DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Nov. 30, 2025 has been entered.
Status of Claims
Claims 1-2, 7-12, 20-22 and 24-27 are pending, wherein claims 1 and 11 are amended and claims 10, 20-22, 25 and 27 are withdrawn. Claims 1-2, 7-9, 11-12, 24 and 26 are being examined on the merits in this office action.
Remarks
Applicant’s amendments and arguments have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-2, 7-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mu et al. (Adv. Mater. 2015, 27, 6928-6933, hereafter “Mu”) in view of Nakagawa et al. (US 20170125844 A1, hereafter referred to as “the ‘844 ref.”) or/and Nakagawa et al. (US 20170005363 A1, hereafter referred to as “the ‘363 ref.”) and Yamamoto et al. (JP 2017045600 A, whose English machine translation is being employed in this office action for citation purposes, hereafter “Yamamoto”).
Regarding claims 1-2, Mu teaches a positive electrode active material satisfying a formula of Na0.9[Cu0.22Fe0.30Mn0.48]O2, (page 6928, right column, line 12 from top) which reads on the formula as claimed when m=0.
As to the limitations regarding water contents as claimed in claims 1 and 2, it is general knowledge that a water content included in a material can be affected by many factors, such as humidity in air when measuring the water content, heating temperature and time during its production process, etc. One of ordinary skill in the art would be readily able to arrive at the claimed water contents through routine experimentation by varying one or more factors mentioned above. The limitations are not patentably distinguishable and inventive in the absence of persuasive evidences that the claimed water contents are critical or cause unexpected results.
It is general knowledge that the water content present in a positive electrode active material should be kept as little as possible. As two examples of many prior arts, the ‘844 ref. ([0044]) and the ‘363 ref. ([0030]) both disclose that a water content can be desirably adjusted to an appropriate amount, and an amount of 400 ppm or less relative to the weight of a positive electrode active material would suppress gas generation resulted from the decomposition of electrolyte additives. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have incorporated the teachings of the ‘844 and ‘363 references into Mu such that a water content of 400 ppm or less is contained in the positive electrode active material of Mu in order to suppress gas generation in the battery. As a result, the range of 400 ppm or less reads on the ranges as claimed in claims 1-2.
Mu as modified further teaches the positive electrode active material has a distribution of average particle size in the range of 10 µm to 30 µm (p6928, right column, line 15 from bottom, Mu). The upper limit of the range of Dv50 as claimed is close to the lower limit of the range of Mu. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP § 2144.05 (I).
As to the limitation about “specific surface area”. It is submitted that one of ordinary skill in the art would readily appreciate that a similar particle size distribution would also suggest a similar specific surface area. The specific surface area of from 0.01 m2/g to 25 m2/g as instantly claimed is reasonably expected since Mu teaches the similar particle size to that as claimed.
Also, in the absence of evidence or unexpected results that the claimed specific surface area is significant or critical, it is not patentably distinguishable since the selection of a specific surface area would appear to require no more than routine investigation by those ordinary skilled in the art. Upon review of the entire disclosure as originally filed, there does not appear to be any criticality to the claimed specific surface area. However, the following alternative rejection is provided in order to even better address the limitation as well as Applicant’s related arguments.
In the same field of endeavor, Yamamoto discloses a similar positive electrode active material ([0010]) for a sodium ion battery have a specific surface area of 1 m2/g to 30 m2/g ([0112], [0041]). “When the specific surface area of the positive electrode active material is within this range, the reaction area of the positive electrode active material is ensured, and the internal resistance of the battery is reduced, thereby minimizing the occurrence of polarization during the electrode reaction.” ([0041]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have incorporated the teachings into Mu as modified such that the positive active material of Mu as modified has a specific surface area of 1 m2/g to 30 m2/g taught by Yamamoto in order to achieve advantages stated above. As a result, the claimed range of 0.01 m2/g to 25 m2/g overlaps that of 1 m2/g to 30 m2/g. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Mu as modified teaches the positive electrode active material has a hexagonal layered crystal structure (page 6928, right column, second paragraph, lines 10-11). Furthermore, Mu as modified teaches the positive electrode active material comprises a characteristic diffraction peak of (003) crystal plane and a characteristic diffraction peak of (104) crystal plane (Fig. 1a, p6929). Since Mao teaches the same composition and structure of the positive electrode active material as claimed, the claimed full width at half maxima of from 0.01[Symbol font/0xB0] to 0.5[Symbol font/0xB0] for the diffraction peak of (003) crystal plane and the claimed full width at half maxima of from 0.01[Symbol font/0xB0] to 0.5[Symbol font/0xB0] for the diffraction peak of (104) crystal plane are reasonably expected. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties or characteristics applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). If the applicant' s product and that of the prior art are identical or substantially identical, the burden shifts to the applicant to overcome the rejection by providing evidence that the prior art product does not necessarily or inherently possess a relied-upon characteristic of the applicant' s claimed product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977), and MPEP § 2112.
Regarding claim 7, Mu as modified teaches the positive electrode active material according to claim 1, wherein the limitation “the positive electrode active material has a powder resistivity of from 10 [Symbol font/0x57]·cm to 90 k[Symbol font/0x57]·cm at a pressure of 12 MPa” represents a property or characteristic of the positive electrode active material. Since Mao teaches the same composition and structure of the positive electrode active material as claimed, the claimed property or characteristic of the positive electrode active material is necessarily present. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties or characteristics applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 8, Mu as modified teaches the positive electrode active material according to claim 1, and the claimed “the positive electrode active material has a tap density of from 1 g/cm3 to 3.5 g/cm3” can be arrived at by one of ordinary skill in the art through routine experimentation by adjusting variables or parameters that affect the value of tap density. It is general knowledge that in addition to the composition of a material, several variables or parameters, such as number of tapping operation, etc., will play roles in determining a final value of tap density of the material.
Regarding claim 9, Mu as modified teaches the positive electrode active material according to claim 1, wherein the positive electrode active material has a sphere or globoid shape (Fig. 1d). However, it is noted that absent persuasive evidence showing that a particular configuration is significant, a mere change in shape is not sufficient to provide a patentable distinction over the prior art since the shape itself may be considered as merely a matter of design choice. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); MPEP 2144.04(IV)(B).
Regarding claims 11-12, Mu teaches a sodium-ion battery (See, at least, Title), comprising a positive electrode plate (e.g., “Al foil”, see Supporting Information of Mu, page 2, bottom), wherein the positive electrode plate comprises a positive electrode active material satisfying a formula of Na0.9[Cu0.22Fe0.30Mn0.48]O2, (page 6928, right column, line 12 from top) which reads on the formula as claimed when m=0.
As to the limitations regarding water contents as claimed in claims 11 and 12, it is general knowledge that a water content included in a material can be affected by many factors, such as humidity in air when measuring the water content, heating temperature and time during its production process, etc. One of ordinary skill in the art would be readily able to arrive at the claimed water contents through routine experimentation by varying one or more factors mentioned above. The limitations are not patentably distinguishable and inventive in the absence of persuasive evidences that the claimed water contents are critical or cause unexpected results.
It is general knowledge that the water content present in a positive electrode active material should be kept as little as possible. As two examples of many prior arts, the ‘844 ref. ([0044]) and the ‘363 ref. ([0030]) both disclose that a water content can be desirably adjusted to an appropriate amount, and an amount of 400 ppm or less relative to the weight of a positive electrode active material would suppress gas generation resulted from the decomposition of electrolyte additives. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have incorporated the teachings of the ‘844 and ‘363 references into Mu such that a water content of 400 ppm or less is contained in the positive electrode active material of Mu in order to suppress gas generation in the battery. As a result, the range of 400 ppm or less reads on the ranges as claimed in claims 11-12.
Mu as modified further teaches the positive electrode active material has a distribution of average particle size in the range of 10 µm to 30 µm (p6928, right column, line 15 from bottom, Mu). The upper limit of the range of Dv50 as claimed is close to the lower limit of the range of Mu. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP § 2144.05 (I).
As to the limitation about “specific surface area”. It is submitted that one of ordinary skill in the art would readily appreciate that a similar particle size distribution would also suggest a similar specific surface area. The specific surface area of from 0.01 m2/g to 25 m2/g as instantly claimed is reasonably expected since Mu teaches the similar particle size to that as claimed.
Also, in the absence of evidence or unexpected results that the claimed specific surface area is significant or critical, it is not patentably distinguishable since the selection of a specific surface area would appear to require no more than routine investigation by those ordinary skilled in the art. Upon review of the entire disclosure as originally filed, there does not appear to be any criticality to the claimed specific surface area. However, the following alternative rejection is provided in order to even better address the limitation as well as Applicant’s related arguments.
In the same field of endeavor, Yamamoto discloses a similar positive electrode active material ([0010]) for a sodium ion battery have a specific surface area of 1 m2/g to 30 m2/g ([0112], [0041]). “When the specific surface area of the positive electrode active material is within this range, the reaction area of the positive electrode active material is ensured, and the internal resistance of the battery is reduced, thereby minimizing the occurrence of polarization during the electrode reaction.” ([0041]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have incorporated the teachings into Mu as modified such that the positive active material of Mu as modified has a specific surface area of 1 m2/g to 30 m2/g taught by Yamamoto in order to achieve advantages stated above. As a result, the claimed range of 0.01 m2/g to 25 m2/g overlaps that of 1 m2/g to 30 m2/g. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Mu as modified teaches the positive electrode active material has a hexagonal layered crystal structure (page 6928, right column, second paragraph, lines 10-11). Furthermore, Mu as modified teaches the positive electrode active material comprises a characteristic diffraction peak of (003) crystal plane and a characteristic diffraction peak of (104) crystal plane (Fig. 1a, p6929). Since Mao teaches the same composition and structure of the positive electrode active material as claimed, the claimed full width at half maxima of from 0.01[Symbol font/0xB0] to 0.5[Symbol font/0xB0] for the diffraction peak of (003) crystal plane and the claimed full width at half maxima of from 0.01[Symbol font/0xB0] to 0.5[Symbol font/0xB0] for the diffraction peak of (104) crystal plane are reasonably expected. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties or characteristics applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). If the applicant' s product and that of the prior art are identical or substantially identical, the burden shifts to the applicant to overcome the rejection by providing evidence that the prior art product does not necessarily or inherently possess a relied-upon characteristic of the applicant' s claimed product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977), and MPEP § 2112.
Claims 24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over the modified Mu, as applied to claims 1 and 11 above, respectively, and further in view of Hu et al. (US 20160293945 A1, hereafter Hu).
Regarding claims 24 and 26, Mu as modified teaches the positive electrode active material according to claim 1 or claim 11, but is silent as to the formulae as claimed. However, Hu discloses that a positive electrode active material for a sodium ion battery can be represented by either a formula containing Na, Cu, Fe, Mn and O (See, e.g., Embodiments 6, 10, 11, and 15-22) or a formula containing Na, Cu, Fe, Mn, Al or Mg, and O (See, e.g., Embodiments 14 and 23). In other words, the positive electrode active materials for a sodium ion battery represented by the two formulae are functional equivalents. It would have been obvious to one of ordinary skill in the art to have employed a positive electrode active material represented by the formula containing Na, Cu, Fe, Mn, Al or Mg, and O as an alternative to the positive electrode active material of Mu represented by the formula containing Na, Cu, Fe, Mn and O, since the substitution of known equivalents for the same purpose is prima facie obvious. See MPEP § 2144.06. Further combining the formula NaxCuiFejMkMyO2+[Symbol font/0x62] ([0009]-[0011], Hu), one of ordinary skill in the art would readily appreciate that a combination of Al and Mg (because M is one or more …, [0010]) can be used as M in the formula. As a result, the formula NaxCuiFejMkMyO2+[Symbol font/0x62], wherein M is the combination of Al and Mg, reads on the formula recited in claims 24 and 26.
Note also that it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357 O.G. 177; 57 USPQ 117, Taklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Response to Arguments
Applicant's arguments filed on Nov. 3, 2025 have been fully considered but they are not persuasive.
1) In response to the argument with respect to 9 µm in the claimed range of Dv50 and 10 µm taught by Mu, there is no evidence of record showing that 9 µm is critical. The specification shows a Dv50 range of from 5 µm to 15 µm, which does not demonstrate 9 µm is particularly significant. The argument does not overcome the prima facie obviousness rejection.
2) Applicant’s arguments regarding “specific full width at half maxima (FWHM) values for the (003) and (104) diffraction peaks, both in the range of 0.01 [Symbol font/0xB0] to 0.5 [Symbol font/0xB0]” (pages 8-10) represent Applicant’s assertions or/and opinions, which cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). The arguments include certain technical assertions or/and opinions unsupported by citation to factual evidence. Such assertions will not be credited. Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009).
3) In response to the argument with respect to different “synthesis method” (pages 9-10), different methods do not necessarily produce different products. Also note that a determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.
4) In response to applicant's argument that references ‘844 and ‘363 are directed to lithium-ion batteries, not sodium-ion batteries, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
5) In response to the arguments related to “the prior arts do not specify a lower bound” of water content, the prior arts’ teaching of 400 ppm or less is sufficient to teaching the claimed range under 103 prima facie case of obviousness. Other arguments in the paragraph bridging pages 10-11 are not commensurate with the scope of the claims.
6) In response the argument with respect to claims 24 and 26, the rejection of the claims has been slightly modified, as presented above. The argument is thus moot.
Conclusion
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727