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 July 3, 2024, August 18, 2025, and January 26, 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 Objections
5. Claim 1 is objected to because of the following informalities: the claim recites “where graft polymer has” in line 7. An article is missing. The limitation should likely read “where the graft polymer has”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
6. Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mimura US PG Publication 2016/0365604 in view of Wakizaka JP2011-014387.
Regarding Claims 1-5, 7-8, and 10, Mimura discloses an all-solid state secondary battery comprising, in the following order, a positive electrode active material layer 4, a solid electrolyte layer 3, a negative active material layer 2, wherein at least one of these layers is a layer formed of an inorganic solid electrolyte composition (para 0046, meeting Claim 10), said inorganic solid electrolyte composition comprising an active material (para 0029, meeting Claim 7), a conductive agent* (para 0253, meeting Claim 8), an inorganic solid electrolyte having an ion conductivity of a metal belonging to Group 1 or Group 2 of the periodic table (Lithium, para 0011), a polymer binder (para 0011), and a dispersion (dispersive) medium (para 0011), wherein the polymer binder includes a graft polymer (has a repeating unit derived from a macromonomer and is combined with a polymer; see paras 0079-0086 which explains that the main chain in Formula 1 or 2 has branching groups that attach to further main chains, which would form a macromolecular structure) having a constitutional component (A) that contains at least one functional group of an amide group, and imide group, or a sulfonamide group in a molecular chain that serves as a side chain of the polymer since Mimura teaches that functional groups in the side chain can include amide (para 0068, meeting Claim 2) and where the macromonomer side chain (X) has a weight-average molecular weight of at least 1000, and preferably 3000 or more (para 0108, which overlaps the claimed range of 800 or more*, meeting Claim 4) and comprises a constitutional component (B) having at least one polar functional group such as hydroxy or oxetane group (paras 0016, 0095, meeting Claim 5) (see entire disclosure and especially paras 0011, 0068, 0079-0086, 0108, 0259-0266). Mimura discloses formula (A1) in monomers A-35 to A-37, which meet Claim 3 when Y1 and Y2 are H or alk (CH3) and L1 is a single bond and X1 is hydrogen (para 0105). Mimura does not specifically recite that the polymer is a graft polymer. However, Wakizaka teaches that using a graft polymer (using the same types of monomer elements, e.g. amides such as N-butylacrylamide) to bind together solid inorganic electrolyte particles, there is high adsorption stability to the solid electrolyte because the polymer has numerous adsorption sites, improving dispersibility, preventing aggregate formation, and ensuring good contact between solid electrolyte materials without a need for firing, which improves production and minimizes residual stress in the electrolyte late, and further suppresses variations in internal resistance in the battery (para 0008).
* 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.).
*With respect to the presence of auxiliary conductive agent in the composition, Mimura teaches that the inorganic solid electrolyte-containing composition of Claim 1 is used in a cathode layer or anode layer (para 0046) and teaches that these layers can include a conductive assisting agent (para 0253) which is the same as a conductive auxiliary agent.
Regarding Claim 6, Mimura teaches many options for constituent component (A), and so the skilled artisan would be capable of selecting a functional group such that the functional group is not one listed in Claim 6, and therefore the requirement the constituent component (A) meet the two conditions (NOT having the recited molecular weight and having a listed functional group) is necessarily met since one of the conditions is met.
Regarding Claim 9, Mimura teaches a sheet comprising a layer formed of the inorganic solid electrolyte-containing composition according to claim 1 since the composition can be used to form any of the layers described in para 0259.
Regarding Claims 11 and 12, Mimura discloses a method of manufacturing a sheet for an all-solid state battery comprising forming a film of the inorganic solid electrolyte-containing composition of Claim 1 and manufacturing an all-solid state secondar battery through the method of Claim 11 (paras 0033-0036, 0259).
Conclusion
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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