DETAILED ACTION
Drawings
As to the applicant’s inquiry about the drawings, they are accepted. They do not appear to provide any new matter from the specification filed on the same date.
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 1-7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kadowaki et al. (US 2020/0313183) in view of Kim et al. (US 2020/0144612).
Regarding claims 1 and 2, Kadowaki discloses positive electrode (i.e. cathode) active materials for an all-solid-state lithium-ion battery (abstract), which can include sulfide ([0341]) and comprises a lithium-transition metal composite oxide ([0014], [0044]) whereby the composite oxide can be in the form of secondary particles which are formed by the agglomeration of primary particles ([0016]). Kadowaki further discloses the cathode material can include an electrolyte and conductive material ([0330]) whereby the electrolyte can be sulfide-based ([0341]) – thereby reading on the claimed “cathode complex”. Kadowaki further discloses that the metal composite oxide particles can be coated ([0188]). Kadowaki discloses that the coated particles can be primary particles or secondary particles ([0292]). Coating of the secondary particles reads on claim 1 “outer surface portion” and coating of primary particles reads on the claimed “between the primary particles" as the primary particles can be coated and formed into a secondary particle agglomeration.
Kim, drawn also the art of cathode active materials (abstract), discloses a thio-based coating for lithium metal oxide particles ([0011]). Kim discloses the thio-based coating as a lithium sulfate ([0020], [0080]). Kim also teaches coating both primary and secondary particles ([0026], [0059]).
It would have been obvious in view of Kim to have used the thio-based coating on the primary and/or secondary particles of Kadowaki, as such coatings were known to prevent side reactions and provide stability ([0041]).
As to the sulfur content, Kim fails to disclose the exact ratio of sulfur content in the coating to the composite oxide, but Kim does disclose the amount is balanced such that when too much is present the discharge capacity is affected and when too little is present the lifespan degrades ([0089]). Accordingly, it would have been obvious, in view of Kim, to have balanced the sulfur-based coating amount so as to achieve the desired balance of lifespan and discharge capacity. The examiner notes that the courts have held that generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (MPEP 2144.05II)
As to the remaining content of lithium carbonate, Kim discloses washing away the lithium hydroxide and lithium carbonate impurities ([0101], [0102]) which is suggestive of getting the impurities as low as possible, such as zero. It therefore would have been obvious to have washed away these impurities for the sake of producing a purer final battery product with better characteristics that are not degraded by excess impurities.
Regarding claim 3, Kadowaki discloses the claimed chemical formula ([0014], [0044]). While the exact (a), (b) and metal choices are among a slightly larger list of suitable choices, the courts have held that where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). The claimed choices are known to be suitable in view of Kadowaki.
Regarding claim 4, as noted above, Kadowaki discloses the coatings can be a lithium sulfate as disclosed above.
Regarding claim 5, Kadowaki discloses the presence of primary particles, secondary particles and even single particles ([0016]). Therefore, the presence of both agglomerated and non-agglomerated particles is appreciated.
Regarding claim 6, Kadowaki discloses coating single or agglomerated particles ([0292]). Kim echoes this fact ([0059])
Regarding claim 7, the claims appear to be drawn to a measurement method step which would not be germane to the patentability of the product itself as it doesn’t appear to represent a structural distinction. For the sake of expediting prosecution the examiner notes that this does not appear patentable at least for the other reasons that (1) the same general claimed compounds are present in Kim and thus they would be expected to have the same peak and (2) the peak is not quantified so as to exclude the prior art from consideration as such.
Regarding claim 8, Kim fails to disclose the exact ratio of sulfur content in the coating to the composite oxide, but Kim does disclose the amount is balanced such that when too much is present the discharge capacity is affected and when too little is present the lifespan degrades ([0089]). Accordingly, it would have been obvious, in view of Kim, to have balanced the sulfur-based coating amount so as to achieve the desired balance of lifespan and discharge capacity. The examiner notes that the courts have held that generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (MPEP 2144.05II)
Regarding claim 9, Kim discloses washing away the lithium hydroxide and lithium carbonate impurities ([0101], [0102]) which is suggestive of getting the impurities as low as possible, such as zero. It therefore would have been obvious to have washed away these impurities for the sake of producing a purer final battery product with better characteristics that are not degraded by excess impurities.
Regarding claim 17, Kadowaki fails to teach the exact measurement technique described in claim 17, but the technique is not deemed to be germane to the cathode complex claim itself, which would be differentiated based on structure alone as claimed. In the present claim, the measurement is interpreted to represent the relationship between the sulfur content in the particle coating to the sulfur in the electrolyte. The electrolyte, by its very nature, is provided to assist with ion flow across the battery and the sulfur of the coating, by Kim’s definition, assists with battery performance. It would have been obvious, and predictably successful to have balanced the amount of electrolyte and particle coatings to have achieved the desired balance of cost, complexity and battery functionality. No unexpected results appear to be present. The examiner notes that the courts have held that generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (MPEP 2144.05II)
Response to Arguments
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive.
The applicant argues that the affidavit filed with the response renders the obviousness rejection of amended claim 1 moot as the it demonstrates unexpected results.
The examiner disagrees, for two reasons:
First, the art relied upon provides very strong motivation to utilize the claimed sulfur and lithium carbonate/hydroxide impurity amounts as such predictably leads to a battery with better discharge capacity, longer lifespan and one where the performance is not degraded by impurities. The courts have held that - 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 (MPEP 2145II). The foregoing appears to be a very strong suggestion to make the claimed changed.
Second, the showing of results is not commensurate with the scope of protection being sought. The materials utilized are hyper specific, the ranges are not shown in a manner which is representative of their entirety, and there are few data points at or near the terminal points of the range and outside. Also, there is no showing of what happens when the impurities are outside the range. The showing primarily shows that increasing sulfur seems to increase conductivity, which is a linear relationship, not an interplay between multiple additives. Specifically, Table A and 1 use specific sulfur powers, specific weight percents and limited/specific ppms. For example, claim 1 claims 5000pm or less of lithium carbonate/hydroxide impurities, but the (affidavit) showing only shows 3680-4530ppm. The full range is not shown and there is nothing outside the range. As for the sulfur content, it appears to show one data point far above, one data point far below and three within. It is not clear that 3000-4000 are actually critical.
While the examiner appreciates there is a level of optimization to be had when dealing with cathode complex components, the prior art of record, Kim, appears to provide that guidance as to why one would modify the claimed components.
For the foregoing reasons, the rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
Prosecution Insights