DETAILED ACTION
Claim Analysis
The present application contains two active independent claim(s) (claims 1 and 5) and sixteen active dependent claims (claims 2 – 4 and 6 - 18).
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Claim Objections
Claim 5 is objected to because of the following informalities: claim 5 recites “A secondary battery comprising a positive electrode active material has a multiple structure”, which appears to be improper English (typographical error). This objection can be overcome by either reciting “… material that has a …” or by reciting “ … material [has] having a multiple …”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) The claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) The claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1, 5, 6, 10 – 13 and 15 – 18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by IDS reference to Noh et al. (U.S. Patent App. No. 2016/0049648 A1) as evidenced by IDS reference Ito et al. (JP 2017-210395 A).
Regarding independent claims 1 and 5, Noh et al. disclose a secondary battery (Title; Abstract) comprising a positive electrode active material (ibid) comprising a first, second and third regions (noting that the second region in claim 5 is the first region in claim 1 and the third region in claim 5 is the second region in claim 1:
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), wherein all regions comprise a lithium oxide (at least Paragraphs 0006 – 0017 and examples) as well as Li, Ni and Co (ibid and Title and Abstract), wherein the Ni concentration (“First Metal” per Paragraph 0119) meets the claimed limitations for relative concentration in both claims 1 and 5 (as shown in Figure 5 above, but also per embodiment in Figure 10b:
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).
Regarding claim 6, the relative concentrations of Ni are met for the reasons expressed and shown above with regard to Figures 5 and 10b.
Regarding claims 10 and 15, these limitations are intended use and/or functional limitations and are not further limiting in so far as the structure of the product is concerned. Note that in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See MPEP Form Paragraph 7-37-09. In the instant case, Noh et al. clearly teach that the Li ions diffuse (Paragraphs 0118 – 0119) and that the concentration gradients facilitate improved cycle performance; i.e. stability (Title; Abstract; examples). As such, the Examiner deems that the structures of 5 and 10b meet the claimed intended use/functional limitations.
Regarding claims 11 and 16, Noh et al. disclose carbon material in the secondary battery but fails to explicitly disclose the specifics of it being fibrous carbon, graphene or particulate carbon (Paragraph 0200). However, the Examiner takes Official Notice that these are all _very_ conventional forms of carbon additives in lithium ion secondary batteries, as evidenced by at least the disclosure of powder (particulate) carbon in Ito et al. (JP ‘395 A) (Paragraphs 0075 – 0079 and examples). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the various forms of carbon additives are all functional equivalents in the field of suitable carbon additive materials for use in lithium ion secondary batteries. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding the limitation(s) in claims 12, 13, 17 and 18, the Examiner notes that these limitation(s) are nominal preamble limitations which do not set forth any structure, but merely state(s) the purpose or intended use of the invention. As stated in the MPEP, “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”)” (MPEP 2111.02 – emphasis added). Regarding these limitations, Noh et al. disclose the nominal preamble limitations as these are both nominal and preamble limitations that fail to breathe life or meaning into the claims.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 2, 11 and 16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Noh et al. as applied above, and further in view of IDS reference to Ito et al. (JP 2017 – 210395 A).
Noh et al. is relied upon as described above.
Regarding claim 2, Noh et al. fails to disclose the Mn concentration following the same general pattern as the Ni concentration (i.e. both being higher in the first (outer/”shell”) region than the second (inner/”core”) region).
However, JP ‘395 teach a similar Li-NiMnCo-oxide positive electrode active material wherein the Mn and Ni both trend similarly (see Table 1: shell (second region) having NiMn-oxide and core (center region) comprising lower values of Ni and Mn since it also includes Co). While not explicitly teaching that the Ni and Mn would always track even in the three-layered embodiments, the Examiner deems that a skilled artisan would readily appreciate the general teaching in Ito et al. that where Ni is depressed, Mn should also be depressed, so that Co can be elevated (as they are generally teaching the gradient behavior of Co). Furthermore, the Examiner notes that Noh et al. disclose 2-layered embodiments meeting the claimed relative Ni concentrations versus the three layered embodiments shown in Figures 5 and 10b (i.e. see Figure 4 and examples).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Noh et al. to meet the claimed Mn limitations as taught by Ito et al., since such a structure can produce positive electrode active materials with high packing density, high specific surface area and excellent battery performance (at least Abstract).
Regarding claims 11 and 16, while the Examiner maintains that the broadly disclosed carbon usage is anticipated by Noh et al. above, the Examiner acknowledges that Noh et al. fails to explicitly teach fibrous carbon, graphene or particulate carbon.
However, the Examiner takes Official Notice that these are all conventional forms of carbon additives in lithium ion secondary batteries, as taught by at least the disclosure of powder (particulate) carbon in Ito et al. (JP ‘395 A) (Paragraphs 0075 – 0079 and examples). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the various forms of carbon additives are all functional equivalents in the field of suitable carbon additive materials for use in lithium ion secondary batteries. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Claims 3, 4, 7 – 9 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Noh et al. as applied above, and further in view of IDS reference KR 2016-0044730 A.
Noh et al. is relied upon as described above.
Regarding claims 3, 4, 7 – 9, Noh et al. fails to disclose an impurity region meeting the claimed limitations.
However, KR ‘730 A teaches a similar core-shell structure positive electrode active material, wherein an impurity region (Title; Abstract; Paragraphs 0001 – 0008: barrier layer) is provided to prevent diffusion (ibid – Paragraph 0006) and is formed of fluorine containing material (ibid – Paragraphs 0007 – 0008).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Noh et al. to utilize an impurity (barrier layer) region meeting the claimed limitations as taught by KR ‘730 A because it would serve to suppress diffusion and migration from one region to another.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
December 20, 2025