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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/04/2026 has been entered.
Response to Amendment
Claims 1-3, 5-14 are pending in the application. The amendment filed 02/04/2026 have been entered but do not place the application in condition for allowance. The examiner acknowledges the cancellation of claim 4.
The amendments to claims 1 and 7 overcome the previous prior art rejection to claim 1. However, the 35 U.S.C. 112(b) rejections of 1-3, 5-14 are maintained, with reasons discussed in the Response to Arguments section below.
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, 5, and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 9, and 8 of copending Application No. 18/025,501 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1, Claim 7 of the copending Application No. 18/025,501 teaches a positive electrode comprising two mixture layers wherein one or both of the first mixture layer and the second mixture layer contain(s) a positive electrode additive represented by Chemical Formula 1 LipCo(1-q)M1qO4 wherein M1 is an element selected from a Markush group including Al, Fe, Zn, Ti, W, and Mg, as claimed by claim 1 of the instant application, and the recited ranges for subscripts p and q correspond respectively to the claimed ranges for subscripts x and y in the instant application’s Claim 1.
Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.), which would include the defect formation energy of the metal (M) as calculated by density functional theory (DFT). The instant specification indicates that the defect formation energies of metals (M) of the recited compositions corresponding to at least M = Al, Ti, or Mg and y=0.3 (p23 Table 1) lie within the claimed range of -4.9 to -6.4 eV. Additionally, given the same properties, the positive electrode additive must be capable of performing the same functions, including acting as a sacrificial positive electrode material as claimed. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114). Therefore, claim 7 of copending Application No. 18/025,501 teaches the limitations of claim 1 of the instant application.
Regarding Claim 2, Claim 7 of the copending Application No. 18/025,501 teaches that M can be Mg as pointed out in addressing claim 1 of the instant application. Therefore, the copending application teaches the limitations of claim 2.
Regarding Claim 5, Claim 9 of the copending Application No. 18/025,501 teaches the positive electrode of their claim 7 and teaches wherein the positive electrode additive has a tetragonal structure with a space group of P42/nmc, which teaches the limitations of claim 5 of the instant application.
Regarding Claim 8, Claim 8 of the copending Application No. 18/025,501 teaches the positive electrode of their claim 7 and teaches wherein the positive electrode additive is present an amount ranging from 0.1 to 5 parts by weight based on 100 parts by weight of each the first mixture layer and the second mixture layer, which lies within and anticipates the range of claim 8 in the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of copending Application No. 18/025,254 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1, Claim 1 of the copending Application No. 18/025,254 teaches a positive electrode including a positive electrode mixture layer comprising a positive electrode additive represented by the chemical formula LipCo(1-q)M1qO4 wherein M1 is an element selected from a Markush group including Al, Fe, Zn, Ti, W, and Mg, as claimed in claim 1 of the instant application, and the recited ranges for subscripts p and q correspond respectively to the claimed ranges for subscripts x and y in the instant application’s claim 1. Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.), which would include the defect formation energy of the metal (M) as calculated by density functional theory (DFT). The instant specification indicates that the defect formation energies of metals (M) of the recited compositions corresponding to at least M = Al, Ti, or Mg and y=0.3 (p23 Table 1) lie within the claimed range of -4.9 to -6.4 eV.
Additionally, given the same properties, the positive electrode additive must be capable of performing the same functions, including acting as a sacrificial positive electrode material as claimed. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114). Therefore, claim 1 of the copending application teaches the limitations of claim 1 of the instant application.
Regarding Claim 2, Claim 1 of the copending Application No. 18/025,254 teaches that M can be Mg as pointed out in addressing claim 1 of the instant application. Therefore, the copending application teaches the limitations of claim 2.
Regarding Claim 5, Claim 5 of the copending Application No. 18/025,254 teaches the positive electrode of their claim 1 and teaches wherein the positive electrode additive has a tetragonal structure with a space group of P42/nmc, which teaches the limitations of claim 5 of the instant application.
Claims 7-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, and 10 of copending Application No. 18/025,254 (reference application) in view of Jeon et al (US 10,403,929 B2).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 7, Claim 1 of the copending Application No. 18/025,254 teaches a positive electrode including a positive electrode current collector, a first conductive material, a binder, and a positive electrode mixture layer comprising a positive electrode active material and a positive electrode additive represented by the chemical formula LipCo(1-q)M1qO4 wherein M1 is an element selected from a Markush group including Al, Fe, Zn, Ti, W, and Mg, as claimed in Claim 1 of the instant application, and the recited ranges for subscripts p and q correspond respectively to the claimed ranges for subscripts x and y in the instant application’s Claim 1. Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.), which would include the defect formation energy of the metal (M) as calculated by density functional theory (DFT). The instant specification indicates that the defect formation energies of metals (M) of the recited compositions corresponding to at least M = Al, Ti, or Mg and y=0.3 (p23 Table 1) lie within the claimed range of -4.9 to -6.4 eV.
Additionally, given the same properties, the positive electrode additive must be capable of performing the same functions, including acting as a sacrificial positive electrode material as claimed. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
Claim 1 of copending Application No. 18/025,254 does not teach the binder as an organic binder polymer.
Jeon is relied upon to teach that the binder can be an organic polymer such as carboxymethyl cellulose and teaches that it is a material used for binding the positive electrode active material particles to each other and to attach the positive electrode active material to the current collector (Col 8 lines 48-49, lines 59-67). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified claim 1 of copending Application No. 18/025,254 to use an organic polymer such as carboxymethyl cellulose as a binder within the positive electrode mixture layer. Therefore, the combination of claim 1 of copending Application No. 18/025,254 and Jeon teach the limitations of claim 7 of the instant application.
Regarding Claim 8, Claim 6 of the copending Application No. 18/025,254 teaches the positive electrode of their claim 1 and further teaches a content of the positive electrode additive is 0.1 to 10 parts by weight based on 100 parts by weight of the positive electrode mixture layer, which overlaps with the claimed range of claim 8 in the instant application. 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 9, Claim 7 of the copending Application No. 18/025,254 teaches that the first conductive material is 0.1 to 10 parts by weight based on 100 parts by weight of the positive electrode mixture layer, 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)
Regarding Claim 10, Claim 1 of the copending Application No. 18/025,254 teaches a first conductive material that is a carbon fiber, which meets the limitations of claim 10 of the instant application.
Regarding Claim 11, Claim 10 of the copending Application No. 18/025,254 teaches that the positive electrode active material is a lithium metal composite oxide represented by Chemical Formula 2, Lix[NiyCozMnwM2v]Ou, which includes nickel, cobalt, and manganese, thereby meeting the limitations of claim 11 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-3, 5-14 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 the limitation “wherein the sacrificial positive electrode material has a defect formation energy of metal (M) of -4.9 to -6.4 eV, calculated using density functional theory (DFT)” (lines 2-5). Applicant only discloses the software package, model, and kinetic energy cutoff (instant spec: p22 lines 20-21; p23 lines 1-5) and provides no other parameters regarding the parameters used, which plausibly impact the output of the simulation. Therefore, the metes and bounds of the claim limitations are not clearly set forth, and the claim is indefinite.
Claim 7 recites the limitation “the sacrificial positive electrode material comprises lithium cobalt oxide represented by the following Chemical Formula 1, and having a defect formation energy of the metal (M) of -4.9 to -6.4 eV, calculated using density functional theory (DFT)” (lines 6-8). Applicant only discloses the software package, model, and kinetic energy cutoff (instant spec: p22 lines 20-21; p23 lines 1-5) and provides no other parameters regarding the parameters used, which plausibly impact the output of the simulation. Therefore, the metes and bounds of the claim limitations are not clearly set forth, and the claim is indefinite.
Claims 2-6 depend of claim 1 and therefore are also indefinite.
Claims 8-14 depend of claim 7 and therefore are also indefinite.
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.
Claims 1-3, 5-11, 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al (US 20130171524 A1, published 2013-07-04) in view of Santana et al, “Successes and failures of Hubbard-corrected density functional theory: The case of Mg doped LiCoO2,” J. Chem. Phys. 141, 164706 (2014).
Regarding claims 1 and 7, Cho teaches a sacrificial positive electrode material comprising a lithium cobalt oxide of Chemical Formula 1 (“LixMyM’1-yO4) (“When the compound of the above Chemical Formula 1 has a particle diameter within the range, the compound may be easily decomposed and sufficiently provide lithium without increasing resistance” [0072]). The compounds represented by Chemical Formula 1 of Cho, wherein M is selected from the Markush group consisting of Co, Ni, Mn, Fe, and a combination thereof, and M’ is selected from the Markush group consisting of Co, Ni, Mn, Fe, Al, Mg, Zn, Ti, and a combination thereof, M and M’ are different from each other, 5≤x≤6.05, and 0≤y≤1 [0023], include the claimed compositions embodied by claimed Chemical Formula 1 of the instant application: LixCo(1-y)MyO4, and Cho teaches overlapping ranges for subscripts x and y which provide a prima facie case of obviousness for the claimed compositions of Chemical Formula 1; see MPEP 2144.05. Cho also teaches specific examples of lithium cobalt oxides Li6Co0.5Fe0.5O4 and Li6Co0.9Al0.1O4, which satisfy the claimed composition of Chemical Formula 1; [0024].
In addition to teaching a substantially identical composition, Cho also teaches a method of making the lithium cobalt oxide that is substantially identical to that disclosed by Applicant. Specifically, Cho teaches calcining and reacting a mixture including a cobalt precursor and lithium precursor with an M-containing precursor under an inert atmosphere such as argon at a temperature from about 700°C to about 900°C ([0063], [0070]), wherein specific examples of the cobalt precursor are CoO and of the lithium precursor is lithium oxide Li2O ([0064]-[0065]). Cho also discloses that the M’-containing precursor may include an oxide (e.g. is a metal oxide) and that it may be suitably selected by one of ordinary skill in the art in such an amount as to satisfy a composition ratio in the final material ([0066], [0068]). The method is substantially identical to Applicant’s method (instant spec: p22 lines 9-14).
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, it must have the same properties, and a prima facie case of either anticipation or obviousness has been established, see MPEP § 2112.01. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Cho’s taught compound represented by Chemical Formula 1 includes compositions that would satisfy the claimed lithium cobalt oxide with the claimed defect formation energy of metal (M) of -4.9 to -6.4 eV, to the extent that the limitation can be understood for the recited density functional theory (DFT).
Additionally, Santana in the same field of endeavor discloses that metal dopants in a lithium cobalt oxide introduce metal defects with associated formation energies Ef that affect the stability of the lithium cobalt oxide complex (p164706-2 right col para 3-5 to p164706-3 left col para 1-2). A skilled artisan encountering Santana’s teaching would have found it obvious to have controlled the defect formation energy of the metal within the lithium cobalt oxides of Cho’s taught materials to satisfy the claimed range to ensure the stability of the lithium cobalt oxide. Accordingly, the combination of prior art teaches the claimed limitations of the sacrificial positive electrode material.
With respect to the additional limitations of claim 7, Cho also teaches a positive electrode comprising a positive electrode current collector and a positive electrode mixture layer [0087] containing a positive electrode active material (i.e., the lithiated intercalation compound [0057]-[0058], [0081]), a conductive material and an organic binder polymer ([0089], [0091] discloses examples of conductive material, [0092] discloses examples of organic binder polymers), and the sacrificial positive electrode material comprising the aforementioned lithium cobalt oxide [0084].
Regarding claim 2, the combination above teaches the sacrificial positive electrode material of claim 1. As pointed out in addressing the limitations of claim 1, Cho teaches compounds of Chemical Formula 1 can include lithium cobalt oxides [0024], and also directly suggests Mg as an option for M’ within a finite group of possible species. Therefore, it would have been obvious for one of ordinary skill in the art to have selected Mg because Cho discloses it as a suitable option.
In addition, Santana teaches that Mg doping into related lithium cobalt oxides has been shown to increase the doped material’s electronic conductivity and thermal stability (p164706-1 right col para 1-2). A skilled artisan would have also been motivated by Santana’s teachings to include Mg in Cho’s lithium cobalt oxide for the possible advantages of improved electronic conductivity and thermal stability.
Regarding claim 3, the combination above teaches the sacrificial positive electrode material of claim 1, and as pointed out in addressing the limitations of claim 1, Cho teaches the subscript y as 0≤y≤1 [0023], 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).
Regarding claim 5, the combination above teaches the sacrificial positive electrode material of claim 1, and as pointed out previously in addressing the limitations of claim 1, the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes. Therefore, the material must have the same properties, and a prima facie case of either anticipation or obviousness has been established, see MPEP § 2112.01. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Therefore, a property such as crystal structure is inherent in the product produced by the prior art, which uses methods substantially identical to Applicant’s methods and which teaches a substantially identical composition. Consequently, the cathode additive produced by Cho’s methods is expected to satisfy the claimed crystal structure.
Regarding claim 6, the combination above teaches the sacrificial positive electrode material of claim 1, and as pointed out previously in addressing the limitations of claim 1, the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes. Therefore, the material must have the same properties, and a prima facie case of either anticipation or obviousness has been established, see MPEP § 2112.01. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
The property of powder electrical conductivity is inherent in the product produced by the prior art, which uses methods substantially identical to Applicant’s methods and which teaches a substantially identical composition. 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, it must have the same properties, and a prima facie case of either anticipation or obviousness has been established, see MPEP § 2112.01. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Therefore, the cathode additive product produced by Cho’s methods is expected to satisfy the claimed powder electrical conductivity.
Regarding claim 8, the combination above teaches the positive electrode of claim 7, and Cho further teaches wherein the positive electrode active material (i.e., lithiated intercalation compound) can be mixed with the sacrificial positive electrode material (i.e., compound of Chemical Formula 1) at a weight ratio ranging from about 80:20 to about 97:3, which would result in a content of the sacrificial positive electrode material that is 3 to 20 parts by weight based on 100 parts by weight of the positive electrode active material, and thus overlap 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); see MPEP 2144.05.
Regarding claim 9, the combination above teaches the positive electrode of claim 7. Cho further teaches an Example 1 [0111] wherein the content of the conductive material is 10 parts by weight based on 100 parts by weight of the total positive electrode mixture layer, therefore it is within the claimed range and provides a prima facie case of obviousness; see MPEP 2144.05.
Regarding claim 10, the combination above teaches the positive electrode of claim 7. Cho further teaches the conductive material can comprise one or more carbon-based materials selected from the group including natural graphite, artificial graphite, carbon black, acetylene black, Ketjen black, and carbon fiber [0091], which includes claimed species of the limitation.
Regarding claim 11, the combination above teaches the positive electrode of claim 7. Cho further teaches the positive electrode active material (i.e., lithiated intercalation compound) can be LiCo1/3Ni1/3Mn1/3O2 [0081], which is a lithium composite transition metal oxide containing two or more elements (Co, Ni, Mn) selected from the group of claimed species.
Regarding claim 13, the combination above teaches an electrode assembly [0086], wherein the assembly comprises a negative electrode, an electrolyte and the positive electrode of claim 7.
Regarding claim 14, the combination above teaches a lithium secondary battery comprising the electrode assembly of claim 13 [0086].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Cho et al (US 20130171524 A1, published 2013-07-04) in view of Santana et al, “Successes and failures of Hubbard-corrected density functional theory: The case of Mg doped LiCoO2,” J. Chem. Phys. 141, 164706 (2014), as applied to claim 1, and further in view of Mizuno et al (US 2021/0057716 A1) as an alternative rejection.
Support is provided by evidentiary reference “Encyclopedia of Crystallographic Prototypes.”
Regarding claim 5, the combination above teaches the sacrificial positive electrode material of claim 1, comprising a lithium cobalt oxide of claimed Chemical Formula 1. Mizuno teaches that an XRD spectrum of Li5.8Co0.8Al0.2O4, which represents an embodiment of the claimed Chemical Formula 1 and is a substantially similar embodiment to Cho’s taught example of Li6Co0.9Al0.1O4, shows coexistence of main phase Li6CoO4 and a minor lithium oxide phase containing Al ([0130]) within the lithium cobalt oxide material. Mizuno further teaches that the crystal structure of the lithium transition metal oxides may be a crystal structure of each oxide used as the material and that the crystal structure of Li6CoO4 can be assigned to the space group P42/nmc ([0083] lines 1-5, 8-13), which is associated with the simple tetragonal lattice system (Encyclopedia of Crystallographic Prototypes: Lattice 9). Therefore, the sacrificial positive electrode active material has a tetragonal structure with a space group of P42/nmc, as claimed.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Cho et al (US 20130171524 A1, published 2013-07-04) in view of Santana et al, “Successes and failures of Hubbard-corrected density functional theory: The case of Mg doped LiCoO2,” J. Chem. Phys. 141, 164706 (2014), as applied to claim 1, and further in view of Umetsu et al (US 2020/0194775 A1).
Regarding claim 12, the combination above teaches the positive electrode of claim 7 but is silent regarding the average thickness of the positive electrode mixture layer.
Umetsu teaches a positive electrode mixture including a positive electrode active material comprising a positive electrode active material, a conductive material, a binder, and an alkali metal additive that is irreversibly decomposed (a sacrificial positive electrode material) ([0061]-[0062]; [0128] lines 1-5), and further discloses that the thickness of the positive electrode active material layer is 10 micrometers or more and 200 micrometers or less per single side ([0193] lines 1-4), which would be expected to have an average thickness overlapping 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). Umetsu also teaches that the taught range of thickness allows for sufficient output characteristics and reduced cell volume, and thus increases the energy density ([0193] lines 8-14). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the positive electrode mixture layer of modified Cho to have the thickness of the positive electrode mixture layer as taught by Umetsu for the advantages of sufficient output characteristics and reduced cell volume and the resulting increase in energy density.
Response to Arguments
Applicant’s arguments with respect to the prior art rejection of claims 1 and 7 (Remarks p6-7) 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.
With respect to Applicant’s arguments in response to the 35 U.S.C. 112(b) rejection of claims 1 and 7, Applicant indicates that the recited limitation “wherein the sacrificial positive electrode material has a defect formation energy of metal (M) … calculated using density functional theory (DFT)” would be clear and sufficient to persons of ordinary skill in the art based on Exhibits 1 and 2 and the key parameters disclosed in the instant specification (Remarks: p5 para 2). The Examiner respectfully disagrees.
The claimed limitation is a defect formation energy calculated from density functional theory (DFT), which is regarded as a field of computational methods; therefore, the disclosure in the specification cannot limit DFT as it is not a relative term to be understood. The cited section on DFT in the instant application (Specification: p22 lines 20-21 bridging p23 lines 1-4) provides guidance on the calculation; however, the claim language does not limit the calculation of defect formation energy to the DFT parameters or packages disclosed in the specification, and it is improper to import claim limitations from the specification; see MPEP 2111.01, II.
Plausibly, a person of ordinary skill in the art could run the DFT calculation for defect formation energy in a limitless number of ways and still be within the bounds of the claim as written. For example, prior art Santana et al (Santana et al, “Successes and failures of Hubbard-corrected density functional theory: The case of Mg doped LiCoO2,” J. Chem. Phys. 141, 164706 (2014)) provides DFT calculations for defect formation energies for related materials and uses different wavefunction energy cutoffs, specifies PAW methods with 3, 6, 8, and 9 valence electrons (information not disclosed by Applicant), as well as other details regarding the initialization of the transition metal atoms’ configurations and the type of k-point mesh employed, in addition to other parameters not listed in the instant application, choices which Santana discloses can affect the convergence of the calculated energies (p164706-3, left col para 1-3), and which are not disclosed in the instant specification. The key parameters provided by Santana for the DFT calculation of defect formation energy differ in scope from that provided by the instant application, therefore the claimed limitation of “wherein the sacrificial positive electrode material has a defect formation energy of metal (M) … calculated using density functional theory (DFT)” would not be sufficiently clear on its own without inclusion of details regarding the specific DFT methodology.
Therefore, it would be unclear to a person of ordinary skill in the art as to the DFT parameters considered to be within and beyond the boundaries of the claimed limitations based on the claim language in order to complete the calculation reproducibly. Accordingly, there is a failure to particularly point out and distinctly claim the subject matter regarded as the invention. Thus, the 35 U.S.C. 112(b) rejections of claims 1 and 7 are maintained.
Conclusion
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/G.L.L./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 16 April 2026
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