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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/22/2026 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 Analysis
2. The claim set of 12/11/2023 included new claim 10 with a range for the sulfate radical content of 1,000 ppm or more and 5,000 ppm or less. The Final Rejection mailed 5/24/2024 rejected this range as failing the written description requirement under 35 U.S.C. 112(a)/first paragraph. In the instant claim set, Applicant reintroduces the limitation. The Examiner has reconsidered this position on the basis of Ex parte Jackson, 110 USPQ 561 (Bd. App. 1956) which found that the specification, originally describing examples of 4%, 15%, and 20% of cadmium provided support for a range of 4% to 20%. See also In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) which was amended to include a narrower range from the broader range on the basis of specific embodiments within the range.
The instant application teaches:
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Within Table 1, there is an example of 1,000 ppm sulfate radical (SO4) content, as well as other examples within the range now claimed (e.g., Example 1, 2,000 ppm; Example 2, 2,400 ppm SO4):
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Accordingly, the range is considered supported in view of P74-75 and the Table 1 examples.
That being said, Applicant cannot persuasively argue unexpected results for this new range without the claim being rejected under 35 U.S.C. 112(a)/first paragraph because Applicant would be alleging that the newly claimed range is a different invention than the originally disclosed range since the newly claimed range has properties unique from the originally disclosed range. In other words, an amended range having new end points within an original range is not new matter by itself; however, a successful showing of unexpected results regarding a narrower range than was originally claimed/taught would bring forth a new matter issue, as it would show that the newly claimed range is a different invention than the originally disclosed range. See MPEP 2163(I)(B) and case law discussion below. Specifically, unexpected results establishes that a small range is a different invention than the broad range such that as In re Wertheim (citation below) points out, if the broad and narrow ranges are different inventions the broad range does not describe the narrow range. With respect to the above, the following case law is applicable to this position:
In re Wertheim, 541 F.2d 257 (1976). “Where it is clear, for instance, that the broad described range pertains to a different invention than the narrower (and subsumed) claimed range, then the broader range does not describe the narrower range. In re Baird, 348 F.2d 974, 52 CCPA 1747, 146 USPQ 579 (1965); In re Draeger, 150 F.2d 572, 32 CCPA 1217, 66 USPQ 247 (1945).
These comments are made for clarity of the record.
Claim Rejections - 35 USC § 102/ § 103
3. The rejection of claims 1, 3, and 6-9 under 35 U.S.C. 102(a)(1) as anticipated by Nakayama et al. (US 2016/0380263) is withdrawn. It is noted the rejection was presented as a 102/103 rejection, with the rejection under 35 U.S.C. 103 as obvious over Nakayama being maintained and moved under the appropriate section header below.
Claim Rejections - 35 USC § 103
4. 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 maintained.
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 fully anticipate all requirements above. Some non-limiting example calculations are below (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.
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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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 3, Nakayama teaches many examples and comparative examples that anticipate the feature claimed (see Table 1). As non-limiting examples, example 1 and comparative example 1 as outlined above both have (y + z + w) = 0.08.
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).
Claim Rejections - 35 USC § 103
5. The alternative rejection applied to claim 5 (the subject matter of claim 5 now incorporated into claim 1) is maintained; thus:
Claims 1, 3, and 6-9 are alternatively 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).
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 3, Nakayama teaches many examples and comparative examples that anticipate the feature claimed (see Table 1). As non-limiting examples, example 1 and comparative example 1 as outlined above both have (y + z + w) = 0.08.
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. The alternative rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (US 2016/0380263) as applied to at least claim 1 above, and further in view of Washida et al. (US 2017/0012286) is maintained.
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
7. Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive.
Applicant argues:
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In response: The Examiner cannot find anywhere within the Nakayama reference a teaching that “In fact, Nakayama reflects the general technical understanding that the lower the sulfate radical content, the better” as argued by Applicant (emphasis mine). A screenshot below searching the Nakayama reference for such a teaching or even the term “sulfate radical” produces zero hits within the document:
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“While there is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art, it is improper to affirmatively and knowingly misrepresent material facts regarding the prior art.” TransWeb, LLC v. 3M Innovative Props. Co, 812 F.3d 1295 (Fed Circ. 2016). Any future responses regarding allegations of what the prior art is alleged to teach should include proper citations in the form of paragraph numbers.
Accordingly, the argument is not persuasive as it has no factual foundation in the Nakayama reference; however, if there is some factual basis of this teaching, would this not then be problematic for the instant application in terms of the third requirement of 35 U.S.C. 112(a) which states that the specification shall set forth the best mode contemplated by the inventor of carrying out the invention (MPEP 2165)? In other words, if the general technical understanding of the Nakayama reference as alleged by Applicant is that “the lower the sulfate radical content, the better,” and that application is commonly owned and shares at least one common inventor, then this would be evidence that the instant claim requiring 1,000 ppm or more is in fact, not the best mode? The point is currently moot as the Examiner cannot find such a teaching within Nakayama; however, for clarity of the record, Applicant is respectfully requested to clarify their statement above in a future response.
Applicant argues:
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In response: Interestingly enough, the instant application also provides no motivation to retain sulfate radicals at or above 1,000 ppm as claimed. The lower end point of the amended sulfate radical content range is cobbled together from an example within Table 1 in conjunction with the originally taught and claimed range of 5,000 ppm or less (which has no taught lower bound and can be zero). 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.
As to Nakayama and 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 range claimed 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 allegation 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 (which include an example of 1,000 ppm) along with the measurement method of the content (P165), the instant application is entirely silent 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.
Applicant argues:
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In response: As outlined in the table above, the method of Nakayama is identical to that of the instant application such that all of the processing variables identified in the instant application are taught by Nakayama. Of further note is that latter sentence above has no evidential basis in the record and is merely attorney argument. The instant application says nothing about what does or does not control the sulfate radical content, wherein if there are additional method steps or processing variables such as any of the washing efficiency, precursor morphology, filtration conditions, etc., then this would be problematic for the instant application in terms of enablement as an application has to teach one of ordinary skill in the art how to make the claimed invention (MPEP 2164). If there are other variables being manipulated to achieve the feature claimed that are not disclosed anywhere within the instant application, then the instant application would fail to teach one of ordinary skill in the art how to make the claimed invention, and would thus fail the enablement requirement under 35 U.S.C. 112(a)/first paragraph. The point appears to be moot at the present time given there is no evidence in the record that the sulfate radical content is achieved by any of these variables. Thus, the argument is not persuasive.
Applicant argues:
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In response: The values outside the claimed range of the instant application are for the comparative examples which depart from the method of manufacture in some manner and are thus not relevant to the Examiner’s position pertaining to the implementing the same method of manufacture would provide the same results, namely, a range overlapping with that claimed.
To this end, Examples 1-4 of the instant application are pertinent to this analysis, and when the method of manufacture is carried out, it results in a sulfate radical contents in a range overlapping with that claimed (i.e., 1000-5,800 ppm). It is for this reason that the Examiner takes the position that implementing the same method of manufacture would provide the same results, namely, a range overlapping with that claimed. 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).
Applicant argues:
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In response: As outlined above in the Claim Analysis section, if Applicant successfully
argued unexpected results for this new range, then the claim would be rejected under 35 U.S.C. 112(a)/first paragraph because Applicant would be alleging that the newly claimed range is a different invention than the originally disclosed range since the newly claimed range has properties unique from the originally disclosed range. In other words, an amended range having new end points within an original range is not new matter by itself; however, a successful showing of unexpected results regarding a narrower range than was originally claimed/taught would bring forth a new matter issue, as it would show that the newly claimed range is a different invention than the originally disclosed range. See MPEP 2163(I)(B) and case law discussion below. Specifically, unexpected results establishes that a small range is a different invention than the broad range such that as In re Wertheim (citation below) points out, if the broad and narrow ranges are different inventions the broad range does not describe the narrow range. With respect to the above, the following case law is applicable to this position:
In re Wertheim, 541 F.2d 257 (1976). “Where it is clear, for instance, that the broad described range pertains to a different invention than the narrower (and subsumed) claimed range, then the broader range does not describe the narrower range. In re Baird, 348 F.2d 974, 52 CCPA 1747, 146 USPQ 579 (1965); In re Draeger, 150 F.2d 572, 32 CCPA 1217, 66 USPQ 247 (1945).
Accordingly, if Applicant allegations were persuasive, then the claims would be subject to a 35 U.S.C. 112(a)/first paragraph rejection; however, at the present time, the Examiner does not find the very limited date of Table 1 and arguments above as meeting the burden to establish unexpected results for at least the following reasons:
"The objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." (MPEP 7160.02(d)) (Examiner emphasis). The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See also the following case law (MPEP 716.02(d)):
In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium).
The objective evidence offered to support the allegation of unexpected results that is commensurate in scope with claimed 1 includes a total of three examples in Table 1 at 1,000 ppm, 2,000 ppm, and 2,4000 ppm. These examples do not span the entire claimed range or even come close to the upper bound of 5,000 ppm. Accordingly, the data that is commensurate in scope with claim 1 and is within the claimed range are three examples that do not demonstrate any results over the entire claimed range. For this reason alone, the allegation of unexpected results/technical benefits is not persuasive.
Second, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). This would look like data in the format of examples that are commensurate in scope with the requirements of claim 1 and inside the claimed sulfate radical range that span the entire range, as well as values close to the range but outside the range such as 5,100 ppm as well as 900 ppm. This type of data would have to demonstrate the results occur over the entire range, and that when close to but outside the claimed range (e.g., 900 ppm or 5,100 ppm), the “unexpected results” do not occur.
It is noted that the data that is outside the range (the comparative tests) are also changing other variables such that it cannot be said that it is the sulfate radical content that is the factor achieving any change in the measured values of resistance at 15% SOC or gas swelling volume. For example, Comparative example 1 having a SO4 ppm content of 480 ppm also doesn’t meet the A/B value requirement as well as Requirement 2. Accordingly, any change in results of the resistance or gas swelling could be attributed to these changes and not the sulfate radical content.
Thus, for this additional reason, the allegation of unexpected results is not persuasive as the data that is outside the claimed range has other variables changing such that it is not a useful comparison data point in terms of establishing that the sulfate radical content is the critical factor achieving the unexpected results.
Third, what is alleged by Applicant does not hold true in terms of “Comparative Example 3 (sulfate radical content above the claimed range) exhibits the highest gas swelling volume” (emphasis mine). Comparative Example 3 has a sulfate radical content (“SO4 ppm”) in the claimed range at 3,000 ppm:
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Comparative Example 3 also does not have the highest gas swelling volume; instead, the highest gas swelling volume is actually Comparative Example 2 with a SO4 radical content in the claimed range at 2,200 ppm and a gas swelling volume of 2.24 cm3/g. Thus, it appears that the data shows the opposite to be true than that which is alleged, namely, the sulfate content radical in the claimed range does not lend itself to achieving any positive benefit to the gas swelling volume.
Fourth, the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). No such analysis on the statistical significance is provided, nor could it be with such limited data that does not span the range or have values close to, but outside the range. Accordingly, for this additional reason, the argument for unexpected results is not persuasive.
In conclusion, the allegation of unexpected results is not persuasive for at least the reasons outline above, nor would it be prudent to pursue such for the newly added range as a successful showing of unexpected results for the newly amended range would result in a rejection under 35 U.S.C. 112(a)/first paragraph and is thus not a path toward allowability for the newly claimed range.
Applicant argues:
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In response: Applicant does not rebut the teachings of Kondo replied in an alternative rejection against the sulfate content radical content which provide explicit teaching, suggestion, and motivation to provide a positive electrode active material with 0.05 mass% or less of a sulfate radical content 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. Thus, Kondo provides teaching, suggestion, and motivation to one having ordinary skill in the art to provide the lithium metal composite oxide of Nakayama with a sulfate content radical content of 0.05 mass% or less in order to avoid the negative effects of reduction in capacity and safety problems. The Examiner concludes:
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.).
Accordingly, even if Nakayama could be shown to somehow not provide an overlapping sulfate radical content range (not conceded), Kondo provides explicit teaching, suggestion, and motivation 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) with the court holding:
“[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.
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.).
Thus, this rejection is also maintained.
Applicant comments:
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In response: The Examiner does not have any questions regarding this amendment or 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.
Conclusion
8. 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.
9. 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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/AMANDA J BARROW/Primary Examiner, Art Unit 1729