the acrylamide. However, Liu 002 discloses a water-soluble binder for lithium-ion batteries (par. 6). The water-soluble binder comprises a monomer of formula 1, a monomer of formula 2, and a monomer of formula 3, forming a multi-component copolymer (par. 7, 35), and wherein the monomers of the formulas can be the following species (with the following mass percentages within the water- soluble adhesive in parentheses): the monomer of Formula 1 of the present invention can be acrylic acid, methacrylonitrile, or acrylonitrile (5-75% monomer); the monomer of Formula 2 is N,N diethylacrylamide, acrylamide, or 2-acrylamide-2-phenylethanesulfonic acid (1-35% monomer); and the monomer of Formula 3 is acrylonitrile, sodium acrylate, acrylic acid, or methacrylic acid (5-65% monomer) (par. 7, 19, 20). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the water-soluble binder of Liu 002 in the porous heat-resistant layer (14) of Hatanaka because Liu 002 teaches that the water-soluble binder has low electrolyte swelling characteristics and can improve high-temperature cycling performance (par. 48, 128). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP §2144.05(I).
In addition, it is noted that limitation of “formed by polymerization of monomers” in claim 19 is a product-by-process limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 20: Hatanaka discloses the lithium-ion secondary batteries binder as described above. Hatanaka fails to explicitly disclose the binder comprises a polymer comprising acrylonitrile, acrylate, and acrylamide; and wherein the polymer is formed by polymerization of monomers of the acrylonitrile, the acrylate, and the acrylamide. However, Liu 002 discloses a water-soluble binder for lithium-ion batteries (par. 6). The water-soluble binder comprises a monomer of formula 1, a monomer of formula 2, and a monomer of formula 3, forming a multi-component copolymer (par. 7, 35), and wherein the monomers of the formulas can be the following species (with the following mass percentages within the water- soluble adhesive in parentheses): the monomer of Formula 1 of the present invention can be acrylic acid, methacrylonitrile, or acrylonitrile (5-75% monomer); the monomer of Formula 2 is N,N diethylacrylamide, acrylamide, or 2-acrylamide-2-phenylethanesulfonic acid (1-35% monomer); and the monomer of Formula 3 is acrylonitrile, sodium acrylate, acrylic acid, or methacrylic acid (5-65% monomer) (par. 7, 19, 20). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the water-soluble binder of Liu 002 in the porous heat-resistant layer (14) of Hatanaka because Liu 002 teaches that the water-soluble binder has low electrolyte swelling characteristics and can improve high-temperature cycling performance (par. 48, 128). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP §2144.05(I).
In addition, it is noted that limitation of “formed by polymerization of monomers” in claim 20 is a product-by-process limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hatanaka (CN 1728439 A) in view of Liu et al. (CN 111139002 A), hereinafter Liu 002, as applied in claim 1 above, and further in view of Liu et al. (US 20220123444 A1), hereinafter Liu 444 et al.
Regarding claim 11: Hatanaka in view of Liu 002 disclose lithium-ion secondary batteries as described in paragraph 5 above. Hatanaka also discloses the insulating fillers (equivalent to inorganic particles) can be bauxite, magnesium oxide, titanium dioxide (par. 64). Hatanaka fails to explicitly disclose the inorganic particles comprise at least one of boehmite, diaspore, aluminum oxide, barium sulfate, calcium sulfate, or calcium silicate. However, Liu 444 et al. disclose an electrode assembly including an insulation layer (abstract). The insulation layer (113) is coated on a surface without active material layer (112) (par. 98, fig. 7, 8). The insulation layer (113) comprises an inorganic filler and a binder (par. 12). The binder can be one or more of polyacrylonitrile or polyacrylate (par. 99). The inorganic fillers can be one or more of boehmite, aluminum oxide, magnesium oxide, titanium dioxide, zirconium oxide, silicon dioxide, silicon carbide, boron carbide, calcium carbonate, aluminum silicate, calcium silicate, potassium titanate, or barium sulfate (par. 99). Since the Liu 444 et al. recognizes magnesium oxide, titanium dioxide, boehmite, aluminum oxide, calcium silicate, and barium sulfate are functionally equivalent inorganic fillers used in the insulation layer, it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the magnesium oxide and the titanium dioxide of Hatanaka with the magnesium oxide, titanium dioxide and boehmite, aluminum oxide, calcium silicate, barium sulfate of Liu 444 et al. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hatanaka (CN 1728439 A) in view of Liu et al. (CN 111139002 A), hereinafter Liu 002, as applied in claim 1 above, and further in view of Togashi et al. (JP 2020161426 A).
Regarding claim 14: Hatanaka in view of Liu 002 disclose lithium-ion secondary batteries as described in paragraph 5 above. Hatanaka and Liu 002 fail to explicitly disclose an adhesion between the insulation layer and the current collector is not less than 201 N/m. However, Togashi et al. disclose a method for manufacturing an electrode and an electrode (par. 1). The electrode (41) includes a strip-shaped electrode substrate (42) (equivalent to a current collector) (par. 31, fig. 8). A mixture layer (43) (equivalent to an active material) is formed on the electrode substrate (42) (par. 31, fig. 8). An insulating layer (44) (equivalent to an insulation layer) is formed on the uncoated portion of the electrode substrate (42) (par. 31, fig. 8). The peel strength between the insulating layer and the electrode base material is 0.2 N/mm or more (equivalent to 200 N/m). In addition, Togashi et al. recognizes the high peeling strength can be achieved by induction heating method (par. 22). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can modify the heating method to enhance the pealing strength between the insulation layer and the current collector. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Response to Amendment
Applicant’s arguments filed on 08/12/2026 have been fully considered but they are not persuasive. Applicant primarily argues:
Hatanaka and Liu 002 do not disclose a binder comprising an acrylate in which metal ions replace at least some hydrogen ions, as required by current claims 1 and 16.
Liu 002 does not specifically teach or suggest a polymer formed by polymerization of these three monomers. Rather, arriving at the presently claimed polymer requires multiple independent selections from different lists of alternative monomers disclosed in Liu '002, resulting in a vast number of possible monomer combinations, with no teaching or suggestion to select the particular combination of acrylonitrile, sodium acrylate, and acrylamide.
Unexpected results (a higher viscosity) are seen in Examples 1, 3, and 9 (including three-monomer polymer) compared to Examples 22 to 24 (including two-monomer polymer).
In response:
Applicant’s arguments are not persuasive. Hatanaka does not criticize the binder containing other polymer (acrylate). In order to teach away, the reference must criticize, discredit, or otherwise discourage the solution claimed (In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004); See MPEP 2145. Liu 002 discloses the monomer of Formula 3 can be sodium acrylate (par. 7, 19, 20). It is the position of the examiner that the property of metal ions replacing at least some hydrogen ions is the inherent property of the sodium acrylate. Thus, the claimed feature is inherently anticipatory.
Applicant’s arguments are not persuasive. Though the specific combination (acrylonitrile, sodium acrylate, and acrylamide) is picked from a large list, picking one thing from a large list is held by the Office as anticipated. Further, in picking a combination from two lists, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985).
Applicant’s arguments are not persuasive. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997) (conclusory statements that claimed binder possesses a higher viscosity that is unsupported by comparative data held insufficient to overcome prima facie case of obviousness).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PIN JAN WANG whose telephone number is (571)272-7057. The examiner can normally be reached M-F 9am-5pm.
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/PIN JAN WANG/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
