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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/2/2026 has been entered.
Information Disclosure Statement
The IDS filed on 11/24/2025 has been considered by examiner.
Response to Amendment
The Amendment filed on 12/19/2025 has been entered. Claim 7 is cancelled. Claims 1-6 and 9 remain pending in the application. Applicant’s amendments to the claims have the objection previously set forth in the Final Office Action mailed 11/5/2025.
Claim Objections
Claim 6 is objected to because of the following informalities: The limitation "the lithium metal composite oxide having a layered, wherein ..." in line 6 of the claim should read "limitation "the lithium metal composite oxide having a layered structure, wherein ...". Appropriate correction is required.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (WO 2018/088320, referring to US 2019/0319257 as translation thereof, hereinafter "Ogawa") in view of Seo et al. (US 2022/0190316, hereinafter "Seo") and further in view of Chae et al. (US 2020/0335787, hereinafter "Chae").
Regarding claim 6, Ogawa teaches a positive electrode active material for a non-aqueous electrolyte secondary battery [0012, “an electrode for nonaqueous electrolyte secondary batteries including a collector and a positive electrode active material layer that is arranged on the collector and contains a positive electrode active material”], comprising:
i. a lithium transition metal composite oxide having 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, “a positive electrode active material, in which the positive electrode active material is configured to contain compound particles which have … a ratio of the 50% particle diameter D50 in a volume-based cumulative particle size distribution to the average particle diameter DSEM (D50/DSEM) of 1 to 4”, 0045, “lithium transition metal composite oxide particles … are preferably used”],
ii. the lithium transition metal composite oxide having a layered structure [0045, “lithium transition metal composite oxide particles having a layered structure”], and wherein
iv. 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 claimed ranges [0098, 0099].
Ogawa is silent regarding the ratio of a number of moles of nickel to a total number of moles of metals other than lithium being 0.2 or more in a first region at a depth of 500 nm from a surface of the lithium transition metal composite oxide and 0.06 or more in a second region a depth of 10 nm or less from the surface of the lithium transition metal oxide. Ogawa is also silent regarding 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 second region from the ratio of the number of moles of cobalt to the total number of moles of metals other than lithium in the first region, wherein the ratio of the number of moles of cobalt to the total number of moles of metals other than lithium in the second region is 0.3 or more.
Seo teaches analogous art of a cathode (or positive electrode) active material including a lithium transition metal oxide [Abstract]. In Example 1, Seo teaches that the mol percentages of nickel, cobalt, and manganese at a surface of the lithium transition metal oxide are 63.8%, 18.4%, and 17.8% respectively [Seo Table 7, Seo Fig. 4]. The ratio of a number of moles of nickel to a total number of moles of metals other than lithium at that position is 63.8:100, or 0.638. Seo also teaches that at position 4 on the lithium transition metal oxide the depth is 500 nm from the surface of the lithium transition metal oxide. [Seo Fig. 4, using scale factor provided, 0194, “it may be found that the Co concentration gradient layer has a thickness of about 500 nm”]. At that position, the mol percentages of nickel, cobalt, and manganese are 77.8%, 4.1%, and 18.1%. The ratio of a number of moles of nickel to a total number of moles of metals other than lithium at that position is 0.778. Therefore, the ratio of a number of moles of nickel to a total number of moles of metals other than lithium taught by Seo is greater than 0.2 at a first region and greater than 0.06 at a second region. Seo also 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].
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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”]. Seo also teaches that having the concentration of nickel atoms decrease towards the surface of the lithium transition metal oxide particle prevents a decrease in capacity due to side reactions between nickel and the electrolyte [0038].
Therefore, it would have been obvious to a person having ordinary skill in the art to modify the positive electrode active material taught by Ogawa 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 and to have the ratio of the number of moles of nickel to the total number of moles of metals other than lithium in both regions taught by Seo, in order to improve the structural stability and long lifetime characteristics of the positive electrode, as well as to prevent a capacity decrease.
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”].
Therefore, it would have been obvious to a person having ordinary skill in the art to modify the positive electrode active material taught by Ogawa to have a ratio of the number of moles of cobalt to the total number of moles of metals other than lithium within the range taught by Chae at the surface, or second region of the lithium complex transition metal oxide, in order to improve its output characteristics without inhibiting its capacity characteristics.
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 Ogawa 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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ogawa (WO 2018/088320) in view of Noh et al. (US 2021/0359293, hereinafter "Noh").
Regarding claim 6, Ogawa teaches a positive electrode active material for a non-aqueous electrolyte secondary battery [0012, “an electrode for nonaqueous electrolyte secondary batteries including a collector and a positive electrode active material layer that is arranged on the collector and contains a positive electrode active material”], comprising:
i. a lithium transition metal composite oxide having 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, “a positive electrode active material, in which the positive electrode active material is configured to contain compound particles which have … a ratio of the 50% particle diameter D50 in a volume-based cumulative particle size distribution to the average particle diameter DSEM (D50/DSEM) of 1 to 4”, 0045, “lithium transition metal composite oxide particles … are preferably used”],
ii. the lithium transition metal composite oxide having a layered structure [0045, “lithium transition metal composite oxide particles having a layered structure”], and wherein
iv. 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 claimed ranges [0098, 0099].
Ogawa is silent regarding the ratio of a number of moles of nickel to a total number of moles of metals other than lithium being 0.2 or more in a first region at a depth of 500 nm from a surface of the lithium transition metal composite oxide and 0.06 or more in a second region a depth of 10 nm or less from the surface of the lithium transition metal oxide. Ogawa is also silent regarding 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 second region from the ratio of the number of moles of cobalt to the total number of moles of metals other than lithium in the first region, wherein the ratio of the number of moles of cobalt to the total number of moles of metals other than lithium in the second region is 0.3 or more.
Noh teaches analogous art of a cathode (“positive electrode”) active material for a lithium secondary battery comprising a lithium metal oxide particle including a core part (“first region”) and a shell part (“second region”), which contain Ni, Co, and Mn. Noh teaches that the shell part includes a depth region in a range of 10 nm to 100 nm from a surface of the lithium metal oxide particle, and that the Co content of the shell part is 1.4 to 6 times a Co content of the core part [Abstract]. Noh discloses that the composition of core part is uniformly maintained over the entire area of the core part [0075], and that the mean particle diameter of the lithium metal oxide particle is about 3 to 25 µm [0048]. Since the shell part has a depth region in a range of 10 to 100 nm from a surface of the lithium metal oxide particle, the core part must comprise a depth region of 500 nm. Noh further teaches specific examples of the preparation of the cathode active material. Example 4 of Noh discloses a lithium metal oxide particle with a molar ratio of nickel (“a number of moles of nickel to a total number of moles of metals other than lithium”) in the core part of 0.88, which is within the recited range of 0.2 or more, and a molar ratio of nickel in the shell part of 0.68, which is within the recited range of 0.06 or more [Noh Table 1]. In that same example, the molar ratio of cobalt in the core part is 0.09, and the molar ratio of cobalt in the shell part is 0.30, which is within the recited range of 0.3 or more [Noh Table 1]. Example 6 of Noh discloses a molar ratio of nickel in the core part of 0.92, a molar ratio of nickel in the shell part of 0.68, a molar ratio of cobalt in the core part of 0.05, and a molar ratio of cobalt in the shell part of 0.30 [Noh Table 1]. The molar ratios of the core part were taken at a depth region in a range of 10 to 100 nm from the surface of the lithium metal oxide particle [0125]. For Example 4, the concentration gradient of cobalt is (0.30 – 0.09)/(500 nm – 10 nm), which gives a value of 0.00043 nm-1. For example 6, the concentration gradient of cobalt is (0.30 – 0.05)/(500 nm – 10 nm), which gives a value of 0.0005 nm-1. Both of these values are within the recited range of greater than 0.00041 nm-1 and less than 0.00079 nm-1.
Noh teaches that lithium metal oxide particles which include the high-concentration cobalt shell part formed therein have remarkably improved capacity retention rates compared to lithium metal oxide particles not comprising a shell part [0147]. Noh discloses that the high concentration of cobalt in the shell part can suppress surface oxidation and decomposition of active metals in the core part [0065].
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 lithium transition metal composite oxide taught by Ogawa to include the molar ratios of nickel and cobalt in the core and shell part taught by Noh, in order to improve capacity retention rates, and suppress surface oxidation and decomposition of active metals in the core part.
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.
The provisional nonstatutory double patenting rejection over claim 10 of copending Application No. 17/814,814 in view of Ogawa (WO 2018/099320) previously set forth in the Final Office Action mailed 11/5/2025 has been withdrawn as the reference application is now an issued patent. The rejection has been updated accordingly to reflect as much.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. US 12,548,770 in view of Ogawa (WO 2018/088320).
Claim 3 of ‘770 includes almost all of the limitations of instant claim 6. 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 (which encompasses the recited range of greater than 0.00041 (nm−1) and less than 0.00079 (nm−1)).
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 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. 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 filed 12/19/2025 have been fully considered but they are not persuasive.
Applicant alleges that the cited references Ogawa, Seo, and Chae, alone or in combination, fail to disclose or suggest the specific range of concentration gradient of cobalt, as recited in amended claim 6 [Remarks, page 6]. The applicant also alleges that the range of 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, or “the concentration gradient of cobalt”, as recited in amended claim 6 of greater than 0.00041 nm-1 and less than 0.00079 nm-1, is a critical range [Remarks, page 6]. Applicant cites Examples 1 to 3 and Comparative Examples 1 to 3 as shown in Table 1 of the specification as evidence supporting the allegation that the specific range of the concentration gradient of cobalt as recited in amended claim 6 is a critical range.
It is respectfully submitted that there are multiple deficiencies with respect to applicant’s allegation of a critical range.
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:
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The evidence offered to support the allegation of unexpected results is not commensurate in scope with the claims. Claim 6 recites a range of the concentration gradient of cobalt “is greater than 0.00041 (nm-1) and less than 0.00079 (nm-1)”, however, the evidence offered to support only provides one example within the recited range, Example 2, which has a concentration gradient of cobalt of 0.00071 nm-1. Examples 1 and 3 are outside of the recited range because the claim language of claim 6 does not include the values of 0.00041 nm-1 and 0.00079 nm-1 within the range itself (i.e. “greater than” and “less than” vs “greater/less than or equal to”). 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 greater than 0.00041 (nm-1) and less than 0.00079 (nm-1) as claimed. For example, do the unexpected results occur at a concentration gradient of cobalt of 0.00042 nm-1, 0.0006 nm-1, or 0.00078 nm-1? The answer is not clear as the data provided does not 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 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 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. Applicant cites paragraph [0002] of the present specification to show that the positive electrode active material of Comparative Examples 4 and 5 is not desirable due to concerns about particle cracking due to pressure during positive electrode production [Remarks, page 6], however, there is no data provided as evidence that the performance of the positive electrode active material is negatively impacted in Comparative Examples 4 and 5.
The applicant also alleges that the range of the D50/DSEM ratio as recited in instant claim 6 of 1 or more and 4 or less shows unexpected results. Applicant cites Example 2 with Comparative Example 1 in Table 2 and Comparative Examples 4 and 5 in Table 3 as evidence supporting the allegation that the specific range of D50/DSEM as recited in amended claim 6 is a critical range. It is respectfully submitted that there are multiple deficiencies with respect to applicant’s allegation of a critical range.
Table 2 of the present specification is recreated here below:
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Table 3 of the present specification is recreated here below:
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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 only provides one example within the recited range, Example 2, which has a D50/DSEM ratio of 1.64. 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 not 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, Tables 2 and 3 are cited to show that the improvement in DC-IR due to cobalt coating is much lower when the particles in question have a D50/DSEM ratio that is outside of the claimed range [Remarks, page 6]. 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 concentration gradient of cobalt is not the same for any of the four examples. In the case of Comparative Examples 4 and 5, the concentration gradient of cobalt is also outside the range recited in claim 6. Thus, it is not clear if any changes in the improvement of DC-IR are based on the D50/DSEM ratio, or the concentration gradient of cobalt.
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)). As described in the rejection of instant claim 6 above, the ranges recited for the concentration gradient of cobalt and the D50/DSEM ratio are obvious over Ogawa in view of Seo and Chae, as well as Ogawa in view of Noh. Therefore, the rejection of claim 6 is maintained.
Conclusion
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.
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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729