DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
3. Information disclosure statements (IDS), submitted April 16, 2024, March 13, 2026, and May 12, 2026, have been received and considered by the examiner.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
5. Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yoon US PG Publication 2017/0214051 in view of Isojima WO2020/080261 (using US PG Publication 2021/0242465 as the English translation) and Sone US PG Publication 2013/0260241.
Regarding Claims 1-5, Yoon discloses an electrode composition comprising an inorganic solid electrolyte having an ionic conductivity of a metal belonging to Group 1 or Group 2 in the periodic table (e.g. Li, para 0058), an active material (para 0048), a conductive auxiliary agent (para 0059, meeting Claim 2), and a polymer binder (first binder and second binder) (see entire disclosure and especially paras 0044-0076) wherein the polymer binder includes a polymer binder A that is a polymer binder which is dissolved in the dispersion medium and a polymer binder B that is a polymer binder which is dissolved in the dispersion medium (see paras 0050, 0104-0106). Yoon discloses that binder A (first binder) can have a functional group such as a hydroxy group (polyvinyl alcohol) or an ether bond (polyethylene oxide) as non-limiting examples (see para 0053, meeting Claim 3) and can have in a main chain, an ester bond (polyacrylic acid ester, para 0014, meeting Claim 4) and discloses that binder B (second binder) can have a functional group such as an aryl group (styrene butadiene) and is formed by polymerizing a monomer (e.g. 1,3-butadiene) having a carbon-carbon unsaturated bond (para 0066, meeting Claims 3 and 5). Yoon does not specifically discuss the adsorption rate of polymer binder A with respect to the active material in the dispersion medium is 20% or more and is higher than an adsorption rate with respect to the inorganic solid electrolyte and does not specifically discuss that polymer binder B has adsorption rate with respect to the inorganic solid electrolyte in the dispersion medium of 20% or more and is higher than an adsorption rate with respect to the active material. However, in the same field of endeavor of electrode composition design, Isojima discloses wherein a binder in such a composition advantageously has an adsorption rate with respect to active material of 20% or more, which is higher than the adsorption rate relative to the solid electrolyte in the same composition, said relationship providing a benefit of an all-solid state battery that has a high discharge capacity and a low resistance (see entire disclosure and especially e.g. abstract and paras 0059-063, 0071-0078). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the electrode composition of Yoon such that the adsorption rate of polymer binder A with respect to the active material in the dispersion medium is 20% or more and is higher than an adsorption rate with respect to the inorganic solid electrolyte because Isojima teaches that this provides a benefit of an all-solid state battery having a high discharge capacity and a low resistance. Yoon modified by Isojima does not specifically teach that polymer binder B has adsorption rate with respect to the inorganic solid electrolyte in the dispersion medium of 20% or more and is higher than an adsorption rate with respect to the active material. However, in the same field of endeavor of electrode compositions, Sone discloses that a binder element beneficially has excellent adhesion properties with relation to solid electrolyte materials (see e.g. para 0257) and so it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the composition of Yoon and Isojima such that e.g. polymer binder B has adsorption rate with respect to the inorganic solid electrolyte in the dispersion medium of 20% or more and is higher than an adsorption rate with respect to the active material because Sone teaches that some binder should have good adhesion (i.e. adsorption) to solid electrolyte and because Isojima teaches that such a numerical adsorption rate relationship (20% or more relative to the material to which adsorption is desired) is a good measure, and it would further be obvious that the binder B of Yoon, which has the stated adsorption rate with respect to inorganic solid electrolyte, would desirably have less adsorption rate with respect to the active material e.g. so as to not disrupt the relationship between binder A and the active material, since applying a known technique (or a known relationship) to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Regarding Claim 6, Yoon discloses wherein a content of the polymer binder A is 1.5% by mass or less in 100% by mass of a solid content of the electrode composition (para 0054, e.g. 1% to 5% by mass relative to the mass of active material and solid electrolyte, and therefore slightly lower than that, if polymer binder B’s mass is included, and this range overlaps the claimed range), while a content of the polymer binder B is 1.5% by mass or less in 100% by mass of a solid content of the electrode composition (para 0067, e.g. 1% to 10% by mass relative to the mass of active material and solid electrolyte, and therefore slightly lower than that, if polymer binder B’s mass is included, and this range overlaps the claimed range). 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claims 7-8, Yoon discloses an all-solid state battery comprising a positive electrode active layer, a solid electrolyte layer, and a negative electrode active material layer, wherein at least one of the positive or negative electrode active material layer is an active material layer formed of the electrode composition of Claim 1, and is electrode sheet for an all-solid state battery comprising an active material layer formed of the electrode composition of Claim 1 (paras 0108-110).
Regarding Claim 9, Yoon discloses a production method for an electrode composition of Claim 1, the method comprising a step of preparing an active material composition containing the active material and the polymer binder A (para 0104), a step of preparing a composition comprising the polymer binder B and the dispersion medium (para 0106), and a step of mixing the active material composition and the polymer binder B composition (para 0106). Yoon does not specifically disclose wherein the step of preparing an active material composition includes a dispersion medium or where the step of preparing the polymer binder B includes the solid electrolyte such that it is a step of preparing a solid electrolyte composition. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to include dispersion medium in the step of preparing an active material composition and to include solid electrolyte in the step of mixing the polymer binder B and dispersion medium such that this step is a step of preparing solid electrolyte composition in order to mix the components together most effectively since this would only require a rearrangement of steps and components of compositions. However, the mere rearrangement of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04). Similarly, the mere rearrangement of steps is within the ambit of one of ordinary skill in the art.
Regarding Claims 10-11, Yoon discloses a manufacturing method for an electrode sheet for an all-solid state secondary battery comprising forming a film of the electrode composition of Claim 1 (para 0108) and forming an all-solid state battery through the manufacturing method of Claim 10 (para 0110).
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kanno JP2012-256446 discloses an electrode for a solid state battery where the first binder has excellent adhesion to the current collector when compared with the second binder which is used to adhere the active layer together (see entire disclosure and especially paras 0011-0017).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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/LISA S PARK/Primary Examiner, Art Unit 1729
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