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
Applicant amended claim 1. Claims 1-9 are pending and considered in the present Office action.
The rejections are withdrawn in view of the amendment. However, upon further consideration a new ground of rejection is necessitated by amendment. The same art is applied in the new rejections because applicant’s arguments are not persuasive for the reasons set forth below.
Response to Arguments
Applicant amended the claims to include limitations related to the measurement conditions of the dynamic light scattering (DLS) method. Applicant concludes the measurement conditions for DSL in Son remain unclear thereby raising doubt as to whether the DLS values disclosed by Son are equivaled to the Da values recited in claim 1. Applicant’s arguments are unpersuasive.
The goal of any physical measurement (e.g., length, mass, particle size, etc.), regardless of the method/instrument (e.g., ruler, scale, dynamic light scattering apparatus, etc.), is to obtain the true value of the parameter being measured, thereby making the measurement (and the resulting value) meaningful and useful. One of ordinary skill in the art would appreciate the measurement of a physical parameter is done so under sufficiently inert conditions so that the measured physical parameter of the sample represents the true value (or a value very close the true value) of the physical parameter, thereby enabling the measured values to serve as an accurate framework for future work. While applicant aims to limit the conditions of the dynamic light scattering (DLS) method in an effort to overcome the prior art, applicant provides no evidence that DLS conditions have any effect on the resulting measured value (Da), or that the DLS conditions lead to values diverging from the true values. Specifically, applicant has not provided any evidence to show the claimed conditions result in any other Da value other than the true value of the sample, and applicant has not provided any evidence that the DLS conditions in the prior art result in values diverging from the true value (Da). Without evidence to the contrary, the DLS conditions do not appear to further limit the claimed structure (Da) of the particulate polymer. In view of the foregoing, one of ordinary skill in the art would expect the claimed and prior art conditions to result in measured Da values representing the true value (or a value close thereto) since one of ordinary skill in the art generally holds such measured values as meaningful and useful, and an accurate basis for future work.
In response to applicant's argument that Son uses two types of binders and that the prior art fails to disclose the concept of designing and controlling the Da/Db ratio, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Son has recognized that the particle size of a binder (i.e., second binder) has an effect on binding strength, i.e., binder within a specific particle diameter (120-300 nm) offers binding strength, [0051-0052]. Since the primary reference (Sasaki) aims to improve the strength of the electrode by considering the particles size of the binder particles, the primary reference would certainly appreciate an average particle diameter Da measured by dynamic light scattering between 100nm to 340 nm, as suggested by Son, with the expectation of obtaining/maintaining binding strength of the electrode. Further, the ratio is obvious because Db was disclosed by Sasaki (primary reference) and Da was suggested by Son from the standpoint of realizing binding strength; the values for each limitation overlaps with that claimed. The Da/Db ratio specifically would be obtained through nothing more than routing optimization and/or routine experimentation in determining where in the disclosed ranges is the optimum or workable range, MPEP 2144.05.
Applicant argues that by having a ratio of Da/Db of not less than 1.08 and not more than 2.0, peel strength of an electrode is “sufficiently improved”. Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See MPEP 716.01(c). Further, the burden is on the applicant to explain the data/characteristic relied upon to conclude unexpected results, including a review and comparison of examples (inside the claimed range, outside the claimed range, prior art), ensuring the data is commensurate in scope of the claimed invention, and showing that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. See e.g., 716.02(a)-(d). Applicant’s arguments of unexpected results are not persuasive because applicant has not provided any evidence to support their conclusion of unexpected results, let alone explaining and comparing data commensurate in scope with the claimed invention, or showing the results are unexpected and unobvious and of both statistical and practical significance.
Finally, applicant’s amendment and remarks appear to try to establish the newly cited claimed range (1.08 to 2.0) as providing unexpected results. A successful showing of unexpected results regarding a narrower range (i.e., 1.08 to 2.0) than was originally claimed/taught (i.e., 1.05 to 2.0) would bring forth a new matter issue, as it would show that the newly claimed range is a different invention than the originally disclosed range. See MPEP 2163(I)(B). No new matter issue has been made at this time, as arguments of unexpected results are not persuasive.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki (WO2014185381) in view of Son (US 2021/0226219), hereinafter Sasaki and Son (both of record).
Claim Interpretation: The conditions of the DLS method have been addressed under the Response to Arguments section. In short, the claimed conditions do not appear to further limit the structure (Da) of the particulate polymer because there is nothing of record to suggest the claimed conditions results in any other Da value other than the true value of the sample, or that the conditions in the prior art would result in any other Da value other than the true value of the sample. Examiner assumes the Da values obtained by Son are representative of the true (accurate) value of the sample because there is no evidence to suggest DLS conditions alter the resulting measured value of Da, or that the conditions of Son result in a Da value that is expected to diverge from the true value (see the Response to Arguments section for more details).
Regarding Claims 1, 4, and 6, Sasaki suggests a binder composition for a non-aqueous secondary battery electrode comprising a particulate polymer, wherein the particulate polymer includes an aromatic vinyl monomer unit in a proportion of not less than 5 mass% and not more than 65 mass% (e.g., 62.5 parts styrene, page 71/163, see also pages 10-11/163 for full range and other monomers), an aliphatic conjugated diene monomer unit in a proportion of not less than 30 mass% and not more than 90 mass% (e.g., 33 parts 1,3-butadiene, page 71/163, see also pages 9-10/163 for full range and other monomers), and a carboxyl group-containing monomer unit in a proportion of not less than 2 mass% and not more than 9 mass% (e.g., 3.5 parts itaconic acid, page 71/163, see also pages 11-12/163 for full range and other monomers), wherein the desired volume-average particle diameter (via laser diffraction/scattering) Db of the particulate polymer is not less than 100 nm and not more than 170 nm (e.g., 70-400 nm, see page 19/163, thereby overlapping with the claimed range of 100 nm-170 nm). The binder composition has a pH between 6-10 (e.g., 8). See pages 8-14/163, 19/163, and 71/163).
Since the average particle diameter Da of the particulate polymer (measured by dynamic light scattering) is not disclosed, a ratio Da/Db of an average particle diameter Da of the particulate polymer (measured by dynamic light scattering) with respect to a volume-average particle diameter Db of the particulate polymer (measured by laser diffraction/scattering) of less than 1.05 and not more than 2.0, is not suggested. However, Son suggests a particulate polymer comprising an aromatic vinyl monomer unit (e.g., styrene), an aliphatic conjugated diene monomer unit (e.g., butadiene), and a carboxyl group-containing monomer unit (e.g., acrylic acid), see e.g., [0055, 0087, 0126-0128], where the desired average particle diameter Da of the particulate polymer measured by dynamic light scattering ([0126-0128]) is between 100 nm to 340 nm (e.g., 120 nm to 300 nm, thereby overlapping with the claimed range) from the standpoint of realizing excellent binding strength, [0051-0052, 0083-0085]. Provided Sasaki aims to improve strength of the electrode by considering the particle size of the binder particles, one of ordinary skill in the art would be motivated to consider a particulate polymer having an average particle diameter Da measured by dynamic light scattering between 100 nm to 340 nm since the this range has been found to realize excellent binding strength, thereby allowing the electrode strength to be maintained, as suggested by Son. The prior art suggests Db values and Da values that overlap with that claimed, hence the values are obvious; further, the claimed Da/Db ratio would be obvious through routine optimization or routine experimentation. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; in determining the optimum or workable range/combination of Da and Db, one of ordinary skill in the art would reach the claimed range and the ratio of Da/Db is further obvious absent any showing of criticality. MPEP 2144.05.
Regarding Claim 2, Sasaki suggests the particulate polymer further includes a hydrophilic monomer unit that does not include a carboxyl group, e.g., acrylonitrile, acrylamide, etc., see e.g., pages 8-14/163.
Regarding Claim 3, Sasaki suggests the particulate polymer has a crosslinked structure (see page 9/163) and monomers glycidyl methacrylate (see page 13/163), thereby suggesting the particulate polymer further includes a cross-linkable group-containing hydrophilic monomer unit.
Regarding Claim 5, Sasaki suggest the binder composition comprising an aqueous phase that contains an acidic water-soluble polymer wherein the acidic water-soluble polymer has a weight-average molecular weight of not less than 500 and not more than 20,000. That is, the acidic water soluble polymer is the result of the product produced during polymerization of the particulate polymer considering the presence of the carboxyl group monomer (e.g., acrylic acid) in water, where a weight average molecular weight of 10,000 to 500,000 is desirable from the standpoint of electrode strength, see e.g., page 18. Alternatively, Sasaki suggests the addition of, to the particulate polymer (see e.g., page 8/163), an acidic water soluble polymer (page 39/163) which acts as an intermediary in the electrode active material layer, between the active material itself, or the active material and current collector, and serves to form a stable layer which can suppress decomposition of the electrolyte, see e.g., page 20/163, wherein a weight average molecular weight of 1,000 to 400,000 is desirable from the standpoint of polymer strength and bonding, which translates into improving electrode durability, see e.g., page 35/163.
Regarding Claims 7-9, Sasaki suggests a non-aqueous secondary battery comprising a positive electrode, a negative electrode, a separator, and an electrolyte solution, wherein at least one of the positive electrode and the negative electrode comprises an electrode for a non-aqueous secondary battery comprising an electrode mixed material layer formed using a slurry composition for a non-aqueous secondary battery electrode comprising an electrode active material and the binder composition set forth in the rejection of claims 1, see page 47-61/163 and 64/163.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANNA KOROVINA whose telephone number is (571)272-9835. The examiner can normally be reached M-Th 7am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at 5712721481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
