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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5 and 9-12 in the reply filed on 8/12/26 is acknowledged.
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 8/12/26.
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, 3-5 and 10-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ichi et al. (WO 2022/172847), when taken with 1-Methyl-2-pyrrolidinone SDS and Benzylamine SDS. Ichi et al. (WO 2022/172847) English machine translation for citation.
Regarding claims 1 and 5: Ichi et al. (WO ‘847) discloses a method of producing a conductive pigment paste [abstract; 0063], by mixing pigment dispersing resin (A), electrically conductive pigment (B), solvent (C), fluororesin (D), and high-polarity low-molecular weight component (E), and then dispersing in a high speed mixer. Thereafter, carbon nanotubes (F) were added and further dispersed [0063]. Ichi et al. (WO ‘847) discloses Example 37 [Ex. 37; X-37; 0063-0065; Table 4, Ex. 37] contains 3 parts by mass (A)-A (hexaaceteate vinyl-vinyl alcohol copolymer; hydroxyl group concentration 17.2 mmol/g [0070]), 75 parts by mass (B)-C (carbon black [0071]), 10 parts by mass (F)-CNT (carbon nanotubes [0075]), 480 parts by mass (C)-NMP (N-methyl-2-pyrrolidone [0072]; bp 202 oC), 20 parts by mass (E)-Be-A (benzylamine [0074]; bp 185 oC) {corresponding to (202 - 10) > 185}, and 10 parts by mass (D)-PVDF (polyvinylidene fluoride [0073]) [Ex. 37; X-37; 0063-0065; Table 4, Ex. 37].
1-Methyl-2-pyrrolidinone SDS provides evidence for a boiling point (bp) of 202 oC [§9].
Benzylamine SDS provides evidence for a boiling point (bp) of 184-185 oC [§9].
Regarding claim 3: Ichi et al. (WO ‘847) discloses the water content of the paste X-37 was 0.1% by mass or less (1000 ppm or less) [0064].
Regarding claim 4: Ichi et al. (WO ‘847) discloses ~ 1.7 mass% carbon nanotubes [Ex. 37; X-37; 0063-0065; Table 4, Ex. 37].
Regarding claims 10-12: Ichi et al. (WO ‘847) discloses NMP and metallic particles (G1) (Na2/3Ni1/3Mn2/3O2) {cathode material} were added to conductive paste X-37, and the mixture was stirred [0086].
While Ichi et al. (WO ‘847) does not specifically disclose the mixture paste is for a lithium ion secondary battery, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02; 2144.07].
Claim(s) 2 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ichi et al. (WO 2022/172847) as applied to claim 1 above, when taken with 1-Methyl-2-pyrrolidinone Product Specification.
Regarding claim 2: Ichi et al. (WO ‘847) discloses the basic claimed method [as set forth above with respect to claim 1]; wherein Ichi et al. (WO ‘847) discloses the solvent (C) (ex. NMP) is substantially free of water; i.e. 0.1% by mass or less (1000 ppm or less) [0025]. Ichi et al. (WO ‘847) discloses NMP contains 0.01% or less (100 ppm or less) of amine [0025].
Ichi et al. (WO ‘847) does not specifically disclose NMP is a regenerated product. However, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
1-Methyl-2-pyrrolidinone Product Specification provides evidence for 0.01% by mass or less (100 ppm or less) of free amine (CH3NH2) [§Test].
Regarding claim 9: Ichi et al. (WO ‘847) discloses NMP and metallic particles (G1) (Na2/3Ni1/3Mn2/3O2) {cathode material} were added to conductive paste X-37, and the mixture was stirred [0086].
While Ichi et al. (WO ‘847) does not specifically disclose the mixture paste is for a lithium ion secondary battery, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02; 2144.07].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
