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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/18/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of Claims
The Applicant’s amendment and arguments, filed 05/27/2026, has been entered. Claim 1, 17-19 are amended; claims 2-7 and 10-16 stand as originally or previously presented; and claims 8-9 are canceled. Support for the amendments is found in the original filing, and there is no new matter.
Upon considered said amendments and arguments, the previous 35 U.S.C.103 rejection set forth in Office Action mailed 03/02/2026 has been withdrawn. Amended and new grounds of rejections under 35 U.S.C. 112 and 35 U.S.C. 103 citing to newly cited art and the originally cited art are set forth below as necessitated by the claim amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 10 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites the limitation “the ether polymer includes at least one of structural units represented by Formula (I-2)
PNG
media_image1.png
103
275
media_image1.png
Greyscale
”
in lines 2-4.
Formula (I-2) does not fall within the scope of Claim 1 because R3 does not include an unsubstituted C2 methylene group.
Appropriate correction is required.
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.
Claim(s) 1-7, 10-11, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (US 20190214678 A1, hereinafter Hwang).
Regarding Claims 1-2, 6-7, and 11, Hwang discloses a battery cell (Hwang, lithium battery, [0077]), comprising:
a positive electrode plate (Hwang, positive electrode plate, [0079]); and
a negative electrode plate (Hwang, negative electrode plate, [0094]); wherein the battery cell satisfies:
the positive electrode plate comprises a positive electrode current collector and a positive electrode film layer disposed on the positive electrode current collector and the positive electrode film layer comprises a positive electrode active material layer (Hwang, the positive active material composition may be directly coated on a positive electrode current collector, and then dried to prepare a positive electrode plate, [0079]) and an ether polymer (Hwang, the negative electrode may further include the copolymer represented by one of Formula 1, [0107]) and/or
the negative electrode plate comprises a negative electrode current collector and a negative electrode film layer disposed on the negative electrode current collector, and the negative electrode film layer comprises a negative electrode active material (Hwang, the negative active material composition may be directly coated on a negative electrode current collector, and then dried to prepare a negative electrode plate, [0094]) and the ether polymer (Hwang, the negative electrode may further include the copolymer represented by one of Formula 1, [0107]); wherein
the ether polymer includes structural units represented by Formula (I)
PNG
media_image2.png
145
317
media_image2.png
Greyscale
in which:
R1 or R2 includes at least one of a substituted C1-C3 alkyl group, an unsubstituted C1-C3 alkyl group; or R3 includes a substituted C2-C5 methylene group, an unsubstituted C4 methylene group, or an unsubstituted C5 methylene group (Hwang, a copolymer represented by Formula 1:
PNG
media_image3.png
209
402
media_image3.png
Greyscale
,
Wherein the main chain of the copolymer represented by Formula 1 may include at least one first block including a plurality of first repeating units that are connected to each other, the first repeating units being represented by Formula 1a:
PNG
media_image4.png
126
321
media_image4.png
Greyscale
In Formula 1a, R4, R5, R6, and R7 may each independently be a hydrogen atom; a halogen atom; a linear or branched C1-C10 alkyl group that is unsubstituted or substituted with halogen, and n3 may be an integer of 2 to 250, and the copolymer represented by one selected from Formula 1 may have a number average molecular weight (Mn) of, for example, about 2,000 to about 500,000 Daltons, [0030, 0033-0034, 0048]; the Examiner notes that the disclosed C1-C10 alkyl group that is unsubstituted or substituted with halogen overlaps with the claimed C1-C3 alkyl group, an unsubstituted C1-C3 alkyl group, substituted C2-C5 methylene group, an unsubstituted C4 methylene group, or an unsubstituted C5 methylene group).
MPEP 2112.01 teaches that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
With respect to the limitations “wherein the ether polymer satisfies 5 ≤ m/n ≤ 1000 (Claim 1), and more specifically 10 ≤ m/n ≤ 1000 (Claim 2), where:
n denotes a mass of the ether polymer in units of g, and m denotes a mass of a first substance in units of g, which is obtained by adding the ether polymer in a mass of n grams to a first solvent at 45 °C to form an ether polymer system, allowing the ether polymer system to stand at 45 °C for 8h and then at 25 °C for ≥24h, and filtering the ether polymer system through a 200-mesh filter to leave a filtered-out substance as the first substance;
a slope K of an elastic modulus G'- loss modulus G" curve of the ether polymer satisfies 1< K < ∞, where the elastic modulus G'- loss modulus G" curve is obtained by subjecting a sheet-like structure made of the ether polymer to a dynamic frequency sweep test at (Tm + 20) °C, Tm °C denoting a melting temperature of the ether polymer (Claim 6); and
the glass transition temperature Tg in units of °C of the ether polymer satisfies -100 ≤ Tg ≤ 50 (Claim 7),” it is submitted that such limitations are simply measurements of, and thus descriptions of, inherent properties of the recited ether polymer.
Applicant discloses an ether polymer comprising of monomer represented by Formula (I) (Claim 1), and a molecular weight of 1.2 x 105 g/mol to 1.0 x 106 g/mol (Claim 11).
Accordingly, it is reasonably interpreted that the monomer and molecular weight is critical to the recited precipitation value, K slope value, and glass transition temperature such that it would fulfil the recited measurements and necessarily possess the inherent properties. It is further evidenced by Comparative Example 2, which uses 100% ethylene oxide as the monomer but the molecular weight is 400,000 g/mol, resulting in a different glass transition temperature, K slope value, and precipitation value compared to the values obtained from Examples 4 and 7-12, which all use 100% ethylene oxide.
Hwang discloses a copolymer represented by Formula 1:
PNG
media_image3.png
209
402
media_image3.png
Greyscale
,
Wherein the main chain of the copolymer represented by Formula 1 may include at least one first block including a plurality of first repeating units that are connected to each other, the first repeating units being represented by Formula 1a:
PNG
media_image4.png
126
321
media_image4.png
Greyscale
In Formula 1a, R4, R5, R6, and R7 may each independently be a hydrogen atom; a halogen atom; a linear or branched C1-C10 alkyl group that is unsubstituted or substituted with halogen, and n3 may be an integer of 2 to 250, and the copolymer represented by one selected from Formula 1 may have a number average molecular weight (Mn) of, for example, about 2,000 to about 500,000 Daltons (Hwang, [0030, 0033-0034, 0048]).
It is submitted that Hwang’s vinyl ether that has a number average molecular weight of about 2,000 to about 500,000 Daltons is substantially similar to the instant ether polymer comprising of monomer represented by Formula (I) (Claim 1), and overlaps a molecular weight of 1.2 x 105 g/mol to 1.0 x 106 g/mol (Claim 11) such that the vinyl ether of Hwang would reasonably possess the same properties and exhibit the same results.
Therefore, based upon such substantial similarities, it appears reasonable that the vinyl ether of Hwang would inherently possess physical properties, e.g. precipitation value, glass transition temperature, and K slope value, such that the vinyl ether of Hwang would necessarily fulfill the recited limitations, i.e. the ether polymer satisfies 5 ≤ m/n ≤ 1000 (Claim 1), and more specifically 10 ≤ m/n ≤ 1000 (Claim 2), where:
n denotes a mass of the ether polymer in units of g, and m denotes a mass of a first substance in units of g, which is obtained by adding the ether polymer in a mass of n grams to a first solvent at 45 °C to form an ether polymer system, allowing the ether polymer system to stand at 45 °C for 8h and then at 25 °C for ≥24h, and filtering the ether polymer system through a 200-mesh filter to leave a filtered-out substance as the first substance,
a slope K of an elastic modulus G'- loss modulus G" curve of the ether polymer satisfies 1< K < ∞, where the elastic modulus G'- loss modulus G" curve is obtained by subjecting a sheet-like structure made of the ether polymer to a dynamic frequency sweep test at (Tm + 20) °C, Tm °C denoting a melting temperature of the ether polymer (Claim 6), and
the glass transition temperature Tg in units of °C of the ether polymer satisfies -100 ≤ Tg ≤ 50 (Claim 7).” It is submitted that such limitations are simply measurements of, and thus descriptions of, inherent properties of the recited ether polymer.
Assuming, arguendo, that such properties are not inherent, it is submitted that before the effective filing date of the current invention, one having ordinary skill in the art would find such properties obvious over the claimed ether polymer. The skilled artisan would reasonably find that Hwang’s vinyl ether that has an average molecular weight of between 100,000 to 7,000,000 g/mol is so similar to the instant the instant ether polymer comprising of monomer represented by Formula (I) (Claim 1), and a molecular weight of 1.2 x 105 g/mol to 1.0 x 106 g/mol (Claim 11), that the prior art vinyl ether would also exhibit the claimed
“The ether polymer satisfies 5 ≤ m/n ≤ 1000 (Claim 1), and more specifically 10 ≤ m/n ≤ 1000 (Claim 2), where:
n denotes a mass of the ether polymer in units of g, and m denotes a mass of a first substance in units of g, which is obtained by adding the ether polymer in a mass of n grams to a first solvent at 45 °C to form an ether polymer system, allowing the ether polymer system to stand at 45 °C for 8h and then at 25 °C for ≥24h, and filtering the ether polymer system through a 200-mesh filter to leave a filtered-out substance as the first substance,” it is submitted that such limitations are simply measurements of, and thus descriptions of, inherent properties of the recited ether polymer,
a slope K of an elastic modulus G'- loss modulus G" curve of the ether polymer satisfies 1< K < ∞, where the elastic modulus G'- loss modulus G" curve is obtained by subjecting a sheet-like structure made of the ether polymer to a dynamic frequency sweep test at (Tm + 20) °C, Tm °C denoting a melting temperature of the ether polymer (Claim 6), and
the glass transition temperature Tg in units of °C of the ether polymer satisfies -100 ≤ Tg ≤ 50 (Claim 7).”
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the current invention to select the overlapping portions of the disclosed ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)).
Regarding Claims 3-5, Hwang discloses all of the claim limitations as set forth above. Hwang discloses a battery cell (Hwang, lithium battery, [0077]). Hwang is silent regarding the first solvent includes cyclic carbonate solvents and/or chain carbonate solvents. (Claim 3);
the cyclic carbonate solvents include one or more of ethylene carbonate (EC), vinylene carbonate (VC), fluoroethylene carbonate (FEC), difluoroethylene carbonate (DFEC), vinyl ethylene carbonate (VEC), and dioctyl carbonate (Claim 4); and
the chain carbonate solvents include one or more of dimethyl carbonate (DMC), diethyl carbonate (DEC), ethyl methyl carbonate (EMC), diphenyl carbonate (DPC), methyl allyl carbonate (MAC), and polycarbonate (VA) (Claim 5).
However, the first solvent is only used in testing the properties of the ether polymer, as shown in Claim 1, and does not impart new properties onto the ether polymer used in the battery. The first solvent is not needed because Hwang’s vinyl ether that has a number average molecular weight of about 2,000 to about 500,000 Daltons has the same properties of the claimed ether polymer, as noted above.
Regarding Claim 10, Hwang discloses all of the claim limitations as set forth above. Hwang discloses a battery cell (Hwang, lithium battery, [0077]), wherein the ether polymer includes at least one of structural units represented by Formula (I-2)
PNG
media_image5.png
104
257
media_image5.png
Greyscale
(Hwang, a copolymer represented by Formula 1:
PNG
media_image3.png
209
402
media_image3.png
Greyscale
,
Wherein the main chain of the copolymer represented by Formula 1 may include at least one first block including a plurality of first repeating units that are connected to each other, the first repeating units being represented by Formula 1a:
PNG
media_image4.png
126
321
media_image4.png
Greyscale
In Formula 1a, R4, R5, R6, and R7 may each independently be a hydrogen atom; a halogen atom; a linear or branched C1-C10 alkyl group that is unsubstituted or substituted with halogen, and n3 may be an integer of 2 to 250, and the copolymer represented by one selected from Formula 1 may have a number average molecular weight (Mn) of, for example, about 2,000 to about 500,000 Daltons, [0030, 0033-0034, 0048]; the Examiner notes that claimed Formula (I-5) is read upon when R4 and R6 is a linear C1 unsubstituted alkyl group).
Regarding Claim 15, Hwang discloses all of the claim limitations as set forth above. Hwang discloses a battery, comprising the battery cell (Hwang, lithium battery, [0077]).
Regarding Claim 16, Hwang discloses all of the claim limitations as set forth above. Hwang discloses an electrical device comprising the battery (Hwang, the lithium battery may be used in, for example, power tool powered by an electric motor; an electric vehicle (EV), [0119]).
Claim(s) 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (US 20190214678 A1, hereinafter Hwang), as applied to Claim 1 above, and in view of Koh et al. (US 20190198913 A1, hereinafter Koh).
Regarding Claims 12-14, Hwang discloses all of the claim limitations as set forth above. Hwang discloses a battery cell (Hwang, lithium battery, [0077]).
Hwang is silent regarding the ether polymer further includes structural units represented by Formula (II),
PNG
media_image6.png
133
281
media_image6.png
Greyscale
in which: R4 and R7 each independently include a hydrogen atom, a substituted or unsubstituted C1-C3 alkyl group, a substituted or unsubstituted C1-C3 alkoxy group, an ether group, and at least one of R4 to R7 includes a substituted or unsubstituted C1-C3 alkoxy group or ether group (Claim 12), and wherein R4 and R7 each independently include a hydrogen atom or an ether group, (Claim 13), and more specifically, the ether polymer includes at least one of structural units represented by Formula (II-1) to Formula (II-7) (Claim 14).
PNG
media_image7.png
241
441
media_image7.png
Greyscale
Koh discloses a battery cell (Koh, secondary battery, [0003]), wherein the ether polymer further includes structural units represented by Formula (II) in which: R4 and R7 each independently include a hydrogen atom, a substituted or unsubstituted C1-C3 alkyl group, a substituted or unsubstituted C1-C3 alkoxy group, an ether group, and at least one of R4 to R7 includes a substituted or unsubstituted C1-C3 alkoxy group or ether group (Claim 12), and wherein R4 and R7 each independently include a hydrogen atom, a substituted or unsubstituted C1-C2 alkyl group, a substituted or unsubstituted C1-C2 alkoxy group, an ether group, and at least one of R4 to R7 includes a substituted or unsubstituted C1-C2 alkoxy group or ether group (Claim 13), and more specifically, the ether polymer includes at least one of structural units represented by Formula (II-1) to Formula (II-4) (Claim 14) (Koh, positive and negative electrode comprise of one or more polymers from a repeating unit represent by Formula 2:
PNG
media_image8.png
130
216
media_image8.png
Greyscale
wherein R5 to R8 are the same or different from each other, and each independently hydrogen, a C1 to C30 alkyl group, or a C1 to C30 alkoxy group, and a weight average molecular weight of 1,000,000 to 5,000,000 g/mol, Claim 14, [0043]; the Examiner notes that:
Formula II-1 is read upon when R5, R6, and R7 are hydrogens and R8 is a C1 alkoxy group;
Formula II-2 is read upon when R5 and R6 are hydrogens, R7 is a C1 alkyl group, and R8 is a C1 alkoxy group;
Formula II-3 is read upon when R5 and R6 are hydrogens, R7 is a C1 alkyl group, and R8 is a C2 alkoxy group
Formula II-4 is read upon when R5 and R6 are hydrogens, R7 is a C1 alkyl group, and R8 is a C3 alkoxy group. The disclosed alkyl and alkoxy group carbon range of C1-C20 overlaps the claimed alkyl and alkoxy group carbon range of C1-C3 (Claim 12), and more specifically C1-C2 (Claim 13)).
Koh teaches that a battery that has a positive and negative electrode comprise of one or more polymers from a repeating unit represent by Formula 2 has an improved lifespan (Koh, [0026]).
Hwang and Koh are analogous to the current invention as they are all directed towards using a polymer ether in an electrode of a secondary battery.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include polymer from a repeating unit represented by Formula 2 of Koh into the electrode of Hwang, in order to improve battery lifespan.
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the current invention to select the overlapping portions of the disclosed ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)).
Claim(s) 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (US 20190214678 A1, hereinafter Hwang), in view of Komatsu et al. (US 20090134360 A1, hereinafter Komatsu, filed in “Notice of References Cited” dated 03/02/2026).
Regarding Claims 17-19, Hwang discloses a battery cell (Hwang, lithium battery, [0077]), comprising:
a positive electrode plate (Hwang, positive electrode plate, [0079]); and
a negative electrode plate (Hwang, negative electrode plate, [0094]); wherein the battery cell satisfies:
the positive electrode plate comprises a positive electrode current collector and a positive electrode film layer disposed on the positive electrode current collector and the positive electrode film layer comprises a positive electrode active material layer (Hwang, the positive active material composition may be directly coated on a positive electrode current collector, and then dried to prepare a positive electrode plate, [0079]) and an ether polymer (Hwang, the negative electrode may further include the copolymer represented by one of Formula 1, [0107]) and/or
the negative electrode plate comprises a negative electrode current collector and a negative electrode film layer disposed on the negative electrode current collector, and the negative electrode film layer comprises a negative electrode active material (Hwang, the negative active material composition may be directly coated on a negative electrode current collector, and then dried to prepare a negative electrode plate, [0094]) and the ether polymer (Hwang, the negative electrode may further include the copolymer represented by one of Formula 1, [0107]); wherein
the ether polymer includes structural units represented by Formula (I)
PNG
media_image2.png
145
317
media_image2.png
Greyscale
in which:
R1 or R2 includes at least one of a substituted Cl-C3 alkyl group, an unsubstituted C1-C3 alkyl group; or R3 includes a substituted C2-C5 methylene group, an unsubstituted C4 methylene group, or an unsubstituted C5 methylene group (Hwang, a copolymer represented by Formula 1:
PNG
media_image3.png
209
402
media_image3.png
Greyscale
,
Wherein the main chain of the copolymer represented by Formula 1 may include at least one first block including a plurality of first repeating units that are connected to each other, the first repeating units being represented by Formula 1a:
PNG
media_image4.png
126
321
media_image4.png
Greyscale
In Formula 1a, R4, R5, R6, and R7 may each independently be a hydrogen atom; a halogen atom; a linear or branched C1-C10 alkyl group that is unsubstituted or substituted with halogen, and n3 may be an integer of 2 to 250, and the copolymer represented by one selected from Formula 1 may have a number average molecular weight (Mn) of, for example, about 2,000 to about 500,000 Daltons, [0030, 0033-0034, 0048]).
Hwang is silent regarding ether polymer further includes a structural units represented by Formula (II)
PNG
media_image9.png
105
200
media_image9.png
Greyscale
in which: at least one of R4 to R7 includes at least one of a substituted C1-C3 alkyl group, an unsubstituted C1-C3 alkyl group, a substituted C1-C3 alkoxy group, an unsubstituted C1-C3 alkoxy group, or an ether group; and
at least another one of R4 to R7 includes at least one of a substituted C1-C3 alkoxy group, an unsubstituted C1-C3 alkoxy group, or an ether group (Claim 17); and more specifically, the ether polymer includes at least one of structural units represented by Formula (II-5) and Formula (II-7) (Claims 18-19).
Komatsu discloses an electrode comprising ether polymer further includes a structural units represented by Formula (II)
PNG
media_image9.png
105
200
media_image9.png
Greyscale
in which: at least one of R4 to R7 includes at least one of a substituted C1-C3 alkyl group, an unsubstituted C1-C3 alkyl group, a substituted C1-C3 alkoxy group, an unsubstituted C1-C3 alkoxy group, or an ether group; and
at least another one of R4 to R7 includes at least one of a substituted C1-C3 alkoxy group, an unsubstituted C1-C3 alkoxy group, or an ether group (Claim 17); and more specifically, the ether polymer includes at least one of structural units represented by Formula (II-5), Formula (II-6), Formula (II-7) (Claims 18-19) (Komatsu, a water repellent agent, wherein the water repellent agent contains a copolymer having a structure unit represented by the following general formula (2) derived from a vinyl ether monomer.
PNG
media_image10.png
108
383
media_image10.png
Greyscale
In the formula (2), X2 represents a hydrogen atom or a methyl group, X3 represents a group represented by --(CH2)hOW2 (W2 represents an alkyl group, and the number-average molecular weight is 5,000 to 500,000, [0104, 0135]; the Examiner notes that claimed Formula (II-5) and Formula (II-7) is read upon when X2 is a hydrogen atom and X3 is --(CH2)hOW2, wherein h = 1 and W2 = an alkyl group, and Formula (II-6) is read upon when X2 is a hydrogen atom and X3 is --(CH2)hOW2, wherein h = 2 and W2 = an alkyl group).
Komatsu teaches that the water repellent agent improves water drainage in the electrode (Komatsu, [0105]).
Hwang and Komatsu are analogous to the current invention as they are all directed towards an electrode.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the structural unit represented by the following general formula (2) derived from a vinyl ether monomer of Komatsu in the polymer of Hwang, in order to improve water drainage in the electrode.
MPEP 2112.01 teaches that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
With respect to the limitations “wherein the ether polymer satisfies 5 ≤ m/n ≤ 1000, where:
n denotes a mass of the ether polymer in units of g, and m denotes a mass of a first substance in units of g, which is obtained by adding the ether polymer in a mass of n grams to a first solvent at 45 °C to form an ether polymer system, allowing the ether polymer system to stand at 45 °C for 8h and then at 25 °C for ≥24h, and filtering the ether polymer system through a 200-mesh filter to leave a filtered-out substance as the first substance (Claims 17 and 19),
Applicant discloses an ether polymer comprising of monomer represented by Formula (I) and Formula (II) (Claim 17), and more specifically Formula (II-5 to II-7) (Claim 18 and 19) and a molecular weight of 1.2 x 105 g/mol to 1.0 x 106 g/mol (Instant Specification [0019]).
Modified Hwang discloses an ether polymer comprising of monomer represented by Formula (I) (Hwang, a copolymer represented by Formula 1:
PNG
media_image3.png
209
402
media_image3.png
Greyscale
,
Wherein the main chain of the copolymer represented by Formula 1 may include at least one first block including a plurality of first repeating units that are connected to each other, the first repeating units being represented by Formula 1a:
PNG
media_image4.png
126
321
media_image4.png
Greyscale
In Formula 1a, R4, R5, R6, and R7 may each independently be a hydrogen atom; a halogen atom; a linear or branched C1-C10 alkyl group that is unsubstituted or substituted with halogen, and n3 may be an integer of 2 to 250, and the copolymer represented by one selected from Formula 1 may have a number average molecular weight (Mn) of, for example, about 2,000 to about 500,000 Daltons, [0030, 0033-0034, 0048]) and Formula (II), and more specifically Formula (II-5 to II-7) (Komatsu, a water repellent agent, wherein the water repellent agent contains a copolymer having a structure unit represented by the following general formula (2) derived from a vinyl ether monomer.
PNG
media_image10.png
108
383
media_image10.png
Greyscale
In the formula (2), X2 represents a hydrogen atom or a methyl group, X3 represents a group represented by --(CH2)hOW2 (W2 represents an alkyl group, and the number-average molecular weight is 5,000 to 500,000, [0104, 0135]; the Examiner notes that claimed Formula (II-5) and Formula (II-7) is read upon when X2 is a hydrogen atom and X3 is --(CH2)hOW2, wherein h = 1 and W2 = an alkyl group, and Formula (II-6) is read upon when X2 is a hydrogen atom and X3 is --(CH2)hOW2, wherein h = 2 and W2 = an alkyl group)
Accordingly, it is reasonably interpreted that the monomer and molecular weight is critical to the recited precipitation value (m/n) such that it would fulfil the recited measurements and necessarily possess the inherent properties. It is further evidenced by Comparative Example 2, which uses 100% ethylene oxide as the monomer but the molecular weight is 400,000 g/mol, resulting in a different precipitation value (m/n) compared to the values obtained from Examples 4 and 7-12, which all use 100% ethylene oxide.
It is submitted that modified Hwang’s vinyl ether that has a number average molecular weight (Mn) of, for example, about 2,000 to about 500,000 Daltons, which is substantially similar to the instant ether polymer comprising of monomer represented by Formula (I) and Formula (II) (Claim 17), and more specifically Formula (II-5 to II-7) (Claims 18-19), and overlaps a molecular weight of 1.2 x 105 g/mol to 1.0 x 106 g/mol (Instant Specification [0019]) such that the vinyl ether of modified Hwang would reasonably possess the same properties and exhibit the same results.
Therefore, based upon such substantial similarities, it appears reasonable that the vinyl ether of modified Hwang would inherently possess physical properties, e.g. precipitation value, glass transition temperature, and K slope value, such that the vinyl ether of Hwang would necessarily fulfill the recited limitations, i.e. the ether polymer satisfies 5 ≤ m/n ≤ 1000, where:
n denotes a mass of the ether polymer in units of g, and m denotes a mass of a first substance in units of g, which is obtained by adding the ether polymer in a mass of n grams to a first solvent at 45 °C to form an ether polymer system, allowing the ether polymer system to stand at 45 °C for 8h and then at 25 °C for ≥24h, and filtering the ether polymer system through a 200-mesh filter to leave a filtered-out substance as the first substance (Claims 17 and 19). It is submitted that such limitations are simply measurements of, and thus descriptions of, inherent properties of the recited ether polymer.
Assuming, arguendo, that such properties are not inherent, it is submitted that before the effective filing date of the current invention, one having ordinary skill in the art would find such properties obvious over the claimed ether polymer. The skilled artisan would reasonably find that Hwang’s vinyl ether that has an average molecular weight of between 100,000 to 7,000,000 g/mol is so similar to the instant the instant ether polymer comprising of monomer represented by Formula (I) and Formula (II) (Claim 17), and more specifically Formula (II-5 to II-7) (Claim 18-19), and a molecular weight of 1.2 x 105 g/mol to 1.0 x 106 g/mol (Instant Specification [0019]), that the prior art vinyl ether would also exhibit the claimed
“The ether polymer satisfies 5 ≤ m/n ≤ 1000, where:
n denotes a mass of the ether polymer in units of g, and m denotes a mass of a first substance in units of g, which is obtained by adding the ether polymer in a mass of n grams to a first solvent at 45 °C to form an ether polymer system, allowing the ether polymer system to stand at 45 °C for 8h and then at 25 °C for ≥24h, and filtering the ether polymer system through a 200-mesh filter to leave a filtered-out substance as the first substance,” it is submitted that such limitations are simply measurements of, and thus descriptions of, inherent properties of the recited ether polymer.”
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the current invention to select the overlapping portions of the disclosed ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)).
Response to Arguments
Applicant’s arguments, see Pages 12-16, filed 05/27/2026, with respect to the rejection(s) of claim(s) 1-7 and 10-19 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hwang et al. (US 20190214678 A1, hereinafter Hwang), as noted above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KEVIN NGUYEN whose telephone number is (703)756-1745. The examiner can normally be reached Monday-Thursday 9:50 - 7:50 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NICHOLAS A SMITH can be reached at (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.N./Examiner, Art Unit 1752
/OSEI K AMPONSAH/Primary Examiner, Art Unit 1752
Prosecution Insights