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
Claims 1-18 are pending. The amendment filed 02/02/2026 has been entered but does not place the application in condition for allowance. New claims 17-18 have been considered. The amendment to claim 1 overcomes the prior art rejections over Imanari to the original claim.
New rejections follow.
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.
Claims 6, 14, and 18 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 6 recites “wherein the S satisfies 0.1 m2/g or more and 1.5 m2/g or less.” This is indefinite because the recited range for S contradicts the range for S recited in claim 1 (i.e., 0.1 m2/g or more and 0.89 m2/g or less). Appropriate correction is required.
Claim 14 recites “wherein the S satisfies 0.1 m2/g or more and 1.5 m2/g or less.” This is indefinite because the recited range for S contradicts the range for S recited in claim 2 (i.e., 0.1 m2/g or more and 0.89 m2/g or less). Appropriate correction is required.
Claim 18 recites “wherein the total pore volume V measures pores having a pore size of 200 nm or less.” The limitation is unclear because the total pore volume V is a property and not a method of measurement. To advance prosecution, the limitation will be interpreted as the total pore volume V includes volume from pores having a pore size of 200 nm or less. Appropriate correction is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites “wherein the S satisfies 0.1 m2/g or more and 1.5 m2/g or less.” The claim fails to further limit the claimed range of S recited in claim 1 (i.e., 0.1 m2/g or more and 0.89 m2/g or less).
Claim 14 recites “wherein the S satisfies 0.1 m2/g or more and 1.5 m2/g or less.” The claim fails to further limit the claimed range of S recited in claim 2 (i.e., 0.1 m2/g or more and 0.89 m2/g or less).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-2, 4-6, 8-10, 12-14, 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kashiwagi et al (JP6113902B1).
Regarding claim 1, Kashiwagi teaches a lithium metal composite oxide having a layered structure (machine translation [0012] and [0026] disclose a lithium metal composite oxide which can have a layered structure), comprising at least: a formula LixNi1-y-zCoyMzO2 wherein M is at least one metal element selected from Al, Mg, Mn, and Ti ([0012]) which corresponds to the claimed lithium metal composite comprising Li, Ni, and element X, wherein Al, Mg, Mn, and Ti are claimed species of element X.
Kashiwagi teaches a total pore volume (i.e., V) of the lithium metal composite oxide is less than 0.01 cm3/g, wherein pore features are obtained by using a nitrogen gas adsorption isotherm method ([0040]-[0041]) and a specific surface area (i.e., S) of 0.2 m2/g to 3 m2/g of the lithium metal composite oxide is obtained via a BET method ([0052]). Accordingly, the value of formula (A) can be calculated based on the values taught for total pore volume V and specific surface area S. Based on S of a range 0.2 m2/g to 3 m2/g and V of a range less than 0.01 cm3/g, the expression S/(V x 1000) is evaluated as 0.02 to 0.3, which overlaps with the claimed range of 0.18 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)
Thus, Kashiwagi also satisfies limitations (1) and (2) as claimed. Additionally, the method by which the property V is measured and the method by which the property S is measured do not render the invention patentable.
Regarding claim 2, Kashiwagi teaches the lithium metal composite oxide of claim 1, and Kashiwagi teaches the formula LixNi1-y-zCoyMzO2 wherein M is at least one metal element selected from Al, Mg, Mn, and Ti, and wherein 1.00 ≦ x ≦ 1.10, 0 <y ≦ 0.15, 0 <z ≦ 0.15, 0 <y + z ≦ 0.2 ([0012]), and the taught subscript ranges of lithium, nickel, cobalt, and oxygen in Kashiwagi’s formula overlap with those claimed in claimed formula (I). Additionally, the taught Mz includes species of the claimed MnzMw; for example, if z=0 in the claimed formula (I), no Mn is present, and M of the claimed formula (I) would be one or more elements of the group consisting of Mg, Al, or Ti, thus overlapping with species of Mz of Kashiwagi’s teaching, which can be at least one metal element selected from the group of Al, Mg, Ti. The subscript range of w in the claimed formula (I) also overlap with the subscript range of z in Kashiwagi’s formula. 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)
Regarding claims 4 and 12, Kashiwagi teaches the lithium metal composite oxide of claim 1 and claim 2. Kashiwagi discloses that the preferred pore profile can be described by nitrogen isotherm method for pore analysis ([0040]-[0042]), wherein the preferred area Aa of a region formed between the adsorption isotherm and the desorption isotherm in a range where p/p0 is 0.5 or more and 0.9 or less can be 0.03 cm3/g (Fig. 5; [0046]), which is about 0.02 cm3/g. Barring criticality of the claimed range bounded by 0.02 cm3/g, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close; Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); see MPEP 2144.05, I.
Additionally, the limitations pertain to the properties of the material as measured by the adsorption isotherm and a subsequent desorption isotherm. Such limitations are only given patentable weight to the extent that they define structure. As pointed out previously in addressing claims 1-2, the prior art teaches the claimed structural limitations. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see MPEP 2112.01, I. Accordingly, the claimed properties of claims 4 and 12 are presumed to be inherent.
Regarding claims 5 and 13, Kashiwagi teaches the lithium metal composite oxide of claims 1 and 2. Kashiwagi discloses (Fig. 6) a preferred pore distribution, wherein the log differential pore volume has a maximum value in a region of pore sizes of 200 nm or less, and the maximum value satisfies 0.03 cm3/(g·nm) or less, as claimed. Specifically, Kashiwagi discloses a peak in the distribution of log differential pore volume in a region of pore sizes of 1000 Å (100 nm) or less ([0049]-[0050]). 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 claims 6 and 14, Kashiwagi teaches the lithium metal composite oxide of claim 1 and claim 2, and Kashiwagi’s taught range for S of 0.2 m2/g to 3 m2/g ([0052]) overlaps with the claimed 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. 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)
Regarding claims 8 and 16, Kashiwagi teaches the lithium metal composite oxide of claim 1 and claim 2 and further teaches a positive electrode active material for a lithium secondary battery comprising the lithium metal composite oxide. Specifically, [0012] of Kashiwagi teaches the positive electrode active material comprises the lithium metal composite oxide and also teaches that a secondary battery comprises the positive electrode active material; [0009] teaches the secondary battery is specifically a lithium-ion secondary battery.
Regarding claim 9, Kashiwagi teaches the positive electrode active material for a lithium secondary battery according to claim 8 and further teaches a positive electrode comprising the positive electrode active material ([0018]; additionally, [0009] teaches the secondary battery is specifically a lithium-ion secondary battery).
Regarding claim 10, Kashiwagi teaches the positive electrode for a lithium secondary battery according to claim 9 and further teaches a lithium secondary battery comprising the positive electrode ([0018]; additionally, [0009] teaches the secondary battery is specifically a lithium-ion secondary battery).
Regarding claim 17, Kashiwagi teaches the lithium metal composite oxide of claim 1. Kashiwagi teaches the ratio of the volume of pores in the range of pore diameters from 10 Å to 100 Å to the total pore volume preferably be 10 to 40% ([0051]). The teaching indicates the total pore volume V includes volume from pores in the range of pore diameters from 10 Å to 100 Å (i.e., 1 nm to 10 nm), which would include pore sizes of 200 nm 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)
Regarding claim 18, Kashiwagi teaches the lithium metal composite oxide of claim 2. Kashiwagi teaches the formula LixNi1-y-zCoyMzO2 wherein M is at least one metal element selected from Al, Mg, Mn, and Ti, and wherein 1.00 ≦ x ≦ 1.10, 0 <y ≦ 0.15, 0 <z ≦ 0.15, 0 <y + z ≦ 0.2 ([0012]). A skilled artisan would have found it obvious to select M as Al, Mg, Ti, or a combination thereof, given that Kashiwagi lists them as suitable options, and wherein M would not be element Mn. Accordingly, the lithium metal composite oxide would have z=0 in the claimed formula I.
Claims 3, 7, 11, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kashiwagi et al (JP6113902B1) as applied to claims 1 and 2 above, and further in view of Kono et al (JPH11135119A).
Regarding claims 3 and 11, Kashiwagi teaches the lithium metal composite oxide of claims 1 and 2, but they do not teach an average particle diameter D50.
In the same field of endeavor, Kono teaches measurement of an average particle size for a lithium nickel composite oxide that is based on 50% of the cumulative value as the average particle size ([0045]) and teaches the average particle size be in the range of 10 to 16 µm ([0060]), which overlaps with the claimed 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. 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). Kono indicates these are preferred average particle sizes based on its impact on electrode packing and battery capacity ([0059]). A skilled artisan would have found it obvious to modify the lithium metal composite oxide of Kashiwagi with the average particle diameter D50 range taught by Kono, because it is a known configuration that results in preferred electrode packing and battery capacity.
A skilled artisan would have also considered the average particle size of the lithium composite oxide to be a result-effective variable. They would have found it obvious at the time of filing to have adjusted the average particle size of Kashiwagi to optimize the packing performance into the electrode and battery capacity as taught by Kono, and would have arrived at the claimed average particle diameter as a result.
Regarding claims 7 and 15, Kashiwagi teaches the lithium metal composite oxide of claims 1 and 2 but they do not teach a tapped density.
In the same field of endeavor, Kono teaches the tap density be in the range of 2.0 to 3.0 g/cm3 ([0060]), which overlaps with the claimed 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. 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). Kono indicates this is a preferred tap density range based on its impact on electrode packing and battery capacity ([0059]). A skilled artisan would have found it obvious to modify the lithium metal composite oxide of Kashiwagi with the tap density range taught by Kono because it is a known configuration that results in preferred electrode packing and battery capacity.
A skilled artisan would have also considered the tap density of the lithium composite oxide to be a result-effective variable. They would have found it obvious at the time of filing to have adjusted the tap density of Kashiwagi to optimize the packing performance into the electrode and battery capacity as taught by Kono, and would have arrived at the claimed tap density as a result.
Response to Arguments
Applicant’s arguments with respect to the prior art rejection over Imanari 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.
In response to Applicant’s arguments regarding the criticality of the value of formula (A) to be 0.18 or more, the Examiner respectfully asserts that the results shown in Table 1 are not commensurate with the scope of the claimed range and, consequently, do not demonstrate criticality of the claimed range. For example, the lithium/cobalt/manganese compositions listed are narrower than the compositions contemplated by the claims. Furthermore, the Comparative Examples 1-3 which have value A< 0.18 also have inconsistent values for other parameters, including pore volume V, specific surface area S, and/or average particle size D50, making it difficult to ascertain which parameter is responsible for the variations in measured performance.
Additionally, the BET multipoint measurement method is a standard method for measuring the specific surface area of a sample which is based on fitting isotherm data to an equation; see evidentiary reference Raja et al, p4-5, sections “Calculations” and “Multi-point BET.” Consequently, the specific surface area is a material property calculated from parameters fitted to the BET equation, and the property is agnostic of the relative pressure employed by the method. The method by which the property of surface area S is measured does not render the invention patentable.
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.
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/G.L.L./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 1 May 2026
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