DETAILED ACTIONs
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 .
Response to Arguments
Applicant's arguments filed 04/29/2026 have been fully considered but they are not persuasive.
Examiner utilizes the PGPUB paragraphs when referring to the instant specification.
Applicant argues the instant specification provides adequate written description for one having ordinary skill in the art to produce an invention with a positive electrode mixture having two or more metal oxides in an amount of 0.1wt%-0.5wt% and a metal fluoride material whereby the coverage of the metal oxide and metal fluoride coverage is 30%-90% based upon paragraphs 0076-0078, 0082, 0093. Examiner does not agree. Applicant can only attempt to argue support for the instant claimed invention filed 04/28/2026 by picking and choosing different paragraphs throughout the specification and trying to piecemeal an invention together through loose readings of the passages. This is not how one having ordinary skill in the art would read the originally filed invention. Applicant not only picks and chooses what paragraphs they want considered to support, but appears to omit teachings such as the originally filed such as paragraph 0084 that discusses the natural conversion of metal oxide to metal fluoride material.
35 U.S.C. 112 (a) rejection recites, “The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.“: The claims combine at least two preferred and one non-preferred embodiment to arrive at the combination of a two metal oxide and metal fluoride surface coated particle. The claim scope requiring a combination of preferred and non-preferred embodiments, without explicit teaching to the combination, militates against the finding of the original specification providing disclosure that reasonably conveys to one skilled in the art that the applicant had possession of the claimed invention.
Examples 1-36 teach a single metal oxide coating [Fig 3] and Comparative Examples 25-66 teach a coating with metal fluoride; at no point is there an explicit example of a two metal oxide coating or a two metal oxide coating with a metal fluoride coating exemplified.
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Paragraph 0078 recites “in the oxide coating” and is silent to teach the desirable range of coating for a two-metal oxide and fluoride metal coating. The clause of “When the coverage exceeds 90%, the oxide coating inhibits intercalation of Li ions, and the interfacial resistance increases” is true for the oxide coating but may not be true for the oxide and fluoride coating – there is not enough written description for one having ordinary skill in the art to know this about an oxide and fluoride coating electrode material based upon the originally filed specification.
Examiner agrees with applicant that paragraph 0093 provides support for having a coated electrode with mixing oxide with at least one metal fluoride material on the surface of the positive electrode active material. This is a general teaching and not specific to provide written description to the specifics of the dual metal oxide, metal fluoride surface coating as claimed. In the instant arguments, applicant is picking and choosing which attributes apply from the metal oxide system to the metal oxide and metal fluoride system. Examiner interprets the arguments of application as logic that can be summarized as, “What is true for the oxide system can also be true for the two metal oxide + metal fluoride coating claimed,” which is not sufficient for written description as it does not adequately reveal the invention as claimed to one of ordinary skill in the art at the time of filing. Additionally, applicant argues “the present application teaches ‘covering’ includes an oxide and a fluoride” in paragraph 0093 however paragraph 0084 of the instant specification appears to teach the oxide converts to fluoride, much in the same manner as the prior art rejection below, and is not a pre-coated formation of fluoride. There is no specific example of a pre-coated oxide and fluoride particle and therefore arguments to the coating method are not persuasive. Applicant’s arguments pertaining to the interpretation of “coated” further militate against a finding of adequate written description since no recitation of the method forming the structure of the claim is positively recited and appears to teach a different method of formation than presented in the arguments.
Applicant argues the prior art does not positively recite the positive electrode mixture to have the covered percentage: The covered percentage is determined based upon the wt% of the metal oxide material. The prior art teaches the same material and overlapping range for the wt% thereby obviates the claimed range for the coverage of the particle.
Instant specification [0077] teaches the coverage is calculated …the coating amount of 0.1wt% corresponds to the coverage of 30%, the coating amount of 0.5wt% corresponds to 50%, and the coating amount of 1wt% corresponds to 90%. The prior art teaches a metal oxide material ZrO2 [0031] in an amount of 0.1-5.0 wt% [0032] which will convert a portion of the ZrO2 to a Fluorinated metal version. The 0.1wt% would correspond to 30% coverage, 0.5wt% to 50% and 1wt% to 90% as they are the same material as that of the instant claimed invention. Again, if this isn’t a universal truth, then the 112a rejection is strengthened as the invention as filed would have support for the coating coverage of an oxide metal and fluoride metal system. Examiner treats the prior art as having met the limitation of the coverage because of the overlapping range of the wt% and its direct link to coating amount.
Applicant argues the response to arguments pertaining to “coated” meaning pre-formed: Addressing the argument does not directly overcome or argue the rejection presented. The argument is moot because the instant specification does not provide support for a pre-formed coated material as argued – instant paragraph 0084 recites metal oxide material is transformed into metal fluoride during processing the battery in an HF environment, substantially in the same manner as the prior art.
Claims are rejected for the material they present. The instant claim is a product claim. The prior art teaching a metal oxide material that is in connection with an HF system would convert a portion of the metal oxide to metal fluoride over time and therefore eventually meet the claimed scope. “pre-formed” versus “during operation” is not a persuasive argument because it is not positively claimed, the instant specification does not have support for it, and because the argument is generally based upon intended use – the prior art could operate a battery and then rejuvenate the cell for utilization in a secondary pack with similar charge/discharge capacity batteries in order to improve the overall characteristics of the pack. As can be seen, the intended use has changed, but the structure of the instant claim are met by the prior art.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant argues support for amendment to 90% or less is found in paragraph [0077], reproduced herein:
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Figure 4 and Figure 5 of the instant specification show that no example or comparative example includes both an oxide material and fluoride material. [0084] confirms the examiner’s previous position that oxide materials convert to fluoride during operation of the battery as it interacts with electrolyte during charging and discharging to change composition. The amendment to “coated” is made and argued to be a particle that is physically coated, and not chemically converted. This is supported by paragraph [0093] which states
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Examiner does not find enough evidence that the applicant contained the full scope of the instant claim at the time of filing. There is no explicit example showing the combination of an oxide and fluoride metal material on the positive electrode – not formed via chemical reaction during operation [Applicant arguments Pg 6-7]. There is embodiment of the two or more metal oxides and metal fluoride and there is no recitation of the coverage of such; the recitation of coverage is for oxide material as shown in paragraph [0078]; reading paragraph 0078 without considering the examples and paragraph 0077 and 0079 would be to take the specification out of context. It is new matter to infer a relationship from an oxide coating to and oxide plus fluoride coating.
En arguendo, to arrive at a finding of support for the instant claimed invention, one would need to hunt and peck around the specification and select generic statements to infer that one could possibly invent the claimed scope. The examiner asserts this is not sufficient to meet the requirement to positively disclose the invention at the time of filing such that one having ordinary skill in the art at the time of invention would know how to make and reproduce the invention. Based on the instant specification as a whole, one having ordinary skill in the art at the time of filing would not have considered the scope of the instant claim as the invention being discussed and covered; therefore a written description – new matter rejection is issued.
For the sake of compact prosecution, a rejection is attempted to meet the claims as recited in light of the new-matter situation present.
Claim Rejections - 35 USC § 103
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(s) 1, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al (PGPUB 2016/0049645) and further in view of Jin et al (PGPUB 2016/0181593).
Claim 1: Zheng teaches a cathode material for lithium-ion secondary battery [Abstract]. The battery comprises a negative electrode, positive electrode, separator, and an electrolyte with solution [0064, 0099]. The positive electrode is taught to be
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When M is Aluminum, instant claim A and B are met; thus d and e are calculated as one entity. The prior art formula overlap with instant claim empirical formula. The surface is taught to be coated with a Lewis base exemplified to be ZrO2 [0031] in an amount of 0.1-5.0 wt% [0032].
Claim as amended recites the inclusion of two or more oxides on the surface of the positive electrode active material.
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. Zheng teaches the selection of materials to include at least aluminum oxide, magnesium oxide, and titanium oxide in addition to zirconium oxide. MPEP 2144.06 supports that it is obvious to combine equivalents known for the same purpose. Example 9 explicitly teaches a combination of MO3 +Al2O3.
Zheng teaches the amount of metal oxide material to be in the range of 0.1-5% the weight of the powder particle [0032] whereby the powder particle comprises the bulk/base component and coating [0011-0013]. The prior art further teaches the Lewis base to act as HF phagocytic agent to reduce acid at the interface between the cathode material and the electrolyte and thereby increase the protection of the cathode material from corrosion [0031]. The recited range of 0.1-5% overlap with the instant claim range of 0.1wt%-5wt%; MPEP 2144.05. Additionally, the amount of oxide material is dependent on the oxide selection from the prior art teaching of [0031] and routine experimentation to arrive at the desired effect of reducing the acid interaction at the interface between the cathode and the electrolyte. The core-shell structure of the particle used to form the cathode material is selected to be conductive to lithium ions or electrons, avoid a decrease of capacity, and rise of inner resistance [0009]. The coverage of the oxide to positive electrode active material is further considered a result-effective-variable of the amount of oxide and the size of the particle. Zheng teaches the oxide to be added in an amount of 0.1wt%-5wt% [0031] and the powder particle is a sphere having a particle diameter of 0.5-50µm [0033] and a specific surface area of less than 3m²/g [0034]. The prior art teaches the rationale for tailoring the specific surface area and particle size [0034]. The prior art teaches a motivation to produce a cathode material with high nickel cathode material having high capacity, good thermal stability, and long cycling life whereby suppression of resistance increase is observed [0043]. Although Zheng is silent to perform a TEM and EDX imaging and calculation, the prior art obviates the coverage of oxide to positive electrode active material based upon the recitation of amount of oxide addition and on the obvious to optimize to arrive at a resulting cathode that has long cycle characteristics and desirable discharge properties.
Zheng is silent to recite LiOH. Zheng is silent to teach the inclusion of a zirconium fluoride material.
Jin teaches a cathode active material for use in a lithium secondary battery [Abstract]. Jin reveals that it is well known to utilize an electrolyte that HF is generated which is a cause of degradation of an electrode [0005]. The stability of the electrode is decreased when impurities form on the surface of the cathode active material and HF wherein impurities naturally occurring are LiOH [0008, 0015]. The instant recitation of LiOH in the positive electrode mixture is met by the naturally occurring reaction.
Jin teaches a lithium metal oxide cathode [0011] to have a coating of ZrO2 which is manufactured to fluorinate a portion of the oxide to include ZrF4 [0019]. The amount of the surface coating between oxide and fluorine is dependent on the cathode active material selection and tailored to have high enough quantity that a protective feature is detected, but not too high to decrease the specific capacity [0021]. Jin establishes a relationship between protection from HF and specific capacity; the specific amount of oxide and fluorine material on the surface is routine optimization that is obvious based upon the relationship guidance provided by the prior art. MPEP 2144.05 II. The amount of coverage of oxide coverage to the positive electrode is a result effective variable. The changing of the coverage of oxide will also have a direct effect on the amount of the oxide with respect to the positive electrode active material.
Zheng establishes a surface coating of ZrO2 [Zheng: 0031] in an amount of 0.1-5.0 wt% in relation to the positive electrode active material [Zheng: 0032].
Jin provides motivation to tailor the total amount of coating material: The amount of the surface coating between oxide and fluorine is dependent on the cathode active material selection and tailored to have high enough quantity that a protective feature is detected, but not too high to decrease the specific capacity [Jin: 0021]
Jin provides the motivation to adjust the proportion of oxide and fluoride in the coverage of the positive electrode material. The amount of ZrF4 improves the stability of the cathode in HF environments. When the amount of F is too small, it is difficult to obtain desired effects and when it is too large, specific capacity may be reduced [Jin: 0021].
It would have been obvious to one having ordinary skill in the art at the time of invention/filing to modify the surface ZrO2 of Zheng to include a portion converted to ZrF4 as taught by Jin in order to increase the stability of cathode materials in an HF environment [0009].
The prior art provides motivation to produce a highly stable cathode material with desirable electrical properties as recited above. In the pursuit of desirable results through routine experimentation, the coverage of oxide to positive electrode active material being 30% to 50% would be within the range of resulting products.
2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-07.2022]
II. ROUTINE OPTIMIZATION
A.Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In reKulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
it is considered obvious to one having ordinary skill in the art to pre-make a positive particle with fluoride material and oxide material since the prior art obviates a final product that comprises both materials – one having ordinary skill in the art in the pursuit of creating a simpler to create positive electrode material would find it obvious to add a metal oxide and metal fluoride material as an obvious variant to forming a metal fluoride amount from a metal oxide material.
Claim 5: Zheng and Jin are silent to explicitly recite the amount of LiOH in the positive electrode active material.
LiOH formation is a natural phenomenon within the system of the prior art. Upon formation of the battery secondary cell of the prior art, the LiOH concentration would be very low in the positive electrode active material. As the cell ages, the LiOH concentration will naturally increase whereby the instant claimed range of LiOH will be met. Upon further aging, the cell will predictably have a higher concentration of LiOH whereby the claim will not be met. The instant claim is drawn to a natural time period which does not patentably distinguish the structure of the instant claim from that of the prior art since it is predictable the prior art battery would naturally reach the range claimed by the applicant.
Claims 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al (PGPUB 2016/0049645) and Jin et al (PGPUB 2016/0181593), as applies to claim 1 above, and further in view of Toyama et al (PGPUB 2016/0099460).
Claim 5: Zheng is silent to teach the amount of LiOH in the positive electrode active material.
Toyama teaches a positive electrode particle of LiNiCoMO2 which is nickel rich [abstract]. It is discovered that the decomposition of the electrolyte solution caused by contact between LiOH and the electrolyte solution appears to reduce the charge-discharge cyclability the positive electrode material based upon LiOH interaction with HF [0027]. The total amount of free lithium is controlled to have LiOH with a 0.08% by weight [0077]. It would have been obvious to one having ordinary skill in the art at the time of invention/filing to modify the amount of free lithium of Zheng to include LiOH being controlled within the positive electrode material as taught by Toyama in order to provide a positive electrode with low resistance, high capacity, and high-charge-discharge cyclability [0017].
Toyama provides support for creating battery chemistry that would naturally produce an amount of LiOH to be between 0.5wt% and 2.0wt% through storage, aging, or use.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 STEPHEN J YANCHUK whose telephone number is (571)270-7343. The examiner can normally be reached M-Th 10a-8p.
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, Nick 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.
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/STEPHEN J YANCHUK/Primary Examiner, Art Unit 1752
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