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 Status
Claims 1-13 are currently pending.
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.
Claims 1-10 and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawamura et al. (US 20160351905 A1).
Regarding claim 1, Kawamura discloses a sacrificial positive electrode material (paragraphs 0012-0014, 0021) comprising a lithium cobalt zinc oxide represented by Chemical Formula 1 of the instant application (claim 2, paragraphs 0047-0048, Li6Co0.9Zn0.1O4, corresponding to x=6 and y=0.1 and Li6Co0.7Zn0.3O4, corresponding to x=6 and y=0.3). Kawamura does not explicitly disclose the sacrificial positive electrode material having a powder electrical conductivity of 1 x 10-4 S/cm to 1 x 10-2 S/cm.
However, it is deemed that the powder electrical conductivity is an inherent characteristic and/or property of the specifically disclosed sacrificial positive electrode material. In this respect, MPEP 2112 sets forth the following:
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).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the positive electrode additive disclosed by Kawamura falls within the formula provided by the instant application, and is therefore substantially identical in composition to the claimed configuration. Additionally, the additive disclosed by Kawamura is produced in a substantially similar method to the sacrificial electrode material (see instant specification page 19, line 19 – page 20, line 3). The additive disclosed by Kawamura uses mixing and heat treatment steps with the same precursor materials disclosed by the instant application (Kawamura paragraphs 0035, 0047-0048). Therefore, as the additive disclosed by Kawamura is of substantially identical composition produced by a substantially identical process to the claimed configuration, the claimed powder electrical conductivity must be present in the disclosed electrode additive.
Regarding claim 2, Kawamura discloses the limitations of claim 1. Kawamura further discloses that y in Chemical Formula 1 satisfies 0.2≤y≤0.4 (paragraph 0048, Li6Co0.7Zn0.3O4, equivalent to x=6 and y=0.3).
Regarding claim 3, Kawamura discloses the limitations of claim 1. Kawamura does not explicitly disclose that the sacrificial positive electrode material has a powder electrical conductivity of 1×10-3 S/cm to 9 x 10-3 S/cm.
However, it is deemed that the powder electrical conductivity is an inherent characteristic and/or property of the specifically disclosed sacrificial positive electrode material. In this respect, MPEP 2112 sets forth the following:
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).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the positive electrode additive disclosed by Kawamura falls within the formula provided by the instant application, and is therefore substantially identical in composition to the claimed configuration. Additionally, the additive disclosed by Kawamura is produced in a substantially similar method to the sacrificial electrode material (see instant specification page 19, line 19 – page 20, line 3). The additive disclosed by Kawamura uses mixing and heat treatment steps with the same precursor materials disclosed by the instant application (Kawamura paragraphs 0035, 0047-0048). Therefore, as the additive disclosed by Kawamura is of substantially identical composition produced by a substantially identical process to the claimed configuration, the claimed powder electrical conductivity must be present in the disclosed electrode additive.
Regarding claim 4, Kawamura discloses the limitations of claim 1. Kawamura does not explicitly disclose that the sacrificial positive electrode material has a tetragonal structure with a space group of P42/nmc.
However, it is deemed that the tetragonal structure and space group are inherent characteristics and/or properties of the specifically disclosed sacrificial positive electrode material. In this respect, MPEP 2112 sets forth the following:
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).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the positive electrode additive disclosed by Kawamura falls within the formula provided by the instant application, and is therefore substantially identical in composition to the claimed configuration. Additionally, the additive disclosed by Kawamura is produced in a substantially similar method to the sacrificial electrode material (see instant specification page 19, line 19 – page 20, line 3). The additive disclosed by Kawamura uses mixing and heat treatment steps with the same precursor materials disclosed by the instant application (Kawamura paragraphs 0035, 0047-0048). Therefore, as the additive disclosed by Kawamura is of substantially identical composition produced by a substantially identical process to the claimed configuration, the claimed tetragonal structure and space group must be present in the disclosed electrode additive.
Regarding claim 5, Kawamura discloses a positive electrode (paragraph 0001) comprising: a positive electrode current collector (paragraph 0023); and a positive electrode mixture layer on the positive electrode current collector (paragraph 0036), the positive electrode mixture layer comprising a positive electrode active material (paragraph 0019), a conductive material (paragraph 0022), an organic binder polymer (paragraph 0022), and a sacrificial positive electrode material (paragraph 0012, 0022), wherein the sacrificial positive electrode material comprises a lithium cobalt zinc oxide represented by Chemical Formula 1 of the instant application (claim 2, paragraphs 0047-0048, Li6Co0.9Zn0.1O4, corresponding to x=6 and y=0.1 and Li6Co0.7Zn0.3O4, corresponding to x=6 and y=0.3). Kawamura does not explicitly disclose the sacrificial positive electrode material having a powder electrical conductivity of 1 x 10-4 S/cm to 1 x 10-2 S/cm.
However, it is deemed that the powder electrical conductivity is an inherent characteristic and/or property of the specifically disclosed sacrificial positive electrode material. In this respect, MPEP 2112 sets forth the following:
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).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the positive electrode additive disclosed by Kawamura falls within the formula provided by the instant application, and is therefore substantially identical in composition to the claimed configuration. Additionally, the additive disclosed by Kawamura is produced in a substantially similar method to the sacrificial electrode material (see instant specification page 19, line 19 – page 20, line 3). The additive disclosed by Kawamura uses mixing and heat treatment steps with the same precursor materials disclosed by the instant application (Kawamura paragraphs 0035, 0047-0048). Therefore, as the additive disclosed by Kawamura is of substantially identical composition produced by a substantially identical process to the claimed configuration, the claimed powder electrical conductivity must be present in the disclosed electrode additive.
Regarding claim 6, Kawamura discloses the limitations of claim 5. Kawamura further discloses that the sacrificial positive electrode material is comprised in an amount of 0.001 to 5.0 parts by weight with respect to 100 parts by weight of the positive electrode active material (paragraphs 0021, 0036).
Regarding claim 7, Kawamura discloses the limitations of claim 5. Kawamura further discloses that the conductive material is comprised in an amount of 0.5 to 10 parts by weight with respect to a total of 100 parts by weight of the positive electrode mixture layer (paragraph 0036, 2.5 parts by weight).
Regarding claim 8, Kawamura discloses the limitations of claim 5. Kawamura further discloses that the conductive material comprises one or more carbon-based materials selected from the group consisting of natural graphite, artificial graphite, carbon black, acetylene black, Ketjen black, and carbon fibers (paragraph 0022).
Regarding claim 9, Kawamura discloses the limitations of claim 5. Kawamura further discloses that the positive electrode active material is a lithium composite transition metal oxide comprising two or more elements selected from the group consisting of nickel (Ni), cobalt (Co), manganese (Mn), aluminum (Al), zinc (Zn), titanium (Ti), magnesium (Mg), chromium (Cr), and zirconium (Zr) (paragraph 0019).
Regarding claim 12, Kawamura discloses the limitations of claim 5. Kawamura further discloses an electrode assembly comprising the positive electrode (paragraphs 0012, 0018).
Regarding claim 13, Kawamura discloses the limitations of claim 12. Kawamura further discloses a lithium secondary battery comprising the electrode assembly (paragraphs 0001, 0012).
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kawamura et al. (US 20160351905 A1) in view of Umetsu et al. (US 20190020034 A1).
Regarding claim 10, Kawamura discloses the limitations of claim 5. Kawamura is silent regarding that the positive electrode mixture layer has an average thickness of 100 µm to 200 µm.
Umetsu discloses a lithium ion secondary battery comprising a positive electrode active material layer which contains a transition metal oxide capable of intercalating and releasing lithium ions (Umetsu paragraphs 0020-0022, 0074). Umetsu further discloses that the positive electrode active material layer has a thickness of 20 µm to 200 µm (Umetsu paragraph 0122, overlapping the claimed range). The reference teaches that the thickness range provides sufficient charge/discharge capacity and low ion diffusion, and increases energy density (Umetsu paragraph 0122). Umetsu and Kawamura are analogous because they both disclose lithium ion batteries with lithium transition metal oxide positive active material layers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the positive electrode layer disclosed by Kawamura to have the thickness disclosed by Umetsu. Doing so would provide sufficient charge/discharge capacity and low ion diffusion, as well as increase energy density.
Claim Rejections - 35 USC § 102 / 103
Claims 11 are rejected under 35 U.S.C. 102 / 103 as being anticipated by Kawamura et al. (US 20160351905 A1) in view of Hosokawa et al. (US 20030027046 A1).
Regarding claim 11, Kawamura discloses the limitations of claim 5. Kawamura does not explicitly disclose that the positive electrode has a rate of increase of resistance of 10% or less after 30-cycle charging and discharging relative to resistance during initial charging and discharging.
However, it is deemed that the rate of increase of resistance is an inherent characteristic and/or property of the specifically disclosed positive electrode. In this respect, MPEP 2112 sets forth the following:
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).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the positive electrode additive disclosed by Kawamura falls within the formula provided by the instant application, and is therefore substantially identical in composition to the claimed configuration. Additionally, the additive disclosed by Kawamura is produced in a substantially similar method to the sacrificial electrode material (see instant specification page 19, line 19 – page 20, line 3). The additive disclosed by Kawamura uses mixing and heat treatment steps with the same precursor materials disclosed by the instant application (Kawamura paragraphs 0035, 0047-0048). The positive electrode of Kawamura contains the additive and active material of the claimed configuration. Therefore, as the positive electrode disclosed by Kawamura is of substantially identical composition produced by a substantially identical process to the claimed configuration, the claimed rate of increase of resistance must be present in the disclosed electrode.
Hosokawa discloses a lithium secondary battery comprising a positive electrode including an active material having a lithium transition metal oxide (Hosokawa paragraph 0018). Hosokawa further discloses that the internal resistance after 500 cycles has a resistance increase rate of less than 10% (Hosokawa paragraphs 0159-0175, table 3). The reference teaches that suppressing an increase to internal resistance produces a cell with a superior charge-discharge cycle. Hosokawa is clearly teaching that the rate of increase of resistance is a results-effective variable that impacts cycle characteristics. Hosokawa and Kawamura are analogous because they both disclose lithium secondary batteries.
Even if the electrode disclosed by Kawamura does not inherently possess the claimed rate of increase of resistance, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode disclosed by Kawamura to have the claimed rate of increase of resistance of 10% or less in order to improve the charge-discharge cycle of the battery. In addition, it has been held by the courts that optimization of a results effective variable is not novel. In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant's arguments filed 11/11/2025 have been fully considered but they are not persuasive.
Regarding claim 1, Applicant argues that Kawamura fails to teach the claimed powder conductivity and that it is not an inherent property of the specifically disclosed active material of Kawamura. However, the positive electrode additive disclosed by Kawamura falls within the formula provided by the instant application, and is therefore substantially identical in composition to the claimed configuration. Additionally, the additive disclosed by Kawamura is produced in a substantially similar method to the sacrificial electrode material (see instant specification page 19, line 19 – page 20, line 3). The additive disclosed by Kawamura uses mixing and heat treatment steps with the same precursor materials disclosed by the instant application (Kawamura paragraphs 0035, 0047-0048). Therefore, as the additive disclosed by Kawamura is of substantially identical composition produced by a substantially identical process to the claimed configuration, the claimed powder electrical conductivity must be present in the disclosed electrode additive.
Specifically, Applicant asserts that the powder electrical conductivity is not necessarily and always present in the electrode material disclosed by Kawamura. It is noted that Applicant’s arguments regarding the claimed property being ‘always’ present in the electrode active material of Kawamura is an improper characterization of what is well established. MPEP 2131.01 III states, with respect to providing evidence to show an inherent characteristic: "To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill." Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991). Note that as long as there is evidence of record establishing inherency, failure of those skilled in the art to contemporaneously recognize an inherent property, function or ingredient of a prior art reference does not preclude a finding of anticipation. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999). See MPEP 2131.01 (III). Evidence should demonstrate that the missing descriptive matter is necessarily rather than always present. Additionally, Applicant merely suggests that the data provided in the present specification, namely the powder electrical conductivity differences between Example 2 and Comparative Example 4-5, illustrates that the claimed powder electrical conductivity is not inherent to the material of Kawamura. However, it is noted that "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). There is no suggestion as to a structural or compositional difference between the claimed configuration and the material disclosed by Kawamura resulting in a change in powder electrical conductivity. Applicant fails provide sufficient evidence that the claimed conductivity is not necessarily present in the material of Kawamura, which has a substantially identical structure, composition, and process of making to the claimed configuration. See also MPEP 2112 (V), 2112.01 (I), and 2112.01 (II).
Applicant’s arguments regarding no reasonable expectation of success are irrelevant as the inherency rejection is anticipatory under 35 U.S.C. 102, and does not suggest varying parameters or routine optimization. Rather, the powder electrical conductivity as claimed is necessarily present as an inherent property of the active material disclosed by Kawamura (See claim 1 rejection).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/B.T.L./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727