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 .
Status of Claims
Claims 1-11 are currently pending.
Claim 1 has been amended.
Status of Amendment
The amendment filed on 01/22/2026 has been fully considered, but does not place the application in condition for allowance.
Status of Objections and Rejections Pending since the Office Action of 07/23/2025
The objection to the drawing has been withdrawn in view of the replacement drawing submitted on 06/26/2025.
The double patenting rejections of claims 1, 2, 8, 9, and 10 are maintained.
The 103 rejections of claims 1-11 over Du in view of Suhara and Min are maintained.
Response to Arguments
Applicant's arguments filed 01/22/2026 have been fully considered but they are not persuasive. Regarding the double patenting rejections, even though the instant application has an earlier effective filing date than the copending application, said rejections are maintained because the instant application is not in condition for allowance.
The Applicant amended claim 1 to include a method of calculating the compressive strength of the positive active material. The method of calculating the compressive strength is a property measurement method. The compressive strength of a material is its compression strength regardless of how it is measured. If the Applicant believes that the compressive strength resulted from using a “micro-compression tester” is different from the compressive strength taught by the prior art using density functional theory (DFT), then the claim limitation should be considered indefinite as it is not clear how the claimed compressive strength is different from any known compressive strength in the art. Since the structure of the product does not depend on the method of calculating the compressive strength, this limitation does not affect the patentability of said product.
Furthermore, the Applicant alleges that the actual compressive strength of the active material is calculated by determining the load at which the active material fractures and by using the equation recited in claim 1 and paragraph [0024] of the present specification. The Examiner does not deny the validity of this method, but the fact that the active material of Du in view of Suhara and Min has a compressive strength is calculated using density functional theory (DFT) does not necessarily mean that the same active material would not have the same compressive strength if evaluated with the claimed method. The Applicant also alleges that compressive strain calculated by Min is based on the amount of strain generated in the crystal when a lithium atom is desorbed from the crystal structure. The Examiner does not concede that Min’s compressive strength is invalid, but Min also calculates the compressive strength of materials that are fully lithiated. The same Figure S1.C. shows that the compressive strength of a fully lithiated material is actually greater than the fully delithiated material (~5 GPa vs. the previously cited 2.5 GPa) with the same amount of compressive strain. That figure is included below. Therefore, the Applicant’s arguments are not persuasive.
PNG
media_image1.png
320
425
media_image1.png
Greyscale
Therefore, the 103 rejections over Du in view of Suhara and Min are maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over several claims of the copending Application No. 18/696,472 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 is provisionally rejected over claim 1 of the copending application because both describe a positive electrode for a secondary battery that contains two regions/zones. Both recite a first positive electrode active material that is more present in a first region than a second region and a second positive electrode active material that is more present in a second region than a first region. Claim 1 of the instant application recites that the first positive active material has a compressive strength of more than 400 MPa, and the copending application recites that the first positive active material has a compressive strength of 200 MPa or more and 400 MPa or less. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 (I).
Claim 1 of the instant application claims a second positive electrode active material having a compressive strength of 250 MPa or less. The copending application claims a second positive electrode active material having a compressive strength of 150 MPa or less. These two ranges overlap with each other. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I).
Claim 1 of the instant application recites the limitation of “the compressive strength is calculated, using a micro-compression tester, from a formula ST = 2.8P / πd2, as an averaged value of St for at least 20 particles of the first or the second positive electrode material, where d represents a particle diameter and P represents a load applied to each particle.” This is a property measurement method. Since the structure of the product does not depend on the method of calculating the compressive strength, the limitations does not affect the patentability of said product. As a result, this additional limitation does not render the instant claim patentability distinct from the claim in the copending application.
Claim 2 is provisionally rejected over claim 5 of the copending application because both claim a positive electrode “wherein the second region is nearer to the positive electrode current collector than the first region.”
Claim 8 is provisionally rejected over claim 7 of the copending application because the instant application claims that “a content of the first positive electrode active material in the first region is 30 mass% or more.” Claim 7 of the copending application discusses the same material, but claims that the mass% is 50% or more. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I).
Claim 9 is provisionally rejected over claim 8 of the copending application because claim 9 of the instant application claims that “a content of the second positive electrode active material in the second region is 30 mass% or more.” Claim 8 of the copending application discusses the same material, but claims that the mass% is 50% or more. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I).
Claim 10 is provisionally rejected over claim 9 of the copending application because claim 9 claims the same battery of the instant application.
Claim 1 is provisionally rejected over claim 11 of the copending application because both describe a positive electrode for a secondary battery that contains two regions/zones. Both recite a first positive electrode active material that is more present in a first region than a second region and a second positive electrode active material that is more present in a second region than a first region. Claim 1 of the instant application recites that the first positive active material has a compressive strength of more than 400 MPa, and the copending application recites that the first positive active material has a compressive strength of 400 MPa or less. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 (I).
Claim 1 of the instant application claims a second positive electrode active material having a compressive strength of 250 MPa or less. The copending application claims a second positive electrode active material less than the compressive strength of the first positive active material of its claim. Considering the broadest reasonable interpretation, this limitation may be interpreted identically as a range of 400 MPa or less. These two ranges of 250 MPa or less and 400 MPa or less overlap with each other. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); The
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Du (US 2020/0006767 A1) and in further view of Suhara (US 7,381,498 B2) and Min (Intrinsic origin of intra-granular cracking in Ni-rich layered oxide cathode materials; Supplementary Figures to Min).
Regarding claims 1, 3, and 11, Du teaches a positive electrode comprising a positive current collector and a positive electrode mixture layer that contains two layers of positive electrode active material disposed on the positive current collector (abstract). Du teaches crystalline positive active materials that correspond with the claimed first positive active material having a “high mechanical strength” [0018] that can provide a “protective effect” [0018] to a layer underneath it, including NCM811 [0017], but is silent on the material’s compressive strength. Min is analogous art to Du because both teach lithium-nickel-cobalt-manganese composite materials. Min teaches that NCM811 has an in-plane direction compressive strength of 2500 MPa with only 2.5% strain in a fully delithiated state (Min Fig. S1.C in the article’s supplementary figures, annotated below).
PNG
media_image2.png
320
425
media_image2.png
Greyscale
Furthermore, the compressive strength is at its weakest in a fully delithiated state (Min, page 9047, column on the left). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I). Additionally, Du teaches that the positive active material comprised of primary particles “are not apparently agglomerated” [0018], as required by claims 3 and 11.
Therefore, it would have been obvious to a person of ordinary skill in the art to use Min’s NCM811 positive electrode material with the compressive strength of at least 2500 MPa as the NCM811 in Du’s particle to improve the mechanical strength of the electrodes and to improve the battery capacity as taught by Min (Results and Discussion). Thus, Du’s layer with NCM811 as an active positive material layer corresponds to the first region claimed by the applicant (as required by claims 1 and 11).
Du teaches a second sub-layer (corresponding with the applicant’s claimed sub-region) that is between the first sublayer/region and the positive current collector (abstract, [0033]). Du is silent on a second positive active material having a compressive strength of 250 MPa or less. Suhara is analogous art to Du because both teach lithium-nickel-cobalt-manganese composite materials. Suhara teaches a cathode material of a granular lithium composite powder whose stoichiometric composition (Suhara, abstract) aligns with the stoichiometric requirements taught by Du (Du, [0026] – [0031]). An example would be LiNi0.5Co0.2Mn0.3O2, also known as NCM622 (Suhara, abstract; Du, [0031]). Suhara continues to teach that their positive active material will have a large volume capacity density (col 4, lines 18-37). This material has a net compressive strength of less than 250 MPa (col 9, lines 22-39), which overlaps with the compressive strength required by the applicant’s second positive active material. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use the positive active material taught by Suhara in the second layer of Du’s composite positive active material to achieve a large energy density and improve the battery’s function.
Du continues to teach a method of preparing a positive electrode plate that involves applying the slurries for positive electrodes in sequence to create different regions/sublayers [0046]. When the electrode is prepared in this manner, the regions that are created are primarily comprised of a single active material. Du continues to teach that the ratio of the thickness of the first region to the thickness of the entire positive active material layer is preferably “in a range of 0.15 to 0.5” [0035]. If that ratio’s value is 0.5, then the thicknesses of the both regions will be equal. Therefore, Du’s positive electrode plate reads on the claimed limitations of claims 1 and 11 of “when the positive electrode mixture layer is divided into a first region and a second region having the same thickness, the first positive electrode active material is contained more in the first region than in the second region, and the second positive electrode active material is contained more in the second region than in the first region.”
The limitation of “the compressive strength is calculated, using a micro-compression tester, from a formula ST = 2.8P / πd2, as an averaged value of St for at least 20 particles of the first or the second positive electrode material, where d represents a particle diameter and P represents a load applied to each particle.” This is a property measurement method. Since the structure of the product does not depend on the method of calculating the compressive strength, the limitations does not affect the patentability of said product.
Regarding claim 2, Du teaches that the first positive electrode material is contained in an outer-most layer and the second positive electrode material is “disposed between the positive electrode current collector” and the first layer (abstract).
Regarding claim 4, Du teaches that the particle diameter of the non-aggregated particles is greater than 1 µm [0018], which overlaps with the claimed range of “5 µm 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I).
Regarding claim 5, Suhara’s positive active electrode material is “a granular powder formed by agglomeration of many fine particles” (col 5, lines 26-28).
Regarding claim 6, the average particle diameter of Suhara’s primary particles ranges from 0.5 µm to 7 µm (col 5, line 31), which overlaps with the claimed range of 0.2 µm to 1.2 µm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I).
Regarding claim 7, Suhara’s aggregated particles have an average diameter between 5 µm and 12 µm (col 5, lines 34-35) which overlaps with the claimed range of 5 µm to 20 µm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I).
Regarding claim 8, Du teaches that their first positive electrode active material slurry is 98% active material by mass [0046] which will result in the first region having a positive active material content that is greater than 30% by mass.
Regarding claim 9, Suhara teaches a positive electrode active material slurry that contains 88% of positive electrode active material by mass (Example 1, col 9, lines 45-47).
Regarding claim 10, Du teaches a secondary battery comprising a multi-layered positive electrode, a negative electrode, and a separator interposed between them, and an electrolyte solution ([0045] – [0054]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN K BLACKWELL-RUDASILL whose telephone number is (571)270-0563. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m.
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, Niki Bakhtiari can be reached at 571-272-3433. 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.
/R.B.R./Examiner, Art Unit 1722 /NIKI BAKHTIARI/Supervisory Patent Examiner, Art Unit 1722