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 .
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 20210563800 in view of Dong et al (US 20200411901).
Regarding claims 1 and 2, WO ‘800 is directed to a polyimide formed from a diamine having the formula disclosed in [0033]:
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In the formula of instant claim 1, R1-R6 and R8 are H, and R7 is aromatic. Regarding claim 1, the polyimide is used in a dispersion comprising an organic solvent and a carbon conductive material ([0060], [0066], [0072]). Regarding claim 4, the organic solvent is NMP ([0072]). Regarding claim 5, the dispersion is a coating composition for an electrode ([0072]). Regarding claim 6, composition further comprises a silicon active material ([0062]). Regarding claims 7 and 8, an electrode and lithium ion secondary battery are made from the coating composition ([0073]).
WO ‘800 does not expressly teach that the carbon conductive material is carbon nanotubes, as recited in claim 1, or single walled nanotubes (claim 3).
Dong et al. is directed to a lithium ion battery. In [0057] and [0100], the reference teaches that nanoscale carbon, including nanotubes, is suitably used with silicon based active material, in particular single walled carbon nanotubes ([0103]).
Therefore, the invention as a whole would be obvious to one skilled in the art at the time of filing because the artisan would be motivated to use carbon nanotubes as the carbon additive of WO ‘800. In [0057] Dong et al. teach that “Nanoscale conductive carbon, such as carbon nanotubes, carbon black, carbon nanofibers, or combinations thereof, as an electrically conductive electrode additive have been found to improve cycling of the negative electrodes with the silicon based active material.” Accordingly, the artisan would be motivated to use carbon nanotubes as the carbon additive of WO ‘800. As noted above, the nanotubes are disclosed to be single walled, thereby rendering claim 3 obvious.
Claims 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over CN 113555552.
Regarding claim 1, CN ‘552 is directed to a polyimide binder and a negative electrode (abstract). Regarding claims 1, 5, and 6, the binder is part of a dispersion (coating composition) including an organic solvent, a conductive agent, and a silicon based active material (abstract). Regarding claim 1, conductive agent may be carbon black, acetylene black, carbon nanotubes, or carbon fibers ([0026] of translation). Regarding claim 1, the polyimide can be made from any of a number of diamines, which includes 4-aminophenyl-4’-aminobenzoate (compound of instant claim 1 when R1-R8=H). Regarding claim 4, the organic solvent comprises NMP ([0032]). Regarding claims 7 and 8, an electrode and lithium ion secondary battery are made from the coating composition ([0049]).
The reference is not considered anticipatory of the claims (that is, the combination of the formula of claim 1 and nanotubes as conductive material) due to the number of diamine compounds disclosed, and the varieties of conductive materials also disclosed by CN ‘552.
However, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the artisan would be sufficiently skilled to select nanotubes as the conductive agent and 4-aminophenyl-4’-aminobenzoate as the diamine monomer for the polyimide. Such selections would involve no more than routine skill in the art. It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art. KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007). As such, claim 1 is obvious over CN ‘552. In addition, the single walled nanotubes of claim 3 are also obvious over the reference as this is a conventional variety of carbon nanotubes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Nicole Buie-Hatcher, can be reached at (571) 270-3879. The phone number for the organization where this application or proceeding is assigned is (571) 272-1700. Documents may be faxed to the central fax server at (571) 273-8300.
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/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
July 24, 2026
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