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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12 and 14-19, drawn to product, classified in H01M 4/622.
II. Claim 13, drawn to process of making, classified in H01M 50/42.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, Invention I can be obtained by freeze drying rather than spray drying.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with 314-341-0988 on August 20, 2026 a provisional election was made without traverse to prosecute the invention of Invention I, claims 1-12 and 14-19. Affirmation of this election must be made by applicant in replying to this Office action. Claim 13 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on March 1, 2024, July 8, 2025, April 13, 2026, and July 15, 2026 have been considered by the examiner.
Claim Objections
Claim 15 has been objected to because of the following informalities: Claim 13 has been withdrawn from consideration and should not be referenced (claim 15, line 3). For purposes of compact prosecution, the examiner will treat this as if the method steps of claim 13 were copied into claim 15. Appropriate correction is required.
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.
Claims 2, 4, 5, and 12 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.
Regarding claims 2, 4, and 12, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 5 recites the limitation "the shape" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
Claims 1-2, 5-12, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Foreign Patent JP 2015/185530 (IDS reference 03/01/2024 see attached machine translation), hereinafter Yuki.
Regarding claim 1, Yuki teaches a binder (‘production of slurry composition for porous membrane’ [0128]) for secondary batteries, wherein the binder, in a specific example, includes a first polymer (‘(meth) acrylic polymer’ [0128]) and a second polymer (‘sodium carboxymethyl cellulose’ [0128]), the first polymer includes an acrylate copolymer (‘(meth) acrylic polymer’ [0128]), and the second polymer includes a water-soluble polymer (‘sodium carboxymethyl cellulose [0128]. One of ordinary skill in the art would appreciate that sodium carboxymethyl cellulose reads on water-soluble polymer because ‘as the water-soluble polymer, various thickening polysaccharides may be used such as carboxymethyl cellulose, polyvinyl alcohol, or a salt thereof’ [0058]).
Regarding claim 2, Yuki teaches the binder for secondary batteries according to claim 1 ([0128]), wherein the mass ratio of the first polymer to the second polymer is 1:0.33 (‘2 parts of sodium carboxymethyl cellulose and 6 parts of the aqueous dispersion of the (meth)acrylic polymer’ [0128]).
Regarding claim 5, Yuki teaches the binder for secondary batteries according to claim 1 ([0128]), wherein the shape of the binder includes a spherical shape (‘a slurry composition for a porous membrane was produced by mixing non-conductive particles, sodium carboxymethyl cellulose, and the (meth) acrylic polymer’ [0128] and ‘an example of the shape of the non-conductive particle includes a spherical shape’ [0054]).
Regarding claim 6, Yuki teaches the binder for secondary batteries according to claim 1 ([0128]), wherein the first polymer includes an acrylate monomer (‘(meth) acrylic polymer’ and ’92.8 parts of n-butyl acrylate’ [0127]), and the structure of the acrylate monomer includes the figure of instant claim 6, wherein R1 includes hydrogen atom or alkyl of 1-12 carbon atoms, and R2 includes alkyl of 1-12 carbon atoms (n-butyl acrylate is represented by the figure of instant claim 6 where R1 is hydrogen and R2 is an alkyl of 4 carbon atoms).
Regarding claim 7, Yuki teaches the binder for secondary batteries according to claim 6 ([0128]), wherein the acrylate monomer includes n-butyl acrylate (’92.8 parts of n-butyl acrylate’ [0127]).
Regarding claim 8, Yuki teaches the binder for secondary batteries according to claim 1 ([0128]), wherein the first polymer includes an acrylonitrile monomer (‘(meth) acrylic polymer’ and ’2.0 parts of acrylonitrile’ [0127]), and the structure of the acrylonitrile monomer includes the figure of instant claim 8 wherein, R3 includes hydrogen atom or alkyl of 1-6 carbon atoms (acrylonitrile is represented by the figure of instant claim 8 where R3 is hydrogen).
Regarding claim 9, Yuki teaches the binder for secondary batteries according to claim 8 ([0128]), wherein the acrylonitrile monomer includes acrylonitrile (’2.0 parts of acrylonitrile’ [0127]).
Regarding claim 10, Yuki teaches the binder for secondary batteries according to claim 1 ([0128]), wherein the first polymer includes an acrylamide monomer (‘(meth) acrylic polymer’ and ’1.6 parts of N-methylol acrylamide and 1.6 parts of acryl amide’ [0127]), and the structure of the acrylamide monomer includes the figure of instant claim 10 wherein, R4 includes hydrogen atom or alkyl of 1-6 carbon atoms, and R5 includes hydrogen atom, hydroxyl-substituted alkyl of 1-6 carbon atoms or alkoxy of 1-6 carbon atoms (N-methylol acrylamide is represented by the figure of instant claim 10 where R4 is hydrogen and R5 is a hydroxyl-substituted alkyl of 1 carbon atom and acryl amide is represented by the figure of instant claim 10 where R4 and R5 are hydrogen atoms).
Regarding claim 11, Yuki teaches the binder for secondary batteries according to claim 10 ([0128]), wherein the acrylamide monomer includes N-methylol acrylamide (’1.6 parts of N-methylol acrylamide and 1.6 parts of acryl amide’ [0127]).
Regarding claim 12, Yuki teaches the binder for secondary batteries according to claim 1 ([0128]), wherein the first polymer includes an acrylate monomer (’92.8 parts of n-butyl acrylate, 2.0 arts of methacrylic acid’ [0127]), an acrylonitrile monomer (‘2 parts of acrylonitrile’ [0127]) and an acrylamide monomer (‘1.6 parts of n-methylol acrylamide, 1.6 parts of acryl amide’ [0127]), and the mass ratio of the acrylate monomer, the acrylonitrile monomer and the acrylamide monomer is 100:(1-80):(1-20) (94.8:2.0:3.2 is equivalent to 100:2.1:3.4).
Regarding claim 14, Yuki teaches a separator (‘the slurry composition for a porous membrane obtained in step (1-2) was applied onto a single-layer polypropylene separator-substrate, dried, and thus, a separator was obtained’ [0129]), wherein the separator includes the binder for secondary batteries according to claim 1 ([0128]).
Regarding claim 15, Yuki teaches a separator (‘the slurry composition for a porous membrane obtained in step (1-2) was applied onto a single-layer polypropylene separator-substrate, dried, and thus, a separator was obtained’ [0129]), wherein the separator includes the binder for secondary batteries according to a binder prepared by the preparation method of the binder for secondary batteries according to claim 13 (‘monomer composition, an emulsifier, ion-exchanged water, and a polymerization initiator were sufficiently stirred and then heated to 50C’ [0127] and ‘a slurry composition for a porous membrane was produced by mixing non-conductive particles, sodium carboxymethyl cellulose (reads on instant’s second polymer), and the (meth) acrylic polymer obtained in step (1-2)’ [0128] and ‘the slurry composition was applied to a separator substrate and dried by conveying the separator substrate through the oven’ [0129]).
“Prepared by the preparation method of the binder for secondary batteries according to claim 13” 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 product of the prior art was made by a different process (MPEP 2113). In this case, given the broadest reasonable interpretation, the final product resulting from the claimed product by process limitation is “the binder”. Art teaching this binder reads on the limitation regardless of the process.
Regarding claim 16, Yuki teaches a battery cell, wherein the battery cell includes the separator according to claim 14 (‘separator obtained in step (1-3) was disposed on the surface of the positive electrode, the negative electrode was disposed on the separator and an electrolytic solution was injected’ [0135]) .
Regarding claim 17, Yuki teaches a battery, wherein the battery includes the battery cell according to claim 16 (‘aluminum packing case was closed by heat sealing at 150C to produce a lithium ion secondary battery’ [0135]).
Regarding claim 18, Yuki teaches an electrical apparatus (‘lithium-ion secondary batteries are used in devices such as mobile phones’ [0002]), wherein the electrical apparatus includes the battery cell according to claim 15 (‘production of lithium-ion secondary battery’ [0135]).
Regarding claim 19, Yuki teaches an electrical apparatus (‘lithium-ion secondary batteries are used in devices such as mobile phones’ [0002]), wherein the electrical apparatus includes the battery according to claim 16 (‘production of lithium-ion secondary battery’ [0135]).
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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Patent JP 2015/185530 (IDS reference 03/01/2024), hereinafter Yuki, as applied to claim 1 above.
Regarding claim 3, Yuki teaches, as mentioned above, a binder (‘production of slurry composition for porous membrane’ [0128]) for secondary batteries, wherein the binder includes a first polymer (‘(meth) acrylic polymer’ [0128]) and a second polymer (‘sodium carboxymethyl cellulose’ [0128]), the first polymer includes an acrylate copolymer (‘(meth) acrylic polymer’ [0128]), and the second polymer includes a water-soluble polymer (‘as the water-soluble polymer, various thickening polysaccharides may be used such as carboxymethyl cellulose, polyvinyl alcohol, or a salt thereof’ [0058]).
However, Yuki fails to teach the second polymer being polyvinyl alcohol in Example 1.
Yuki teaches that as a water-soluble polymer, various thickening polysaccharides may be used. As the polysaccharide thickener, carboxymethyl cellulose, methyl cellulose, polyvinyl alcohol, polyacrylic acid, or a salt thereof is preferably used [0058].
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to have substituted polyvinyl alcohol for the carboxymethyl cellulose in Example 1 for the purpose of increasing viscosity of the slurry composition as a polysaccharide thickener [0058] (MPEP 2144.06).
Regarding claim 4, Yuki teaches, as mentioned above, a binder (‘production of slurry composition for porous membrane’ [0128]) for secondary batteries, wherein the binder includes a first polymer (‘(meth) acrylic polymer’ [0128]) and a second polymer (‘sodium carboxymethyl cellulose’ [0128]), the first polymer includes an acrylate copolymer (‘(meth) acrylic polymer’ [0128]), and the second polymer includes a water-soluble polymer (‘as the water-soluble polymer, various thickening polysaccharides may be used such as carboxymethyl cellulose, polyvinyl alcohol, or a salt thereof’ [0058]).
However, Yuki fails to teach the volume particle size distribution Dv50 of the binder being 1µm to 15µm.
Yuki teaches that the volume average particle size D50 of the particles of the (meth) acrylic polymer (A) is preferably 0.1µm or more and 1.0µm or less [0035]. This demonstrates an overlap in ranges taught. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a Prima facie case of obviousness exists (MPEP 2144.05).
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to have used a binder with a Dv50 within the range of Yuki and the instant claimed range in order to improve the strength and flexibility of the porous membrane [0035].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mia K Holbrook whose telephone number is (571)272-9253. The examiner can normally be reached Monday - Friday 7:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at (571) 270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.K.H./Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
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