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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2 and 4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,522,188 in view of Saka et al. (US 2016/0172663). U.S. Patent No. 11,522,188 claims in claim 1, a positive electrode active material comprising a lithium transition metal composite oxide containing the 80% or more of Ni and 0.1-1.5 mol % of B where B and at least one element M1 are present on at least the surfaces of the particles of the lithium transition metal composite oxide comprising 1st particles comprising larger particles having a particle size D70 and 2nd particles having a smaller particle size than the particle size D30. U.S. Patent No. 11,522,188 claims in claim 2, wherein the lithium transition metal composite oxide has the same formula as instant claim 2. U.S. Patent No. 11,522,188 claims in claims 1 and 3, wherein on the surfaces of the particles of the lithium transition metal composite oxide, M1 is present in the form of a modified oxide represented by LiiM1jOk where B and at least one element M1 are present on at least the surfaces of the particles of the lithium transition metal composite oxide. U.S. Patent No. 11,522,188 claims in claim 5, wherein the ratio of (B1/B2) of the molar fraction (B1) of B on the surface of the 1st particles to the molar fraction (B2) of B on the surfaces of the 2nd particles is 1.1 or more. U.S. Patent No. 11,522,188 claims in claim 6, instant claim 4, a nonaqueous secondary battery comprising the positive electrode containing the positive electrode active material of claim 1. U.S. Patent No. 11,522,188 claims the claimed invention teaching a positive electrode active material comprising a lithium transition metal composite oxide comprising 1st particles and 2nd particles with a 1st particles have a particle diameter (D70) and the 2nd particles have a diameter (D30) comprising the same lithium-transition metal composite oxide containing 80% or more of nickel as claimed in instant claims 1 and 2 and claims B being present on at least a particle surface of the lithium transition metal composite oxide where B is present in the state of Li and B as claimed in instant claim 1 as explained above but does not specifically claim that the lithium transition metal composite oxide, wherein the 2nd particles contain D30 particles in a range of 3-13 µm and the 1st particles contain D70 particles in the range of 9-19 µm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention produce D30 particles in a range of 3-13 µm and produce D70 particles in the range of 9-19 µm, since it has been held that where 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. U.S. Patent No. 11,522,188 claims the claimed invention as explained above but does not specifically claim in the claims that the thickness of the boron compound layer on the surfaces of the particles is 10 nm. Saka et al. teaches in Example 8, a positive electrode active material comprising a lithium nickel composite oxide particle comprising LiNixCoyMnzWbAgO2 coated with an oxide of nickel with the thickness of 10 nm. Saka et al. teaches adding an appropriate amount of the coating layer on the surface of the lithium composite oxide can keep the reactivity between the positive electrode and a nonaqueous electrolyte at a low level without reducing the resistance reduction effect of the tungsten addition. As a result, the battery can combine high battery performance (high input/output performance) in a normal use and endurance against overvoltage. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a thickness of 10 nm of the boron compound on the surfaces of the particles because Saka et al. teaches adding an appropriate amount of the coating layer on the surface of the lithium composite oxide can keep the reactivity between the positive electrode and a nonaqueous electrolyte at a low level without reducing the resistance reduction effect of the tungsten addition producing a battery that combines high battery performance (high input/output performance) in a normal use and endurance against overvoltage and since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
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 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 Laura Weiner whose telephone number is (571)272-1294. The examiner can normally be reached 9 am-5 pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723