DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/28/2026 has been entered.
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 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.
3. Claim 1, and thus dependent claims 3, 6-9, and 11-12; claim 11; and claim 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.
A) Claim 1 was amended as shown below:
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Applicant makes no comment as to support of the above amendment with respect to the newly added range, and there does not appear to be a written description of the limitation. Accordingly, per Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007), this is all that it is needed to make such a rejection under the circumstances:
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 is noted:
The written description teaches the original range of y + z + w < 1 (P15 of the PGPUB), as well as (y + z + w < 0.5) (P17; claim 3), and more preferably 0.3 or less (P70). A minimum value for the range of y + z + w is never disclosed, and does not appear contemplated by the inventors at the effective filing date that is fully commensurate in scope with the Composition Formula (I) as claimed. It is noted that the “more preferable” range of 0.3 or less (P70) only overlaps minorly with the presented range of 0.249 < y + z + w < 0.491 demonstrating that the presently claimed range was not contemplated by the inventors, and is not commensurate in scope with that which is presented in the specification for the desirable range.
It appears Applicant is attempting to add end points to this range for the Composition Formula 1 as defined on the basis of Examples 2 and 4 in Table 1 of the specification:
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Example 2: Li1.021Ni0.498Co0.216Mn0.256Al0.0078O2
Example 4: LiNi.0.751Co0.199Al0.05O2
The examples relied upon do not match the vast scope of what Composition Formula 1 may read on and thus violates the written description. For example, Examples 2 and 4 for which Applicant amends the range within the claim each require M to be present, whereas the claim allows for Mw where w may be zero (e.g. “0 < w < 0.1) ; and M to specifically be aluminum (Al), whereas the claim allows for M to be either non-existent or one or more of the many options recited. These are just two considerations of how the species Examples 2 & 4 do not correlate to the broad ranges presented for the genus claimed. Accordingly, the broad scope of Composition Formula 1 does not match these species examples, given Composition Formula 1 does not require M to be present, and further allows M to be any of Fe, Cu, Ti, Mg, Al, W, B, Mo, Nb, Zn, Sn, Zr, Ga, and V. The disclosure could be said to adequately support the species examples of Examples 2 & 41;
Example 2: Li1.021Ni0.498Co0.216Mn0.256Al0.0078O2
Example 4: LiNi.0.751Co0.199Al0.05O2
however, these species do not lend themselves to then adjusting the range for (y + z + w) with the end points presented for the broad Compositional Formula (1) which allows for many other options and embodiments:
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Accordingly, the Examiner does not find that the Applicant was in possession of the minimum end point for the range for y + z + w as defined in the claim for the broad scope of Compositional Formula 1. "[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. Ariad, 598 F.3d at 1353–54 ('[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.' (internal quotation marks omitted)." MPEP 2163. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
See also General Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372, 126 USPQ2d 1556, 1560 (Fed. Cir. 2018) (emphasis mine) in which it was held that the written description support for the claimed concentration is lacking where the specification discloses a range of optical densities and several discrete values in the range with no explicitly defined maximum concentration; and even if the specification may be read to convert each disclosed value into a range, there is insufficient written description for the entire claimed range where the disclosed range minimally overlaps with the claimed range). This case law is especially pertinent to the instant fact pattern:
Here, the specification discloses a range of optical densities and several discrete values within that range. The specification broadly states that in one embodiment the particles have an optical density of at least “about 1 O.D.,” J.A. 3164, which GHC argued corresponds to less than 1 × 1011 particles per ml. The specification does not expressly identify a maximum concentration, and GHC did not argue any upper limit to the range disclosed other than “some value greater than 9.31 × 1011.” J.A. 804. Several of the discrete values provided in the specification are even higher than that. As we stated in Purdue Pharma, “one cannot disclose a forest in the original application, and then pick a tree out of the forest and say here is my invention.” Purdue, 230 F.3d at 1326. The disclosure of a range of concentrations from less than 1 × 1011 particles per ml to some unidentified maximum, does not provide written description support for the claimed concentration of “about 6.6 × 1011 particles per ml,” nor does the disclosure of particular discrete values within that range, none of which are the claimed value.
Likewise to the instant application, there is no disclosed minimum value for the y + z + w range presented; only a taught maximum such that the disclosure does not support the newly added minimum endpoint. Likewise, to the above case law, the disclosed range of 0.3 or less (P70) overlaps minorly with the claimed range of 0.249 < y + z + w < 0.491 demonstrating that the presently claimed range was not contemplated by the inventors, and is not commensurate in scope with that which is presented in the specification for the desirable range.
As an alternative method to view the above fact-finding pattern, if Applicant had a disclosure supporting only the following two species (Li1.021Ni0.498Co0.216Mn0.256Al0.0078O2 + LiNi.0.751Co0.199Al0.05O2) (with no genus taught), Applicant could not then use these species to add a new limitation for the genus Composition Formula (I). In other words, the species do not support the genus, or changes to the compositional formula of the broad genus that reads on many embodiments outside of the two species examples.
Newly added claims 11 and 12 then add on requirements to the composition formula for what M constitutes which is also not supported in the context of the newly added range and what M is in the examples.
B) On the basis of the case law cited above [General Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372, 126 USPQ2d 1556, 1560 (Fed. Cir. 2018)] which is closer to the fact pattern of the instant application than Ex parte Jackson, 110 USPQ 561 (Bd. App. 1956) (see Claim Analysis section in section 2 of prior Office Action), the newly added minimum value for the sulfate radical range of 1,000 ppm or more for the sulfate radical content (added to the claim set on 1/22/2026) is also rejected for failing the written description requirement. In general, the instant application appears to want to minimize sulfate radical content on the basis of P74-75 which only recites an upper bound limited range of “preferably 5,000 ppm or less.” There is no actual teaching or motivation in the instant application to positively include sulfate radicals, or any described benefits derived therefrom. Accordingly, for the same reasons and on the basis of the same fact pattern as General Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372, 126 USPQ2d 1556, 1560 (Fed. Cir. 2018), the addition of a minimum end point to the range for the sulfate radical content violates the written description.
Applicant alleged in the response that Nakayama et al. (US 2016/0380263) as previously and presently applied below in prior art rejections, sharing a common inventor and assignee, teaches the following (page 5 of the response filed 1/22/2026):
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The Examiner addressed this allegation in the Final Rejection mailed 1/30/2026 on pages 14-15 and requested clarification of the above argument given the Examiner could not find any factual foundation for such an allegation within the Nakayama reference; however, given the range including the endpoint of “1,000 ppm or more” is still present in the application, and the reference alleged to teach that “the lower the sulfate radical content the better” shares a common inventor and assignee, this allegation effects whether a best mode rejection should be made. Accordingly, clarification is once again requested unless the minimum endpoint of 1,000 ppm is removed from the claim which the Examiner recommends doing as it is not supported and provides additional problems in view of Applicant’s prior arguments.
Appropriate correction is required.
4. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claim 3, claim 11, and claim 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 was amended to define 0.249 < y + z + w < 0.491. Claim 3 recites a broader range of: y + z + w < 0.5 with no lower bound and a higher upper bound. A broader range cannot follow a narrower range; the claim is rendered indefinite.
Claims 11 and 12 define what “M” may represent. M is defined in the parent claim as Mw with “w” defined as 0 < w < 0.1. Thus, M is not required within the parent claim. Accordingly, claims 11 and 12 are each indefinite because the parent claim does not require M to be present such that further defining the scope and requirements of M, without requiring its presence in these claims, renders these claims indefinite.
Appropriate correction is required. Claim 3 will not have a prior art rejection in view of the issue above.
Claim Rejections - 35 USC § 103
6. The rejection of claims 1, 3, and 6-9 under 35 U.S.C. 103 as unpatentable over Nakayama et al. (US 2016/0380263) is withdrawn in view of the claim amendments filed.
The alternative rejection of claims 1, 3, and 6-9 under 35 U.S.C. 103 as unpatentable over Nakayama et al. (US 2016/0380263) 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.
7. “Rejection A”: Claims 1, 6-9, 11, and 12 are rejected 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).
Regarding claim 1, 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 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”) overlapping with the range claimed 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). 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).
Accordingly, the only difference from the ranges presented relative to those taught is the taught amount of nickel (“b’), or (y + z + w) as claimed, with Nakayama teaching the range of 0.9 < b < 1 versus the claimed range of 0.249 < (y + z + w) < 0.491 in combination with the multiplier (1-x) where x = -0.1 < x < 0.2. Nakayama teaches that having b (the amount of nickel) (Ni) in this range improves the effects of the invention (P37) with no further elaboration on the reasoning, wherein Nakayama does not include any sort of “teaching away” made relative to the amount of nickel to lower values than those in the range of 0.9 < b < 1 (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)].
The optimization of the compositional formula of Li(NMCM1)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. 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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These facts and the well-studied compositional formula of Li(NiCoMnM)O2 metal oxides and molar ratio of nickel specifically are further evidenced by, or made in view of, the either of the following references (individually or collectively):
Wu et al. (US 2018/0233737) teaches or provides evidence of the same (P4, 48-49):
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Ozaki et al. (US 2004/0091778) teaches or provides evidence of the same:
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The above batteries of Ozaki change the positive electrode active material composition by altering the amount of nickel relative to the amount of cobalt along with heating temperatures to see the outcome on battery capacity (Ah) and direct current internal resistance.
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 evidenced by, or made in view of, Wu and/or 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 the same 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 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 1,000 ppm or more and 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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Nakayama '263
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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 (which include an example of 1,000 ppm) 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., 1000-5,800 ppm).
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 1,000-5,000 ppm 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).
Regarding claims 11 and 12, the parent claim allows “M” to be zero such that M is not required. Accordingly, claims 11 and 12 are met for this reason.
Alternatively, in the interest of compact prosecution, 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. Nakayama does not teach the option of “W and B” (claim 11) or “B” (claim 12). 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. It is further noted that the optional reference to Wu also teaches the inclusion of boron (P7, 19).
8. “Rejection B”: Claims 1, 6-9, and 11-12 are alternatively rejected 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).
Regarding claim 1, the rejection of claim 1 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 1,000 ppm or more and 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 because if over 0.05 mass%, a resulting reduction is capacity is observed in addition to a safety problem (P76-77). Although in terms of mass%, the same thing is being optimized (the content of sulfate radical), just in different terms. 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, 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).
Regarding claims 11 and 12, the parent claim allows “M” to be zero such that M is not required. Accordingly, claims 11 and 12 are met for this reason.
Alternatively, in the interest of compact prosecution, 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. Nakayama does not teach the option of “W and B” (claim 11) or “B” (claim 12). 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. It is further noted that the optional reference to Wu also teaches the inclusion of boron (P7, 19).
9. Claim 6 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over:
Rejection A as applied to at least claim 1 above;
Rejection B 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).
Response to Arguments
10. Applicant's arguments filed 4/28/2026 have been fully considered but they are not persuasive.
Applicant argues:
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In response: The feature as newly amended is addressed in the updated rejection of record in view of the newly cited reference(s) relied upon to address the amendment made and not repeated here, as well as a rejection under 35 U.S.C. 112(a)/first paragraph.
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 and 35 U.S.C. 112(b)/second paragraph in view of the amendments filed, as well as the newly cited reference(s) required to meet the limitation of at least claim 1 as amended. 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
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached on (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 BARROW/Primary Examiner, Art Unit 1729
1 Chemical Formulas calculated out by Examiner using the values shown in Table 1.
Prosecution Insights