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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2 and 5-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, Claim 1 recites a step of charging a secondary battery (lines 2-5) and “then holding the secondary battery for a predetermined period of time at a voltage of 3.2 V or greater” (lines 6-7). Claim 1 then further recites “wherein the secondary battery is charged to 3.5 V to 4.0 V, and then held at a voltage of 3.5 V to 4.0 V for 30 minutes to 5 hours” (lines 14-15). This limitation appears to introduce a first charging and holding step (i.e. lines 2-7) and then a subsequent charging and holding step (i.e. lines 14-15). Although the instant specification supports a step of charging and holding [instant specification: 0055-0060, 0098], the instant specification does not support an initial charging and holding step followed by a second charging and holding step. Accordingly, Claim 1 and dependent Claims 2 and 5-11 are rejected as introducing new matter.
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.
Claims 1-2 and 5-11 are 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 1 recites, “charging a secondary battery… then holding the secondary battery for a predetermined period of time at a voltage of 3.2 V or greater” (lines 2-7; emphasis added) and later, “wherein the secondary battery is charged to 3.5 V to 4.0 V, and then held at a voltage of 3.5 V to 4.0 V for 30 minutes to 5 hours” (lines 14-15; emphasis added). These limitations could be interpreted as indicating a first charging and holding step performed at a voltage of 3.2 V or greater followed by a second charging and holding step at a voltage of 3.5 V to 4.0 V for 30 minutes to 5 hours. Alternatively, the later recitation of charging and holding at “a voltage of 3.5 V to 4.0 V for 30 minutes to 5 hours” could be interpreted as further limiting the charging and holding steps of lines 2-7.
Although the instant specification appears to indicate that only one charging and holding step occurs, thereby supporting the second interpretation [instant specification: 0098], Claim 2 recites “wherein the secondary battery is charged to 3.2 V or greater with a C-rate of 0.025 C to 0.2 C”, which appears to further limit the first recitation of charging and holding (i.e. as recited in Claim 1: lines 2-7).
As such, Claim 1 and dependent Claims 2 and 5-11 are rejected as being indefinite. For the sake of compact prosecution, in Claim 1 it will be interpreted that the later recitation of charging and holding (lines 14-15) is intended to further limit the initial charging and holding step (lines 2-7), as supported by the instant specification [instant specification: 0055-0060, 0098]. In Claim 2, it will be interpreted that the recitation of “wherein the secondary battery is charged to 3.2 V or greater with a C-rate of 0.025 C to 0.2 C” should further limit the later charging and holding of the battery from 3.5 V to 4.0 V for 30 minutes to 5 hours, as supported by the instant specification [instant specification: 0098].
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 10-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed towards an abstract idea without significantly more.
Claim 10 recites a step of “determining if the secondary battery is defective”. The step of determining if the secondary battery is defective, as described in the instant specification [0079-0080], appears to be a step which, under broadest reasonable interpretation, may be done mentally, and is therefore an abstract idea. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind (e.g. observations, evaluations, judgments, and opinions), then it falls within the “Mental Processes” grouping of abstract ideas. See MPEP 2106.04(a)(2)(III). Accordingly, Claim 10 recites the abstract idea of “determining if the secondary battery is defective”.
This judicial exception is not integrated into a practical application. In particular, the claim does not recite any further steps taken after “determining if the secondary battery is defective” and therefore no particular application is recited.
Although the claim has been further amended to recite what qualifies as a defective secondary battery (i.e. “wherein the secondary battery is defective if a capacity thereof when charged and discharged with a C-rate of C/3 is less than 97% than the capacity thereof when the secondary battery is charged and discharged with a C-rate of 0.1C”), such a limitation amounts to mere data gathering, and therefore does not amount to integration of the judicial exception into a practical application. See MPEP 2106.05(g).
Claim 10 does not include additional elements that are sufficient to amount to significantly more than the judicial exception, and therefore Claim 10 does not provide an inventive concept. Even if the collecting of charge/discharge data (as recited in Claim 11) were interpreted to be a part of the determination step of Claim 10, such a step is mere data gathering and does not provide a particular application. See MPEP 2106.05(g). Accordingly, Claim 10 is not patent eligible.
Regarding Claim 11, although the claim recites limitations which further specify obtaining measurements to determine if the secondary battery is defective, the steps of collecting charge/discharge data amount to mere data gathering and do not provide a particular application. See MPEP 2103.05(g). Claim 11 therefore fails to integrate the judicial exception into a practical application and further fails to include additional elements which are sufficient to amount to significantly more than the judicial exception. Accordingly, Claim 11 is not patent eligible.
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 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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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.
Claim(s) 1-2 and 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (WO-2019132449-A1; see English equivalent US-20200083525-A1 for citations) as evidenced by Hong et al. (Chem. Mater. 2008, 20, 5-7; see NPL provided 05/22/2025 for citations) in view of Kim et al. (KR-20190062209-A; see English equivalent US-20210083290-A1 for citations) and in further view of Amiruddin et al. (US-20110236751-A1).
Regarding Claim 1, Lee discloses a method for activating a lithium secondary battery [0064, 0081, 0084-0088], comprising:
charging a secondary battery (i.e. “charged to 4.25 V”; [0088]), wherein
the secondary battery includes a positive electrode having a sacrificial positive electrode material (irreversible compensating additive [0055-0056, 0084]).
The sacrificial positive electrode material is Li2NiO2 in Examples 1-4 (Table 1), which reads on a material represented by Formula 1 (i.e. x=0 in Formula 1).
Although Lee does not explicitly disclose that the sacrificial positive electrode material has an orthorhombic structure, Lee discloses the use of Li2NiO2 (Examples 1-4, Table 1), which is the same material as that disclosed in the instant application [instant application: 0005, 0094]. Since a crystal system is understood to be an inherent property of a material, the Li2NiO2 material disclosed in the prior art is understood to inherently have an orthorhombic structure as evidenced by the instant application (instant application [0005]: “Li2NiO2 has an orthorhombic structure”) and as further evidenced by Hong (see Hong: Fig. 3) (MPEP 2112.01, I-II).
Lee further discloses that the secondary battery includes a negative electrode [0086], a separator interposed between the positive electrode and the negative electrode [0087], and an electrolyte solution [0087].
Lee discloses that the secondary battery is charged (i.e. “charged to 4.25 V” [0088]) and then held at that voltage for a predetermined period of time (“10 hours” [0088]), which reads on charging and “then holding the secondary battery for a predetermined period of time at a voltage of 3.2 V or greater”.
Although Lee discloses charging the lithium secondary battery to 4.25 V for 10 hours [0088], which is outside the claimed voltage range of “3.5 V to 4.0 V”, Lee discloses that the preparation of the lithium secondary battery is not particularly limited [0081]. Notably, as discussed above, Lee discloses the use of Li2NiO2 as a sacrificial positive electrode material which undergoes an irreversible chemical reaction to release lithium ions during an initial charge [0055, 0059].
Kim teaches a similar lithium secondary battery comprising a cathode additive which undergoes an irreversible reaction during an initial charge of the secondary battery [0003, 0039, 0050, 0125]. The cathode additive is a lithium nickel oxide material [0016-0022] that has an orthorhombic structure prior to an initial charge [0115]. Kim teaches that the cathode additive may irreversibly discharge lithium ions at the initial charge voltage of a battery, for example, 2.5 V to 4.25 V [0039, 0112].
Since both Lee and Kim teach the use of a lithium nickel oxide material in a positive electrode which undergoes an irreversible change during an initial charge, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the initial charging voltage of the battery of Lee to be within the range of 2.5 V to 4.25 V taught by Kim, with a reasonable expectation that such a range of voltages would result in a successful initial charge.
The range of 2.5 V to 4.25 V rendered obvious by the prior art overlaps the claimed range of 3.5 V to 4.0 V. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the overlapping portion of the range with a reasonable expectation that such an initial charging voltage would result in a successful secondary battery (MPEP 2144.05, I).
Although Lee discloses holding the charged secondary battery for 10 hours [0088], which is longer than the claimed range of 30 minutes to 5 hours, Lee discloses that he preparation of the lithium secondary battery is not particularly limited [0081].
Amiruddin teaches a lithium ion battery [Abstract, 0053-0056]. An initial charging step at a voltage of no more than 4.3 V is performed during which irreversible changes to the battery are presumed to take place [0031, 0073-0074]. During the initial charge, the battery can be held at this voltage for at least 30 minute to about 12 hours [0074]. In a specific example, the battery is charged and held for 4 hours [0104].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have held the charged battery of modified Lee for 4 hours, which is within the claimed time range of 30 minutes to 5 hours, with a reasonable expectation that such a length of time would result in a successful battery capable of allowing the initial irreversible changes to occur.
Regarding Claim 2, modified Lee renders obvious all of the limitations as set forth above. Lee further discloses that the charging step can be performed at 0.1 C [0088], which is within the claimed C-rate of 0.025 C to 0.2 C.
Regarding Claims 5-6, modified Lee renders obvious all of the limitations as set forth above, including selecting the sacrificial positive electrode material to be Li2NiO2, and charging the secondary battery to 3.5 V to 4.0 V and then holding at that voltage for 4 hours (see rejection of Claim 1, above). The material of the sacrificial positive electrode material disclosed in the prior art is the same as the material disclosed in the instant specification [instant specification: 0094]. Furthermore, the method of activating the secondary battery disclosed in the prior art is substantially similar to the method of activating a secondary battery disclosed in the instant application [instant specification: 0098]. Therefore, as evidenced by the instant specification [instant specification: 0088, 0094, 0098, 00102, 00104], the crystal structure of the sacrificial positive electrode material of modified Lee is understood to inherently change from the orthorhombic structure to a trigonal structure during the holding of the secondary battery (MPEP 2112.01, I) as required by Claim 5.
Furthermore, since the method disclosed in the prior art is substantially similar to the method disclosed in the instant application (as laid out above), the sacrificial positive electrode material is understood to be a single phase having a trigonal structure after the charging and holding of the secondary battery as required by Claim 6 and as evidenced by the instant specification [instant specification: 0061, 0088, 0098, 00102, 00104].
Regarding Claim 7, modified Lee renders obvious all of the limitations as set forth above, including that the sacrificial positive electrode material is Li2NiO2 (Lee: Examples 1-4, Table 1). Lee discloses that when the sacrificial positive electrode material is Li2NiO2, it irreversibly converts to LiNiO2 during charging [0059]. LiNiO2 reads on Formula 2 (i.e. x = 0 in Formula 2).
Since Lee discloses charging and holding the secondary battery to a voltage of 3.2 V or greater for a predetermined period of time [0088], and selecting the sacrificial positive electrode material to be Li2NiO2 (Examples 1-4, Table 1) which correspond to the same as the material disclosed in the instant specification [instant specification: 0094] and a substantially similar method of activating a secondary battery disclosed in the instant application [instant specification: 0088, 0098], it is understood by the Examiner that the crystal structure of the sacrificial positive electrode material after charging and holding inherently has a trigonal structure (MPEP 2112.01, I), as evidenced by the instant specification [instant specification: 0088, 0098, 00102, 00104].
Regarding Claim 8, modified Lee renders obvious all of the limitations as set forth above. Lee discloses that, prior to the charging of the secondary battery, the secondary battery is pre-aged at room temperature (“allowed to stand at room temperature for 2 days” [0088]).
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (WO-2019132449-A1; see English equivalent US-20200083525-A1 for citations) as evidenced by Hong et al. (Chem. Mater. 2008, 20, 5-7; see NPL provided 05/22/2025 for citations) in view of Kim et al. (KR-20190062209-A; see English equivalent US-20210083290-A1 for citations) and in further view of Amiruddin et al. (US-20110236751-A1) as applied to Claim 1, above, and in view of Furuta et al. (JP-2014082063-A; see also NPL provided 05/22/2025 for citations) and in further view of Park et al. (KR-20150049479-A; see also NPL provided 05/22/2025 for citations).
Regarding Claim 9 modified Lee renders obvious all of the limitations as set forth above. Lee discloses that, after the charging and the holding of the secondary battery, the secondary battery is further aged at room temperature (“aged at room temperature for 2 days”; [0088]).
Although Lee does not teach that the activation method of the secondary battery includes a high temperature aging step, Lee does disclose that the preparation of the secondary battery is not particularly limited [0081].
Furuta teaches an activation method for a secondary battery [0007, 0020, 0025]. The method includes an initial charging step at room temperature [0025, 0027] followed by aging at a higher temperature [0025, 0028-0029] which, advantageously, promotes diffusion of lithium ions and equalizes high potential, thereby shortening the aging time while improving productivity and performance of the secondary battery [0004-0007, 0028, 0057].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included a high temperature aging step after the room temperature aging step with a reasonable expectation that the inclusion of a high temperature aging step, wherein the room temperature-aged secondary battery is further aged at a high temperature, would result in a successful secondary battery with a shortened aging time and improved productivity and performance.
Although modified Lee does not teach that activation method includes a degassing step, Park teaches that gas can be generated during the aging of a secondary battery and, advantageously, Park teaches that the gas can be removed via a degassing step, thereby reducing swelling of the battery [0020, 0027-0028].
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have included a degassing step after the high temperature aging step, with a reasonable expectation that the addition of a degassing step, wherein the high temperature-aged secondary battery is degassed to remove gas, would result in a successful secondary battery wherein gases formed during the aging of the secondary battery are removed, thereby reducing swelling.
Regarding Claims 10-11, modified Lee renders obvious all of the limitations as set forth above. Although modified Lee does not explicitly disclose a step of “determining if the secondary battery is defective”, Furuta teaches that the activation process of a lithium secondary battery can include a micro-short circuit detection step wherein the voltage drop of the secondary battery during a low-temperature aging process is measured and compared with a predetermined threshold value to detect the presence or absence of micro-short circuit [0061]. Advantageously, this makes it possible to accurately determine the presence or absence of a micro-short circuit in a short period of time [0002, 0004, 0062].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included a micro-short circuit detection step (reads on “determining if the secondary battery is defective”) in the activation method of modified Lee with a reasonable expectation that the inclusion of such a step would result in a successful method capable of accurately determining the absence or presence of micro-short circuits. Although the step of detecting a micro-short circuit rendered obvious by the prior art does not explicitly teach the limitation “wherein the secondary battery is defective if a capacity thereof when charged and discharged with a C-rate of C/3 is less than 97% than the capacity thereof when the secondary battery is charged and discharged with a C-rate of 0.1 C” as required by Claim 10, this limitation is a contingent limitation. “The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.” (MPEP 2111.04, II). Here, the broadest reasonable interpretation of Claim 10 is that the claim requires “determining if the secondary battery is defective”. The contingent limitation (i.e. “wherein the secondary battery is defective if…”) is only required if the secondary battery is determined to be defective. Since the prior art renders obvious a step of determining if the secondary battery is defective (i.e. comprises a micro-short circuit), the prior art broadly and reasonably renders obvious that a portion of the secondary batteries tested are found not to be defective, thereby fully meeting the limitations of Claim 10.
Although modified Lee does not expressly teach “determining if the secondary battery is defective further comprises: charging the secondary battery from 2.5 V to 4.2 V with a C-rate of 0.1 C to 0.5 C; then discharging the secondary battery from 4.2 V to 2.5 V; and using the charging and discharging data to determine if the secondary battery is defective” as required by Claim 11, modified Lee does teach that the change in voltage is measured and compared to a threshold value in order to detect the presence or absence of micro-short circuits [Futura: 0061], that the sacrificial positive electrode material may operate within a voltage range of 2.5 V to 4.25 V [Kim: 0039, 0112], and that the battery may be successfully charged and discharged at various C-rates [Lee: 0088; Kim: 0118-0119; Amiruddin: 0099].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected appropriate charging voltages, charging rates and an appropriate threshold value for determining if the battery is defective, including charging the secondary battery from 2.5 V to 4.2 V with a C-rate of 0.1 C to 0.5 C; then discharging the secondary battery from 4.2 V to 2.5 V; and using the charging and discharging data to determine if the secondary battery is defective as required by Claim 11. One of ordinary skill in the art would have further found it obvious to have selected a battery to be defective if a capacity thereof when the secondary battery is charged and discharged with a C-rate of C/3 is less than 97% than the capacity thereof when the secondary battery is charged and discharged with a C-rate of 0.1 C as required by Claim 10, thereby rendering obvious the contingent limitation of Claim 10. One of ordinary skill in the art would have had a reasonable expectation that such a selection would enable the successful detection of defective batteries.
Response to Arguments
Applicant’s arguments filed 08/18/2025 have been carefully considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, Examiner notes that newly cited Kim and Amiruddin are relied upon the render obvious the newly added limitation to Claim 1.
Other References Considered
The following prior art, although not relied upon in the rejections of record, is considered relevant to the claims:
Han et al. (KR-20190064397-A; see English equivalent US-20200335790-A1 for citations) teaches a cathode additive [Abstract] which irreversibly discharges lithium ions to offset an irreversible capacity imbalance, to increase initial charge capacity of the cathode, and to inhibit the generation of gas in a battery [0004-0006, 0023, 0052]. The cathode additive has an orthorhombic structure [0133].
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 DREW C NEWMAN whose telephone number is (571)272-9873. The examiner can normally be reached M - F: 10:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Leong can be reached at (571)270-1292. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.C.N./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 10/30/2025
Prosecution Insights