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 . If status of the application as subject to 35 U.S.C. 102 and 103 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-16 are pending in the application. Claims 1-10 and 16 are withdrawn. Claims 11-14 were rejected in the office action mailed 10/24/2025. Claims 11-14 are presently examined.
Response to Amendment / Arguments
The amendment filed 1/22/2026, in response to the 10/24/2025 office action, has been entered. Applicant’s claim amendment overcame the 35 U.S.C. 102 rejections; nevertheless, the claims remain rejected under 35 U.S.C. 103 due to additional prior art.
Applicant referred to Tables 2 & 3 in the present specification (paragraphs 127 & 136), which illustrate that Examples 1 & 2, with thickness within the newly-claimed 25.5-40 nm range, have superior results. Following is a partial combination of these Tables 2 & 3, with superior results in bold font:
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256
484
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These superior results, however, are insufficient to overcome the present 35 U.S.C. 103 obviousness rejection because the present claims are not commensurate in scope with these examples. See MPEP 716.02(d).
Claim 11 requires “a lithium transition metal oxide” and “a metal phosphate compound having a melting point of 500°C or lower”. In all present specification examples, these two chemicals are LiNi0.8Co0.1Mn0.1O2 and BiPO4, respectively. It is unclear whether the superior results would occur (A) with all lithium transition metal oxides, or only with LiNi0.8Co0.1Mn0.1O2, or (B) with all low-melting point metal phosphates, or only with BiPO4.
Examiner encourages Applicant to (A) amend claim 11 so that it is commensurate in scope the examples in the present specification or (B) provide additional examples through affidavit proving superior results with all lithium transition metal oxides and all low-melting point metal phosphates, plus other claim 11 limitations.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 11-14 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over “Effect of Voltage Range and BiPO4 Coating on the Electrochemical Properties of LiNi0.8Co0.15Al0.05O2” (Liu) in view of CN109192971A machine translation (Hao).
Liu teaches the following claim 1 limitations:
A positive electrode active material (page 7660, left column: cathode material) comprising:
a lithium transition metal oxide (page 7660, left column: LiNi0.8Co0.15Al0.05O2); and
a coating layer (page 7660-7661, left columns: BiPO4 coating) positioned on a surface of the lithium transition metal oxide (LiNi0.8Co0.15Al0.05O2)…
wherein a surface of the coating layer has polarity (BiPO4 is polar)
Claim 1 also recites:
a coating layer… formed by a reaction between a metal phosphate compound having a melting point of 500°C or lower and lithium of the lithium transition metal oxide
Liu’s LiNi0.8Co0.15Al0.05O2 would dissociate into Li+ ions, which would react with the coating in the following reaction:
BiPO4 + 3Li+ + 3e- [Wingdings font/0xE0] Bi + Li3BiPO4
BiPO4 has a melting point of 500°C or lower, based on teaching of the present specification (paragraph 41), and based on online literature1.
Claim 11 also states:
wherein the thickness of the coating layer is from 25.5 nm to 40 nm
Liu teaches 10 nm coating thickness (page 7661, right column: 10 nm), which is close to, but outside of, the claimed 25.5 nm to 40 nm range. MPEP 2144.05 (I) provides the law for this issue:
“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)… ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”
Given that there is only a slight difference between Liu’s 10 nm and 25.5 nm to 40 nm in claim 11, and further given the fact that no criticality is disclosed for the claimed range, that is commensurate with claim scope, the claimed range is an obvious variant of Liu’s 10 nm.
Hao provides additional guidance. Hao is directed to LiNi0.8Co0.1Mn0.1O2 positive electrode material coated with bismuth phosphate (page 1, lines 34-36). Hao teaches that if the bismuth phosphate coating is too thick, it will obstruct lithium ion transmission, and if it is too then small, then there will be defective surface coverage (page 4, lines 29-32). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to optimize Liu’s coating thickness, and to achieve the claimed range, as taught by Hao.
With regard to claim 12, modified Liu teaches the limitations of claim 11 as noted above. Liu also teaches the following claim 12 limitation:
the metal phosphate compound is BiPO4, and the coating layer comprises Li-Bi-P-O complex (see discussion under claim 11)
With regard to claims 13-14, modified Liu teaches the limitations of claim 11 as noted above. Liu also teaches the following limitations of claims 13-14 (page 7660, left column: lithium-ion batteries):
Claim 13
A positive electrode for a lithium secondary battery comprising the positive electrode active material according to claim 11.
Claim 14
A lithium secondary battery comprising the positive electrode for a lithium secondary battery according to claim 13.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
1 https://prochemonline.com/product/bismuthphosphate-1261/