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 § 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.
Claims 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Suhara et al. (US 2006/0263690), cited in the Information Disclosure Statement dated June 9, 2025, and further in view of Mishima et al. (“Development of Cathode and Anode Active Materials for Lithium Ion Battery”), a copy of which was provided with the Information Disclosure Statement dated June 9, 2025.
Regarding independent claim 12 and claim 17, Suhara et al. disclose a positive active electrode material (see paragraphs [0090]-[0098] that include Examples 13 and 15-17), in which the positive active electrode material of Suhara et al. includes the following compositions:
LiCo0.997Ti0.003O1.998 F0.002 (Example 13);
LiCo0.997Al0.003O1.998 F0.002 (Example 15);
LiCo0.997Mg0.003O1.998 F0.002 (Example 16); and
LiCo0.997Zr0.003O1.998 F0.002 (Example 17).
In this instance, the applicant’s claimed compound is represented by Formula I in claim 17:
LiaCoIb1CoIIb2McOdEe (Formula I), wherein
0.95 ≤ a ≤ 1.05,
0 < b1 < b2 < 1,
b1 + b2 ≤ 1,
0 ≤ c ≤ 0.2,
0 < d ≤ 2, and
0 ≤ e ≤ 1.
Since applicant’s claim 17 depends from independent claim 12 that includes “wherein a first peak and a second peak exist in a 59Co NMR spectrum of the positive active material, a center position of the first peak is at A ppm, a center position of the second peak is at B ppm, and 13900 ppm ≤ A < B ≤ 14300 ppm”, one of ordinary skill in the art would have anticipated and/or rendered obvious the limitations within independent claim 12 based on the teachings of Suhara et al. (in Examples 13 and 15-17) that disclose and/or suggest overlapping ranges of values represented by a, b1, b2, c, d, and e in above Formula 1 recited in applicant’s claim 17 that depends from independent claim 12, wherein the limitation “13900 ppm ≤ A < B ≤ 14300 ppm” would result and/or have significant overlap with Examples 13 and 15-17 of Suhara et al.
All of Examples 13 and 15-17 of Suhara et al. include Li (a = 1), Co (b = 0.997), M (c = 0.003), O (d = 1.998), and F (e = 0.002).
Regarding the value of c = 0.003 for the parameter M, M = Ti (Example 13), M = Al (Example 15), M = Mg (Example 16), and M = Zr (Example 17).
Suhara et al. do not explicitly disclose the new limitation of independent claim 12 “the first peak is a CoI peak and the second peak is a CoII peak, the CoI peak and the CoII peak represent cobalt ions in different chemical environments, and the positive active material comprises a compound containing CoI and CoII”.
However, Mishima et al. disclose a positive active material (see abstract), wherein the positive active material includes different variants of compounds based on LiCoO2, including partial replacement of cobalt (Co) with B and Mg, thus forming different chemical environments of cobalt ions (as CoI and CoII), namely LiCo1-xBxO2 and LiCo1-(x+y)BxMgyO2, in which formation of cobalt ions represented by a CoI peak and a CoII peak is advantageous for obtaining a higher electric conductivity and cyclability (see abstract).
It would have been obvious to one of ordinary skill in the art at the time the applicant’s invention was made to modify the positive active electrode material disclosed by Suhara et al., by including cobalt ions in different chemical environments to form a positive active material that comprises a compound containing CoI and CoII, as taught by Mishima et al., in order to obtain a higher electric conductivity and cyclability (Mishima et al.; see abstract).
In view of the combined teachings of Suhara et al. and Mishima et al. as applied to independent claim 12 and claim 17, and further including that CoI and CoII are represented in amounts of b1 and b2 to meet b1 + b2 ≤ 1 and 0 < b1 < b2 < 1, one of ordinary skill in the art would have recognized as inherent and/or obvious that the sum of b1 + b2 (while annotating b1 as a value smaller than b2; for example, in a range between 0.001 and 0.498 for b1, and in a range between 0.499 and 0.996 for b2). In this instance, such ranges of b1 and b2 would be subject to routine experimentation to obtain an improved positive electrode active material with a large volume capacity density, high safety, and excellent in charge and discharge cyclic durability (see abstract of Suhara et al.), and to obtain a higher electric conductivity and cyclability (see abstract of Mishima et al.). Moreover, since the parameters a, c, d, and e include ranges that are disclosed by Suhara et al., and the limited number of elements (Li, Co, O, F) along with the claimed list of elements M (of which Suhara et al. disclose four of the list of these elements in Examples 13 and 15-17), the only parameters that would not be taught by Suhara et al. (but are instead disclosed/suggested by Mishima et al. in the form of cobalt ions in different chemical environments, namely CoI and CoII) would be b1 and b2.
With regard to the ranges of the elemental composition of applicant’s Formula I, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of the combined teachings of Suhara et al. and Mishima et al., as set forth in MPEP 2144.05. “In the case where 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). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 13-16, the combined teachings of Suhara et al. and Mishima et al. disclose and/or suggest the features of applicant’s independent claim 12 and claim 17. For applicant’s claim 13, the limitation “wherein a peak width at half height of the first peak is HA, a peak width at half height of the second peak is HB, and 0.017 ≤ HB/HA ≤ 90.2”, and claim 13 is further limited by claim 14. For applicant’s claim 15, the limitation “wherein a peak area of the first peak is SA, a peak area of the second peak is SB, and 0 < SA/SB ≤ 0.3”, and claim 15 is further limited by claim 16. For similar reasons as applied to applicant’s claim 17 that is anticipated and/or obvious in view of the combined teachings of Suhara et al. and Mishima et al., and being applicable to the ppm values obtained by center positions of the first and second peaks in a 59Co NMR spectrum in the limitation “13900 ppm ≤ A < B ≤ 14300 ppm” of independent claim 12, one of ordinary skill in the art would have recognized as inherent and/or obvious that values of peak width at half height for first and second peaks (HA,HB) of claims 13 and 14, as well as that values of peak area for first and second peaks (SA,SB) of claims 15 and 16, would be met as being within (anticipated) and/or significantly overlapping (rendering obvious) the claimed ranges of all of claims 13-16, of which ranges would be subject to routine experimentation to obtain an improved positive electrode active material with a large volume capacity density, high safety, and excellent in charge and discharge cyclic durability (see abstract of Suhara et al.). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Response to Arguments
The examiner acknowledges the applicant’s amendment received by the USPTO on March 20, 2026. The amendment overcomes the prior specification objections and 35 USC 112(b) rejections. Although amendments to independent claim 12 overcome the prior 35 USC 102/103 rejection in view of Suhara et al. (US 2006/0263690), a newly provided reference to Mishima et al. is now applied in combination with Suhara et al. to result in a new 35 USC 103 rejection for all claims of record (see above section 3). Claims 18-31 remain withdrawn from consideration as drawn to non-elected inventions. Claims 12-17 remain under consideration in the application.
Applicant’s arguments with respect to claims 12-17 have been considered but are moot because the new ground of rejection includes a new reference to Mishima et al., including in the newly underlined portions of the above 35 USC 103 rejection, and thus does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 May 14, 2026
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