DETAILED ACTION
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 .
Claim Objections
2. Claim 11 is objected to because of the following informalities: lack of concision (Article 6: claims should be clear and concise). The second “or from one more of conductive carbon black and carbon nanotubes” simply repeats two options from the first list recited in the same claim and does not add anything to the claim. The quoted portion should be deleted from the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 10 and 12 are 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.
Claims 10 and 12 each recite a mass ratio of the binder to a second component (i.e., the positive electrode active material in claim 10, and the conductive agent in claim 12) (i.e., two components where a normal ratio would be, for example, 1: 2); however, the mass ratio is recited in each claim as a series of three numbers with one of which being a range. The meaning of feature is entirely unclear as it is not standard to recite a ratio of two components relative to one another as a series of three numbers.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
5. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
6. Claims 1 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cha et al. (US 2014/0239239).
Regarding claim 1, Cha teaches a binder, comprising a polymer comprising structural units derived from a monomer represented by formula I and structural units derived from a monomer represented by formula II,
PNG
media_image1.png
112
470
media_image1.png
Greyscale
wherein R1 and R2 are each independently selected from hydrogen or substituted or unsubstituted C1-5 alkyl, R3 is selected from hydrogen or methyl, and R4 is selected from substituted or unsubstituted C1-9 alkyl.
Specifically, Cha teaches a binder (preparation example 101 – P250) comprising structural units of formula I (acrylonitrile) and formula II (methyl methacrylate) that are polymerized to achieve polymer binder particles having an average particle diameter of about 120 nm (P250). See also Examples 102-106 (P252-263).
It is noted that the claim is a product-by-process claim (i.e., a polymer comprising structural units derived from a monomer represented by formula I and structural units derived from a monomer represented by formula II…”). Given the monomers of formulas I and II are explicitly taught by Cha, the product-by-process claim is considered anticipated.
Regarding claim 5, Cha teaches wherein the monomer represented by formula I is selected from one or more of acrylonitrile and butenenitrile (P250).
Regarding claim 6, Cha teaches wherein the monomer represented by formula II is selected from one or more of methyl acrylate, ethyl acrylate, butyl acrylate, isopentyl acrylate, isooctyl acrylate, methyl methacrylate, ethyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate, or from one or more of methyl acrylate, butyl acrylate, and isooctyl acrylate (P250).
Regarding claim 7, Cha teaches a method for preparing a binder, comprising the steps of: providing a monomer represented by formula I and a monomer represented by formula II,
PNG
media_image1.png
112
470
media_image1.png
Greyscale
wherein R1 and R2 are each independently selected from hydrogen or substituted or unsubstituted C1-5 alkyl, R3 is selected from hydrogen or methyl, and R4 is selected from substituted or unsubstituted C1-9 alkyl; polymerizing the monomer represented by formula I and the monomer represented by formula II under polymerizable conditions to prepare a polymer.
Specifically, Cha teaches a binder (preparation example 101 – P250) comprising structural units of formula I (acrylonitrile) and formula II (methyl methacrylate) that are polymerized to achieve polymer binder particles having an average particle diameter of about 120 nm (P250). See also Examples 102-106 (P252-263).
7. Claims 1, 3, 5-9, 11, 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yeou (US 2016/0164100).
Regarding claim 1, Yeou teaches a non fluoropolymer binder that includes a repeating unit derive from an acryl or acrylic acid monomer (P20-21,48-49) with specific examples listed at P43-44 including methylmethyacrylate (i.e., formula II) and a repeating unit derived from a acrylonitrile monomer (i.e., formula I) (P48) with examples given including poly(acrylontrile-methacrylic acid-methacrylate), among others (P20, 50, P104; entire disclosure relied upon).
It is noted that the claim is a product-by-process claim (i.e., a polymer comprising structural units derived from a monomer represented by formula I and structural units derived from a monomer represented by formula II…”). Given the monomers of formulas I and II are explicitly taught by Yeou, the product-by-process claim is considered anticipated.
Regarding claim 3, Yeou teaches an example (P104 )wherein the polymer has a weight average molecular weight of 500,000 g/mol, thereby anticipating the range of 700,000 - 1,000,000 given the court has held:
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is 'anticipated' if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original) See MPEP § 2131.03.
It is noted that there are also suitable weight average molecular ranges taught for the binder (P51) (not relied upon presently).
Regarding claim 5, Yeou teaches wherein the monomer represented by formula I is selected from at least acrylonitrile (P48-50, 104).
Regarding claim 6, Yeou teaches wherein the monomer represented by formula II is selected from at least one or more of methyl acrylate, ethyl acrylate, butyl acrylate, methyl methacrylate, ethyl methacrylate, etc. (P43-44, 49-50, 104).
Regarding claim 8, Yeou teaches a cathode (“a positive electrode plate”) (P57), comprising a positive electrode active material, a conductive agent, and a binder according to claim 1 (P62).
Regarding claim 9, Yeou teaches wherein the positive electrode active material is a lithium-containing transition metal oxide (P63-72, Example 1 (P102-108); Examples 2-6; entire disclosure relied upon).
Regarding claim 11, Yeou teaches wherein the conductive agent is selected from one or more of (at least) conductive carbon black, conductive graphite, and carbon fibers (P73; Examples 1-6).
Regarding claim 13, Yeou teaches a lithium secondary battery comprising an electrode assembly and an electrolyte solution, wherein the electrode assembly comprising the positive electrode plate according to claim 8, a separator, and a negative electrode plate (P3-5, 18, 77-98; Examples 1-6; Table 1).
Regarding claim 14, Yeou teaches a battery assembly (“a battery module”), comprising the secondary battery according to claim 13 (P98).
Regarding claim 15, Yeou teaches a battery pack, comprising the battery module according to claim 14 (P99).
Regarding claim 16, Yeou teaches a power consuming device, comprising the secondary battery according to claim 13 (P100-101).
Claim Rejections - 35 USC § 102/103
8. 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.
9. Claims 4 and 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yeou (US 2016/0164100).
Regarding claim 4, Yeou does not teach the process step of, “..wherein the polymer is prepared as a disperson solution in a solvent that may be N-methylpyrrolidone (NMP) with a solid content of 7% in N-methylpyrrolidone (NMP) solvent, and the viscosity of the solution is 4500-7500 mPa·s when measured at 25°C,” however, the entire claim is drawn to the method of preparing/making the polymer that lends no structural requirements to the product claim and is a product-by-process limitation, the court holding:
“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) (see MPEP § 2113).
There is no evidence that the product-by-process language as recited imparts specific structural characteristics to the product. As such, Yeou’s binder appears to meet all structure set forth. Alternatively, any differences provided by the product-by-process limitation would provide a product that is obvious from the binder of Yeou. Regarding product-by-process limitation, see MPEP § 2113.
Regarding claim 7, Yeou teaches the components of the binder (see rejection of claim 1, entirely incorporated into the instant rejection). Yeou does not explicitly teach a method for prearing the binder including polymerizing the monomer represented by formula I and the monomer represented by formula II under polymerizable conditions to prepare a polymer; however, the method step is considered intrinsic to the obtained polymer as there is no other possible way to prepare the polymer via the taught repeating units.
Alternatively, in the instance Applicant can demonstrate some possible way to achieve the described polymer obtained from the monomer building blocks that does not involve a method step of “…polymerizing the monomer represented by formula I and the monomer represented by formula II under polymerizable conditions to prepare a polymer,” the method step is considered routine and immediately known to one having ordinary skill in the art so as to be prima facie obvious as to how to obtain a polymer from monomer units.
Claim Rejections - 35 USC § 103
10. Claims 2, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yeou (US 2016/0164100) as applied to at least claim 1 above.
Regarding claim 2, Yeou teaches wherein the polymer is one having improved dispersibility of a conductive agent, improved flexibility of an electrode plate, and improved binding force of an electrode plate relative to a fluoropolymer (P8), with Yeou teaching the aspect of the invention is to provide a binder that has improved binding force and flexibiltiy and at the same time improves energy density and lifespan characteristics of a lithium battery (P9).
Yeou teaches that the binder including a repeating unit derived from an acyrl monomer (i.e, formula II) improves flexibility of an electrode plate, dispersibility of the conductive agent, and the bending force of an electrode plate (P20). Yeou teaches the binder including a repeating unit from a nitrile group (i.e.,formula I) prevents oxidation of the binder at the cathode, and that in an electrode material slurry for forming an electrode active material layer, improves the dispersibility of an electrode active material such that the slurry may retain its stability for a long period of time, and the flexibility of an electrode material layer may be improved (P46).
Accordingly, Yeou teaches the known-results of each monomer unit of formula I and fomrula II such that it would have been entirely obvious to one having ordinary skill in the art at the effective filing date of the invetnion to determine the desired amount of each monomer unit realtive to all structural units in the polymer in order to obtain a polymer with the desired degree of effects attributed to each monomer unit as detailed above (P20, 46). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). See also: “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05.
Regarding claims 10 and 12, the mass ratio that is presented in each claim is entirely unclear as it is a series of three numbers for two components (see rejection under 35 U.S.C. 112(b)/second paragraph), wherein it is not clear whether or not the mass ratio’s that are taught by Yeou read on the unclear three-component ratio that is recited in the claims. For compact prosecution purposes, the claims are being examined as best as possible.
Yeou teaches specific mass ratio examples of the binder to the positive electrode active material (Examples 1-6), and specific mass ratio examples of the binder to the conductive agent (Examples 1-6). Yeou also teaches mass/weight ratios of the binder within the cathode composiiton, the weight of the cathode mixture per unit area, the mixture density thereof, and that amounts of the cathode active material, the conductive agent, may be the same as those utilized in a typical lithium battery (P56-60, 76). Accordingly, Yeou provides specific examples of each of the mass ratios of the binder to the positive electrode active material and the binder to the conductive agent in addition to general conditions of the claim in terms of amounts of the components (P56-60, 76), the court holding that, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05.
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine discover the optimum or workable ranges or amounts by routine experimentation of the mass ratio of the binder relative to each of the positive active material and conducitve agent given Yeou teaches the general conditoins of the claim (Examples 1-6; P56-60, 76; Examples 1-6), and given each component provides a known function within a cathode such as lithium ion intercalation/deintercalation, binding/stability, or electrical conductivity.
11. Claim 2 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Yeou (US 2016/0164100) as applied to at least claim 1 above, and further in view of Lee et al. (KR 2019-0133412) (machine translation provided).
Regarding claim 2, the rejection of claim 2 above is entirely incorporated into the instant rejection and not repeated here.
Additionally, Lee teaches analogous art of a binder for a lithium secondary battery that includes monomer-derived polymerized units of acrylontrile (formula I) and acrylic/methyacrylic acid (analogous to formula II except R4 is H), wherein the molar amount of acrylnitrile in the final polymer is 30-60 mol%, most preferably 50-60 mol%, with the cyano group (formula I) assisting in reducing the reaction of the polysulfide material (cathode active material) with the electrolyte as well as promoting adhesion (P37). The molar amount of the acrylic/methacrylic acid is taught as 10-50 mol%, more preferably 20-50 mol%, and is taught as suppressing elution of the cathode active material into the electrolyte, increasing adhesion with the current collector, and increasing flexibility (P41). Lee also teaches an example that anticipates the ranges presented (Example 1, P90) with the molar ratio of the monomer units disclosed as 35: 60 for methaycrlic acid: acrylontrile and using 5 of acrylamide (i.e., the percentages based on the total number of moles of all structural units in the polymer).
As noted above, claim 1 is a product-by-process claim, wherein it would appear whether formula II has R4 as hydrogen or a substituted/unsubstituted C1-9 alkyl group is not consequential given R4 may be consumed in the process of achieving the polymer. Accordingly, these would appear to be equivalents to one another as the final binder (what is claimed) may or may not include the R4 group depending on the polymerization conditions and how the monomer units are linked with one another.
Accordingly, Lee teaches analogous art of a binder composition used in a lithium secondary battery cathode composition and that it is a known technique to provide said monomer units in overlapping ranges with those recited in claim 2 to achieve the desired degree of effects attributed to each monomer constituent, wherein it would have been obvious to one having ordinary skill in the art to adopt these ranges as well as determine the optimum ranges or values of the monomer units in a given polymer given the discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). See also: “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The ISA (1) , JP Office (4), EP Office (6), and KR Office (1) have collectively cited the number of “X” references cited next to each in family members of the instant application (see Global Dossier; IDS’s from Appliant). Each of the references do not appear to be family members of the others such that there are at least an additional ten (10) known “X” references applicable to the claims (two of those applied in the instant Office Action were cited in the EP search opionion). It is highly recommended Applicant view the full scope of the available prior art against the claims.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BILLIET whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula C Tavares-Crockett can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMANDA J BILLIET/ Primary Examiner, Art Unit 1729
Prosecution Insights