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 . 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.
Response to Amendment
The Amendment filed 03/24/2026 has been entered. Claims 1-2, 4-11 remain pending in the application and remain rejected.
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.
Claim(s) 1,2 and 4-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otsuka (U.S Patent 9966606B2) as evidenced by ACTTR ('The Meaning of D10 D50 D90 in Particle Size Report?' - see NPL attached).
Regarding claim 1, Otsuka, drawn to the art of compositions for power storage devices and binder compositions for power storage devices (Title; Abstract), discloses a composition containing a cross-linked polymer, wherein the polymer contains monomers 1,3 butadiene (a6) (Column 8, lines 46-47), hydroxyethyl methacrylate (a5) (Column 8, line 10), trimethylolpropane trimethacrylate (a7) (Columns 8-9, lines 66-67 & 1-2). Otsuka has also disclosed a filler that is silica (Column 20, lines 14-21), the term anti-caking agent is an intended use recitation of the material and the silica filler of Otsuka being the same as instantly claimed would fulfill this intended use (MPEP 2114 & 2115).
Otsuka discloses the particles of the binder composition being formed by grinding as is instantly claimed (formed by a grinding machine) (Column 18, lines 41-52), and while Otsuka has not explicitly disclosed the shape of the particles, given that they are formed by a grinding machine as is instantly claimed, it can be reasonably expected that the particles are non-spherical. Regardless, changes in shape are held to be obvious given the lack of new or unexpected results, as held by the courts (MPEP 2144.04 IV(B)).
Further, regarding the size of the particles, the term D(90) is interpreted to mean that 90% of particles are less than the size range claimed, as is conventionally held to be the definition of D(90) (as evidenced by ‘The Meaning of D10 D50 D90 in Particle Size Report’), and as is also mentioned in the instant specification (page 6, lines 10-15).
Given this interpretation then, the particle size range as disclosed by Otsuka would encompass and overlap the instantly claimed range, as Otsuka discloses particles that are on average or D50 to be between 50 to 800nm (Column 14, lines 1-15), meaning that 50% of particles are smaller than the range and 50% percent of particles are bigger than the range, and given that 90% of the particles are smaller than the instantly claimed range as is instantly claimed in claim 1, it would mean that the particle range disclosed by Otsuka meets the instant limitation and obviates the range. The courts have held that 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) (MPEP 2144.05(I)).
Additionally, Otsuka suggests that the particle size has effects on the absorbability of the particles onto surface of electrode active material or filler (Column 14, lines 1-12), and thus the particle size is a result effective variable which can be routinely optimized by an ordinarily skilled artisan (MPEP 2144.05(II)). In addition to the above, the courts have held that changes in size/proportion are held to be obvious in the absence of new or unexpected results (MPEP 2144.04IV(A)).
Regarding specific weight ranges of the components, Otsuka has disclosed the weight ranges for 1,3 butadiene (Column 8, lines 26-34), trimethylolpropane trimethacrylate (Column 8, lines 60-65), and acrylonitrile (Column 5, 44-53). The weight ranges for the above components form overlapping and encompassing ranges with the claimed ranges, thus obviating the ranges. The courts have held that 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) (MPEP 2144.05(I)).
Regarding the weight range for hydroxyethyl methacrylate, Otsuka has disclosed a weight range for this component that is higher than the weight range as instantly claimed (Column 7, lines 40-45), but has also disclosed that the glass transition temperature (Tg) can be arbitrarily adjusted by adjusting the type and content of compound (a5), and this in turn has an effect on the adhesion between an electrode and the polymer film (Column 7, lines 46-52). Thus, the weight range of compound (a5) i.e. hydroxyethyl methacrylate is a result effective variable which has an effect on the glass transition temperature and in turn the adhesion. The weight range of compound (a5) can then be routinely optimized by an ordinarily skilled artisan in order to have appropriate Tg and adhesion (MPEP 2144.05(II)). It is noted as well that the amended limitation of “a composition consisting essentially of” rather than ‘comprising of’, while adding more specificity and making the claim narrower, does not preclude other ingredients or components from being a part of the composition.
Regarding claim 2, Otsuka has disclosed acrylonitrile (a2) being a monomer in the composition as well (Column 5, lines 54-57).
Regarding claim 4, Otsuka has disclosed the silica filler to be in a weight range of 0 to 20 parts (Column 20, lines 45-50), thus disclosing an encompassing and overlapping range and obviating the instant range. The courts have held that 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) (MPEP 2144.05(I)).
Regarding claim 5, Otsuka discloses the binder composition being used to form an anode (negative electrode) (Column 21, lines 40-50) of a rechargeable battery (Column 22, lines 35-50).
Regarding claim 6, Otsuka has disclosed the electrode slurry for an anode (negative electrode) to be an active material (Column 16, lines 5-10), a conductive material (Column 17, lines 41-49), and has disclosed the binder composition slurry and the active material + conductive material slurry then being coated onto a collector (Column 21, lines 40-50) by extrusion (Column 19, lines 18-21).
Regarding claim 7, Otsuka has disclosed the active material to be carbon (Column 16, lines 5-10).
Regarding claim 8, Otsuka has disclosed the conductive material being a carbon based material (Column 17, lines 41-49).
Regarding claim 9, Otsuka discloses a process as currently claimed and discloses providing the binder composition to an extruder (grinding machine) (Column 21, lines 34-36 – Otsuka discloses the same devices being used to form a binder composition slurry as those used to form an electrode slurry i.e. active material and conductive material slurry). Otsuka discloses providing the active and conductive material to an extruder (grinding machine) to form an electrode slurry (Column 18, lines 42-53). Otsuka then discloses extruding the slurries onto the current collector (Column 19, lines 18-21 & Column 21, lines 40-44).
Regarding claim 10, Otsuka has disclosed the total solids content of the binder composition, active material, and conductive material to be between 10% to 80% (Column 21, lines 22-24), thus disclosing an encompassing and overlapping range with the instantly claimed range and obviating the range. The courts have held that 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) (MPEP 2144.05(I)).
Regarding claim 11, Otsuka has disclosed the current collector to be copper (Column 19, lines 4-6).
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
Applicant argues that the composition of Otsuka contains components that are essential to the composition of Otsuka but that are not essential to the instant composition and that are not contained in the instant composition and that this distinguishes over the prior art.
The examiner disagrees. Firstly, It is noted that the amended limitation of “a composition consisting essentially of” rather than ‘comprising of’, while adding more specificity and making the claim narrower, does not preclude other ingredients or components from being a part of the composition. The crux of the applicant’s arguments is that given the amending of ‘comprising’ to ‘consisting essentially of’, and given that Otsuka discloses components that are not needed and not a part of the instant composition, but are essential components of Otsuka, that this would mean that the composition of Otsuka cannot be used to meet the limitations of the instant composition and that this distinguishes over the prior art. Applicant also argues that given the difference in the weight composition of the hydroxyethyl methacrylate of Otsuka and the instant composition, that this also distinguishes over the prior art. As noted above, the limitations of “consisting essentially of” do not preclude other components from being a part of the composition. If the instant claim were to instead recite “consisting of”, then the argument that Otsuka discloses other components and that the instant composition does not constitute these other components and thus distinguishes over Otsuka, would be persuasive. Finally, the weight percentage of the hydroxyethyl methacrylate is a result effective variable as noted above in the instant claim 1 rejection, and thus it is within the purview of an ordinarily skilled artisan to routinely optimize this weight percentage to have appropriate Tg and adhesion.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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