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 .
This action is responsive to Applicant’s amendment/remarks filed 01/23/2026.
Claims 1, 4-8, 12-20, 24, and 26 are currently pending, of which claims 1, 4-8, 12, 24, and 26 are withdrawn.
Response to Amendment
The claim objections set forth in the previous Office action are withdrawn in view of the above amendment.
Most of the 112(b) issues set forth in the previous Office action are overcome in view of the above amendment. However, there remains an antecedent basis issue in the independent claim necessitated by the present amendments. The independent claim also still recites an unclear tilde-based range. See the new/revised 112(b) rejection below. The Office notes that the scope of the claims are much more clear in view of the substantial amendments made to the claims.
The rejection of claim 21 under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), fourth paragraph, is withdrawn in view of the above amendment canceling the claim.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 13-20 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 pre-AIA the applicant regards as the invention.
In claim 13, the term “the electrode material for the lithium-ion battery” in the limitation/step “sintering the mixture, wherein the sintering evenly disperses the coating material on a surface of the electrode material for the lithium-ion battery” is confusing and lacks sufficient antecedent basis in the context of the recited method steps.
While the preamble states the method is indeed “for preparing an electrode material for a lithium-ion battery”, it is confusing and unclear where this electrode material comes from in the sintering step within the body of the claim. Is the electrode material referenced in the sintering step the same as the “lithium-ion battery material” provided and mixed with the coating precursor in the prior step or is the electrode material some other material? Further confusion is introduced by the following “wherein” limitations interchangeably referencing the different terms “the lithium-ion battery material” (in “wherein the compound is a C10 to C34 fatty acid, and a ratio of an amount of the coating material to the lithium-ion battery material is 0.1 to 10 wt%;”) and “the electrode material for the lithium-ion battery” (in “wherein the electrode material for the lithium-ion battery has a chemical formula of …”).
Also, in claim 13, the claim still recites a range via tilde (“1:1~20” for a ratio of an amount of the coating material to the lithium-ion battery material) which renders the scope of the range, and thus the claim, indefinite. It remains unclear specifically what the tilde denotes. Some persons of ordinary skill in the art might interpret the tilde as an approximation (i.e., that the end points are “about” or “approximate” meaning the range can include end points slightly beyond/about/approximate to those recited; e.g., that 1:1~20 can include relative values approximate to those recited such as 1:0.95 or 1:20.1) while other persons of ordinary skill in the art might interpret the tilde as a fixed range (i.e., synonymous with a hyphen that the end points are precisely those recited; e.g., that 1:1~20 relative values approximate to those recited such as 1:0.95 or 1:20.1 and only includes values equal to and within the recited end points of 1:1 to 1:20). There is more than one reasonable interpretation for the meaning of the tilde (Id.) which renders the claim(s) reciting it indefinite.
Claims 14-20 are also indefinite for their dependency on claim 13.
For purposes of further examination and compact prosecution (or else this application would go through an entire round of prosecution without comparison to prior art due to serious ambiguities in the recited language), the claim is interpreted as if the “lithium-ion battery material” and “electrode material for the lithium-ion battery” were one and the same (i.e., “mixing the coating precursor with an electrode material for a lithium-ion battery to form a mixture”, “a ratio of an amount of the coating material to the electrode material for the lithium-ion battery is 0.1 to 10 wt%”). If this interpretation is incorrect then the claim is seriously unclear and further clarification and/or amendment of the claim is needed. Additionally, the tilde is construed as a hyphen or “to” based on Applicant’s amendments to the other tildes that were previously recited.
Appropriate correction/clarification is required.
Claim Rejections - 35 USC § 102 & 103
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.
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 13, 14, 16, 17, 19, and 20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dai et al. (US 2021/0320298 A1). Note that Dai et al. has an earlier effective filing date than the instantly claimed invention due to priority to an earlier filed provisional application, US 63/007,781, having support for the cited features. Citations to Dai et al. will include both citations to the PGPub and the provisional application having earlier support for the cited PGPub teachings.
As to claim 13, Dai et al. is generally drawn to forming cathode active material particles for lithium ion batteries with a coating thereon (abstract PGPub; para. 0001 provisional). A method of making the particles comprises coating a coating mixture comprising a metal oxide over a plurality of the cores comprising the lithium cobalt oxide-based bulk material and heating to an elevated temperature for a period of time (para. 0010 PGPub; para. 0009 provisional). A specific example taught in Dai et. is (para. 0072 PGPub; para. 0060 provisional):
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This example specifically 1) prepares a coating precursor (a coating mixture) by mixing a C18 fatty acid compound (stearic acid) with a coating material (the Al2O3 metal oxide and MgF2 metal fluoride nano-size powders) at a weight ratio of 1:7.33 (12 wt.% of the blend is the stearic acid, meaning the remainder of the blend, i.e., the coating compounds, is 88 wt.%; 12:88 equals 1:7.33), 2) mixes the coating precursor with a lithium-ion battery material (cathode active material Li0.992Co0.97Mn0.02Al0.01O2) to form a mixture/blend, and 3) sinters this mixture (heats to an elevated temperature for a prior of time) to disperse/provide the coating material on a surface of the electrode material (this is the purpose and intended result of the reference, as previously cited). A ratio of an amount of the coating material to the lithium-ion battery material is approximately 0.88 wt.% (2,000 ppm of Al as Al2O3 equals 7,557 ppm of Al2O3 or 0.755 wt.% Al2O3 and 500 ppm of Mg as MgF2 equals 1282 ppm of MgF2 or 0.128 wt.% MgF2; 0.755 wt.% plus 0.128 wt.% equals 0.883 wt.%); alternatively, if the prior approximation is incorrect, note the base Al/Mg ppms of 2,000 and 500, respectively, nevertheless amount to 0.25 wt.% as 2,000 ppm equals 0.2 wt.% and 500 ppm equals 0.05 wt.%. The exemplary formula Li0.992Co0.97Mn0.02Al0.01O2 corresponds to the claimed formula where M is Al, m is 0.08, x is zero, y is 0.97, and z is 0.02.
Regarding the claimed limitation that the coating material is evenly dispersed on a surface of the electrode material, Dai et al. specifically teach the coating may be a continuous coating (para. 0040 PGPub; para. 0038 provisional); see also Fig. 2B which depicts the coating as uniform, i.e., even. In any event, the claimed limitation of forming an even dispersion/coating of the coating material on a surface of the electrode material is presumed inherent from the teachings of the reference as the reference teaches a prior art product identical in structure and composition produced by identical processes. 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
In view of the foregoing, the cited example of Dai et al. anticipates each and every claimed limitation of the independent claim.
In the event the cited example of Dai et al. somehow fails to meet the claimed limitations under the meaning of anticipation (specifically, fails to meet the claimed coating material to lithium-ion battery material range, chemical formula, or even dispersion/coating of coating material on the surface of the electrode material under the meaning of anticipation), the teachings of Dai et al. nevertheless meet the claimed limitations under a strong prima facie case of obviousness at least since the broader teachings of the reference overlap those claimed. Dai et al. further teach the oxide components of the coating may be up to 2 wt.% of the particle weight (para. 0056 PGPub; para. 0051 provisional), which certainly overlaps that claimed. Dai et al. also teach the surface composition of the particle comprises up to 5,000 ppm of fluorine (F) (para. 0009 PGPub; para. 0008 provisional), which, taken with the oxide range (Id.) overlaps that claimed. Additionally, Dai et al. teach the cathode active material particles have the general formula LiaCo1-x-2yMex(M1M2)yOz (para. 0009 PGPub; para. 0008 provisional), which overlaps the claimed Li1+mNixCoyMnzM1-x-y-zO2 formula. Furthermore, in addition to the prior cited teachings that the coating may be continuous and is depicted as uniform/even (Id.), the claimed limitation that there is an even dispersion/coating of coating material on the surface of the electrode material would flow naturally from the teachings of the reference as the reference teaches a product substantially identical/overlapping in structure and composition produced by a substantially identical/overlapping process via the exemplary teachings supplemented by the cited broader teachings. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claim 14, the exemplary sintering temperature is 800°C (Id.), which is squarely within the claimed range. However, Dai et al. teach the temperature of the heating is at least 700°C (para. 0010 PGPub; para. 0009 provisional), which overlaps the claimed range. A preferred temperature is 700°C to 1,000°C (para. 0045; para. 0093 provisional), which falls within the claimed range.
As to claim 16, the exemplary sintering time is 8 hours (Id.), which is squarely within the claimed range.
As to claim 17, the electrode material is in the form of a powder (Id.)
As to claims 19 and 20, the fatty acid is a saturated fatty acid and has a chemical formula of CH3(CH2)nCOOH where n is an integer from 8 to 32 (stearic acid meets these limitations).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Dai et al. (US 2021/0320298 A1) as evidenced by Shi (WO 2007/131411 A1). Citations to Shi are with respect to an English language machine translation thereof provided by the Office.
The disclosure of Dai et al. is relied upon as set forth above.
Dai et al. teach heating/sintering at an elevated temperature of 800°C in the cited examples, a broad range of at least 700°C, or a narrower range of 700°C to 1,000°C (Id.) but do not specify a heating rate for the heat treatment.
However, the claimed heating rate of 1 to 10°C/min is a conventional heating rate in the art that would have been within the purview of a skilled artisan and obvious to a person of ordinary skill in the art to obtain predictable results with a reasonable expectation of success. As evidence thereof, please see p.4 of Shi that a heating rate of 1-10°C/min for heat treating materials at an elevated temperature on the order of hundreds of degrees Celsius in the field of electrode materials is indeed conventional.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Dai et al. (US 2021/0320298 A1).
The disclosure of Dai et al. is relied upon as set forth above.
While Dai et al. fail to meet the claimed limitation that the particle size of the coating material is 10 nm to 500 nm under the meaning of anticipation, the teachings of Dai et al. nevertheless meet the claimed limitation under a prima facie case of obviousness. Dai et al. fail to quantify the diameter/size of the coating particles that would be necessary for a case of anticipation, but Dai et al. nevertheless teach that they have are “fine nanometer sized particles” and/or “nano-size powders) (para. 0071 & 0072 PGPub; para. 0059 & 0060 provisional). A person of ordinary skill in the art would regard the disclosure of “nano-size powders” as meaning the powders are indeed nano-sized, i.e., have a size/diameter somewhere between 1 nm and 1,000 nm, which overlaps and encompasses the claimed particle size range of 10nm to 500nm. A person of ordinary skill in the art would also regard the disclosure of “fine nanometer sized particles” as meaning the powders are at the lower end, i.e., the lower half, of the “nano-size” order, i.e., i.e., have a size/diameter somewhere between 1 nm and 500 nm, which overlaps and encompasses the claimed particle size range of 10nm to 500nm. Accordingly, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive at the claimed range from the teachings of the reference as the references requires provision of a nano-sized particle as the coating material and specifically invites the provision of finer, i.e., smaller, nano-sized particles.
Response to Arguments
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive. Applicant preemptively argued a rejection over Dai et al. (US 2021/0320298 A1) that Dai et al.’s process involves forming a slurry or mixture implying liquid assistance followed by heating rather than the claimed dry solid-state method without solvents where the fatty acid solely acts as a dispersant for even coating and volatizes completely.
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a dry, solid-state method without solvents) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant’s argument that the claims are to a solid-state process is also confusing because the claims encompass liquid fatty acids (e.g., oleic acid, a C18 unsaturated fatty acid, within the broad carbon count range recited in the independent claim and the “unsaturated fatty acid” genus of dependent claim 19 thereof, is an oily liquid at room temperature).
Arguendo, in the event the claims recited the argued features that are present absent in the rejected claims, the Office cannot locate where in Dai et al. the process involves a wet/liquid coating precursor as alleged. Please provide citations where Dai et al. requires and teaches away from a dry solid-state method. Rather, the Office has cited an Example in the reference that specifically mixes the coating material with stearic acid (all solids at room temperature) in a ball mill and then blends that mixture with a cathode active material followed by heating to an elevated temperature to form coated cathode active material particles (see, e.g., para. 0072 of the PGPub and para. 0060 of the provisional application).
Regarding Applicant’s argument that the reference does not suggest transitioning to a solid-state fatty acid dispersion mechanism, the cited example in Dai et al. specifically teaches a blend of fine nanometer sized coating particles with stearic acid that was specifically provided as a “dispersant”.
The remaining references listed on Forms 892, 1449, and PCT 210 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references discussed above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
March 18, 2026