DETAILED ACTION
Notice to Applicant
In the amendment dated 2026-06-22, the following has occurred: Claims 1 has been amended; Claims 17 and 18 have been added.
Claims 1-18 are pending; claims 7-10 being withdrawn. Claims 1-6 and 11-18 are examined herein. This is a Final Rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-6 and 11-17 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The embodiment/species wherein the fluoropolymer is VDF has been constructively elected. The claims have been amended to require melting temperatures below 70 °C (claim 1). The instant examples, being copolymers of VDF and TFE or HFP, seen in instant Table 1, all have melting temperatures greater than or equal to 110 °C.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). See MPEP 2164.01(a).
In the instant case, the breadth of the claims for 3, 4, and 6 is quite broad—any fluoropolymer with a low crystallinity, and a melting temperature between 0 and 70 °C containing VDF, and a MW or chain length as claimed. The nature of the invention claims to be directed towards a very particular way of forming a copolymer, in a crowded prior art field that discloses a variety of well-known VDF copolymers with TFE and HFP. The level of ordinary skill in the art was quite high, but the instant invention particularly claims an unpredictable, unexpected result. But the instant examples do not actually show how to achieve the claimed lower melting point fluoropolymers, nor do they clearly indicate how to tune the melting point. The quantity of experimentation would therefore appear to be high. The claims are therefore rejected for lack of enablement concerning the particularly claimed species with the claimed melting temperature. The independent claim 1 is even broader, with apparently no limit on the monomers chosen beyond containing fluorine. No examples are provided with the claimed melting temperature of ≤ 70 °C, nor does the specification provide a clear roadmap for tuning the melting temperature while also achieving the claimed crystallinity and glass temperature(s).
Claim Rejections - 35 USC § 103
Claims 1, 2, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Amin-Sanayei (US Patent No. 6,586,547 to Amin-Sanayei et al.).
Regarding Claim 1, Amin-Sanayei teaches:
a polymer comprising a fluoropolymer (abstract)
The preamble requiring “a polymer for use in a battery cell” is interpreted broadly as a limitation of intended use. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F. 3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). The manner of operating a device does not differentiate an apparatus claim from the prior art. See MPEP § 2114. Amin-Sanayei teaches a fluoropolymer that could be used in a battery cell, compositionally overlapping with known battery cell polymers.
wherein the crystallinity is tunable, with very low crystallinity when the HFP wt% goes above about 30 wt%, and about zero Xc% when the HFP wt% goes above 36 wt% (column 3 line 50 to column 4 line 27; column 10; Table 1, Fig. 1)
wherein the melting temperature is defined by the formula Tm (°C) = 162.16-3.192·(HFP wt%) such that the melting temperature would be below 70 °C when the HFP wt% is greater than 30 wt% (column 4)
While Amin-Sanayei does not provide an explicit example with the crystallinity and the melting temperature both clearly enumerated, it teaches a class of polymers with tunable, very low crystallinity, and melting temperatures defined by an equation such polymers with a very low crystallinity, with HFP wt% of greater than 30, 36, or 40 wt% would have melting temperatures between 0 and 70 °C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). The limitation “as measured by differential scanning calorimetry” is interpreted as a method for confirming a positive structural feature, and would be met by polymers displaying very low crystallinity, such as close to 0%.
Regarding Claim 2, Amin-Sanayei teaches:
glass transition temperatures below the melting temperature, and examples explicitly below 60 °C (column 5)
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]).
Regarding Claim 5, Amin-Sanayei teaches:
VDF/HFP copolymer (column 7 lines 5-22)
Claims 3, 4, 6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Amin-Sanayei (US Patent No. 6,586,547 to Amin-Sanayei et al.) in view of Yang (US 2016/0285063 to Yang et al.).
Regarding Claims 3, 4, and 6, Amin-Sanayei teaches:
a P-VDF-HPF copolymer, reading on Formula I-3 (abstract, Table 1)
Amin-Sanayei does not teach:
the chain length and/or molecular weight
Chain lengths of several thousand, or molecular weights of 2x105 – 1.5x106 g/mol, were common in the art. Yang, for example, regarding a PVDF copolymer that can contain HPF (¶ 0025) for use in a battery, teaches molecular weights of 300,000 g/mol to 1,500,000 g/mol, entirely within the claimed range and chain length. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Yang, including within the claimed range, because Amin-Sanayei does not explicitly teach the MW and they would have looked for conventional ranges for PVDF-HPF copolymer binders in the art.
Regarding Claim 11, Amin-Sanayei does not teach:
the chain length and/or molecular weight
Chain lengths of several thousand, or molecular weights of 2x105 – 1.5x106 g/mol, were common in the art. Yang, for example, regarding a PVDF copolymer that can contain HPF (¶ 0025) for use in a battery, teaches molecular weights of 300,000 g/mol to 1,500,000 g/mol, entirely within the claimed range and chain length. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Yang, including within the claimed range, because Amin-Sanayei does not explicitly teach the MW and they would have looked for conventional ranges for PVDF-HPF copolymer binders in the art.
The limitation concerning the method of production is interpreted as a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[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 [R-1]. In the instant case, Amin-Sanayei in view of Yang appears to teach substantially the same polymer, absent Applicant pointing out a critical positive structural feature that is a consequence of the claimed method steps and that would not be expected in the polymers of the prior art.
Claims 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Amin-Sanayei (US Patent No. 6,586,547 to Amin-Sanayei et al.) in view of Nagasawa (US 2021/0210783 to Nagasawa et al.).
Regarding Claims 12-16, Amin-Sanayei does not explicitly teach:
a battery with cathode, anode, and binder materials comprising the polymer of claim 1 in either the cathode or the anode
use in a battery that is used in electrical devices
Nagasawa, however, from the same field of invention, regarding a fluoropolymer that can include HFP, teaches:
a battery comprising positive and/or negative electrodes with a binder of PVDF copolymer, such as the instantly disclosed one (¶ 0003, 0012)
use in a battery, which are understood to be used in electrical devices (abstract, ¶ 0003-0012, claims 9-10)
Simple substitution of one known element for another to obtain predictable results has been found to be obvious. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). It would have been obvious to use the polymers of Amin-Sanayei as a binder in a cathode and/or anode in a battery for electrical devices, since such fluoropolymers were commonly known to be suitable as binders in the battery arts.
Claims 1, 17, and 18 are (alternatively) rejected under 35 U.S.C. 103 as being unpatentable over Wang (Wang et al. “Ultra-stable all-solid-state sodium metal batteries enabled by perfluoropolyether-based electrolytes.” Nature Materials, vol. 21, Sep. 2022, 1057-1065, and accompanying Supplementary Information).
Regarding Claims 1 and 17, Wang teaches:
a fluoropolymer containing polymer for use in a battery cell (abstract)
with a low crystallinity, including examples wherein the crystallinity is reduced to near zero with the introduction of NaFSI salt, seen in the disappearing peak in the melting region on the right, as well as low crystallinity polymers with greater PFPE proportion (Fig. S1)
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wherein the melting temperature is around 0 °C, and tunable with increasing PFPE fraction, such that it either teaches or renders obvious polymer compositions around EO5-PFPE with melting temperatures at or slightly above 0 °C (Figs. S1 and S3)
with glass transition temperatures around -50 °C (Fig. S1)
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Avataneo (Avataneo et al. “Perfluoropolyether-tetrafluoroethylene (PFPE-TFE) block copolymers: An innovative family of fluorinated materials.” Journal of Fluorine Chemistry 132 (2011) 885-891).
Regarding Claim 18, Avataneo teaches:
PFPE-TFE copolymers with a crystallite fraction of 0.14-0.16 (Table 4), a glass transition temperature of -114 °C, and a melting temperature of 106 °C (Table 3)
Response to Arguments
Applicant’s arguments have been fully considered but do not place the application in condition for allowance. In response to the amendments, new § 112 rejections have been issued, and new art has been applied.
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 Michael Dignan, whose telephone number is (571) 272-6425. The examiner can normally be reached from Monday to Friday between 10 AM and 6:30 PM. If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Tiffany Legette, can be reached at (571)270-7078. Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. 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, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Applicants are invited to contact the Office to schedule an in-person interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
/MICHAEL L DIGNAN/Examiner, Art Unit 1723
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