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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/28/2025 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-8, 16, 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2017/032789A1.
Regarding claim 1, WO2017/032789A1 discloses a lithium positive electrode active material for a high voltage secondary battery (see Title, Abstract), said lithium positive electrode active material comprising at least 94 wt% spinel, said spinel having a net chemical composition of LixNiyMn2-yO4, wherein:
0.95 ≤ x ≤ 1.05;
0.44 ≤ y ≤ 0.47 (at least 95 wt% spinel phase LixNiyMn2-yO4, 0.9 ≤ x ≤ 1.1, and 0.4≤ y ≤ 0.5, see p.16; It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.); and
wherein the lithium positive electrode active material has a capacity of at least 138 mAh/g (equal to or greater than 130 mAhg-1, see p.14; It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.), wherein y is determined 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) (X-ray diffraction, see p.6).
Further regarding claim 1 reciting “said 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” which describes a further transformation of the product (i.e., “…in a half-cell…”) that is not found in the final product. Product-by-process claims are not given patentable weight since the method does not provide additional structure to the claim (see MPEP 2113 and 2114). Product claims are granted patentable weight based on their final structure and not by the method of which it was made or any intermediate products thereof (see MPEP 2113 and 2114). In this instance, as long as the prior art discloses the final structure of the claimed invention, which is the claimed positive electrode active material, the claim is considered to be met.
Regarding claim 2, WO2017/032789A1 discloses all of the claim limitations as set forth above. WO2017/032789A1further discloses where at least 90 wt% of said spinel is crystallized in disordered space group Fd-3m (LixM2O4 means a crystal lattice described by the space groups P4332 and Fd-3m, see p.33, Table 11 shows LixM2O4 above 90 relative fractions by weight).
Regarding claim 3, WO2017/032789A1 discloses all of the claim limitations as set forth above. Further, claim 3 recites “said lithium positive electrode active material 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” which appears to describe an intermediate product or further transformation of the product (i.e., “…in a half-cell…”) that is not found in the final product. Product-by-process claims are not given patentable weight since the method does not provide additional structure to the claim (see MPEP 2113 and 2114). Product claims are granted patentable weight based on their final structure and not by the method of which it was made or any intermediate products thereof (see MPEP 2113 and 2114).
Nevertheless, since WO2017/032789A1 discloses at least 95 wt% spinel phase LixNiyMn2-yO4, 0.9 ≤ x ≤ 1.1, and 0.4≤ y ≤ 0.5 (see p.16) that either overlaps or falls within the claimed chemical composition and also exhibit the claimed capacity, and therefore is substantially the same as the claimed lithium positive electrode active material of claim 3, it will, inherently, display recited properties if it were to be used in said half-cell (see MPEP 2112).
Regarding claim 4-7, WO2017/032789A1 discloses all of the claim limitations as set forth above. Further regarding claims 4-7 reciting said lithium positive electrode active material is calcined so that the lattice parameter a lies between 8.171 and 8.183 Å; said lattice parameter a lies between (-0.1932y+8.2613) A and 8.183 Å; said lattice parameter a lies between (-0.1932y+8.2613) Å and (-0.1932y+8.2667) Å; and said lattice parameter a lies between (-0.1932y+8.2613) Å and (-0.1932y+8.2641) Å, since WO2017/032789A1 discloses at least 95 wt% spinel phase LixNiyMn2-yO4, 0.9 ≤ x ≤ 1.1, and 0.4≤ y ≤ 0.5 and heat treating (see Abstract, p.16), and therefore is substantially the same as the claimed lithium positive electrode active material of claims 4-7, it will, inherently, display recited properties (see MPEP 2112).
Regarding claim 8, WO2017/032789A1 discloses all of the claim limitations as set forth above. WO2017/032789A1 further discloses said lithium positive electrode active material has a tap density equal to or greater than 2.2 g/cm3 (tap density from 2.1 to 3.5 g/cm3, see p.15; It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.).
Regarding claim 16, WO2017/032789A1 discloses all of the claim limitations as set forth above. WO2017/032789A1 further discloses 0.99 ≤ x ≤ 1.01 (see p.16).
Regarding claim 18, WO2017/032789A1 discloses all of the claim limitations as set forth above. Further, claim 18 recites “said lithium positive electrode active material is synthesized from a precursor 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” which describes a precursor/intermediate product that is not found in the final product. Product claims are granted patentable weight based on their final structure and not by the method of which it was made or any intermediate products thereof (see MPEP 2113 and 2114).
Regarding claim 19, WO2017/032789A1 discloses all of the claim limitations as set forth above. WO2017/032789A1 further discloses 0.44 ≤ y < 0.45 (0.4≤ y ≤ 0.5, see p.16; It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.).
Claim(s) 9-10, 31-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2017/032789A1, as applied to claims 1-8, 16, 18-19 above, in view of Jouanneau et al. (US 2012/0068129A1).
Regarding claim 9, WO2017/032789A1 discloses all of the claim limitations as set forth above. Although WO2017/032789A1 further discloses secondary particles having D50 of greater than 250 µm (see p.16), the reference does not disclose D50 of the particles of said lithium positive electrode active material satisfies: 3 µm < D50 < 12µm.
Jouanneau discloses active materials with particles having a particle size preferably 5 to 10 µm, and a specific surface area of between 1 and m2/g, wherein this particular morphology serves to limit the reactivity to the electrolyte at high potential and therefore also contributes to limit the capacitance losses during cycling at ambient temperature and 55°C, the temperature at which reactivity is usually amplified ([0034]-[0035]).
WO2017/032789A1 and Jouanneau are analogous art because they are concerned with the same field of endeavor, namely active materials.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the positive active material of WO2017/032789A1 to have a particle size of 5 to 10 µm, and a specific surface area of between 1 and m2/g because Jouanneau teaches limiting reactivity to the electrolyte, especially at a temperature at which reactivity is amplified.
Regarding claim 10, WO2017/032789A1 discloses all of the claim limitations as set forth above. However, WO2017/032789A1 does not disclose the BET area of said lithium positive electrode active material is below 1.5 m2/g.
Jouanneau discloses active materials with particles having a particle size preferably 5 to 10 µm, and a specific surface area of between 1 and m2/g, wherein this particular morphology serves to limit the reactivity to the electrolyte at high potential and therefore also contributes to limit the capacitance losses during cycling at ambient temperature and 55°C, the temperature at which reactivity is usually amplified ([0034]-[0035]).
WO2017/032789A1 and Jouanneau are analogous art because they are concerned with the same field of endeavor, namely active materials.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the positive active material of WO2017/032789A1 to have a particle size of 5 to 10 µm, and a specific surface area of between 1 and m2/g because Jouanneau teaches limiting reactivity to the electrolyte, especially at a temperature at which reactivity is amplified.
Regarding claims 31-32, WO2017/032789A1 discloses all of the claim limitations as set forth above. Further regarding claims 31-32 reciting said lithium positive electrode active material is calcined so that the lattice parameter a lies between 8.171 and 8.183 Å; said lattice parameter a lies between (-0.1932y+8.2613) A and 8.183 Å, since WO2017/032789A1 discloses at least 95 wt% spinel phase LixNiyMn2-yO4, 0.9 ≤ x ≤ 1.1, and 0.4≤ y ≤ 0.5 and heat treating (see Abstract, p.16), and therefore is substantially the same as the claimed lithium positive electrode active material of claims 4-7, it will, inherently, display recited properties (see MPEP 2112).
Although WO2017/032789A1 further discloses secondary particles having D50 of greater than 250 µm (see p.16), the reference does not disclose D50 of the particles of said lithium positive electrode active material satisfies: 3 µm < D50 < 12µm.
Jouanneau discloses active materials with particles having a particle size preferably 5 to 10 µm, and a specific surface area of between 1 and m2/g, wherein this particular morphology serves to limit the reactivity to the electrolyte at high potential and therefore also contributes to limit the capacitance losses during cycling at ambient temperature and 55°C, the temperature at which reactivity is usually amplified ([0034]-[0035]).
WO2017/032789A1 and Jouanneau are analogous art because they are concerned with the same field of endeavor, namely active materials.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the positive active material of WO2017/032789A1 to have a particle size of 5 to 10 µm, and a specific surface area of between 1 and m2/g because Jouanneau teaches limiting reactivity to the electrolyte, especially at a temperature at which reactivity is amplified.
Further regarding claim 31, WO2017/032789A1 does not disclose the BET area of said lithium positive electrode active material is below 1.5 m2/g.
Jouanneau discloses active materials with particles having a particle size preferably 5 to 10 µm, and a specific surface area of between 1 and m2/g, wherein this particular morphology serves to limit the reactivity to the electrolyte at high potential and therefore also contributes to limit the capacitance losses during cycling at ambient temperature and 55°C, the temperature at which reactivity is usually amplified ([0034]-[0035]).
WO2017/032789A1 and Jouanneau are analogous art because they are concerned with the same field of endeavor, namely active materials.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the positive active material of WO2017/032789A1 to have a particle size of 5 to 10 µm, and a specific surface area of between 1 and m2/g because Jouanneau teaches limiting reactivity to the electrolyte, especially at a temperature at which reactivity is amplified.
Claim(s) 11, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2017/032789A1, as applied to claims 1-8, 16, 18-19 above, in view of Majima et al. (EP1057783).
Regarding claim 11, WO2017/032789A1 discloses all of the claim limitations as set forth above. However, WO2017/032789A1does not disclose said lithium positive electrode active material is made up of particles, said particles being characterized by an average aspect ratio below 1.6.
Majima discloses active material having a spherical shape with homogeneous diameter wherein the roundness of the projective particle image is 0.950 or more, which improves handling and applicability on collectors as compared with those having a sheet-like or non-homogeneous shape. The roundness of less than 0.950 undesirably affects applicability ([0044]).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the roundness of the particle in order to arrive at a desirable handling and applicability of said particles on collectors (see MPEP 2144.05). It is further noted that as the roundness of the particle tends toward 1, the aspect ratio of the particle also tends towards 1.
Regarding claim 13, WO2017/032789A1 discloses all of the claim limitations as set forth above. However, WO2017/032789A1 does not disclose the lithium positive electrode active material is made up of particles, said particles being characterized by a circularity above 0.55.
Majima discloses active material having a spherical shape with homogeneous diameter wherein the roundness of the projective particle image is 0.950 or more, which improves handling and applicability on collectors as compared with those having a sheet-like or non-homogeneous shape. The roundness of less than 0.950 undesirably affects applicability ([0044]).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the roundness of the particle in order to arrive at a desirable handling and applicability of said particles on collectors (see MPEP 2144.05).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2017/032789A1, as applied to claims 1-8, 16, 18-19 above, in view of Harada et al. (JP2012234772, refer to English machine translation).
Regarding claim 12, WO2017/032789A1 discloses all of the claim limitations as set forth above. However, WO2017/032789A1does not disclose the lithium positive electrode active material is made up of particles, said particles being characterized by a roughness below 1.35.
Harada discloses lithium batteries wherein powder has roughness characterized by a preferable range of 0.3-0.8 nm which have less damaged surfaces but can be manufactured economically ([0026]).
WO2017/032789A1 and Harada are analogous art because they are concerned with the same field of endeavor, namely active materials.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the positive active material of WO2017/032789A1 to have a roughness of 0.3-0.8 nm because Harada less damaged surfaces while providing economical manufacturing.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2017/032789A1, as applied to claims 1-8, 16, 18-19 above, in view of Kang (US 2009/0208847A1).
Regarding claim 14, WO2017/032789A1 discloses all of the claim limitations as set forth above. However, WO2017/032789A1does not disclose the lithium positive electrode active material is made up of particles, said particles being characterized by a solidity above 0.8.
Because Kang discloses active material particles, wherein good solidity improves high rate discharge characteristics and capacity ([0021]), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the particle solidity in order to improve high rate discharge characteristics and capacity (see MPEP 2144.05).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2017/032789A1, as applied to claims 1-8, 16, 18-19 above, in view of Elhassid et al. (US 2016/0049652).
Regarding claim 15, WO2017/032789A1 discloses all of the claim limitations as set forth above. However, WO2017/032789A1does not disclose the lithium positive electrode active material is made up of particles, said particles being characterized by a porosity below 3%.
Elhassid discloses particles having a hollowness of less than about 1%, wherein significant hollowness affects macroscopic properties of the powder such as tap or bulk density, physical and chemical properties such as particle size, surface chemistry and surface morphology and bulk density ([0033], [0035]).
WO2017/032789A1 and Elhassid are analogous art because they are concerned with the same field of endeavor, namely active materials.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the positive active material of WO2017/032789A1 to have hollowness of less than about 1% because Elhassid teaches maintaining hollowness such that certain macroscopic properties of the powder are not significantly affected.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 11/28/2025 is insufficient to overcome the rejection of claims 1-16, 18-19, 31-32 based upon WO2017/032789A1 as set forth in the last Office action because:
The applicants argue simultaneously achieving ≥138 mAh/g and low degradation ≤4% capacity loss is inherently contradictory and unexpected (see 1.132 Declaration filed 11/28/2025 on p.2-6).
The applicants further cite paragraph [0010] and Fig. 1a-5f of the instant application show the effects of various parameters on the battery cell with the LNMO as cathode material (see p.2-3).
The applicants argue claimed Ni content of 0.44 to 0.47 is a narrow, critical range that is essential for balancing high energy density with low degradation citing paragraph [0010], Fig. 1a, Table 1 (see p.4-6).
The applicants argue 1. Direct energy-density benefit and 2. Practical battery-operation benefit (see p.6), and discuss the effect of lattice parameter shown in Fig. 2a (see p.6).
This is not found to be persuasive because the data relied upon by the applicant and arguments set forth based on said data are not commensurate in scope with the claims.
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) for examples of cases where indirect comparative testing was found sufficient to rebut a prima facie case of obviousness.
The patentability of an intermediate may be established by unexpected properties of an end product “when one of ordinary skill in the art would reasonably ascribe to a claimed intermediate the ‘contributing cause’ for such an unexpectedly superior activity or property.” In re Magerlein, 602 F.2d 366, 373, 202 USPQ 473, 479 (CCPA 1979). “In order to establish that the claimed intermediate is a ‘contributing cause’ of the unexpectedly superior activity or property of an end product, an applicant must identify the cause of the unexpectedly superior activity or property (compared to the prior art) in the end product and establish a nexus for that cause between the intermediate and the end product.” Id. at 479.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at “elevated temperatures” using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term “elevated temperatures” encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). See MPEP § 716.02(b) and § 716.02(d).
In this instance, the examiner notes that Table 1 and Fig. 1a-5f of the instant application shows the correlation between degradation per 100 cycles at 55°C measured in half cells as described in Example A (see paragraph [0125] of the instant application). Paragraphs [0128]-[0130] of the instant application discloses electrochemical tests are done using 2032 type coin cells comprising thin composite positive electrodes and metallic lithium negative electrodes, wherein each of the electrodes are made using specific materials in specific combination amounts, etc. Thus, the claimed capacity degradation is a measured characteristic of a cell comprising a positive electrode including the positive electrode active material. Since the instant claims are directed to a lithium positive electrode active material and not a cell comprising the same, the data shown in Table 1 and Fig. 1a-5f of the instant application are not commensurate in scope with the broadest claim.
Further, the claim limitation directed to capacity degradation, i.e., “said 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” describes a further transformation of the product (i.e., “…in a half-cell…”) that is not found in the final product. Product-by-process claims are not given patentable weight since the method does not provide additional structure to the claim (see MPEP 2113 and 2114). Product claims are granted patentable weight based on their final structure and not by the method of which it was made or any intermediate products thereof (see MPEP 2113 and 2114). In this instance, as long as the prior art discloses the final structure of the claimed invention, which is the claimed positive electrode active material, the claim is considered to be met.
Thus, arguments set forth in the 1.132 Declaration filed 11/28/2025 relying on characteristics of a battery cell that is not required by the instant claims are not found to be persuasive.
The applicants argue high performance results from a finely tuned, multi-step synthesis (see p.3, 6); the claimed subject matter details a specific and narrow combination of x/y stoichiometry, precursor characteristics, calcination and cooling regimes, disorder level and lattice parameter range (see p.3-4); 1. Direct energy-density benefit and 2. Practical battery-operation benefit (see p.6), and discuss the effect of lattice parameter shown in Fig. 2a (see p.6).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., arguments based on method steps, arguments based on a specific and narrow combination of x/y stoichiometry, precursor characteristics, calcination and cooling regimes, disorder level and lattice parameter range, arguments directed to battery cells and arguments directed to lattice parameter) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Response to Arguments
Applicant's arguments filed 11/28/2025 have been fully considered but they are not persuasive.
With respect to applicant’s arguments which closely follows the contents of the Declaration under 37 CFR 1.132 filed 11/28/2025 (see Remarks filed 11/28/2025), this is not found to be persuasive for the same reasons as stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES LEE whose telephone number is (571)270-7937. The examiner can normally be reached M-F: 9AM - 5PM.
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/James Lee/Primary Examiner, Art Unit 1725 12/23/2025