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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/14/2026 has been entered.
Status of Claims
Claims 1-9 & 11-13 are pending in the application. Claim 2 is withdrawn. Claims 1 & 3-11 were rejected in the 5/11/2026 office action. Applicant cancelled claim 10 and added new claims 12-13. Claims 1, 3-9, & 11-13 are presently examined.
Response to Amendment / Arguments
The 7/14/2026 amendment, in response to the 5/11/2026 office action, has been entered. Applicant's arguments and claim amendments, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive.
Applicant argues that “Azami, alone or in combination with Hagiwara, fails to teach or suggest such claim features”, referring to claim 1 amendments, some of which were previously in claim 8, and to new claims 12-13.
Regarding claim 1, Examiner agrees that Azami fails to teach these new claim limitations; however, Hagiwara does teach them. Hagiwara teaches a positive electrode active material with LiCoO2 having the a-NaFeO2 structure (paragraphs 10 & 12). See further discussion in the claim 1 rejection below.
Regarding new claims 12-13, Examiner agrees that Azami and Hagiwara fail to teach the limitations of these new claims. Claims 12-13 are rejected over the teachings of US20130059205A1 (Yamamura), which is newly-cited prior art.
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.
Claims 1-13 are 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 1 recites “the positive active material layer includes a positive active material particle… a positive active material constituting the positive active material particle”. Thus, both the “positive active material layer” and the “positive active material” include / constitute the “positive active material particle”. The relationship between the “positive active material layer” and the “positive active material” is unclear. Examiner suggests deleting “a positive active material constituting” from the claim.
Claims 2-13 are rejected due to their dependence on claim 1.
Claim 13 recites “LixMn2O4 and LixNiyMn(2-y)O4”, but claim 13 fails to define variables x & y. Claim 13 depends from claim 1. Claim 1 recites Li[LixCo(1-x)]O2 where 0 ≤ x < 0.5. Claim 1 thus defines x, but it is unclear whether this definition also applies to the formulas in claim 13. It seems that “0 ≤ x < 0.5” in claim 1 only applies to that specific formula. Claim 1 doesn’t define variable y.
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.
Claims 1, 3-9, & 11 are rejected under 35 U.S.C. 103 as being unpatentable over US20190280284A1 (Azami) in view of US20080131782A1 (Hagiwara).
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 a secondary particle formed by aggregation of the primary particles (paragraph 20: “A secondary particle is an aggregate of multiple primary particles.”)
Claim 1 also states:
a ratio of a size of the secondary particle to a size of each one of the primary particles is 3 or less,
Azami teaches 300 nm to 700 nm primary particle size (paragraph 22) and 1 μm to 12 μm [1000 nm to 12,000 nm] secondary particle size (paragraph 23). Ratios are 1000/700 to 12,000/300 = 1.4 to 40. Azami’s 1.4 to 40 range overlaps the claimed ≤ 3 range. 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 substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 1 is an obvious variant of Azami’s range.
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.
Azami fails to teach the following claim 1 limitation, which is taught by Hagiwara:
a positive active material constituting the positive active material particle is selected from the group consisting of a lithium transition metal composite oxide having an α-NaFeO2-type crystal structure… the lithium transition metal composite oxide having the α-NaFeO2-type crystal structure being selected from the group consisting of Li[LixCo(1-x)]O2 where 0 ≤ x < 0.5… (paragraphs 10 & 12: positive electrode active material is LiMO2 having the a-NaFeO2 structure, which is LiCoO2 with M = Co)
Hagiwara states that LiMO2, with a-NaFeO2 structure, as a positive electrode active material, is useful for suppressed charging/discharging capacity degradation (paragraph 10). Presently-claimed Li[LixCo(1-x)]O2 is LiCoO2 with x=0. 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 LiCoO2 with a-NaFeO2 structure, as taught by Hagiwara, for suppressed charging/discharging capacity degradation.
With regard to claim 3, modified 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, modified 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, modified 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, modified 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, modified 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 8, modified Azami teaches the limitations of claim 1 as described above. Azami fails to teach the following claim 1 limitation, which is taught by Hagiwara:
the positive active material is the lithium transition metal composite oxide having the a-NaFeO2-type crystal structure (paragraphs 10 & 12: see added discussion in the claim 1 rejection above)
With regard to claim 9, modified 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)
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over US20190280284A1 (Azami) and US20080131782A1 (Hagiwara), as applied to claim 1, and further in view of US20130059205A1 (Yamamura). Azami teaches the limitations of claim 1 as described above. Azami fails to teach the following limitations of claims 12-13, which are taught by Yamamura:
Claim 12
the positive active material is selected from the group consisting of the lithium transition metal composite oxide having… the polyanion compound… (paragraph 87: a lithium-transition metal complex oxide with a polyanion compound for a positive electrode active material)
Claim 13
the positive active material is selected from the group consisting of the lithium transition metal composite oxide having… the polyanion compound… the polyanion compound being selected from the group consisting of LiFePO4… (paragraph 87: the polyanion compound is LiFePO4)
Yamamura is directed to a battery with increased capacitance (paragraph 10). It would have been obvious, to one of ordinary skill in the art, for Azami’s positive electrode active material to include a LiFePO4 polyanion compound, as taught by Yamamura, as part of a battery with increased capacitance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.G.W./Examiner, Art Unit 1721
Prosecution Insights