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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Parent claim 1 requires carbon nanotubes, and claim 9 lists every type of nanotube. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 2, 4, 9, 11, 12, 14, and 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hashizume et al. (WO 2014157061 A1; citations refer to attached English translation).
Regarding claim 1, Hashizume discloses a conductive composition comprising a copolymer of acrylonitrile (a monomer comprising a cyano group), carbon nanotubes, and a solvent (water) (Hashizume Examples 1-13, Tables 1 and 2 and pp. 53-68).
Regarding claim 2, the copolymers comprise 20-30 wt% acrylonitrile (53 g/mol) and the balance primarily butadiene (54 g/mol) (Hashizume Tables 1 and 2), or approximately 20-30 mol% acrylonitrile, which falls within the range of the instant claim.
Regarding claim 4, Hashizume gives an example (Hashizume Example 1, pp. 65-65) in which methacrylic acid is added as a monomer. As the pH of the copolymer solution is adjusted to be basic by the addition of sodium hydroxide, the methacrylic acid monomers will necessarily be present in salt form.
Regarding claim 9, Hashizume teaches the use of multi-walled and single-walled carbon nanotubes (Hashizume Tables 1 and 2).
Regarding claim 11, the composition of Example 1 of Hashizume includes 1 part by weight carbon nanotubes out of 104 parts total solids (100 active material, 1 part CNT, 1 part binder, and 1 part CMC) in a slurry with 40 wt% solids (Hashizume pp. 55-56), or approximately 0.4 wt% CNT, which falls within the range of the instant claim.
Regarding claim 12, the composition of Example 2 of Hashizume includes 0.4 parts by weight CNT and 1 part by weight copolymer (Hashizume Table 1), for a ratio of 1:2.5, or about 1:3, which falls within the range of the instant claim.
Regarding claim 14, the solvent is water (Hashizume pp. 55-56).
Regarding claim 16, the composition of Hashizume is an electrode slurry comprising an electrode active material (Hashizume pp. 55-56).
Regarding claims 17-18, Hashizume gives an example in which the active material is NMC111, which is an NMC-type mixed oxide of the form Li1+zNixMnyCo1-x-yO2 for z=0, x=0.33, and y=0.33, each of which falls within the ranges of the instant claims.
Claim(s) 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hashizume as applied to claim 1 above, as evidenced by Hata et al. (Japanese Patent 4621896 B2; with reference to US 2008/0318049 A1 as a direct English translation).
Regarding claim 10, Hashizume gives an example in which the carbon nanotubes have a diameter of 3.3 nm and BET specific surface area of 1050 m2/g (Hashizume Example 12, pp. 67-68), each of which falls within the ranges of the instant claim.
Hashizume does not disclose an aspect ratio for those nanotubes. Hashizume teaches that the nanotubes are grown by the method of Japanese Patent Publication 4621896 (i.e. Hata) (Hashizume p. 67). Hata teaches that carbon nanotubes grown under the same conditions will have a length of approximately 200 µm (Hata Example 1, [0297]-[0308] and Fig. 24), for an aspect ratio of 6*104 (200 µm/3.3 nm), which falls within the range of the instant claim.
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.
Claim(s) 3, 5-8, 13, 15, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashizume as applied to claims 1 and 4 above.
Regarding claim 3, Hashizume does not disclose the pH for the example compositions. Hashizume teaches that the slurry pH should be 7-12 (Hashizume p. 40), which falls within the range of the instant claim. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select a pH within this range, since Hashizume teaches that it is preferred.
Regarding claim 5, Hashizume does not teach that the carboxylate salt monomer is 10-50 mol% of the monomeric units in the copolymer. Hashizume teaches that carboxylic acid monomers such as methacrylic acid should be 0-10 wt % (Hashizume p. 24). For compositions in which the primary monomer is EHA (e.g. Hashizume Example 12), this is equivalent to a methacrylic acid content of 0-13 mol%, which overlaps the range of the instant claim. Similar values are obtained for heavier nitriles and dienes, or for lighter carboxylic acid monomers. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any value within the range of Hashizume, including values within the range of the instant claim.
Regarding claim 6, Hashizume does not disclose examples that include monomers with an amide group. Hashizume teaches that the copolymer may include anti-oxidant monomers, all listed examples of which include amide groups (Hashizume p. 26). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to try any of the listed monomers in the copolymer of Hashizume.
Regarding claim 7, Hashizume teaches that the content of additional monomers should be 40 wt% or less (Hashizume p. 26). As the listed monomers have molecular weights 3-5 times that of butadiene and acrylonitrile, this is approximately 12 mol% or less, which overlaps the range of the instant claim. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any value within the range of Hashizume, including values within the range of the instant claim.
Regarding claim 8, Hashizume teaches that the content of the binder copolymer in the electrode should be 0.2-10 wt% (Hashizume pp. 35-36). For the 40 wt% solid concentration of the slurry used in the examples (Hashizume pp. 55-56), this gives a copolymer content of 0.08-4 wt%, which overlaps the range of the instant claim. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any value within the range of Hashizume, including values within the range of the instant claim.
Regarding claim 13, Hashizume teaches that the content of the binder copolymer in the electrode should be 0.2-10 wt% (Hashizume pp. 35-36) and the nanotube content should be approximately 0.1-10 wt% (Hashizume p. 13). For the 40 wt% solid concentration of the slurry used in the examples (Hashizume pp. 55-56), this gives a copolymer content of 0.1-8 wt%, which overlaps the range of the instant claim. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any value within the range of Hashizume, including values within the range of the instant claim.
Regarding claim 15, Hashizume teaches that the viscosity of the material is preferably 100-20,000 mPa*s (Hashizume p. 40), which overlaps the range of the instant claim. 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). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any value within the range of Hashizume, including values within the range of the instant claim.
Note that the viscosity of Hashizume is measured at 25 °C, which is not expected to differ significantly from viscosity at 20 °C.
Regarding claim 19, Hashizume does not give an example that includes an anode active material. Hashizume gives examples that include carbon black as a conductive additive (Hashizume Examples 2 and 3, Table 1). Hashizume teaches that the conductive additive may be any carbon selected from a group including carbon black and graphite (Hashizume p. 14). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any of the indicated materials, including graphite, which is an anode active material, since Hashizume teaches that they are all acceptable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ozaki et al. (US 2021/0151766 A1) discloses an aqueous conductive composition comprising a copolymer and conductive carbon (Ozaki [0019]-[0020]).
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/J.A.C/ Examiner, Art Unit 1722
/ANCA EOFF/ Primary Examiner, Art Unit 1722
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