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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/11/2026 has been entered.
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 04/20/2026 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 present in the electrode material disclosed by Kawamura. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). Kawamura discloses a material with a substantially identical composition and process of making, for the same purpose of suppressing gas generation (see Kawamura paragraph 0014). 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 and composition to the claimed configuration. See also MPEP 2112 (V), 2112.01 (I), and 2112.01 (II).
Applicant argues that in view of the data and statements included in the Jung declaration, the powder electrical conductivity is in view of the environmental factors including relative humidity, to which Kawamura is silent, and therefore the claimed property is not an inherent characteristic of Kawamura. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., relative humidity during manufacturing) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant’s arguments rely on process limitations which are not commensurate in scope with the rejected product claim. Applicant, in view of the Jung declaration, asserts that the environmental factors including the relative humidity of production result in significant differences in powder electrical conductivity in the claimed active material. However, the claimed configuration is purely a product claim which does not recite the process variables that Applicant argues are distinct. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). Applicant’s arguments relate to process limitations not recited by the claimed configuration. Such process variables should be included to be commensurate in scope with the provided data and remarks. Applicant fails to establish a significant structural or compositional difference in the claimed configuration over the substantially identical active material of Kawamura.
Applicant’s arguments regarding no reasonable expectation of success are irrelevant as the inherency rejection under 35 U.S.C. 102 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). Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant alleged unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). In this case, Applicant points to Table 1 as evidence for providing conductivities outside of the claimed range. Table 1 shows only one example within the claimed range and two examples below the claimed range and fails to provide any instances of the composition producing a conductivity above the claimed range. Furthermore, claim 1 recites the range of 5 to 7 for x, while the table provides examples only where x=6. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Conclusion
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/B.T.L./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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