DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 3, 2026 has been entered.
Response to Amendment
In response to the amendment received February 3, 2026:
Claims 38, 51-52 have been canceled as per Applicant’s request. Claims 1-5, 7-23, 36-37, 39-49, and 53-54 are pending with claims 39-49 withdrawn as being drawn to a non-elected invention.
The previous rejection relying on Kunduraci as the primary reference is withdrawn. A new prior art reference is relied upon to render obvious the claimed invention. (Many of the secondary references are relied upon in a similar manner.)
Claim Objections
Claim 1 is objected to because of the following informalities: using “the” before “lattice parameter a” (lines 9-10), where ‘a’ is suggested instead. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: using “the” before “lattice parameter a” (lines 9-10), where ‘a’ is suggested instead. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: using “the” before “BET surface area” (line 2), where ‘a’ is suggested instead. Appropriate correction is required.
Claim 37 is objected to because of the following informalities: using “the” before “BET surface area” (line 2), where ‘a’ is suggested instead. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 37 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 37 recites the limitation "the particles" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 7-10, and 53-54 is/are rejected under 35 U.S.C. 103 as obvious over WO 2017/032789 A1 (Von Bulow et al.).
As to claim 1, Von Bulow et al. teach a lithium positive electrode active material for a high voltage secondary battery, said lithium positive electrode active material comprising a spinel, said spinel having a chemical composition of LixNiyMn2yO4, wherein: 0.95 ≤ x ≤ 1.05; and 0.43 ≤ y ≤ 0.47 (LixNiyMn2-yO4; 0.9 ≤ x ≤ 1.1 and 0.4 ≤ y ≤0.5) (p 3, line 24- p4, line 2; p 16, lines 26-29) (overlaps claimed formula, thus renders it obvious; see MPEP §2144.05(I)); and wherein said lithium positive electrode active material is synthesized from precursors containing Li, Ni, and Mn in a ratio of Li:Ni:Mn: 2.08:0.92:3.16 (p 19, line 30-p 20, line 1),
wherein said spinel constitutes at least 94 wt% of said lithium positive electrode material (at least 95 wt% of spinel) (p 16, lines 26-29),
wherein said lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14), wherein the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach (a) that the lithium positive electrode active material is synthesized from precursors containing Li, Ni, and Mn in a ratio Li:Ni:Mn: X:Y:2-Y, wherein: 0.95 ≤ X ≤ 1.05; and 0.42 ≤ Y ≤ 0.5, or (b) that the lattice parameter a is between 8.171 and 8.183 Å and is between (-0.1932y+8.2613) Å and 8.183 Å.
With respect to (a): These limitations are considered but do not further limit the claimed electrode active material (final product), as the final product is claimed and not a precursor, wherein the precursor does not further limit the claimed final product. Additionally, the product-by-process limitations do not further limit the claimed final product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted). “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
With respect to (b): The lattice parameter a is between 8.171 and 8.183 Å and is between (-0.1932y+8.2613) Å and 8.183 Å would either be (1) expected or (2) obvious.
(1) Regarding expectation:
The product of Von Bulow et al. would be expected to have the same lattice a parameter (between 8.171 and 8.183 Å, and between (-0.1932y+8.2613) Å and 8.183 Å) as that claimed in light of a similar method of making. (See the instant application starting at p 26 regarding the synthesis of materials, especially the heating and oxygen conditions, as compared Von Bulow p 29, Iine 19 – p 30, line 14.)
(2) Regarding obviousness:
If it is shown that Von Bulow et al. do not have the same lattice a parameter claimed (between 8.171 and 8.183 Å, and between (-0.1932y+8.2613) Å and 8.183 Å)), at the very least, any differences would be small such that obviousness is maintained. Specifically, Von Bulow teach the product calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9) (close to the value set forth). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 7, Von Bulow et al. teach a lithium positive electrode active material for a high voltage secondary battery, said lithium positive electrode active material comprising a spinel, said spinel having a chemical composition of LixNiyMn2yO4, wherein: 0.95 ≤ x ≤ 1.05; and 0.43 ≤ y ≤ 0.47 (LixNiyMn2-yO4; 0.9 ≤ x ≤ 1.1 and 0.4 ≤ y ≤0.5) (p 3, line 24- p4, line 2; p 16, lines 26-29) (overlaps claimed formula, thus renders it obvious; see MPEP §2144.05(I)); and wherein said lithium positive electrode active material is synthesized from precursors containing Li, Ni, and Mn in a ratio of Li:Ni:Mn: 2.08:0.92:3.16 (p 19, line 30-p 20, line 1),
wherein said spinel constitutes at least 94 wt% of said lithium positive electrode material (at least 95 wt% of spinel) (p 16, lines 26-29),
wherein said lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14), wherein the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach (a) that the lithium positive electrode active material is synthesized from precursors containing Li, Ni, and Mn in a ratio Li:Ni:Mn: X:Y:2-Y, wherein: 0.95 ≤ X ≤ 1.05; and 0.42 ≤ Y ≤ 0.5, or (b) that the lattice parameter a is between 8.171 and 8.183 Å.
With respect to (a): These limitations are considered but do not further limit the claimed electrode active material (final product), as the final product is claimed and not a precursor, wherein the precursor does not further limit the claimed final product. Additionally, the product-by-process limitations do not further limit the claimed final product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted). “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
With respect to (b): The lattice parameter a is between 8.171 and 8.183 Å and is between (-0.1932y+8.2613) Å and 8.183 Å would either be (1) expected or (2) obvious.
(1) Regarding expectation:
The product of Von Bulow et al. would be expected to have the same lattice a parameter (between 8.171 and 8.183 Å) as claimed in light of a similar method of making. (See the instant application starting at p 26 regarding the synthesis of materials, especially the heating and oxygen conditions, as compared Von Bulow p 29, Iine 19 – p 30, line 14.)
(2) Regarding obviousness:
If it is shown that Von Bulow et al. do not have the same lattice a parameter claimed (between 8.171 and 8.183 Å), at the very least, any differences would be small such that obviousness is maintained. Specifically, Von Bulow teach the product calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9) (close to the value set forth). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 8, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and 8.183 Å.
However, the lattice parameter a is between (-0.1932y+8.2613) Å and 8.183 Å would either be (1) expected or (2) obvious.
(1) Regarding expectation:
The product of Von Bulow et al. would be expected to have the same lattice a parameter (between (-0.1932y+8.2613) Å and 8.183 Å) as that claimed in light of a similar method of making. (See the instant application starting at p 26 regarding the synthesis of materials, especially the heating and oxygen conditions, as compared Von Bulow p 29, Iine 19 – p 30, line 14.)
(2) Regarding obviousness:
If it is shown that Von Bulow et al. do not have the same lattice a parameter claimed (between (-0.1932y+8.2613) Å and 8.183 Å), at the very least, any differences would be small such that obviousness is maintained. Specifically, Von Bulow teach the product calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9) (close to the value set forth). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 9, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å.
However, the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å would either be (1) expected or (2) obvious.
(1) Regarding expectation:
The product of Von Bulow et al. would be expected to have the same lattice a parameter (between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å) as that claimed in light of a similar method of making. (See the instant application starting at p 26 regarding the synthesis of materials, especially the heating and oxygen conditions, as compared Von Bulow p 29, Iine 19 – p 30, line 14.)
(2) Regarding obviousness:
If it is shown that Von Bulow et al. do not have the same lattice a parameter claimed (between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å), at the very least, any differences would be small such that obviousness is maintained. Specifically, Von Bulow teach the product calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9) (close to the value set forth). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 10, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å.
However, the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å would either be (1) expected or (2) obvious.
(1) Regarding expectation:
The product of Von Bulow et al. would be expected to have the same lattice a parameter (between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å) as that claimed in light of a similar method of making. (See the instant application starting at p 26 regarding the synthesis of materials, especially the heating and oxygen conditions, as compared Von Bulow p 29, Iine 19 – p 30, line 14.)
(2) Regarding obviousness:
If it is shown that Von Bulow et al. do not have the same lattice a parameter claimed (between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å), at the very least, any differences would be small such that obviousness is maintained. Specifically, Von Bulow teach the product calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9) (close to the value set forth). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 53, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å.
However, the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å would either be (1) expected or (2) obvious.
(1) Regarding expectation:
The product of Von Bulow et al. would be expected to have the same lattice a parameter (between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å) as that claimed in light of a similar method of making. (See the instant application starting at p 26 regarding the synthesis of materials, especially the heating and oxygen conditions, as compared Von Bulow p 29, Iine 19 – p 30, line 14.)
(2) Regarding obviousness:
If it is shown that Von Bulow et al. do not have the same lattice a parameter claimed (between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å), at the very least, any differences would be small such that obviousness is maintained. Specifically, Von Bulow teach the product calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9) (close to the value set forth). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 54, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å.
However, the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å would either be (1) expected or (2) obvious.
(1) Regarding expectation:
The product of Von Bulow et al. would be expected to have the same lattice a parameter (between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å) as that claimed in light of a similar method of making. (See the instant application starting at p 26 regarding the synthesis of materials, especially the heating and oxygen conditions, as compared Von Bulow p 29, Iine 19 – p 30, line 14.)
(2) Regarding obviousness:
If it is shown that Von Bulow et al. do not have the same lattice a parameter claimed (between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å), at the very least, any differences would be small such that obviousness is maintained. Specifically, Von Bulow teach the product calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9) (close to the value set forth). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
NOTE: An alternate rejection regarding the lattice parameter a in the rejection to claims 1, 7-10, and 53-54 is set forth below denoted by (*). This alternate rejection relies on a secondary reference to render the limitation obvious.
*Alternately, claim(s) 1, 7-10, and 53-54 is/are rejected under 35 U.S.C. 103 as being unpatentable over Von Bulow et al. in view of US 2015/0147652 (Shibamura et al.).
As to claim 1, Von Bulow et al. teach a lithium positive electrode active material for a high voltage secondary battery, said lithium positive electrode active material comprising a spinel, said spinel having a chemical composition of LixNiyMn2yO4, wherein: 0.95 ≤ x ≤ 1.05; and 0.43 ≤ y ≤ 0.47 (LixNiyMn2-yO4; 0.9 ≤ x ≤ 1.1 and 0.4 ≤ y ≤0.5) (p 3, line 24- p4, line 2; p 16, lines 26-29) (overlaps claimed formula, thus renders it obvious; see MPEP §2144.05(I)); and wherein said lithium positive electrode active material is synthesized from precursors containing Li, Ni, and Mn in a ratio of Li:Ni:Mn: 2.08:0.92:3.16 (p 19, line 30-p 20, line 1),
wherein said spinel constitutes at least 94 wt% of said lithium positive electrode material (at least 95 wt% of spinel) (p 16, lines 26-29),
wherein said lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14), wherein the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach (a) that the lithium positive electrode active material is synthesized from precursors containing Li, Ni, and Mn in a ratio Li:Ni:Mn: X:Y:2-Y, wherein: 0.95 ≤ X ≤ 1.05; and 0.42 ≤ Y ≤ 0.5, or (b) that the lattice parameter a is between 8.171 and 8.183 Å and is between (-0.1932y+8.2613) Å and 8.183 Å.
With respect to (a): These limitations are considered but do not further limit the claimed electrode active material (final product), as the final product is claimed and not a precursor, wherein the precursor does not further limit the claimed final product. Additionally, the product-by-process limitations do not further limit the claimed final product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted). “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
With respect to (b): Shibamura et al. teach of having a spinel having a lattice constant a most preferably from 8.18-8.20 Å (para 0032) (overlaps claimed range of between 8.171 and 8.183 Å and between (-0.1932y+8.2613) Å and 8.183 Å, thus renders it obvious; see MPEP §2144.05(I)). The motivation for having a lattice constant a from 8.18-8.20 Å is to have an active material that more easily inserts and releases Li ions during charge and discharge. Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) for having a lattice constant a from 8.18-8.20 Å in order to have an active material that more easily inserts and releases Li ions during charge and discharge.
At the very least, Shibamura et al. sets forth that lattice constant a is a result effective variable that is a balance between power output characteristics and charge-discharge cyclability (para 0032). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) It would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize lattice parameter a (between 8.171 and 8.183 Å and between (-0.1932y+8.2613) Å and 8.183 Å), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 7, Von Bulow et al. teach a lithium positive electrode active material for a high voltage secondary battery, said lithium positive electrode active material comprising a spinel, said spinel having a chemical composition of LixNiyMn2yO4, wherein: 0.95 ≤ x ≤ 1.05; and 0.43 ≤ y ≤ 0.47 (LixNiyMn2-yO4; 0.9 ≤ x ≤ 1.1 and 0.4 ≤ y ≤0.5) (p 3, line 24- p4, line 2; p 16, lines 26-29) (overlaps claimed formula, thus renders it obvious; see MPEP §2144.05(I)); and wherein said lithium positive electrode active material is synthesized from precursors containing Li, Ni, and Mn in a ratio of Li:Ni:Mn: 2.08:0.92:3.16 (p 19, line 30-p 20, line 1),
wherein said spinel constitutes at least 94 wt% of said lithium positive electrode material (at least 95 wt% of spinel) (p 16, lines 26-29),
wherein said lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14), wherein the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach (a) that the lithium positive electrode active material is synthesized from precursors containing Li, Ni, and Mn in a ratio Li:Ni:Mn: X:Y:2-Y, wherein: 0.95 ≤ X ≤ 1.05; and 0.42 ≤ Y ≤ 0.5, or (b) that the lattice parameter a is between 8.171 and 8.183 Å.
With respect to (a): These limitations are considered but do not further limit the claimed electrode active material (final product), as the final product is claimed and not a precursor, wherein the precursor does not further limit the claimed final product. Additionally, the product-by-process limitations do not further limit the claimed final product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted). “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
With respect to (b): Shibamura et al. teach of having a spinel having a lattice constant a most preferably from 8.18-8.20 Å (para 0032) (overlaps claimed range of between 8.171 and 8.183 Å, thus renders it obvious; see MPEP §2144.05(I)). The motivation for having a lattice constant a from 8.18-8.20 Å is to have an active material that more easily inserts and releases Li ions during charge and discharge. Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) for having a lattice constant a from 8.18-8.20 Å in order to have an active material that more easily inserts and releases Li ions during charge and discharge.
At the very least, Shibamura et al. sets forth that lattice constant a is a result effective variable that is a balance between power output characteristics and charge-discharge cyclability (para 0032). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) It would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize lattice parameter a (between 8.171 and 8.183 Å), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 8, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and 8.183 Å.
However, Shibamura et al. teach of having a spinel having a lattice constant a most preferably from 8.18-8.20 Å (para 0032) (overlaps claimed range of between (-0.1932y+8.2613) Å and 8.183 Å, thus renders it obvious; see MPEP §2144.05(I)). The motivation for having a lattice constant a from 8.18-8.20 Å is to have an active material that more easily inserts and releases Li ions during charge and discharge. Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) for having a lattice constant a from 8.18-8.20 Å in order to have an active material that more easily inserts and releases Li ions during charge and discharge.
At the very least, Shibamura et al. sets forth that lattice constant a is a result effective variable that is a balance between power output characteristics and charge-discharge cyclability (para 0032). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) It would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize lattice parameter a (between (-0.1932y+8.2613) Å and 8.183 Å), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 9, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å.
However, Shibamura et al. teach of having a spinel having a lattice constant a most preferably from 8.18-8.20 Å (para 0032). At the very least, Shibamura et al. sets forth that lattice constant a is a result effective variable that is a balance between power output characteristics and charge-discharge cyclability (para 0032). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) It would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize lattice parameter a (between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 10, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å.
However, Shibamura et al. teach of having a spinel having a lattice constant a most preferably from 8.18-8.20 Å (para 0032). At the very least, Shibamura et al. sets forth that lattice constant a is a result effective variable that is a balance between power output characteristics and charge-discharge cyclability (para 0032). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) It would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize lattice parameter a (between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 53, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å.
However, Shibamura et al. teach of having a spinel having a lattice constant a most preferably from 8.18-8.20 Å (para 0032). At the very least, Shibamura et al. sets forth that lattice constant a is a result effective variable that is a balance between power output characteristics and charge-discharge cyclability (para 0032). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) It would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize lattice parameter a (between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 54, Von Bulow teaches the lithium positive electrode active material is calcined (p 29, Iine 19 – p 30, line 14) and that the lattice parameter a is around 8.2 Å (p33, lines 5-9).
Thus, Von Bulow et al. do not specifically teach that the lattice parameter a is between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å.
However, Shibamura et al. teach of having a spinel having a lattice constant a most preferably from 8.18-8.20 Å (para 0032). At the very least, Shibamura et al. sets forth that lattice constant a is a result effective variable that is a balance between power output characteristics and charge-discharge cyclability (para 0032). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) It would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize lattice parameter a (between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
Claim(s) 2-5, 10-11, 19-23, and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over either (11) Von Bulow et al., or (12) *alternately Von Bulow et al. in view of Shibamura et al., both individually applied to claim 1 (as set forth in either section 11 or section 12 above).
As to claim 2, the claim limitation (y·0.97 <Y <y·1.06) is met by (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., as the claimed final product active material of claim 1 is met. Regarding the limitations related to relationships regarding a precursor, these limitations are considered but do not further limit the claimed electrode active material (final product), as the final product is claimed and not a precursor and the precursor does not further limit the claimed final product.
As to claim 3, the claim limitation (0.42 ≤ Y < 0.49) is met by (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., as the claimed final product active material of claim 1 is met. Regarding the limitations related to relationships regarding a precursor, these limitations are considered but do not further limit the claimed electrode active material (final product), as the final product is claimed and not a precursor and the precursor does not further limit the claimed final product.
As to claim 4, Von Bulow et al. teach at least 90 wt% of said spinel is crystallized in disordered space group Fd-3m (p 6, and p 33 define Fd-3m indications, and table 11 shows above 90% of these indicators).
As to claim 5, (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., renders obvious the positive active material of claim 1 (see the rejection(s) to claim 1 for full details of the rejection, incorporated herein but not reiterated herein for brevity’s sake). Accordingly, the limitation of “in a half-cell has a difference of at least 50 mV between the potentials at 25% and 75% of the capacity above 4.3 V during discharge with a current of around 29 mA/g” would either be (a) expected or (b) obvious.
With respect to (a), (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., render obvious the active material, and thus placed in the same condition, the same result would be expected (e.g. in a half-cell has a difference of at least 50 mV between the potentials at 25% and 75% of the capacity above 4.3 V during discharge with a current of around 29 mA/g).
With respect to (b), alternately, if it shown that in a half-cell has a difference of at least 50 mV between the potentials at 25% and 75% of the capacity above 4.3 V during discharge with a current of around 29 mA/g is not met, any differences would be small and obvious (as set forth above (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al. renders obvious the active material as claimed). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 11, Von Bulow et al. teach said lithium positive electrode active material has a tap density equal to or greater than 2.2 g/cm3 (2.1 to 3.5 g/cm3) (p 15, lines 6-9) (overlaps claim range, thus renders it obvious; see MPEP §2144.05(I)).
As to claim 19, Von Bulow et al. teach the lithium positive electrode active material according to claim 1, wherein 0.99 < x < 1.01, (LixNiyMn2-yO4; 0.9 ≤ x ≤ 1.1 and 0.4 ≤ y ≤0.5) (p 16, lines 26-29) (overlaps claimed formula, thus renders it obvious; see MPEP §2144.05(I)).
As to claim 20, (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., renders obvious the positive active material of claim 1 (see the rejection(s) to claim 1 for full details of the rejection, incorporated herein but not reiterated herein for brevity’s sake). Accordingly, the limitation of “said lithium positive electrode active material has a capacity of at least 138 mAh/g” would either be (a) expected or (b) obvious.
With respect to (a), (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., renders obvious the positive active material of claim 1, and thus it should have the same capacity characteristic (e.g. at least 138 mAh/g).
With respect to (b), alternately, if it shown said lithium positive electrode active material has a capacity of at least 138 mAh/g is not met, any differences would be small and obvious (as set forth above 11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., renders obvious the positive active material as claimed). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 21, (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., renders obvious the positive active material of claim 1 (see the rejection(s) to claim 1 for full details of the rejection, incorporated herein but not reiterated herein for brevity’s sake). Accordingly, the limitation of “the capacity of said lithium positive electrode active material in a half cell decreases by no more than 4% over 100 cycles between 3.5 to 5.0 V at 55°C” would either be (a) expected or (b) obvious.
With respect to (a), (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., renders obvious the positive active material of claim 1, and thus placed in the same condition, the same result would be expected (e.g. the capacity of said lithium positive electrode active material in a half cell decreases by no more than 4% over 100 cycles between 3.5 to 5.0 V at 55°C).
With respect to (b), alternately, if it shown that the capacity of said lithium positive electrode active material in a half cell decreases by no more than 4% over 100 cycles between 3.5 to 5.0 V at 55°C is not met, any differences would be small and obvious (as (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., renders obvious the positive active material claimed). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 22, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al., specifically set forth a determination of y (e.g. by means of a method selected from the group consisting of electrochemical determination, X-ray diffraction and scanning transmission electron microscopy (STEM) in combination with energy dispersive X-ray spectroscopy (EDS)).
In one interpretation (anticipatory), the determination of a characteristic does not further limit the characteristic (as the characteristic should still be present at the same value).
In a second interpretation (obviousness), if the determination process of a characteristic is different, any differences would be slight such that the result of the determination would be obvious. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 23, Von Bulow et al. teach 0.44 ≤ y ≤ 0.45 (LixNiyMn2-yO4; 0.9 ≤ x ≤ 1.1 and 0.4 ≤ y ≤0.5) (p 16, lines 26-29) (overlaps claimed range, thus renders it obvious; see MPEP §2144.05(I)).
As to claim 36, (11) Von Bulow et al. or (12) Von Bulow et al. in view of Shibamura et al., renders obvious the positive active material of claim 1 (see the rejection(s) to claim 1 for full details of the rejection, incorporated herein but not reiterated herein for brevity’s sake). Additionally, Von Bulow et al. recognize the use in lithium batteries (abs; claim 20).
Claim(s) 12-13 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over either (11) Von Bulow et al., or (12) *alternately Von Bulow et al. in view of Shibamura et al., both individually applied to claim 1 (as set forth in either section 11 or section 12 above), further in view of US 2012/0068129 (Jouanneau et al.).
As to claim 12, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al., do not teach the lithium positive electrode active material is made up of particles and wherein D50 of the particles of said lithium positive electrode active material satisfies: 3 µm < D50 < 12 µm.
However, Jouanneau et al. teach of active materials with particles having a most preferable size of between 5 and 10 µm (para 0035). The motivation for having active material particles between 5 and 10 µm is that this morphology limits reactivity to the electrolyte at high potential and limits capacitance loss during cycling at ambient temperature (para 0035-0036). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have active material particles between 5 and 10 µm in order to limit reactivity to the electrolyte at high potential and limits capacitance loss during cycling at ambient temperature.
As to claim 13, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al., teach the BET area of said lithium positive electrode active material is below 1.5 m2/g.
However, Jouanneau et al. teach of active material with a specific surface area (BET area) of 1-2 m2/g (para 0035) (overlaps claimed range, thus renders it obvious). The motivation for having active material with a specific surface area (BET area) of 1-2 m2/g is this morphology limits reactivity to the electrolyte at high potential and limits capacitance loss during cycling at ambient temperature (para 0035-0036). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have active material with a specific surface area (BET area) of 1-2 m2/g in order to limit reactivity to the electrolyte at high potential and limits capacitance loss during cycling at ambient temperature.
As to claim 37, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al. teach (a) the lithium positive electrode active material is made up of particles and wherein D50 of the particles of said lithium positive electrode active material satisfies: 3 µm < D50 < 12 µm, or (b) the BET area of said lithium positive electrode active material is below 1.5 m2/g.
With respect to (a): Jouanneau et al. teach of active materials with particles having a most preferable size of between 5 and 10 µm (para 0035). The motivation for having active material particles between 5 and 10 µm is that this morphology limits reactivity to the electrolyte at high potential and limits capacitance loss during cycling at ambient temperature (para 0035-0036). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have active material particles between 5 and 10 µm in order to limit reactivity to the electrolyte at high potential and limits capacitance loss during cycling at ambient temperature.
With respect to (b), Jouanneau et al. teach of active material with a specific surface area (BET area) of 1-2 m2/g (para 0035) (overlaps claimed range, thus renders it obvious). The motivation for having active material with a specific surface area (BET area) of 1-2 m2/g is this morphology limits reactivity to the electrolyte at high potential and limits capacitance loss during cycling at ambient temperature (para 0035-0036). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have active material with a specific surface area (BET area) of 1-2 m2/g in order to limit reactivity to the electrolyte at high potential and limits capacitance loss during cycling at ambient temperature.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over either (11) Von Bulow et al., or (12) *alternately Von Bulow et al. in view of Shibamura et al., both individually applied to claim 1 (as set forth in either section 11 or section 12 above), further in view of US 2015/0028080 (Sugiura) and EP 1057783 (Majima et al.).
As to claim 14, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al. teach the lithium positive electrode active material is made up of particles, said particles being characterized by an average aspect ratio below 1.6.
However, Sugiura teaches that active material particles can be substanically spherical shaped giving an average aspect ratio of typically 1-1.5 (para 0040). Although, Sugiura does not specifically mention a motivation for a spherical particle (typically having an average aspect ratio of 1-1.5), Majima et al. provides the same teaching to a spherical particle (except expression spherical shape in roundness) (para 0044). Sugiura provides a motivation for having a spherical shaped particle, which is to have excellent cycling characteristics (para 0045). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a spherical particle (which is generally denoted by having an average aspect ratio of 1-1.5) in order to have excellent cycling characteristics.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over either (11) Von Bulow et al., or (12) *alternately Von Bulow et al. in view of Shibamura et al., both individually applied to claim 1 (as set forth in either section 11 or section 12 above), further in view of JP 20122234772 (Harada et al.).
As to claim 15, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al. teach the lithium positive electrode active material is made up of particles, said particles being characterized by a roughness below 1.35, wherein the roughness is a ratio between a measured perimeter and a perimeter of a fitted ellipse.
However, Harada et al. teach lithium batteries wherein powder (particles) has a roughness characterized by a most preferred range of 0.3-0.8 nm (para 0026). The motivation for having a roughness of 0.3-0.8 nm to have powder (particles) that have less damaged surfaces but can be manufactured economically (para 0026). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a powder (particles) with a roughness of 0.3-0.8 nm in order to have less damaged surfaces but at the same time provide economical manufacturing.
Although the small roughness (measured by nm) above is not specifically expressed as a relationship between a roughness and a fitted ellipse, at the very least renders obvious having as smooth of a surface as possible to have undamaged particles (i.e. having a smooth particle, which would result in a roughness ratio of close to 1 (as the fitted ellipse and the perimeter of the particle would be desired to be 1 for minimal roughness). Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have a small roughness (0.3-0.8 nm, as set forth above) such that a roughness below 1.35 is achieved (when comparing a ratio of roughness between the measured perimeter and a fitted ellipse), as the teaching of having a small roughness to minimize having damaged surfaces would yield a roughness of 1 to be desired (1:1 ratio of fitting indicates no roughness and no damage). (Note: This characteristic is merely an expression of roughness in a different manner but would still be obvious under the teaching of Harada et al. which is drawn to minimizing roughness.)
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over either (11) Von Bulow et al., or (12) *alternately Von Bulow et al. in view of Shibamura et al., both individually applied to claim 1 (as set forth in either section 11 or section 12 above), further in view of Majima et al.
As to claim 16, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al. teach the lithium positive electrode active material is made up of particles, said particles being characterized by a circularity above 0.6.
Majima et al. teaches spherical particles as active material with a roundness (circularity) of 0.950 or more (para 0044). The motivation for having a spherical shaped particle with a roundness (circularity) of 0.950 or more is to have excellent cycling characteristics (para 0045). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a spherical particle with a roundness (circularity) of 0.950 or more in order to have excellent cycling characteristics.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over either (11) Von Bulow et al., or (12) *alternately Von Bulow et al. in view of Shibamura et al., both individually applied to claim 1 (as set forth in either section 11 or section 12 above), further in view of Majima et al.
As to claim 16, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al. teach the lithium positive electrode active material is made up of particles, said particles being characterized by a circularity above 0.6.
Majima et al. teaches spherical particles as active material with a roundness (circularity) of 0.950 or more (para 0044). The motivation for having a spherical shaped particle with a roundness (circularity) of 0.950 or more is to have excellent cycling characteristics (para 0045). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a spherical particle with a roundness (circularity) of 0.950 or more in order to have excellent cycling characteristics.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over either (11) Von Bulow et al., or (12) *alternately Von Bulow et al. in view of Shibamura et al., both individually applied to claim 1 (as set forth in either section 11 or section 12 above), further in view of US2009/0208847 (Kang).
As to claim 17, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al. teach the lithium positive electrode active material is made up of particles, said particles being characterized by a solidity above 0.8.
However, Kang et al. teaches of active material particles (indicated by the presence of a core), wherein good solidity improves high rate discharge characteristics and capacity (para 0021). However, solidity is/are result effective variable(s), as it affects high rate discharge characteristics and capacity. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the solidity above 0.8, since it has been held that discovering an optimum value/workable range of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over either (11) Von Bulow et al., or (12) *alternately Von Bulow et al. in view of Shibamura et al., both individually applied to claim 1 (as set forth in either section 11 or section 12 above), further in view of US 2016/0049652 (Elhassid et al.).
As to claim 18, neither (11) Von Bulow et al. nor (12) Von Bulow et al. in view of Shibamura et al. teach wherein the lithium positive electrode active material is made up of particles, said particles being characterized by a porosity below 3%.
However, Elhassid et al. teach of having particles with a hollowness (porosity) of most preferably less than about 1% (para 0033). The motivation for having a hollowness (porosity) less than about 1% is that excessive hollowness affects macroscopic properties of the powder (such as tap or bulk density), physical and chemical properties (particle size, surface chemistry, and surface morphology), and bulk density (para 0035). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a hollowness (porosity) less than about 1% in order to prevent the hollowness from macroscopic properties of the powder (such as tap or bulk density), physical and chemical properties (particle size, surface chemistry, and surface morphology), and bulk density.
Response to Arguments
Applicant's arguments filed December 29, 2025 have been fully considered but they are not persuasive.
The arguments are directed toward the rejection relying upon Kundurachi as the primary reference.
Examiner submits that Kundurachi is no longer relied upon. However, Von Bulow is now relied upon as the primary reference to render obvious the claimed limitations (with Shibamura et al. applied as a secondary reference in an alternate rejection). Thus, the argument is not persuasive, and the rejection of record is maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-23, 26-37, and 53-54 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-16, 18-19, 30-31 of copending Application No. 17/289432 (reference application).
The pertinent co-pending claims are set forth below:
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Although the claims at issue are not identical, they are not patentably distinct from each other because:
Copending claims 1, 4, 5, and 18 reads on pending claims 1, 2, 3, 20, 21, and 22.
Copending claim 2 reads on pending claim 4.
Copending claim 3 reads on pending claim 5.
Copending claims 1, 4, and 18 reads on pending claim 7.
Copending claim 5 reads on pending claim 8.
Copending claim 6 reads on pending claims 9 and 53.
Copending claim 7 reads on claims 10 and 53.
Copending claim 8 reads on pending claim 11.
Copending claim 9 reads on pending claim 12.
Copending claim 10 reads on pending claim 13.
Copending claim 11 reads on pending claim 14.
Copending claim 12 reads on pending claim 15.
Copending claim 13 reads on pending claim 16.
Copending claim 14 reads on pending claim 17.
Copending claim 15 reads on pending claim 18.
Copending claim 16 reads on pending claim 19.
Copending claim 19 reads on pending claim 23.
Copending claim 30 reads on pending claim 36.
Copending claim 31 reads on pending claim 37.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/EUGENIA WANG/Primary Examiner, Art Unit 1759