3DETAILED 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 .
Response to Amendment
In response to the amendment received May 26, 2026:
Claim 8 has been canceled as per Applicant’s request. Claims 1-5, 7, 9-23, 36-37, 39-49, and 53-54 are pending with claims 39-49 withdrawn as being drawn to a non-elected invention.
The previous claim objections have been withdrawn in light of the amendment.
The previous 112 rejections have been withdrawn in light of the amendment.
The declaration under 37 CFR 1.132 filed May 26, 2026 is insufficient to overcome the rejection of the claims based upon WO 2017/032789 (von Bulow et al.) optionally in view of US 2015/0147652 (Shibamaru et al.) as set forth in the last Office action because: the declaration does not provide convincing evidence that the prior art does not render obvious the claimed invention and does not provide convincing evidence of unexpected results. See the response to arguments below for more details.
The core of the previous prior art rejections is maintained with slight changes made in light of the amendment. Thus, the action is final.
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, 9-10, 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 a 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 a 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 a 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 a 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 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 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, 9-10, 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 a 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 a 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 a 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 a 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 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 a 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) 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.
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.
Response to Arguments
Applicant's arguments/May 26, 2026 Declaration have been fully considered but they are not persuasive.
With respect to claim 1 Applicant argues:
Applicant has discovered a previous unrecognized coupled relationship between nickel concentration and lattice structure with the claimed relationship: a ≥ -0.193y + 8.2613 (section A/pp12-13 of the remarks; section 3 of the May 26, 2026 Declaration).
Examiner submits that the nickel amount as well as the lattice parameter has been rendered obvious in the rejection (nickel amount the same in the prior art; similar method of making which would have yielded the same value, rendered obvious the claimed value (close non-overlapping ranges), or alternately a reference sets the lattice parameter as a result effective variable). The rejection to claim 1 for full details, incorporated herein but not reiterated herein. This argument does not address how the prior art does not meet the limitation. Thus, the argument/declaration is not persuasive, and rejection of record is maintained.
Applicant argues von Bulow’s technical disclosure points away from the claimed nickel window, recognizing von Bulow’s teaching of 0.4 <y<0.5, taking fig. 10 of the prior art and example C of the present application (applying 4V = 1-2y), and concluding that y is approximately 0.40-0.415 (section B/pp13-14 of the remarks; section 5 of the May 26, 2026 Declaration).
Examiner respectfully disagrees. It is unclear how a teaching of 0.4 <y < 0.5 (recognized by Applicant) becomes only approximately 0.40 to 0.415. Examiner submits that it is unclear how the von Bulow’s fig. 10 has been applied to arrive at Applicant’s conclusion of the y value. Additionally, Examiner is unsure why only fig. 10 was considered, when 0.4 < y < 0.5 is appreciated by the prior art (see p 16, ll 26-30). Examiner submits that 4V = 1-2y does not appear to be present in Example C in the instant application. Additionally, it is unsure why/how Applicant is manipulating von Bulow’s et al.’s teaching to arrive at values different than that embodied by von Bulow. Thus, the argument/declaration is not persuasive, and rejection of record is maintained.
Applicant argues that von Bulow et al.’s teaching of a lattice parameter a around 8.2 Å only suggests a range of 8.195-8.205 Å and is different from a lattice parameter a is between 8.171 and 8.183 Å and is between (-0.1932y+8.2613) Å and 8.183 Å, citing fig. 1c to show that small changes in lattice parameter correspond to substantial changes in material behavior (section C/ p14 of the remarks; section 7 of the May 26, 2026 Declaration).
Examiner respectfully disagrees. Examiner would like to know how Applicant came to the conclusion around 8.2 Å concretely equates to 8.195-8.205 Å. Additionally, the rejection addresses the lattice parameter in three different manners – a similar method of making which would have yielded the claimed range, or at the very least would have rendered obvious the claimed value (close non-overlapping ranges), or alternately a reference sets the lattice parameter as a result effective variable. The argument fails to address the prior art at all. Applicant’s mention of fig. 1c, specifically a lattice parameter of 8.169 Å is not what Applicant recognizes to be within von Bulow’s value of lattice parameter a, thus it is unsure how the data shows that the rejection does not render the claimed invention obvious. Thus, the argument/declaration is not persuasive, and rejection of record is maintained.
Applicant argues:
(8) that the subject matter in claim 1 is not a result effective variable as lattice parameter is linked to nickel concentration in the spinel and within the raw material, as well as parameters linked to the making of the material;
(9) wherein a non-linear behavior is achieved (figs. 1a-c, 2a-b) show a non-trivial balance between energy density and structural stability;
(10) the range of y being between 0.44-0.47 is critical as an optimum nickel amount (shown in fig. 1a and table 1 and the relationship to degradation);
(11) the range for y is critical and non-obvious;
(12) that von Bulow does not recognize behavior of both nickel concentration and lattice parameter be jointly constrained;
(13) improvements at y=0.43 (0.9%), 0.47 (2%), and 0.5 (3%) are seen over y =0.4;
(14) that practical usable energy density grains become substantially larger y=0.43 (7.5%), 0.47 (17.5%), and 0.5 (25%),
(15) that applicant recognizes too little nickel sacrifices energy density, while too much nickel causes degradation and instability;
(16) that morphology effects are deliberately controlled and isolated during synthesis (citing example 4 that demonstrates that morphology must be held substantially constant to evaluate the effect of chemistry on degradation behavior);
(17) morphology affects electrochemical performances, and prior art does not isolate the relevant chemical mechanisms;
(18) Applicant’s work details electrochemical characterization, crystallographic analysis, and controlled synthesis to uncover the compositional-structural regime;
(19) the claimed subject matter is not predictable form the board and generalized disclosures of the art
(section D/pp 15-18; May 26, 2026 Declaration sections 8-19).
Examiner respectfully disagrees.
With respect to (8): von Bulow et al. teaches parameters of the method of making. It is unsure why the claimed invention achieved is non-obvious from von Bulow et al. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With respect to (9): von Bulow et al. teaches an overlapping nickel amount as well as a similar method of making as that of the instant application. It is unsure how obviousness is not maintained. Additionally, it is unsure how unexpected results consistent with MPEP 716.02 has been shown (i.e. 716.02(b) – applicant’s burden to establish that results are unexpected and significant; applicant’s burden to explain proffered data; 716.02(d) - unexpected results commensurate in scope with the claimed invention, wherein sufficient data within and outside the claimed range should be compared; 716.02(e) – comparison with the closest prior art).
With respect to (10): Examiner expresses confusion, as Applicant is present nickel as optimization, wherein previously Applicant has stated that the claimed invention is not optimization. Again, von Bulow et al. teaches an overlapping nickel amount as well as a similar method of making as that of the instant application. It is unsure how obviousness is not maintained. Additionally, it is unsure how unexpected results consistent with MPEP 716.02 has been shown (i.e. 716.02(b) – applicant’s burden to establish that results are unexpected and significant; applicant’s burden to explain proffered data; 716.02(d) - unexpected results commensurate in scope with the claimed invention, wherein sufficient data within and outside the claimed range should be compared; 716.02(e) – comparison with the closest prior art).
With respect to (11): von Bulow et al. teaches an overlapping nickel amount as well as a similar method of making as that of the instant application. It is unsure how obviousness is not maintained. Additionally, it is unsure how unexpected results consistent with MPEP 716.02 has been shown (i.e. 716.02(b) – applicant’s burden to establish that results are unexpected and significant; applicant’s burden to explain proffered data; 716.02(d) - unexpected results commensurate in scope with the claimed invention, wherein sufficient data within and outside the claimed range should be compared; 716.02(e) – comparison with the closest prior art).
With respect to (12): von Bulow et al. teaches parameters of the method of making and has nickel amounts. It is unsure why the claimed invention achieved is non-obvious from von Bulow et al. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With respect to (13): Examiner is unsure how unexpected results consistent with MPEP 716.02 has been shown. MPEP 716.02(b) states that its applicant’s burden to establish that results are unexpected and significant; applicant’s burden to explain proffered data; it is unsure how a maximum of a 3% improvement is unexpected. Additionally y=0.43 lies outside of the claimed range, thus the data fails MPEP 716.02(d)’s requirement (unexpected results commensurate in scope with the claimed invention, wherein sufficient data within and outside the claimed range should be compared). Applicant has not made a comparison to the closest prior art. Thus, MPEP 716.02(e) is not met. Additionally, it is not clear where this data is obtained from.
With respect to (14): Examiner is unsure how unexpected results consistent with MPEP 716.02 has been shown. MPEP 716.02(b) states that its applicant’s burden to establish that results are unexpected and significant; applicant’s burden to explain proffered data;. Additionally y=0.43 lies outside of the claimed range, thus the data fails MPEP 716.02(d)’s requirement (unexpected results commensurate in scope with the claimed invention, wherein sufficient data within and outside the claimed range should be compared). Applicant has not made a comparison to the closest prior art. Thus, MPEP 716.02(e) is not met. Additionally, it is not clear where this data is obtained from.
With respect to (15): von Bulow et al. teaches parameters of the method of making and has nickel amounts. It is unsure why the claimed invention achieved is non-obvious from von Bulow et al. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With respect to (16): von Bulow et al. teaches parameters of the method of making and has nickel amounts. It is unsure why the claimed invention achieved is non-obvious from von Bulow et al. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With respect to (17): von Bulow et al. teaches an overlapping nickel amount as well as a similar method of making as that of the instant application. It is unsure how obviousness is not maintained. Additionally, it is unsure how unexpected results consistent with MPEP 716.02 has been shown (i.e. 716.02(b) – applicant’s burden to establish that results are unexpected and significant; applicant’s burden to explain proffered data; 716.02(d) - unexpected results commensurate in scope with the claimed invention, wherein sufficient data within and outside the claimed range should be compared; 716.02(e) – comparison with the closest prior art). A statement that the prior art does not teach a chemical mechanism does not have any bearing on the claimed product.
With respect to (18): von Bulow et al. teaches parameters of the method of making and has nickel amounts. It is unsure why the claimed invention achieved is non-obvious from von Bulow et al. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise.
With respect to (19): von Bulow et al. teaches parameters of the method of making and has nickel amounts. It is unsure why the claimed invention achieved is non-obvious from von Bulow et al. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise.
Thus the arguments are not persuasive, and the rejection of record is maintained.
Applicant argues:
(20) that the positive active material is calcined such that the claimed lattice parameters are achieved providing a figure and concluding that von Bulow does not teach the claimed invention;
(21) again concluding around 8.2 Å only suggests a range of 8.195-8.205 Å, stating that only fig. 10 has data regarding nickel content, which is calculated as y is about 0.40-0.415.
(22) concluding that von Bulow is significantly different than the claimed scope and provides no guidance to arrive at the claimed invention
(section D/pp18-19 of the remarks; sections 20-22 of the May 26, 2026 Declaration).
Examiner respectfully disagrees.
With respect to (20): von Bulow et al. teaches an overlapping nickel amount as well as a similar method of making as that of the instant application. It is unsure how obviousness is not present. Additionally, regarding the graph; the square Applicant ascribes to the prior art is the conclusion of assuming around 8.2 Å concretely equates to 8.195-8.205 Å, wherein no proof or reasoning is given that this is true. Additionally, as set forth above, y in the range of 0.4 to 0.5 is recognized by von Bulow et al. Accordingly this graph does not accurately display what von Bulow et al. encompasses.
With respect to (21): Examiner would like to know how Applicant came to the conclusion around 8.2 Å concretely equates to 8.195-8.205 Å. Additionally, fig. 10 does not negate the teaching of von Bulow in general (0.4 < y < 0.5; p 16). It is improper to apply calculations to the prior art (outside of the prior art) and conclude that the teaching within is not correct (i.e. yields a different y value). It is uncertain how the equation was obtained, how it was applied to fig. 10 to come to a concrete value, when a range regarding y is taught.
With respect to (22), in light of the above, Examiner submits that it is unclear that the prior art and the claimed invention are significantly different.
Thus, the arguments are not persuasive, and the rejection of record is maintained.
Applicant argues:
(23) Shibamura is to a different spinel system, and thus the lattice parameter of Shibamura would not predict behavior in the system of von Bulow,
(24) Shibamura addresses a different technical problem (gas generation during high-temperature cycling, not compositional-structural stability).
Examiner respectfully disagrees.
With respect to (a): 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. As both materials insert lithium ions, the combination is proper (as they are used for the same purpose). Additionally, 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). Accordingly, the reason for having a certain lattice parameter is set forth and is applicable – as both active materials are meant to insert lithium ions. Having this characteristic in any spinel would be desirable.
With respect to (24): Reasons for combining Shibamura has been clearly set forth. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Thus the arguments are not persuasive, and the rejection is maintained.
Applicant argues that Shibamura does not show that the lattice constant is a result effective variable, as it is not directed towards the compositional-structural regime of the instant application, due to the non-linear relationship of fig. 1c, the degradation reduction achieved when changing the lattice parameter, which is not predictable (remarks section G/pp 20-22; section 25 of the May 26, 20266 Declaration).
Examiner respectfully disagrees. First Examiner would like to note that this argument is not directed towards any of the other rejections set forth (i.e. those that do not rely on Shibamura, and the rejection where Shibamura provides motivation). However, 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). The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As both active materials are meant to insert lithium ions, having a lattice constant to allow for this function would be applicable to any spinel; such a characteristic and result would be desirable. Thus the argument is not persuasive, and the rejection of record is maintained.
Applicant argus that claim 7 has been amended similar to claim 1 and is patentable for the same reasons as claim 1.
Examiner submits that the arguments/May 26, 2026 Declaration as applied to claim 1 has been addressed in full above. Those responses are incorporated herein but are not reiterated herein for brevity’s sake.
Applicant requests to hold the double patenting rejection in abeyance in light of the copending nature of the related application.
Examiner submits that a provisional double patenting rejection should be maintained until it is the only rejection remaining. See MPEP 804((I)(B)(2).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:00 -7:30 (AM) and 9:45-3:15 ET.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759
Prosecution Insights