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 Amendment
The Amendment filed on 4/29/2026 has been entered. Claims 10 and 11 are added. Claims 1-6 and 9-11 remain pending in the application. Applicant’s amendments to the claims have the objection previously set forth in the Non-Final Office Action mailed 2/24/2026.
Claim Objections
Claims 10 and 11 are objected to because of the following informalities: Claims 10 and 11 both recite "The A positive electrode active material..." (emphasis added) in line 1. This should read “The positive electrode active material…”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites the limitation “the ratio of the number of moles of nickel to the total number of moles of metals other than lithium is 0.5 or less in the first region” in lines 3-4. This claim presents a broader range for the ratio of the number of moles of nickel to the total number of moles of metals other than lithium in the first region than that recited in the parent claim. For example, claim 10 allows for the ratio of the number of moles of nickel to the total number of moles of metals other than lithium to be 0.1, which is prohibited in parent claim 6 by the requirement of 0.2 or more. For compact prosecution purposes, claim 10 will be examined as if it recited that the ratio of the number of moles of nickel to the total number of moles of metals other than lithium is 0.2 or more and 0.5 or less in the first region.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 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 considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 6, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2017/013668, hereinafter "Kim") in view of Ogawa et al. (WO 2018/088320, referring to US 2019/0319257 as translation thereof, hereinafter "Ogawa"), Seo et al. (US 2022/0190316, hereinafter "Seo"), and Chae et al. (US 2020/0335787, hereinafter "Chae").
Regarding claim 6, Kim teaches a positive electrode active material comprising a core part and a surface part for a lithium secondary battery [Abstract; entire disclosure relied upon]. Kim teaches that the positive electrode active material may be a lithium transition metal composite oxide compound represented by the formula:
LiNixCoyMnzO2
wherein 0.40≤x≤0.70, 0.05≤y≤0.35, and 0.25<z≤0.40 [0045-0046]. Kim also teaches that the compound may be LiNi0.5Co0.2Mn0.3O2 [0047], which is encompassed by the recited formula. Kim discloses that the lithium secondary battery may include an organic (“non-aqueous”) electrolyte [0098]. Kim teaches that the positive electrode active material may have a layered structure [0050, 0105]. Kim further teaches the surface part is at a surface of the active material (“second region”) [0041]. Kim discloses that the amount of nickel in the surface part may be in a range of about 30 mol % to about 40 mol % [0024], or in other words, that the ratio of a number of moles of nickel to a total number of moles of metals other than lithium is about 0.3 to about 0.4, which is within the recited range. Kim discloses that the amount of cobalt in the surface part may be in a range of about 30 mol % to 40 mol % [0025], or in other words, that the ratio of a number of moles of cobalt to a total number of moles of metals other than lithium is about 0.3 to about 0.4, which is within the recited range. Kim teaches that the amount of cobalt may increase in a direction from the core part to the surface part [0008], and that amount of nickel may decrease in a direction from the core part to the surface part [0009]. Kim teaches that the amount of nickel in the core part may be about 50 mol % or higher [0024], which overlaps the recited range, and Fig. 3 shows that the amount of nickel throughout the positive electrode active material is always above 30 mol %, but does not specifically teach an amount of nickel at a depth of 500 nm from the surface of the positive electrode active material. However, Kim teaches that when a nickel-rich positive electrode active material is used in the core part, a capacity of the positive electrode active material may be improved, and that by gradually or continuously decreasing a concentration of nickel toward the surface part, the stability of the positive electrode active material may be improved [0043], making the amount of nickel at different depths from the surface a result effective variable.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the positive electrode active material taught by Kim to optimize the amount of nickel at a depth of 500 nm from the surface of the positive electrode active material through routine experimentation, in order to optimize the concentration gradient of nickel. According to guidance issued in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (see MPEP 2144.05 II A). The motivation for doing so would have been to improve the improve the capacity and structural stability of the positive electrode active material.
Kim is silent regarding a ratio D50-/DSEM of the positive electrode active material.
Ogawa teaches analogous art of a positive electrode active material for a non-aqueous electrolyte secondary battery [0012], comprising lithium transition metal composite oxide particles [0045]. Ogawa teaches that the positive electrode active material particles have a ratio of D50/DSEM of 1 or more and 4 or less, wherein D50 is a 50 % particle diameter in a volume-based cumulative particle size distribution and DSEM is an average particle diameter based on electron microscope observation [0012].
Ogawa teaches that when the D50/DSEM ratio is within the disclosed range, the composite oxide particles are single particles [0046]. Ogawa teaches that the single particles have no aggregation of particles, meaning that the entire surface of each particle can be coated by an electrically conductive aid, thus enhancing output characteristics [0048]. Ogawa further discloses that within this range the composite oxide particles have durability [0056].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the positive electrode active material taught by Kim to have a D50/DSEM of 1 or more and 4 or less as taught by Ogawa, in order to enhance the output characteristics and durability of the positive electrode active material.
Seo teaches analogous art of a cathode (or positive electrode) active material including a lithium transition metal oxide [Abstract]. Seo teaches that the concentration of cobalt atoms has a concentration gradient having a maximum value at the surface of the lithium transition metal oxide particle (“second region”) and a minimum value at a portion adjacent to the first region, which is the inner portion of the lithium transition metal oxide particle [0035, “ the first region may form an inner portion of the lithium transition metal oxide particle, 0036, “in the concentration gradient region, the concentration of Co atoms has a concentration gradient that increases toward the outside. For example, the concentration of Co atoms may have a minimum value at a portion adjacent to the first region, and may have a maximum value at an interface in contact with the outside”]. Seo teaches that the concentration gradient may have a thickness of 500 nm [0194].
PNG
media_image1.png
338
277
media_image1.png
Greyscale
1: Seo Fig. 4, annotated by Examiner
Seo teaches that when there is an excess amount of cobalt on the surface of the lithium transition metal oxide, the structural stability of the positive electrode active material while charging and discharging is improved, which also improves the positive electrode’s long lifetime characteristics [0194, “so that the surface of the cathode active material contains an excessive amount of relatively stable cobalt, thereby improving the structural stability of the cathode active material during charging and discharging, so as to improve long lifetime characteristics”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the positive electrode active material taught by Kim to have a larger ratio of the number of moles of cobalt to the total number of moles of metals other than lithium in the second region than in the first region as taught by Seo, in order to improve the structural stability and long lifetime characteristics of the positive electrode.
Chae teaches analogous art of a positive electrode active material comprising a lithium complex transition metal oxide and a surface coating comprising a cobalt-rich layer on the lithium complex transition metal oxide which has a higher cobalt content than the lithium complex transition metal oxide [0011]. Chae teaches that the cobalt-rich layer (“second region”) has a cobalt atomic fraction, or a ratio of the number of cobalt atoms to the total number of atoms of metal elements other than lithium, of 0.05 to 0.45, which overlaps the recited range of 0.3 or more [0070, “an atomic fraction of cobalt among nickel, cobalt, manganese, and aluminum in the cobalt-rich layer (i.e., a ratio of the number of cobalt atoms to the sum of the atom numbers of nickel, cobalt, manganese, and M) may be 0.05-0.45”]. 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). Chae teaches that the surface coating comprising the cobalt-rich layer is formed on the surface of the lithium complex transition metal oxide [0073].
Chae teaches that when the cobalt atomic fraction is within the range of 0.05 to 0.45, the output characteristics of the lithium complex transition metal oxide are improved without inhibiting its capacity characteristics [0070, “When the cobalt atomic fraction in the cobalt-rich layer satisfies the above range, the output characteristics of the lithium complex transition metal oxide may be effectively improved without inhibiting the capacity characteristics thereof”].
Chae further discloses that the difference between a cobalt atomic fraction in the cobalt-rich layer and a cobalt atomic fraction in the lithium complex transition metal oxide may be 0.05-0.2 [0070]. Chae teaches that the thickness of the surface coating portion comprising the cobalt-rich layer may be 10-100 nm [0074]. A difference in cobalt atomic fractions of 0.2 (the upper limit of the range disclosed by Chae) divided by a difference in depth of the surface (10 nm) and a depth of 500 nm in the lithium complex transition metal oxide results in an absolute value of 0.00041nm-1, which overlaps the recited range. 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). Additionally, the absolute value of a value obtained by dividing a difference in the ratio of the number of moles of cobalt to the number of moles of metals other than lithium in the first region and the second region by a difference in the depth of the first region from the surface of the lithium transition metal composite oxide and the depth of the second region from the surface of the lithium transition metal composite oxide (hereinafter referred to as “the concentration gradient of cobalt”) is shown by Chae to be a result-effective variable. Chae discloses that the cobalt-rich layer contains a relatively large amount of cobalt as compared with the lithium complex metal oxide [0069]. As described above, Chae also discloses that the cobalt atomic fraction in the cobalt-rich layer has an effect on the output and capacity characteristics of the lithium complex transition metal oxide, making the cobalt atomic fraction in the cobalt-rich layer a result-effective variable [0070]. Since the concentration gradient of cobalt depends on the cobalt atomic fraction in the cobalt-rich layer, the concentration gradient of cobalt is also a result-effective variable.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the positive electrode active material taught by Kim to optimize the difference in the amount of cobalt in the cobalt-rich layer and in the lithium complex transition metal oxide taught by Chae through routine experimentation, in order to optimize the concentration gradient of cobalt. According to guidance issued in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (see MPEP 2144.05 II A). The motivation for doing so would have been to improve the output characteristics of the lithium complex transition metal oxide without inhibiting its capacity characteristics.
Further regarding claim 10, Kim does not specifically teach a ratio of the number of moles of nickel to the total number of moles of metals other than lithium being 0.5 or less at a depth of 500 nm from the surface of the positive electrode active material. As described above, Kim teaches that the amount of nickel in the core part may be about 50 mol % or higher [0024], which overlaps the recited range, and Fig. 3 shows that the amount of nickel throughout the positive electrode active material stays between about 30 mol % and 50 mol %. Kim also teaches that when a nickel-rich positive electrode active material is used in the core part, a capacity of the positive electrode active material may be improved, and that by gradually or continuously decreasing a concentration of nickel toward the surface part, the stability of the positive electrode active material may be improved [0043], making the amount of nickel at different depths from the surface a result effective variable.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the positive electrode active material taught by Kim to optimize the amount of nickel at a depth of 500 nm from the surface of the positive electrode active material through routine experimentation, in order to optimize the amount of nickel throughout the positive electrode active material. According to guidance issued in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (see MPEP 2144.05 II A). The motivation for doing so would have been to improve the improve the capacity and structural stability of the positive electrode active material.
Further regarding claim 11, Kim does not specifically teach a value obtained by dividing the ratio of a number of moles of nickel to the total number of moles of metals other than lithium in the second region by the ratio of a number of moles of nickel to the total number of moles of metals other than lithium in the first region. As described above, Kim teaches that the amount of nickel in the core part may be about 50 mol % or higher and that the amount of nickel in the surface part may be in a range of about 30 mol % to about 40 mol % [0024], which overlap the claimed ranges. Kim also teaches that the amount of nickel gradually or continuously decreases from the core part toward the surface part [0023]. Therefore, the amount of nickel would be smallest at the surface of the positive electrode active material (“second region”) than anywhere else in the positive electrode active material, meaning that the value obtained by dividing the amount of nickel at the surface and the amount of nickel at a depth of 500 nm would be less than 1.
Furthermore, Kim teaches that when a nickel-rich positive electrode active material is used in the core part, a capacity of the positive electrode active material may be improved, and that by gradually or continuously decreasing a concentration of nickel toward the surface part, the stability of the positive electrode active material may be improved [0043], making the amount of nickel at different depths from the surface, and thus the ratio of the amount of nickel at the surface to the amount of nickel at a depth of 500 nm, a result effective variable.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the positive electrode active material taught by Kim to optimize the ratio of the amount of nickel at the surface to the amount of nickel at a depth of 500 nm through routine experimentation. According to guidance issued in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (see MPEP 2144.05 II A). The motivation for doing so would have been to improve the improve the capacity and structural stability of the positive electrode active material.
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 6 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,548,770. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 3 of ‘770 includes almost all of the limitations of instant claims 6 and 10. Claim 1 of ‘770 (which claim 3 is dependent on) recites a positive electrode for a non-aqueous electrolyte secondary battery comprising
a positive electrode active material having a layered structure,
a D50/DSEM ratio of 1 or more and 4 or less,
a ratio of a number of moles of cobalt to a total number of moles of metals other than lithium in a second region where a depth from a particle surface is about 10 nm or less is larger than a ratio of a number of moles of cobalt to a total number of moles of metals other than lithium in a first region where a depth from the particle surface is about 500 nm, wherein
the number of moles of cobalt to the total number of moles of metals other than lithium in the second region is 0.5 or more and 0.8 or less (which is within the recited range in instant claim 6 of 0.3 or more), and wherein
a value obtained by dividing a difference in the ratio of the number of moles of cobalt to the total number of moles of metals other than lithium in the first region and the second region by a difference in depth of the first region and the second region from the particle surface, has an absolute value that is 0.00041 (nm−1) or more and 0.00079 (nm−1) or less.
Claim 3 of ‘770 further recites that the positive electrode active material has a ratio of a number of moles of nickel to a total number of moles of metals other than lithium in the first region of 0.2 or more (which overlaps the recited range in instant claim 6 of 0.2 or more and the recited range in instant claim 10 of 0.5 or less) and has a ratio of a number of moles of nickel to a total number of moles of metals other than lithium in the second region of 0.06 or more (which overlaps the recited range in instant claim 6 of 0.06 or more and 0.5 or less). 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). Claim 3 of ‘770 is silent regarding the positive electrode active material comprising a lithium transition metal composite oxide with a composition represented by the formula LiqNirCosM1tM2uO2, wherein 0.95≤q≤1.5, 0.3≤r<1, 0.01≤s<0.5, 0≤t<0.5, 0≤u≤0.1, and r+s+t+u≤1, M1 is at least one selected from the group consisting of Al and Mn, and M2 is at least one selected from the group consisting of B, Na, Mg, Si, P, S, K, Ca, Ti, V, Cr, Zn, Sr, Y, Zr, Nb, Mo, In, Sn, Ba, La, Ce, Nd, Sm, Eu, Gd, Ta, W, and Bi.
Ogawa teaches analogous art of a positive electrode active material comprising lithium transition metal composite oxide particles [0045]. Ogawa teaches that the lithium transition metal composite oxide may be Li1.17Ni0.33Co0.33Mn0.33O2, which corresponds to LiqNirCosM1tM2uO2, wherein M1 is Mn, q is 1.17, r is 0.33, s is 0.33, t is 0.33, u is 0, and r+s+t+u is 0.99, all of which fall in the ranges recited in instant claim 6 [0098, 0099]. Ogawa teaches that the lithium transition metal composite oxide particles have good output characteristics and electrode plate filling properties [0052].
Therefore, it would have been obvious to a person having ordinary skill in the art to modify the positive electrode active material taught by claim 3 of ‘770 to include a lithium transition metal composite oxide with the composition taught by Ogawa in order to provide good output characteristics and electrode plate filling properties to the positive electrode active material.
Response to Arguments
Applicant’s arguments with respect to the rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Ogawa in view of Seo and Chae and the rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Ogawa in view of Noh 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.
Applicant's arguments filed 4/29/2026 have been fully considered but they are not persuasive.
The applicant alleges that the positive electrode active material having a D50/DSEM ratio of “1 or more and 4 or less” and an absolute value of a value obtained by dividing a difference in the ratio of the number of moles of cobalt to the number of moles of metals other than lithium in the first region and the second region by a difference in the depth of the first region from the surface of the lithium transition metal composite oxide and the depth of the second region from the surface of the lithium transition metal composite oxide (concentration gradient of cobalt) of “0.00041 (nm-1) or more and 0.00079 (nm-1) or less, as recited in claim 6, exhibits unexpected results [Remarks, page 8]. Applicant cites Examples 1 to 3 and Comparative Examples 1 to 5 as shown in Tables 1-3 of the specification as evidence supporting the allegation that the ranges recited for the concentration gradient of cobalt and the D50/DSEM ratio in claim 6 exhibit unexpected results.
It is respectfully submitted that there are multiple deficiencies with respect to applicant’s allegation of unexpected results.
The first overarching issue is that 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” (MPEP 716.02(d), examiner emphasis). 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). See also the following case law (MPEP 716.02(d)):
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.), and
In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.")
The objective evidence offered to support the allegation of unexpected results includes Examples 1 to 3 and Comparative Examples 1 to 3 as summarized in Table 1. Table 1 of the present specification is recreated here below:
PNG
media_image2.png
417
789
media_image2.png
Greyscale
The evidence offered to support the allegation of unexpected results is not commensurate in scope with the claims. Claim 6 recites “a ratio D50/DSEM of 1 or more and 4 or less”, however, the evidence offered to support of Examples 1-3 only covers a range of 1.55 to 1.70. As noted by the case law of In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980), the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. Thus, the evidence offered does not support the range of 1 or more and 4 or less as claimed. For example, do the unexpected results occur at a D50/DSEM ratio of 1, 2, 3, or 4? Even taking into account the data provided in Table 1, the answer is not clear as there is no data provided for the upper endpoint of the range, or even anywhere close to said endpoint, nor does the data provided span the entire claimed range.
Additionally, the evidence offered for support of unexpected results is deficient in terms of a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. in re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). For example, the data provided in Table 1 has the issue that Comparative Examples 4 and 5 have a D50/DSEM ratio over three times larger than the upper limit of the range, and none of the Comparative Examples have a D50/DSEM ratio below the lower limit of the range. The data should compare data points close to the range such that it is clear that the range specified is indeed critical.
Regarding the recited range of the concentration gradient of cobalt of “0.00041 (nm-1) or more and 0.00079 (nm-1) or less”, the evidence offered for support of unexpected results is deficient in terms of a sufficient number of tests outside the claimed range to show the criticality of the claimed range. in re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). For example, the data provided in Table 1 has the issue that Comparative Examples 1, 2, and 3 have a value for the concentration gradient of cobalt that is one order of magnitude either smaller or larger than the endpoints of the recited range, however, the data should compare data points close to the range such that it is clear that the range specified is indeed critical.
Lastly, Comparative Examples 4 and 5 have a concentration gradient of cobalt and a D50/DSEM ratio outside the claimed range, yet both Comparative Examples 4 and 5 have smaller direct current internal resistance (DC-IR) values than Examples 1-3. According to the present specification a smaller DC-IR value means that output characteristics are favorable [0104]. Therefore, the output characteristics are not particularly improved within the claimed range.
The applicant also cites Tables 2 and 3 to show that the improvement in DC-IR due to cobalt coating is lower when the particles in question have a D50/DSEM ratio that is outside of the claimed range [Remarks, pg. 8]. However, a true comparison cannot be made between the improvement from Comparative Example 1 to Example 2 and the improvement from Comparative Example 4 to Comparative Example 5, because the standard value to which Example 2 is compared is different from the standard value to which Comparative Example 4 is compared.
Table 2 of the present specification is recreated here below:
PNG
media_image3.png
212
449
media_image3.png
Greyscale
Table 3 of the present specification is recreated here below:
PNG
media_image4.png
237
443
media_image4.png
Greyscale
As such, the examiner does not find the objective evidence offered to support the allegation of nonobviousness in terms of unexpected results commensurate in scope with the claims which the evidence is offered to support (MPEP 716.02(d)).
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 MARIA F OROZCO whose telephone number is (571)272-0172. The examiner can normally be reached M-F 9-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at (571)272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
Prosecution Insights