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 .
This Office action is in response to the amendment filed 8/6/2026. Claims 11-12 are cancelled; and claims 1-10 are currently pending in the application.
Election/Restrictions
Applicant’s election without traverse of group I, drawn to claims 1-8, in the reply filed on 8/2/2026 is acknowledged.
Claims 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/6/2026.
Information Disclosure Statement
It is noted that one of the references (CN 101457131 A) is listed twice in the IDS filed 2/19/2025. Examiner considered one of the references and put a line through the second listing, since it is redundant.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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, 6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamasaki et al (US 2006/0134548 A1).
Regarding claims 1 and 6, Yamasaki et al disclose a copolymer (i.e., reads on random copolymer of present claim 6) comprising 10% by weight of p-hydroxyphenyl methacrylamide (i.e., reads on acrylamide-based monomer unit and its amount in present claim 1), 25% by weight of acrylonitrile (i.e., reads on acrylonitrile-based monomer unit and its amount in present claim 1), 35% by weight of methyl methacrylate (i.e., reads on acrylate-based monomer unit and its amount in present claim 1) and 10% by weight of methacrylic acid (paragraph 0414) which reads on acrylic acid-based monomer unit and its amount in present claim 1.
Regarding claim 8, copolymer comprises methyl methacrylate and acrylonitrile in amounts of 35% by weight and 25% by weight, respectively (paragraph 0414) and weight ratio of acrylate-based monomer unit to acrylonitrile-based monomer unit is 1.4.
Claims 1, 4-6, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kang et al (US 2012/0183848 A1).
Regarding claims 1 and 6, Kang et al disclose in example 3, a copolymer (i.e., reads on random copolymer in present claim 6) formed from 60 g of butyl acrylate (i.e., reads on acrylate-based monomer unit and its amount in present claim 1), 30 g of acrylonitrile (i.e., reads on acrylonitrile-based monomer unit and its amount in present claim 1), 5 g of acrylic acid (i.e., reads on acrylic acid-based monomer unit and its amount in present claim 1) and 1 g of acrylamide (paragraphs 0062 and 0064) which reads on the acrylamide-based monomer unit and its amount in present claim 1.
Regarding claims 4 and 5, see example 3, wherein the copolymer is formed from a monomer mixture comprising 0.5 g of ethylene glycol dimethacrylate and 0.5 g of polyethylene glycol dimethacrylate (paragraphs 0062 and 0064) which reads on cross-linking monomer unit and its amount in present claim 4; and aliphatic difunctional methacrylate in present claim 5.
Regarding claim 8, see example 3, wherein the copolymer is formed from 60 g of butyl acrylate and 30 g of acrylonitrile (paragraphs 0062 and 0064). Hence, the weight ratio of acrylate-based monomer unit to acrylonitrile-based monomer unit is 2.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al (US 2012/0183848 A1) in view of Toyoda (JP 2015-162312 A).
It is noted that JP 2015-162312 A is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
The discussion with respect to Kang et al in paragraph 9 above is incorporated here by reference. The copolymer in example 3, of Kang et al comprises butyl acrylate (i.e., reads on acrylate-based monomer unit of claim 2, wherein R1 = hydrogen and R2 is a linear hydrocarbon having 4 carbon atoms; and R1 = hydrogen and R2 is n-butyl in present claim 3), acrylonitrile (i.e., reads on acrylonitrile-based monomer unit in present claim 2), 5 g of acrylic acid and acrylamide (paragraphs 0062 and 0064) which reads on the acrylamide-based monomer unit in present claim 2 wherein R1 = hydrogen. It is the Office’s position that m + n + x + y = 1 is implicit in the wt% of these monomer units in the copolymer.
Kang et al are silent with respect to acrylic acid-based monomer unit where M+ is an alkali metal.
However, Toyoda in the same field of endeavor teach slurry containing a polycarboxylic acid comprising a carboxylic group and part of the carboxylic acid is in the form of alkali metal salt (overview). Examples of carboxylic acid monomer include (meth)acrylic acid (paragraph 0023). The polycarboxylic acid and the alkali metal coexist. This makes it possible to adjust the physical properties such as pH and viscosity of the slurry composition to appropriate ranges (paragraph 0050). Therefore, in light of the teachings in Toyoda, it would have been obvious to one skilled in art prior to the filing of present application, to use an alkali metal salt of the carboxylic acid monomer, such as acrylic acid, in the copolymer, of Kang et al, for above mentioned advantages.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kang et al (US 2012/0183848 A1) in view of Fujita (JP 2014-165037 A).
It is noted that JP 2014-165037 A is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
The discussion with respect to Kang et al in paragraph 9 above is incorporated here by reference.
Kang et al are silent with respect to number average molecular weight.
However, Fujita et al in the same field of endeavor teach binder having a weight average molecular weight of 6.5 * 105 or more and less than 1.2 * 106 and a Mw/Mn of 1.6 or more and less than 3.0, where Mw is the weight average molecular weight and Mn is the number average molecular weight (overview) which reads on the number average molecular weight in present claim 7. By using a resin having a weight average molecular weight of 6.5 * 105 or more, it is possible to secure the fixing strength necessary for stably producing an electrode with small amount of the binder. By using a resin having a uniform molecular chain, such as a resin having a degree of dispersion of less than 3.0 as the binder, the dispersibility of the electrode slurry can be enhanced and the coatability on a current collector can be improved (paragraph 0017). Therefore, in light of the teachings in Fujita, it would have been obvious to one skilled in art prior to the filing of present application, to prepare the copolymer, of Kang et al, with a number average molecular weight as in present claims, for above mentioned advantages.
Claims 1, 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al (US 2004/0058815 A1).
Regarding claims 1 and 6, Sakurai et al disclose, in comparative example D1, a copolymer (i.e., reads on random copolymer of present claim 6) comprising 120 parts by weight of methacrylamide (i.e., reads acrylamide-based monomer unit in present claim 1), 165 parts by weight of acrylonitrile (i.e., 33% by weight - reads on acrylonitrile-based monomer unit and its amount in present claim 1), 165 parts by weight of butyl methacrylate (i.e., 33% by weight - reads on acrylate-based monomer unit and its amount in present claim 1) and 25 parts by weight of methacrylic acid (paragraph 0070) which is 5% by weight - reads on acrylic acid-based monomer unit and its amount in present claim 1.
Sakurai et al differs with respect to the amount of acrylamide-based monomer unit.
However, copolymer in comparative example D1, of Sakurai et al, comprises methacrylamide in amount of 120 parts by weight (i.e., equivalent to 24% by weight). It is the Office’s position that instantly claimed amount of 20% by weight and that taught by Sakurai et al i.e., 20% by weight are so close to each other that the fact pattern is similar to the one in In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where, despite a slight difference in the ranges, court held that such a difference did not “render the claims patentable,” or, alternatively, that “a prima facie case of obviousness exists where the claimed range and prior art range do not overlap, but are close enough so that one skilled in the art would have expected them to have the same properties.
Regarding claim 8, copolymer in comparative example D1, comprises butyl acrylate and acrylonitrile in amounts of 165 parts by weight and 165 parts by weight, respectively (paragraph 0414) and weight ratio of acrylate-based monomer unit to acrylonitrile-based monomer unit is 1.
Claims 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Goto et al (US 2019/0085109 A1).
Regarding claim 1, Goto et al teach in example 12 (Table 1, and page 12) a copolymer comprising 70 mol% of AN (i.e., reads on acrylonitrile-based monomer unit in present claim 1), 3.0 mol% of MAA (i.e., methacrylic acid and reads on acrylic acid-based monomer unit in present claim 1), 2.0 mol% of DMMA and 25.0 mol% of BA (i.e., reads on acrylate-based monomer unit in present claim 1).
Goto et al fail to disclose as in present claims a copolymer comprising acrylamide.
However, Goto et al in the general disclosure teach that examples of basic group-containing monomers include monomers having a nitrogen-containing functional group including amino group-containing monomers such as dimethylaminomethacrylate (DMMA) and amide group-containing monomers such as (meth)acrylamide. Preferred basic group-containing monomers are dimethylamino methacrylate and acrylamide (paragraphs 0056-0059). Therefore, in light of the teachings in general disclosure, of Goto et al, it would have been obvious to one skilled in art prior to the filing of present application, to replace DMMA in example 12 with acrylamide, absent evidence of unexpected results. It is noted that acrylonitrile, methacrylic acid, butyl acrylate, and acrylamide have a molecular weight of 53.06 g/mol, 86.09 g/mol, 128.17 g/mol, and 71.08 g/mol respectively. Hence, a copolymer comprising 70 mol% of AN (i.e., equivalent to 50.75 wt% and reads on the amount of acrylonitrile-based monomer unit in present claim 1), 3 mol% of MAA (i.e., equivalent to 3.53 wt% and reads on the amount of acrylic acid-based monomer unit in present claim 1), 2.0 mol% of acrylamide (i.e., equivalent to 1.94 wt% and reads on the amount of acrylamide-based monomer unit in present claim 1) and 25.0 mol% of butyl acrylate (i.e., equivalent to 43.78 wt% and reads on the amount of acrylate-based unit in present claim 1).
Regarding claim 8, in addition to 14a to 14c, copolymer comprising 70 mol% of AN (i.e., equivalent to 50.75 wt% and reads on the amount of acrylonitrile-based monomer unit in present claim 1), and 25.0 mol% of butyl acrylate (i.e., equivalent to 43.78 wt% and reads on the amount of acrylate-based monomer unit in present claim 1) has a weight ratio for acrylate-based monomer unit to acrylonitrile-based monomer unit is calculated to be 0.86.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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