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 .
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.
Claim 1 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 a first polymerizing monomer, wherein the first polymerizing monomer is trifluoroacetate methacrylate. The chemical identity of this compound is unclear as the examiner is unable to find a corresponding material or chemical structure in the literature and mentions of trifluoroacetate methacrylate in the instant specification ([0006, 0045]) do not clarify or further elucidate its chemical nature. For the purpose of examination, the limitation is interpreted to include any trifluoroacetyl-substituted methacrylates, as it seems that this is what applicant intended.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites an organic polymer comprising first, second, and third polymerizing monomers, and a composition of weight ratios between said monomers. Claim 2 recites a composition of the polymer of claim 1 in ranges of weight percent for each of the first, second, and third monomers with respect to the total weight of the polymer. However, conversion of the weight ratios in claim 1 to weight percent values, as calculated by the examiner, reveals a compositional range of the third monomer that is narrower in scope than that recited in claim 2 (see table below). An example of the calculation:
R
n
R
1
+
R
2
+
R
3
*
100
=
W
n
where R1, R2, and R3 are the claim 1 weight ratio values for the first, second, and third monomers, respectively; Rn is chosen from among the values of R1, R2, and R3; and Wn is the calculated weight percent (wt%) of the corresponding monomer.
R1
R2
R3
W1
W2
W3
Ratio
1
0
0
100.00
0.00
0.00
1
0.8
0
55.56
44.44
0.00
1
0
0.15
86.96
0.00
13.04
1
0.8
0.15
51.28
41.03
7.69
Optional Ratio
1
0.05
0.05
90.91
4.55
4.55
1
0.2
0.05
80.00
16.00
4.00
1
0.05
0.1
86.96
4.35
8.70
1
0.2
0.1
76.92
15.38
7.69
From the values in the table above, it can be seen that the wt% compositions converted from the weight ratio of claim 1 exhibit a range of 0.00% to 13.04% for the third monomer. Thus, the weight percent range for the third monomer recited in claim 2 (0% to 40%) is broader than the corresponding composition in claim 1 (0.00% to 13.04%). Examiner notes that the same is true for both the first and third monomers when considering the calculated compositions corresponding to the optionally recited weight ratio of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 4-6, 8-11, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Wakizaka et al. (WO 2010098380 A1), hereinafter “Wakizaka,” wherein an English machine translation is used and cited herein.
Regarding claim 1, Wakizaka teaches:
a porous film comprising a copolymer binder and non-conductive particles ([0010, 0028]) wherein the non-conductive particles may be various inorganic particles ([0021]; corresponding to a binder, comprising an organic polymer and an inorganic compound);
the copolymer including (meth)acrylic acid ester monomer units ([0028]; corresponding to a first polymerizing monomer, containing at least one ester bond), as well as the optionally recited methyl acrylate, ethyl acrylate, n-propyl acrylate, n-butyl acrylate, tert-butyl acrylate, methyl methacrylate, ethyl methacrylate, n-butyl methacrylate ([0030]), 2-ethylhexyl acrylate, lauryl acrylate, cyclohexyl acrylate, 2-ethylhexyl methacrylate, lauryl methacrylate ([0031]), 2-hydroxyethyl acrylic acid, 2-hydroxypropyl acrylic acid, 2-hydroxyethyl methacrylic acid, 2-hydroxypropyl methacrylic acid (0066]), glycidyl methacrylate ([0053]), and vinyl acetate ([0071]);
the copolymer includes (meth)acrylonitrile monomer units ([0028]; corresponding to a second polymerizing monomer, containing at least one nitrile bond), as well as the optionally recited acrylonitrile and methacrylonitrile ([0032]);
the copolymer may include amide-based monomers ([0071]; corresponding to a third polymerizing monomer, containing at least one amide bond) as well as the optionally recited acrylamide and methacrylamide ([0071]). Additionally, the copolymer may include a crosslinking agent ([0036-0039]) such as monomers containing an N-methylolamide group ([0050]), including the optionally recited N-methylol acrylamide ([0055]);
Note that, from among the optionally recited monomers of claim 1, Wakizaka does not teach the first monomer as isobutyl acrylate, sec-butyl acrylate, isobornyl methacrylate, trifluoroacetate methacrylate, or trimethylolpropane triacrylate; the second monomer as ethacrylonitrile; or the third monomer as N-butoxymethacrylamide. However, as these monomers are recited as optional, the examiner interprets them as not required by the scope of claim 1.
the ratio of the (meth)acrylonitrile monomer unit and the (meth)acrylic acid ester monomer units in the copolymer is preferably in the mass ratio range of 5/95~50/50 ([0034]), a content ratio of the (meth) acrylonitrile monomer unit is less than 50 mass % ([0011]), the content ratio of the non-conductive particles in the porous film is preferably 5 to 99% by mass ([0027]), and the content ratio of the thermally crosslinkable group in the copolymer is preferably in a range of 0.1 to 10% by mass ([0057]; corresponding to a weight ratio between the first polymerizing monomer, the second polymerizing monomer, and the third polymerizing monomer is 1: (0 to 0.8): (0 to 0.15), and optionally 1: (0.05 to 0.2): (0.05 to 0.1)).
The mass ratio ranges that Wakizaka teaches for the ester-, nitrile-, and amide-containing monomers, as well as for the non-conductive particles, overlap with the instantly claimed weight ratio. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. In this regard, it would have been within the skill of one of ordinary skill in the art to select any value of mass ratio of the components within the disclosed range, including a value within the claimed range, to arrive at the invention as claimed. See MPEP § 2144.05.
Regarding claim 2, Wakizaka teaches the binder with overlapping ranges of composition for the ester-, nitrile-, and amide-containing monomers, as well as for the non-conductive particles, as in claim 1 above.
Regarding claims 4 and 5, Wakizaka teaches:
the total content of the (meth)acrylonitrile monomer unit and the (meth)acrylate monomer unit in the copolymer is preferably 50% by mass or more ([0035]; corresponding to a weight percent of particles of the organic polymer is 50 wt% to 99.9 wt%, optionally 60 wt% to 99 wt%, and further optionally 70 wt% to 99 wt%, based on a total dry weight of the binder); and
the content ratio of the non-conductive particles in the porous film is preferably 5 to 99% by mass ([0027]; corresponding to a weight percent of the inorganic compound is 0.1 wt% to 50 wt%, optionally 1 wt% to 40 wt%, and further optionally 1 wt% to 30 wt%, based on a total dry weight of the binder).
The mass percent ranges that Wakizaka teaches overlap with the instantly claimed ranges for the copolymer (Wakizaka: 50% or more; claimed: 50-99.9%; overlap: 50-99.9%) and the non-conductive particles (Wakizaka: 5-99%; claimed: 0.1-50%; overlap: 5-50%).
Furthermore, Wakizaka’s mass percent ranges likewise overlap with the weight ratio between the organic polymer and the inorganic compound of claim 5 (Wakizaka: 50:50 to 99.9:0.1; claimed 1:1 to 99:1; overlap: 1:1 to 99:1).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. In this regard, it would have been within the skill of one of ordinary skill in the art to select any value of mass percent of the copolymer and of the non-conductive particles within the disclosed ranges, including a value within the claimed ranges, to arrive at the invention as claimed. See MPEP § 2144.05.
Regarding claim 6, Wakizaka teaches the binder according to claim 1 (see above), as well as:
inorganic particles including magnesium oxide and zinc oxide ([0022]) and nanoparticles such as fumed silica and fumed alumina ([0077]; corresponding to an oxide of silicon or aluminum, silicon dioxide, aluminum oxide, vapor-phase silicon dioxide, and silicon micropowder);
Note that, from among the optionally recited inorganic compounds of claim 6, Wakizaka does not teach sodium benzoate or silica sol. However, as these compounds are recited as optional, the examiner interprets them as not required by the scope of claim 6.
Regarding claim 8, Wakizaka teaches the binder of claim 1 (see above) and the glass transition temperature of the copolymer used as the binder is preferably 15°C or less ([0073]; corresponding to a glass transition temperature of the binder is –20 °C to 30 °C).
Wakizaka’s glass transition temperature overlaps with the instantly claimed range (Wakizaka: 15 °C or less; claimed -20 °C to 30 °C; overlap: -20 °C to 15 °C). In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05.
Regarding claims 9, 10, and 11, Wakizaka teaches:
the porous film comprising the copolymer and non-conductive particles may function as a separator ([0095, 0126]; corresponding to a separator, comprising the binder according to claim 1);
an electrode for a lithium ion secondary battery including the copolymer binder and non-conductive particles ([0011, 0020, 0090]; corresponding to an electrode plate, comprising the binder according to claim 1); and
a lithium ion secondary battery including a positive and negative electrode, where at least one of the positive and negative electrodes is the electrode including the copolymer binder and non-conductive particles ([0096]; corresponding to a secondary battery, comprising the binder according to claim 1).
Regarding claim 14, Wakizaka teaches the secondary battery of claim 11 as well as the use of lithium ion secondary batteries in small electronics ([0002]; corresponding to an electrical device, comprising the secondary battery according to claim 11).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wakizaka as applied to claim 1 above, and further in view of Fan (US 20210234233 A1).
Regarding claim 3, Wakizaka teaches the binder according to claim 1 (see above).
Wakizaka does not teach:
wherein volume average particle diameters D10, D50, and D90 of the binder satisfy: (D90 – D10)/D50 is less than 2.5, optionally less than 2, and further optionally less than 1.8.
However, Fan teaches binder particles comprised of a polymer and inorganic particles wherein the particle size distribution satisfies the formulas:
300 nm ≤ Dv50 ≤ 5000 nm;
Dv90 ≤ 1.5 x Dv50.
Though Fan does not expressly teach a D10 value, one of ordinary skill would recognize that a particle size would not reasonably be smaller than 0 nm, therefore D10 = 0 nm may be used to calculate the span for Fan’s particle size distribution, using the formula of instant claim 3: (D90-D10)/D50. Such calculation, performed by the examiner, results in a span of 1.5 for the full range of D50 values disclosed by Fan. In the case that Fan’s distribution exhibited a D10 > 0 nm, the resultant span would be expected to be lower than 1.5, therefore, one of ordinary skill would reasonably conclude that a particle size distribution which satisfies (D90-D10)/D50 is 1.5 or less would naturally flow from the teachings of Fan. Furthermore, this range overlaps with the instantly claimed range (Fan: 1.5 or less; claimed: less than 2.5; overlap: 1.5 or less). In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05.
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to select the particle size distribution according to Fan for the binder particles of Wakizaka in order to produce particles with high consistency, resulting in better adhesive and electrochemical performance (Fan [0031]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Wakizaka as applied to claim 1 above, and further in view of Kim et al. (US 20130209882 A1), hereinafter “Kim”.
Regarding claim 7, Wakizaka teaches the binder according to claim 1 and that the non-conductive inorganic particles have an average particle diameter of 5 nm to 10 µm ([0024]; corresponding to inorganic oxide clusters with a particle diameter of 10 to 200 nm).
Wakizaka does not teach:
wherein a surface of a particle of the binder is uneven, and inorganic oxide clusters…are evenly distributed on the surface.
However, Kim teaches a composite binder including a polymer and non-conductive inorganic particles, wherein the inorganic particles may be uniformly dispersed mainly around the surface of the polymer particle. Furthermore, one of ordinary skill would recognize that a distribution of inorganic particles on the surface of the binder particle would render the surface of the binder particle uneven, thus a binder particle with an uneven surface would naturally flow from the teachings of Kim.
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to add the surface distribution of the inorganic particles of Kim to the binder particle composition of Wakizaka in order to produce a high strength composite binder (Kim [0021]).
Claims 12, 13, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Wakizaka as applied to claim 11 above, and further in view of Gao (US 20200403283 A1).
Regarding claims 12, 13, 15, and 16, Wakizaka teaches the secondary battery according to claim 11.
Wakizaka does not teach:
a battery module comprising the secondary battery;
a battery pack comprising the battery module;
an electrical device comprising the battery module; and
an electrical device comprising the battery pack.
However, Gao teaches:
a battery module can include a plurality of battery cells ([0032]; corresponding to a battery module comprising the secondary battery);
a battery pack can include a plurality of battery modules ([0032]; corresponding to a battery pack comprising the battery module); and
an electronic rack includes information technology components and a battery pack to provide backup power to the components and that the battery pack includes a number of battery modules ([0022]; corresponding to an electronic device comprising the battery module and an electronic device comprising the battery pack).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to add the battery configurations of Gao to the secondary battery of Wakizaka in order to meet application requirements (Gao [0047, 0048]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/410993, hereinafter “993”.
Regarding instant claim 1, copending 993 recites:
a separator comprising an organic polymer and an inorganic substance (corresponding to a binder, comprising an organic polymer and an inorganic compound);
the organic polymer is formed by polymerizing at least the following monomers: a first polymer monomer, wherein the first polymer monomer has at least one ester bond (corresponding to wherein the organic polymer is polymerized from at least the following monomers: a first polymerizing monomer, containing at least one ester bond) and is optionally one or more of methacrylate, ethyl acrylate, n-propyl acrylate, n-butyl acrylate, isobutyl acrylate, sec-butyl acrylate, tert-butyl acrylate, cyclohexyl acrylate, lauryl acrylate, 2- ethylhexyl acrylate, 2-hydroxyethyl acrylate, 2-hydroxypropyl acrylate, methyl methacrylate, ethyl methacrylate, n-butyl methacrylate, 2-ethylhexyl methacrylate, isobornyl methacrylate, lauryl methacrylate, 2-hydroxyethyl methacrylate, 2-hydroxypropyl methacrylate, vinyl acetate, glycidyl methacrylate, or trimethylolpropane triacrylate);
a second polymer monomer, wherein the second polymer monomer has at least one cyanide bond (corresponding to a second polymerizing monomer, containing at least one nitrile bond) and is one or more of acrylonitrile, methacrylonitrile, and ethacrylonitrile);
and a third polymer monomer, wherein the third polymer monomer has at least one amide bond (corresponding to a third polymerizing monomer, containing at least one amide bond) and is one or more of acrylamide, N-methylol acrylamide, and N-butoxy methacrylamide); and
a weight ratio of the first polymer monomer, the second polymer monomer, and the third polymer monomer is 1:0-0.8:0.05-0.75 (corresponding to a weight ratio between the first polymerizing monomer, the second polymerizing monomer, and the third polymerizing monomer is 1: (0 to 0.8): (0 to 0.15), and optionally 1: (0.05 to 0.2): (0.05 to 0.1)).
The weight ratio of copending 993 overlaps with that of instant claim 1 (copending: 1:0-0.8:0.05-0.75; instant claimed: 1:0-0.8:0-0.15; overlap: 1:0-0.8:0.05-0.15). In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. In this regard, it would have been within the skill of one of ordinary skill in the art to select any value of weight ratio of the components within the copending range, including a value within the claimed range, to arrive at the invention as claimed. See MPEP § 2144.05.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J DUNCAN whose telephone number is (571)270-0586. The examiner can normally be reached Monday-Friday 10am-5pm.
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/A.J.D./Examiner, Art Unit 1734
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734
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