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 .
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.
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.
Claim(s) 1-4 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maehara et al. (JP 2019-145402 A, hereinafter Maehara, previously cited) and evidence provide by Materials Data on Li6CoO4 (https://www.osti.gov/biblio/1193662, 7/15/2020, previously cited).
Re Claim 1. Maehara teaches a lithium secondary battery (P2 & 11) comprising:
an electrolyte (P11); and
an electrode assembly (P11),
wherein the electrode assembly comprises a positive electrode (P11), a negative electrode (P11), and a separator (P11)interposed between the positive electrode and the negative electrode, and
wherein the positive electrode comprises a positive electrode current collector (P2) and a positive electrode mixture layer (P2) positioned on the positive electrode current collector,
wherein the positive electrode mixture layer comprises a positive electrode active material (P2), a positive electrode additive (P2, a lithium dopant) represented by Li6CoO4 (P4), a conductive material (P2), and a binder (P2), and
wherein p = 6 and q = 0, respectively, and
wherein a content of the positive electrode additive ranges from 0.5 to 10 parts by weight with respect to 100 parts by weight of the positive electrode mixture layer (P4).
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2131.03.
Regarding “wherein the lithium secondary battery satisfies Expression 1…”: since the lithium secondary battery of Maehara and the claimed battery employ same components and materials, it is reasonable to believe that the claimed properties (satisfies Expression 1 with 2.0 or more and 20.0 or less) would have naturally flowed following the teachings of Maehara. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Since Maehara teaches the amount of positive electrode additive overlapping with the claimed range, the lithium secondary battery of Maehara would also satisfy Expression 1 that overlaps with the claimed range of 2.0 or more and 20.0 or less.
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP 2112- 2112.02.
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). "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Re Claim 2. Since the lithium secondary battery of Maehara and the claimed battery employ same components and materials, it is reasonable to believe that the claimed properties (satisfies Expression 1 with 3.0 to 18.0) would have naturally flowed following the teachings of Maehara.
Re Claim 3. Since the lithium secondary battery of Maehara and the claimed battery employ same components and materials, it is reasonable to believe that the claimed properties (satisfies Expression 2 with 0.8 or less) would have naturally flowed following the teachings of Maehara.
Re Claim 4. Maehara teaches wherein the positive electrode additive (P4, Li6CoO4) has a tetragonal structure with a space group of P42/nmc (see Materials Data on Li6CoO4).
Re Claim 6. Maehara teaches wherein the positive electrode active material is a lithium metal composite oxide represented by Chemical Formula 2 below:
Lix[NiyCozMnwM2v]Ou
wherein M2 denotes one or more elements selected from the group consisting of W, Cu, Fe, V, Cr, Ti, Zr, Zn, Al, La, Ga, Ca, Mg, and x, y, z, w, v, and u are 0.2≤x≤2, 0<y<1, 0<z<1, 0.0<w<1, 0≤v<1, and 1.7≤u≤3, respectively (P2-3).
Re Claim 7. Maehara teaches wherein the conductive material comprises one or more materials selected from the group consisting of natural graphite, artificial graphite, carbon black, acetylene black, Ketjen black (P3).
Re Claim 8. Maehara teaches wherein the conductive material is comprised in an amount of 0.5 to 10 parts by weight with respect to 100 parts by weight of the positive electrode mixture layer (P4).
Re Claim 9. Maehara teaches wherein the negative electrode comprises a negative electrode current collector (P9), and a negative electrode mixture layer (P9) that is positioned on the negative electrode current collector and comprises a negative electrode active material, wherein the negative electrode active material comprises a carbon material and a silicon material (P9).
Claim(s) 1-3, 7, and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura et al. (US 2016/0351905 A1, hereinafter Kawamura, cited by applicant).
Re Claim 1. Kawamura teaches a lithium secondary battery (Fig. 1, para. 18) comprising:
an electrolyte (para. 18); and
an electrode assembly (item 3),
wherein the electrode assembly comprises a positive electrode (para. 18), a negative electrode (para. 18), and a separator (para. 18)interposed between the positive electrode and the negative electrode, and
wherein the positive electrode comprises a positive electrode current collector (para. 23) and a positive electrode mixture layer (para. 22) positioned on the positive electrode current collector,
wherein the positive electrode mixture layer comprises a positive electrode active material (para. 22), a positive electrode additive (para. 22) represented by Li6Co0.9Zn0.1O4, Li6Co0.9Zn0.3O4, Li6Co0.9Al0.1O4 (Examples 1-9, 1-10 & 1-11), a conductive material (para. 22), and a binder (para. 22), and
wherein p = 6 and q = 0.1 or 0.3, respectively, and
wherein a content of the positive electrode additive ranges from 0.1 to 10 parts by weight with respect to 100 parts by weight of the positive electrode mixture layer (para. 21).
Regarding “wherein the lithium secondary battery satisfies Expression 1…”: since the lithium secondary battery of Kawamura and the claimed battery employ same components and materials, it is reasonable to believe that the claimed properties (satisfies Expression 1 with 2.0 or more and 20.0 or less) would have naturally flowed following the teachings of Kawamura. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Since Kawamura teaches the amount of positive electrode additive overlapping with the claimed range, the lithium secondary battery of Kawamura would also satisfy Expression 1 that overlaps with the claimed range of 2.0 or more and 20.0 or less.
Re Claim 2. Since the lithium secondary battery of Kawamura and the claimed battery employ same components and materials, it is reasonable to believe that the claimed properties (satisfies Expression 1 with 3.0 to 18.0) would have naturally flowed following the teachings of Kawamura.
Re Claim 3. Since the lithium secondary battery of Kawamura and the claimed battery employ same components and materials, it is reasonable to believe that the claimed properties (satisfies Expression 2 with 0.8 or less) would have naturally flowed following the teachings of Kawamura.
Re Claim 7. Kawamura teaches wherein the conductive material comprises one or more materials selected from the group consisting of natural graphite, artificial graphite, acetylene black (para. 22.
Re Claim 9. Kawamura teaches wherein the negative electrode comprises a negative electrode current collector (para. 24), and a negative electrode mixture layer (para. 24) that is positioned on the negative electrode current collector and comprises a negative electrode active material, wherein the negative electrode active material comprises a carbon material and a silicon material (para. 26).
Re Claim 10. Kawamura teaches wherein the silicon material comprises silicon oxide (SiOx, 0.01<X<1.95) particles (para. 26 & 27).
Re Claim 11. As Kawamura discloses that an amount of the silicon material in the negative electrode mixture layer is a result effective variable (Table 5 & para. 72), one would perform routine experimentation to find the optimum amount of the silicon material for the desired efficiency.
“[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.” See MPEP 2144.05, II.
Response to Arguments
Applicant's arguments filed 12/10/25 have been fully considered but they are not persuasive.
On page 6, regarding claim 1, applicant argued that Expression 1 is not inherent because when an amount of the positive additive is outside the claimed range, the lithium secondary battery would not satisfy Expression 1 with 2.0 or more and 20.0 or less.
The examiner disagrees with this because of the following: since Maehara and Kawamura teach the amount of positive electrode additive overlapping with the claimed range, the lithium secondary battery of Maehara and Kawamura would also satisfy Expression 1 that overlaps with the claimed range of 2.0 or more and 20.0 or less.
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). "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
On page 8, regarding claim 1, applicant argued that there is no reasonable expectation of success to arrive at the claimed relationship between the content of positive electrode additive in the claimed range and Expression 1 in the claimed range, since cited references do not recognize the relationship between the two.
The examiner disagrees with this because the recited limitation is the property of the product, as applicant has admitted on page. 6.
Since the lithium secondary battery of Maehara and Kawamura and the claimed battery employ same components and materials, it is reasonable to believe that the claimed properties (satisfies Expression 1 with 2.0 or more and 20.0 or less) would have naturally flowed following the teachings of Maehara and Kawamura. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP 2112- 2112.02.
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.
The rejections above rely on the references for all the teachings expressed in the text of the references and/or one of ordinary skill in the art would have reasonably understood from the texts. Only specific portions of the texts have been pointed out to emphasize certain aspects of the prior art, however, each reference as a whole should be reviewed in responding to the rejection, since other sections of the same reference and/or various combinations of the cited references may be relied on in future rejections in view of amendments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN E YOON whose telephone number is (571)270-5932. The examiner can normally be reached Monday-Friday 9 AM- 5 PM.
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/KEVIN E YOON/Primary Examiner, Art Unit 1735
1/6/2026