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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/5/2026 has been entered.
Status of Claims
Claims 1-11 are pending in the application. Claim 2 is withdrawn. Claims 1 & 3-10 were rejected in the office action mailed 11/5/2025. Applicant added new claim 11. Claims 1 & 3-11 are presently examined.
Response to Amendment / Arguments
The amendment filed 2/5/2026, in response to the 11/5/2025 office action, has been entered. Applicant’s arguments and claim amendments overcame all objections and 35 U.S.C. 112(b) rejections; however, claim 10 has a new 35 U.S.C. 112(b) rejection based on inconsistency with the claim 1 amendment.
Applicant's arguments, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive.
Regarding claim 10, Applicant argues that “Azami does not disclose regarding the ratio of the size of the secondary particle to the size of each one of the primary particles is 1 or less.” This claim is rejected under U.S.C. 112(b) as being indefinite. Furthermore, secondary particles are optional under claim 1, so this ratio is also optional, and there is no requirement that the prior art teach this optional ratio.
Regarding claim 1, Applicant argues:
Nowhere does Azami teach or suggest that the results due to the presence of the fibrous conductive agent may or may not be present depending on the ratio of secondary/primary particle size of the positive active material particle.
Claim 1 doesn’t require that fibrous conductive agent results are based on the ratio of secondary/primary particle size. The prior art only needs to teach claim limitations.
Applicant next argues unexpected results of the range in claim 1. Claim 1, however, is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US20190280284A1 (Azami). Unexpected results won’t overcome a 35 U.S.C. 102 rejection.
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.
Claim 10 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor(s) regard as the invention.
Claim 10 depends from claim 1. Claim 1 requires “a secondary particle formed by aggregation of the primary particles”. Thus, the secondary particle must be larger than the primary particles.
Claim 10 then states that “the ratio of the size of the secondary particle to the size of each one of the primary particles is 1 or less”. According to this claim 10 limitation, the secondary particle size is equal to or less than primary particle. This is opposite to the requirement of claim 1. Thus, it is impossible to fulfill the claim 10 limitation within the context of independent claim 1 limitations.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 1, 3-7, & 9-11 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US20190280284A1 (Azami).
Azami teaches the following claim 1 limitations:
A positive electrode for an energy storage device, comprising a positive active material layer (paragraph 18), wherein
the positive active material layer includes a positive active material particle (paragraphs 20-22) and a fibrous conductive agent (paragraph 25: carbon nanotubes)
wherein the positive active material particle includes primary particles (paragraphs 20-22: primary particles)
and optionally a secondary particle formed by aggregation of the primary particles (secondary particles are optional, so it is not required for the prior art to teach this aggregation), and
a ratio of a size of the secondary particle to a size of each one of the primary particles is 3 or less (secondary particles are optional, so it is not required for the prior art to teach this ratio),
Claim 1 also states:
the size of each one of the primary particles being an average value of particle sizes of arbitrary fifty primary particles constituting the positive active material particle observed by a scanning electron microscope (SEM),
the size of the secondary particle being a value at which a volume-based integrated distribution calculated in accordance with JISZ-8819-2 (2001) is 50% (D50: median size) based on a particle size distribution measured by a laser diffraction/scattering method for a diluted solution obtained by diluting positive active material particles with a solvent in accordance with JIS-Z-8815 (2013)
This method of determining particle size does not limit the scope of this apparatus claim for examination purposes. Examiner encourages Applicant to file a divisional application for this size-determination method.
With regard to claim 3, Azami teaches the limitations of claim 1 as described above. Azami also teaches the following claim 3 limitation:
the positive active material layer further includes a granular conductive agent (paragraph 26: carbon black)
With regard to claim 4, Azami teaches the limitations of claims 1 & 3 as described above. Azami also teaches the following claim 4 limitation:
the fibrous conductive agent and the granular conductive agent are carbonaceous materials (paragraph 26: carbon nanotubes and carbon black)
With regard to claim 5, Azami teaches the limitations of claim 1 as described above. Azami also teaches the following claim 5 limitation:
the fibrous conductive agent has an average diameter of 100 nm or less (paragraph 26: carbon nanotube average diameter is 10 nm to 30 nm)
With regard to claims 6 & 11, Azami teaches the limitations of claim 1 as described above. Claims 6 & 11 state:
Claim 6
a content of the fibrous conductive agent in the positive active material layer is 3% by mass or less
Claim 11
a content of the fibrous conductive agent in the positive active material layer is 0.05% by mass or more and 5% by mass or less
Azami teaches 1-10 mass% carbon nanotubes in the positive electrode mixture layer (paragraph 29). Thus, Azami’s 1-10 mass% range overlaps the claimed ≤ 3 mass% range (claim 6) and the 0.05 to 5 mass% (claim 11). MPEP 2144.05 (II)(A) provides the law for this issue:
“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)”.
Given that Azami’s range is similar to and overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the ranges in claims 6 & 11 are obvious variants of Azami’s range.
In the Remarks, Applicant does discuss unexpected results associated with the fibrous conductive agent; however, these unexpected results are associated with a secondary particle size to primary particle size ratio. This ratio is not part of the claims because secondary particles are optional.
With regard to claim 7, Azami teaches the limitations of claims 1 and 3 as described above. Azami also teaches the following claim 7 limitation:
a content of the fibrous conductive agent with respect to a total content of the fibrous conductive agent and the granular conductive agent in the positive active material layer is 30% by mass or more and 70% by mass or less (paragraph 29: mass% carbon nanotubes in the positive electrode mixture layer is 1-10 mass%; paragraph 31: mass% carbon black in the positive electrode mixture layer is 1-10 mass%)
Azami’s content of the fibrous conductive agent is the following (c. black = carbon black & CNT = carbon nanotubes):
1
c
.
b
l
a
c
k
1
c
.
b
l
a
c
k
+
10
C
N
T
=
9
%
10
c
.
b
l
a
c
k
10
c
.
b
l
a
c
k
+
1
C
N
T
=
91
%
Azami’s 9-91 mass% range overlaps the claimed 30-70 mass% range. MPEP 2144.05 (II)(A), quoted above, provides the law for this issue. Given that Azami’s range is similar to and overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 7 is an obvious variant of Azami’s range.
With regard to claim 9, Azami teaches the limitations of claim 1 as described above. Azami also teaches the following claim 9 limitation:
An energy storage device comprising the positive electrode according to claim 1. (title, abstract, paragraph 17)
With regard to claim 10, Azami teaches the limitations of claim 1 as described above. Claim 10 states:
the ratio of the size of the secondary particle to the size of each one of the primary particles is 1 or less (paragraphs 22-23: 0.025 to 0.7 or 0.43)
Secondary particles are optional (see claim 1), so it is not required for the prior art to teach this ratio.
Also, as discussed under the 112(b) rejection above, it is impossible to fulfill the claim 10 limitation within the context of independent claim 1 limitations. Therefore, claim 10 is disregarded for prior art analysis.
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, 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US20190280284A1 (Azami), as applied to claim 1, and further in view of US20080131782A1 (Hagiwara). Azami teaches the limitations of claim 1 as described above. Azami, however, fails to teach the following claim 8 limitation, which is taught by Hagiwara:
the positive active material particle is a lithium transition metal composite oxide having an a-NaFeO2-type crystal structure (paragraph 10: positive electrode active material LiMO2 having the a-NaFeO2 structure; paragraph 12: M is a transition metal)
Hagiwara states that the LiMO2 with a-NaFeO2 structure positive electrode active material is useful for suppressed charging/discharging capacity degradation (paragraph 10).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Azami’s positive electrode active material to include LiMO2 with a-NaFeO2 structure, as taught by Hagiwara, for suppressed charging/discharging capacity degradation.
Conclusion
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721