DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. Applicant's submission filed on 8/5/2026 was received. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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
2. The prior Office Action rejections of claim 1, and thus dependent claims 3, 6-9, and 11-12; claim 11; and claim 12 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement are withdrawn in view of the corrections filed.
3. Claim 1, and thus dependent claims 3, 6-9, 11 and 12, 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.
The prior Office Action outlinedthe requirements with respect to citing support for claim amendments and noting that future claim amendments should be accompanied with comments that specifically point out support (page 3; MPEP 2163, section 3(b); MPEP §714.02; and MPEP § 2163.06); however, Applicant does not cite support for the following amendment made to the independent claim:
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This lower value as amended of 0.199 is actually the value of 0.159 given the multipler (1-x) in the formula, where x = -0.1 < x < 0.2. Thus, with the mulitplier (1-x) of -0.1 < x < 0.2, the amendment presents the lower bound for the range of y as 0.159:
0.199 * (1-x), with x = 0.2 is (0.199)*(1-0.2) = 0.159
Applicant makes no comment as to how the feature is supported, wherein per Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007), is sufficient to make such a rejection:
Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.")
Future claim amendments should be accompanied with comments that specifically point out support for any claim amendments. See MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007)
"Applicant should ... specifically point out the support for any amendments made to the disclosure."
Although more is not required under the circumstances, in the interest of compact prosecution, the following additional analysis is provided. With respect to the ranges that are taught and lower bound values thereof, P61-63 of the instant application PGPUB including at least the following lower bound values for the teachings for the amount of cobalt (“y”):
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Thus, the lower bound values of 0.005, preferably 0.01, and even more preferably 0.05 were contemplated; however, it is not clear on what basis Applicant may now indirectly claim 0.159 as a starting lower bound value for the range. While the value of 0.159 falls within the “more preferable” range of 0.05-0.32, geometric inclusion by itself does not meet the written description requirement. Instead, for changing numerical ranges, the analysis must consider which ranges one skilled in the art would consider supported by the written description, wherein the instant specification provides no disclosure from which a skilled artisan could reasonably discern that the particular claimed subrange indriectly starting at 0.159 was possessed as part of the invention as opposed to Applicant merely selecting a portion of the disclosed genus after the fact, and specifically in an attempt to distinguish the claim with this range from that of the prior art applied.
Additionally, this lower bound value of y has a direct result on the amount of nickel (Ni). Nickel is broadely defined in the instant application as essentially being some positive value (i.e., y + z + w < 1), wherein Ni defined as Ni1-y-z-w in the formula. By requiring the lower bound of cobalt to be the randomly selected 0.159 (by way of the multiplier), this in turn changes the amount of nickel capable of being present. Thus, the amounts of the components are intertwined and changing one variable changes others. There is not a written description for what is in effect a new range for the amount of nickel given the new lower bound for cobalt, with the amount of nickel defined in part by substracting the amount of nickel.
In further support of the above findings, see also the supporting case law:
In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range).
In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).
In re Baird, 348 F.2d 974, 52 CCPA 1747, 146 USPQ 579 (1965). “All claims under this rejection specify a first quench bath temperature range of "from about 40° F to at least as low as about 60° F" or the equivalent. Munt has a specific reason for the 60° F. maximum. Above that quench temperature his finished bristle filaments curl. His 40° lower temperature range limit is a "practical" limit determined by the brittleness of the polypropylene at this stage. He has seen fit to limit his claims to this range. Appellants have not shown a basis for claiming this range. Appellants' brief states the alleged support to be in disclosure of quenching to a temperature between 0° and 80° C. (32° and 176° F.). This is clearly no support for the specific range taught and claimed by Munt and included in all copied claims. Neither is there support by reason of appellants' disclosure, in a specific example, of a specific temperature of 7° C. (44.6° F.).” In re Rodman, 223 F.2d 281, 42 CCPA 951, In re Draeger, 150 F.2d 572, 32 CCPA 1217.
In re Draeger, 150 F.2d 572, 32 CCPA 1217.
Appropriate correction is required. It is noted that future responses filed lacking support citation may be returned with a Notice of Non-Compliance with no new time period for reply.
Claim Rejections - 35 USC § 103
4. Rejection A: The rejection of claims 1, 6-9, 11, and 12 under 35 U.S.C. 103 as unpatentable over Nakayama et al. (US 2016/0380263) in view of Kim et al. (US 2016/0156027), and optionally further evidenced by, or made in view of, either or both of the following references (individually or collectively): Wu et al. (US 2018/0233737) and/or Ozaki et al. (US 2004/0091778) is withdrawn in view of the claim amendments filed and updated below.
Rejection B: The alternative rejection of claims 1, 3, 6-9, and 11-12 under 35 U.S.C. 103 as unpatentable over Rejection A above, and further in view of Kondo et al. (WO 2016/104305) (utilizing US 2017/0352885 family member as a copy and translation thereof) is withdrawn in view of the claim amendments filed and updated below.
5. Rejection 1: Claims 1, 3, and 6-9 are rejected under 35 U.S.C. 103 as unpatentable over Nakayama et al. (US 2016/0380263) and optionally in view of either or both of the following references (individually or collectively): Ozaki et al. (US 2004/0091778) and/or Kim et al. (US 2016/0156027).
Regarding claims 1 and 3, Nakayama teaches a lithium metal composite oxide into or from which lithium ions are dopable or dedopable (Table 1; abstract; entire disclosure relied upon),
wherein the lithium metal composite oxide contains at least nickel (abstract; Table 1) and satisfies all of the following requirements of (1) to (3) (see Table 1; entire disclosure relied upon with further explanation following):
(1) a BET specific surface area is 1.0 m2/g or less,
(2) when an average secondary particle diameter D50 is indicated as X μm, and a calculated particle diameter is indicated as Y μm, the ratio (X/Y) is 1.1 or more and 2.9 or less, where the calculated particle diameter is calculated by the following method,
calculated particle diameter (Y) = 2 x 3 / (BET specific surface area x tapped density (g/cm3)), and
wherein the lithium metal composite oxide satisfies Composition Formula (I) as presented.
Regarding requirements 1-2 and Composition Formula (I):
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is 'anticipated' if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original); MPEP § 2131.03.
Table 1 teaches many examples and comparative examples that anticipate the ranges for the BET specific surface area range claimed and the X/Y ratio claimed (Table 1; P150-153):
Example 1: LiNi0.92Co0.08O2; average secondary particle diameter is 11 µm; BET specific surface area is 0.5 m2/g; tapped density is 2.5 g/cm3 (P150-153); calculated Y is = 4.8 such that X/Y is = 2.29.
Comparative Example 1: LiNi0.92Co0.08O2; average secondary particle diameter is 11 µm; BET specific surface area is 0.4 m2/g; tapped density is 2.2 g/cm3 (P219-224); calculated Y is = 6.8 such that X/Y is = 1.62.
These specific examples do not exactly satisfy Compositional Formula (I) as claimed; however, the overall genus taught for the lithium metal composite oxide of Nakayama is:
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with the amount of taught lithium (“a”) overlapping the range claimed for x; the amount of cobalt (“c”) being close to the claimed range for y, the amount of metal M1 that may include at least one metal that may be those enumerated above including Mn lying inside the ranges disclosed for z (or both of z and w given M1 can be Mn and the other metal elements disclosed), wherein many examples and comparative examples teach values that anticipate the ranges presented for (y + z + w) < 1 (e.g., Example 1: y + z + w = 0.08) (pertinent to claims 1 and 3). It is noted that the range of (y + z + w) < 1 in the chemical formula claimed is in effect just requiring some amount of nickel to be present which is a requirement of the compositional formula of Nakayama where the amount of nickel, defined as Nib, is 0.9 < b < 1 (P24-25; all examples). Additionally, the highest amount of nickel (Ni) in the claimed construct is considered to be 0.881 for x = -0.1; y = 0.199; z and w are each zero:
Li[Li0.1(Ni1-0.199Co0.199)(1--0.1) = Li1.1Ni0.881Co0.219O2.
Regarding the above ranges and components, 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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779; see MPEP § 2144.05, Section I.
Accordingly, the only differences from the ranges presented relative to those taught is the taught amount of cobalt (“b’), or “y” as claimed, with Nakayama teaching the range of 0 < c < 0.1 versus the claimed range of 0.199 < y < 0.221 in combination with the multiplier (1-x) where x = -0.1 < x < 0.2. Thus, with the mulitplier (1-x), this range for y (amount of cobalt) is: 0.159 < y < 0.243:
0.199 * (1-x), with x = 0.2, calculates to 0.159; and
0.221 * (1-x), with x = -0.1, calculates to 0.243.
The lower bound of 0.159 is close to the top of Nakayama’s upper bound of 0.1, such that as noted above, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779; see MPEP § 2144.05, Section I. The same is considered true of the amount of nickel (upper bound calculated via the component requirements), wherein the (intrinsic) upper bound of 0.881 relative to the taught range of 0.9 < b < 1 is considered close to Nakayama’s lower bound of 0.9 such that a prima facie case of obviousness exists. Id.
Nakayama teaches that having c (the amount of cobalt) (Co) in this range, and having b (the amount of nickel) (Ni) in these ranges improves the effects of the invention (P37-38) with no further elaboration on the reasoning, wherein Nakayama does not include any sort of “teaching away” made relative to the amount of cobalt or nickel to other ranges (see MPEP 2144.05, Section III-B, specifically In re Geisler, 116 F.3d 1465, 1471, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997) cited in said section; and MPEP 2145, Section X-D-1 in which “teaching away” requires criticizing, discrediting, or otherwise discouraging a solution claimed - In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004); UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 692, 2023 USPQ2d 448 (Fed. Cir. 2023)].
Accordingly, a prima facie case of obviousness exists for Composition Formula (I) and the ranges claimed, intrsinically or explicitly, based on either overlapping ranges or in a scenario where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779; see MPEP § 2144.05, Section I.
Optional teaching to Ozaki regarding the amount of cobalt or “y” as claimed:
The optimization of the compositional formula of Li(NMCM)O2-type lithium metal oxides for cathode active materials which are optionally doped further by other elements for use within a lithium battery is extremely well studied with each metal element having known effects on the properties of said material within a battery. Ozaki teaches analogous art of the same genus of such lithium metal oxides with the following ranges for the components:
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Ozaki teaches that the amount of cobalt is 0.1 < x < 0.35, and that when the content of cobalt falls below 0.1, a margin of volume variation of a unit lattice, accompanied by charge/discharge, increases, as well as the internal resistance of the battery using same increases (Table 4), wherein when the value exceeds 0.35, the ability of the active material to trap lithium ions is weakened, decreasing a charge/discharge capacity. Ozaki further teaches the more preferably range of 0.15 < x < 0.25 for the amount of cobalt [compare to claimed range of 0.159 < y < 0.243], and teaches many examples that are species examples and anticipate the genus presented in claimed Compositional Formula I (Table 2):
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The batteries of Ozaki change the positive electrode active material composition by altering the amount of nickel relative to the amount of cobalt, the amount of aluminum (“M”) as claimed, along with heating temperatures to see the outcome on battery capacity (Ah) and direct current internal resistance (Table 3):
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Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to explore the upper bound taught by Nakayama of 0.1 for the amount of cobalt within the taught formula (A) (P24-25), and to implement the range taught by Ozaki in which the amount of cobalt is taught as 0.1 < x < 0.35, preferably 0.1 < y < 0.25 given Ozaki teaches the amount of cobalt within such compositions as a known-result effective variable in terms of when the content of cobalt falls below 0.1, a margin of volume variation of a unit lattice, accompanied by charge/discharge, increases, as well as the internal resistance of the battery using same increases (Table 4), wherein when the value exceeds 0.35, the ability of the active material to trap lithium ions is weakened, decreasing a charge/discharge capacity. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Optional teaching to Kim regarding the amount of nickel:
Kim teaches analogous art of the same genus of such lithium metal oxides with the following ranges for the components:
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Kim teaches the amount of nickel (Ni) is 0.6 < x < 1 (P25) and explains that while increasing the amount of Ni can improve capacity and rate property, this allows increases the amount of Ni2+ ions capable of substituting lithium increases, thereby generating nickel (II) which serves as an impurity, has high reactivity and is easily involved in reactions with an electrolyte, thereby reducing structural stability of the lithium metal composite oxide (P58). As the oxide decomposes (due to the structural instability), partial pressure of oxygen increases and side reactions with the solution further increase, thereby exacerbating the structural deformation. Once this occurs, lithium ions cannot be intercalated during discharge and capacity of the battery decrease and lifespan characteristics may be deteriorated (P58-59):
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Accordingly, the amount of nickel, as well as the other specific metals within lithium metal composite oxide compositions, each carry known-results including advantages and disadvantages, wherein optimizing the amount of nickel to include lower values (i.e., in the range of 0.6 – 1.0 versus that taught by Nakayama of 0.9 -1.0) would produce the known results of preventing a large amount of NiO from forming which has the disadvantages described above by Kim (P58-59), while still including a desirable amount of nickel to achieve the desired capacity and rate property as taught by Kim (P58-59), and additionally optionally also made in view of Ozaki. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Nakayama is silent as to the following limitations:
“…(3) the ratio (amount of residual lithium/BET specific surface area) of the amount of residual lithium (mass%) contained in the lithium metal composite oxide to the BET specific surface area (m2/g) is 0.25 or less,
wherein, in a powder X-ray diffraction measurement using CuKα radiation, when a full width at half maximum of a diffraction peak in a range of 20 = 36.7 + 1° is indicated as A and a full width at half maximum of a diffraction peak in a range of 20 = 48.6 + 1° is indicated as B, A/B is 0.88 or more, and
wherein the amount of residual lithium (mass%) contained in the lithium metal composite oxide is calculated from an amount of lithium carbonate and an amount of lithium hydroxide measured by neutralization titration.”
Nakayama shares at least one common inventor with the instant application and is commonly owned, and describes an identical method of making to the instant disclosure method of making (compare P78-110 of the instant application PGPUB to P57-78 of Nakayama; see also Examiner-presented comparison table below). The examples and comparative examples of Nakayama made by the identical method of making have a similar chemical composition and values that anticipate the BET surface area (m2/g), the X/Y ratio, and the composition formula (I). Furthermore, the instant disclosure teaches that if the ratio of lithium atoms in the lithium compound utilized to the total amount (mol) of metal elements contained in the metal composite hydroxide is 1.3 or less, the requirement (3) is easily achieved (P92 of the instant application PGPUB). In the examples and comparative examples, Nakayama keeps the ratio below 1.3 (see at least P147, 161, etc.). Accordingly, it is the position of the Examiner that the lithium metal composite oxides taught by Nakayama (Table 1) intrinsically have the above quoted features given the similar chemical composition, anticipatory features with respect to BET surface area and X/Y ratio, identical method of making, and the lithium atoms relative to metal elements have a ratio of less than 1.3 during the method of making. If Applicant argues against the inherency argument, Applicant should provide evidence within the record to substantiate such an argument:
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
Alternatively, it is noted that the instant application is entirely silent as to what the “A” and “B” diffraction peaks are representative of within the powder X-ray diffraction (XRD) measurement, the meaning of the ratio of A/B, and/or the criticality thereof. Thus, if it can be shown that the lithium metal composite oxides of Nakayama somehow do not intrinsically have the claimed “A” and “B” peaks and a value anticipating the ratio (A/B) range (not conceded), given the discussion of XRD at P29-39 of Nakayama and the preferable crystal structure parameters taught by Nakayama, it is considered an entirely obvious expedient to determine an optimum or workable crystal structure, and thus a corresponding XRD pattern with given peaks and ratio(s), in order to achieve a desired discharge capacity (P29-39). “Where 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is additionally considered obvious to one having ordinary skill in the art at the effective filing date of the invention to minimize any kind of impurity or non-desired, abundance of starting materials (if that is what one or both of the A and/or B peaks are indicative of) in the final lithium nickel composite oxide obtained including lithium carbonate and/or lithium hydroxide which would not attribute to the desired capability of doping/de-doping lithium. The Courts have held that while purer forms of known products may be patentable, the mere purity of a product, by itself, does not render the product unobvious (MPEP 2144.04, Section VII).
With regard to the feature of, “wherein a sulfate radical is 5,000 ppm or less” as determined by the method recited in the final three lines of the claim, a range overlapping with the claimed range is considered intrinsic to the Nakayama reference which shares at least one common inventor with the instant application and is commonly owned, and describes an identical method of making to the instant disclosure (compare P78-110 of the instant application PGPUB to P57-78 of Nakayama). A more detailed analysis of this follows:
Starting Materials
Instant Application
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A comparative table of the methods of making is disclosed below, wherein it is noted that the examples outlined above anticipate the Composition Formula (I) such that the amounts utilized are also the same:
Variable
Instant Application
Nakayama '263
Complexing agent
Ammonium ion donor such as ammonium sulfate, ammonium chloride (P81)
Ammonium ion donor such as ammonium sulfate, ammonium chloride (P61)
pH adjustment
Aqueous solution of alkali metal hydroxide of NaOH or KOH (P82)
Aqueous solution of alkali metal hydroxide such as NaOH or KOH (P61)
Reaction temperature with complexing agent
20-80 °C, preferably 30-70 °C (P83)
10-60 °C, preferably 20-60 °C (P83)
pH controlled range
9 or more and 13 or less (P83)
Range of 9 to 13 (P63)
Reaction conditions
Materials are stirred (P83); reactant tank that allows formed reaction precipitate to overflow for separation can be used (P83)
Materials are agitated (P63) with stirring taught (P133); reactant tank that allows formed reaction precipitate to overflow for separation can be used (P63)
Gases use during reaction
Bubbling of various gases including inert and oxidizing gases can be utilized (P84)
Bubbling of various gases including inert and oxidizing gases can be utilized (P64)
Drying and mixing
Drying and mixing with lithium compound (lithium carbonate) (P90)
Drying and mixing with lithium salt including lithium carbonate (P66-67)
Classification
P91
P68
calcification
600-1100 °C for 3-50 hours (P93-98)
650-850 °C for 3-20 hours (P70-71)
The instant application defines no additional method steps or any other means by which the sulfate radical content is adjusted or defined by, and outside of stating the range of the sulfate radical content is 5,000 ppm or less (P74-75 of the PGPUB) with the specified Examples in Table 1 and the measurement method of the sulfate radical content (P165), the instant application is entirely silent otherwise as to the sulfate radical content. It is noted that the Examples 1-4 of the instant application are carried out according to the method taught, and result in sulfate radical contents in a range overlapping with that claimed (i.e., 5,000 ppm or less).
Accordingly, on this basis as well as the taught method of making of the instant application and the Nakayama '263 method of making being identical to one another as summarized above, there is no reason to believe the identical method of Nakayama would not result in achieving a sulfate radical content range that also overlaps with a sulfate radical range of 5,000 ppm or less as claimed and determined by the method defined in view of the above analysis. 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).
Regarding claim 6, Nakayama shares at least one common inventor with the instant application and is commonly owned, and describes an identical method of making to the instant disclosure (compare P78-110 of the instant application PGPUB to P57-78 of Nakayama). The final examples and comparative examples made by the identical method of making have the same chemical composition and values that anticipate the BET surface area (m2/g), the X/Y ratio, and values that anticipate the composition formula (I). Accordingly, the moisture content range (claim 6) is considered intrinsically provided met by the prior art composition given the analysis above. Examples 1-4 of the instant application are carried out according to the method taught, and result in moisture content for each example in the range claimed (see Table 1 of the instant application).
Alternatively, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to minimize any kind of impurity in the lithium nickel composite oxide obtained including water/moisture which would not attribute to the desired capability of doping/de-doping lithum. The Courts have held that while purer forms of known products may be patentable, the mere purity of a product, by itself, does not render the product unobvious (MPEP 2144.04, Section VII).
Regarding claim 7, Nakayama teaches a positive electrode active material for a lithium secondary battery comprising: the lithium metal composite oxide according to claim 1 (entire disclosure).
Regarding claim 8, Nakayama teaches a positive electrode, comprising: the positive electrode active material for a lithium secondary battery according to claim 7 (entire disclosure).
Regarding claim 9, Nakayama teaches a lithium secondary battery, comprising: the positive electrode according to claim 8 (entire disclosure).
6. Rejection 2: Claims 1, 3, and 6-9 are alternatively rejected under 35 U.S.C. 103 as unpatentable over Rejection 1 above, and further in view of Kondo et al. (WO 2016/104305) (utilizing US 2017/0352885 family member as a copy and translation thereof).
Regarding claims 1 and 3, the rejection of these claims in the “Rejection 1” section above is entirely incorporated into the instant rejection and not repeated here.
As detailed above, Nakayama does not explicitly state that a sulfate radical content is 5,000 ppm or less; however, a range overlapping with this range is considered intrinsic to the Nakayama reference for the reasons detailed in the analysis above and not repeated here.
Additionally, Kondo teaches analogous art of a lithium nickel composite oxide in which the content of sulfate radical in the positive electrode active material is 0.05 mass% or less (= 500 ppm or less) because if over 0.05 mass%, a resulting reduction is capacity is observed in addition to a safety problem (P76-77). 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).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide the Nakayama lithium metal composite oxide with a sulfate radical content of 0.05 mass% or less (=500 ppm or less), a range overlapping with that claimed, in order to avoid the negative issues of a resulting reduction in capacity and a safety problem as taught by Kondo (P76-77). Furthermore, “[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05. Additionally, the discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding claim 6, Nakayama shares at least one common inventor with the instant application and is commonly owned, and describes an identical method of making to the instant disclosure (compare P78-110 of the instant application PGPUB to P57-78 of Nakayama). The final examples and comparative examples made by the identical method of making have the same chemical composition and values that anticipate the BET surface area (m2/g), the X/Y ratio, and values that anticipate the composition formula (I). Accordingly, the moisture content range (claim 6) is considered intrinsically provided met by the prior art composition given the analysis above. Examples 1-4 of the instant application are carried out according to the method taught, and result in moisture content for each example in the range claimed (see Table 1 of the instant application).
Alternatively, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to minimize any kind of impurity in the lithium nickel composite oxide obtained including water/moisture which would not attribute to the desired capability of doping/de-doping lithum. The Courts have held that while purer forms of known products may be patentable, the mere purity of a product, by itself, does not render the product unobvious (MPEP 2144.04, Section VII).
Regarding claim 7, Nakayama teaches a positive electrode active material for a lithium secondary battery comprising: the lithium metal composite oxide according to claim 1 (entire disclosure).
Regarding claim 8, Nakayama teaches a positive electrode, comprising: the positive electrode active material for a lithium secondary battery according to claim 7 (entire disclosure).
Regarding claim 9, Nakayama teaches a lithium secondary battery, comprising: the positive electrode according to claim 8 (entire disclosure).
7. Claim 6 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over:
Rejection 1 as applied to at least claim 1 above; OR
Rejection 2 as applied to at least claim 1 above;
and further in view of Washida et al. (US 2017/0012286).
Regarding claim 6, Nakayama does not explicitly teach wherein a moisture content is 1000 ppm or less as claimed; however, the features are considered intrinsic or obvious as outlined above and not repeated here. Additionally, maintaining the water content in a lithium nickel composite oxide of similar composition to 1,000 ppm or less is a known technique as taught by Washida in terms of maintaining cell characteristics (P111).
Therefore, it would have been obvious to one having ordinary skill in the art to apply this known technique and suitable range to the lithium nickel composite oxide of Nakayama as taught by Washida in order to provide the predictable results of maintaining cell characteristics (P111).
8. Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over:
Rejection 1 as applied to at least claim 1 above; OR
Rejection 2 as applied to at least claim 1 above;
and further in view of Kim et al. (US 2016/0156027) (i.e., the reference is required and not optional).
Regarding claims 11 and 12, Nakayama teaches the following genus of material:
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M1 may be at least one optional metal selected from those claimed, including specifically at least Fe, Cu, Sn, etc., wherein M1 is in the amount of 1-b-c and is thus mathematically in a range of some value slightly less than 0.1 or less (looking at the requirements of the values of b and 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).
It is noted that optional Ozaki also teaches a doping element My including options from th group named including Al, Ti, and Sn and a suitable amount is 0.03 < y < 0.2:
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Nakayama nor Ozaki teach the concurrent doping of one of these elements with W and B (claim 11) or B (claim 12). Kim teaches analogous art of the same genus of lithium metal oxides as Composition Formula (I) with the following ranges for the components:
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Kim teaches that it is known to further dope the same genus of material with at least one element including Fe, Cu, and boron (B) (P26; 93; 96; claim 14). Accordingly, the selection and incorporation of boron (B) within the genus of Nakayama is prima facie obvious given the same genus of material is taught, and it is known to provide at least one element including those recited and including Fe, Cu, and boron (B) (P26; 93; 96; claim 14). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) ("…selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
It is additionally noted that the Examiner has reviewed the disclosure for any preference of the combination of elements and criticality thereof, and the instant application offers no evidence of new or unexpected results commensurate in scope with the claimed construct resulting from the inclusion of the specific combination of elements. Accordingly, there appears to be no criticality whatsoever of this specific combination in the specification as filed.
Response to Arguments
9. Applicant's arguments filed 8/5/2026 have been fully considered. The prior Office Action rejections have been updated to reflect the claim amendments provided.
Applicant argues:
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In response: It appears Applicant is incorrectly not applying the multipler of 1-x to the range presented to arrive at 0.801 or less. The highest amount of nickel (Ni) in the claimed construct is considered to be 0.881 for x = -0.1; y = 0.199; z and w are each zero:
Li[Li0.1(Ni1-0.199Co0.199)(1--0.1) = Li1.1Ni0.881Co0.219O2.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779; see MPEP § 2144.05, Section I. The amount of nickel in terms of the upper bound calculated via the component requirements of 0.881 is considered close to Nakayam’s lower bound of 0.9 for the taught range of 0.9 < b < 1 for the amount of nickel (Ni) such that a prima facie case of obviousness exists. Id. Accordingly, Nakayama is able to stand on its own in terms of a single reference obviousness rejection, and no longer requires any additional teaching references to meet the claimed construct (although some optional teaching references are applied for compact proseuction purposes).
As to Applicant’s assertion that Ozaki does not teach the cobalt requirement, Ozaki explicitly optimizes the amount of cobalt and has many compositonal examples that are species examples that anticipate the genus presented in the instant claim 1 for Composition Formula (I). The updated rejection above outlines these findings within Ozaki, and they are repeated below:
The optimization of the compositional formula of Li(NMCM)O2-type lithium metal oxides for cathode active materials which are optionally doped further by other elements for use within a lithium battery is extremely well studied with each metal element having known effects on the properties of said material within a battery. Ozaki teaches analogous art of the same genus of such lithium metal oxides with the following ranges for the components:
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Ozaki teaches that the amount of cobalt is 0.1 < x < 0.35, and that when the content of cobalt falls below 0.1, a margin of volume variation of a unit lattice, accompanied by charge/discharge, increases, as well as the internal resistance of the battery using same increases (Table 4), wherein when the value exceeds 0.35, the ability of the active material to trap lithium ions is weakened, decreasing a charge/discharge capacity. Ozaki further teaches the more preferably range of 0.15 < x < 0.25 for the amount of cobalt [compare to claimed range of 0.159 < y < 0.243], and teaches many examples that are species examples and anticipate the genus presented in claimed Compositional Formula I (Table 2):
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The batteries of Ozaki change the positive electrode active material composition by altering the amount of nickel relative to the amount of cobalt, the amount of aluminum (“M”) as claimed, along with heating temperatures to see the outcome on battery capacity (Ah) and direct current internal resistance (Table 3):
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Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to explore the upper bound taught by Nakayama of 0.1 for the amount of cobalt within the taught formula (A) (P24-25), and to implement the range taught by Ozaki in which the amount of cobalt is taught as 0.1 < x < 0.35, preferably 0.1 < y < 0.25 given Ozaki teaches the amount of cobalt within such compositions as a known-result effective variable in terms of when the content of cobalt falls below 0.1, a margin of volume variation of a unit lattice, accompanied by charge/discharge, increases, as well as the internal resistance of the battery using same increases (Table 4), wherein when the value exceeds 0.35, the ability of the active material to trap lithium ions is weakened, decreasing a charge/discharge capacity. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Accordingly, the arguments are not persuasive as Applicant’s claim allows for “nickel-rich” compositions with nickel at 0.881; compositions having amounts of cobalt at a lower bound of 0.159 (close to the top of Nakayama’s upper bound of 0.1 such that this range is also held prima facie obvious), wherein additionally, the optionally applied Ozaki reference further teaches the amount of cobalt with such compositions as a known-result effective variable.
Applicant argues:
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In response: Nakayama can now stand alone in rejecting the claimed limitations as obvious as a single reference under 35 U.S.C. 103; accordingly, there is no modification needed to meet the claim.
Arguendo, even if the amount of nickel and/or cobalt did need modifying, it is not clear to the Examiner for what reason(s) Applicant believes there would not be a reasonable expectaction of success in terms of simply altering the amount of nickel from 0.9 down to 0.881, which is well within the ambit of one having ordinary skill in the art, to achieve the same lithium metal oxide claimed having all of the strutural requirements recited but including an extremely minor alteration in the specific amount of element(s) utilized. There is no objective evidence or rational underpinning in the record demonstrating why one of ordinary skill in the art would not have a reasonable expectaction of achieving the resulting lithium metal composite oxide satisfying all requirements claimed.
Applicant comments:
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In response: The Examiner respectfully does not have any questions regarding the amendment or the appication, nor does the Examiner find that an interview prior to the mailing of this Office Action would result in expediting the allowance of the application or serve to advance prosecution of the application given the issues under 35 U.S.C. 112(a)/first paragraph in view of the amendments filed, as well as the updated rejections of record. If after receipt of this Office Action, if Applicant has any questions on the Examiner’s findings or application of prior art, Applicant is welcome to schedule an interview to discuss the application prior to filing a response.
Conclusion
10. The prior art made of record and not presently relied upon is considered pertinent to applicant's disclosure.
As previously noted in the prior Office Action and repeated in the instant Office Aciton, the optimization of the compositional formula of Li(NMCM)O2-type lithium metal oxides for cathode active materials which are optionally doped further by other elements for use within a lithium battery is extremely well studied with each metal element having known effects on the properties of said material within a battery. The following additional references provide such teachings:
Wu et al. (US 2018/0233737) teaches the following with respect to said materials and ranges that also overlap with those claimed (P4, 48-49):
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11. 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.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BILLIET whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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, Ula C Tavares-Crockett can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BILLIET/Primary Examiner, Art Unit 1729
