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 .
Election/Restrictions
Applicants’ election without traverse of Group I (claims 1-6, 11, and 12) in the reply filed on April 6, 2026 is acknowledged.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
In this instance, the abstract recites the legal terms “comprising” and “comprises” (in the 1st and 2nd lines, respectively).
The use of the term “ketjen black”, which is a trade name or a mark used in commerce, has been noted in this application (in the 15th line on page 15, and in the 16th line on page 17 of the substitute specification). The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 102/103
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.
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 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.
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.
Claims 1-6 and 11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oh et al. (US 2020/0194783), cited in the Information Disclosure Statement dated February 27, 2024.
Regarding independent claim 1, Oh et al. disclose a positive electrode (cathode) active material for an all-solid-state lithium secondary battery (see abstract; paragraphs [0008]-[0021], [0035], [0044], [0045], [0048], [0054], and [0080] (Example 1); and claims 1-6), in which the positive electrode active material includes the following structural features and composition:
a core containing a lithium metal oxide represented by the chemical formula Lix[NiyCozMnwM1v]Ou, as shown in Example 1 (see paragraph [0080]) that includes the chemical formula LiNi0.83Co0.1Mn0.07O2); and
a shell (coating) adsorbed on a surface of the core and including metal sulfide particles defining a range of average particle sizes in the nanometer (nm) range smaller than those of the core (see paragraphs [0008], [0035], [0044], and [0054]),
wherein M1 would include one or more elements selected from Al, Cr, Fe, Mg, Sr, V, Ti, and Mo (see paragraph [0048]), and
wherein 1.0≤x≤1.30, 0.1≤y≤0.95, 0.01<z≤0.5, 0.01<w≤0.5, 0≤v≤0.2, and 1.5≤u≤4.5, respectively (v = 0 in Example 1 as LiNiy0.83Co0.1Mn0.07O2).
Although not explicitly disclosed by Oh et al., one of ordinary skill in the art would have recognized that an average particle size of material(s) that form the shell (coating) would be at or below the tens of nanometer (nm) range (including within the claimed 0.1 nm to 40 nm range), given that the shell (coating) including the metal sulfide particles is adsorbed to an area of 60% or more based on the total area of the core, since the shell (coating) is formed on a surface and inner grain boundaries of the core (see paragraphs [0023], [0024], [0035], [0044], and [0045]; and claim 1), wherein inner grain boundaries of the core (of larger average particle size) would be infiltrated by a portion of the shell (coating) materials that are of smaller average particle size, for the purpose of suppressing side reactions between the positive electrode active material and the electrolyte, thereby improving lifetime characteristics of a battery (see paragraph [0024] of Oh et al.). With regard to the ranges of average particle size of the shell (coating) materials, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges of average particle size in view of Oh et al., as set forth in MPEP 2144.05. “In the case where 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). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 2 and 3, Oh et al. disclose that the metal sulfide particles include a single metal sulfide containing Zn, Mn, Cu, Zr, Al, or Ti, including that the metal sulfide particles would be zinc sulfide (ZnS) particles (see paragraph [0012] and claim 2). With regard to the types of materials that are suitable for use, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 4, Oh et al. disclose that the metal sulfide particles are included in an amount of about 0.5 to 2 mol% based on the total mole number of the positive electrode active material (see paragraphs [0013], [0019], and [0054]), which overlaps the claimed range of 0.1 to 2 wt% based on the total weight of the positive electrode active material. With regard to the ranges in mol% of the metal sulfide particles based on the total mole number of the positive electrode active material, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of Oh et al., as set forth in MPEP 2144.05. “In the case where 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). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 5, Oh et al. disclose that an average particle size of the positive electrode active material is about 3 µm to 20 µm (see paragraph [0015] and claim 5), which overlaps the claimed range of 0.5 µm to 10 µm. With regard to the ranges in the average particle size of the positive electrode active material, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of Oh et al., as set forth in MPEP 2144.05. “In the case where 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). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 6, Oh et al. disclose that the shell (coating) including the metal sulfide particles is adsorbed to an area of 60% or more based on the total area of the core, since the shell (coating) is formed on a surface and inner grain boundaries of the core, thus forming a substantially entire shell (coating) of at or near 100% (see paragraphs [0023], [0024], [0035], [0044], and [0045]; and claim 1).
Regarding claim 11, Oh et al. disclose an all-solid-state lithium secondary battery that includes a positive electrode including the positive electrode active material of claim 1, a negative electrode, and a sulfide-based solid electrolyte between the positive electrode and the negative electrode (see claim 6).
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.
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 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 12 is rejected under 35 U.S.C. 103 as being unpatentable over Oh et al. (US 2020/0194783).
Regarding claim 12, although Oh et al. disclose the limitations of independent claim 1 and claim 11 above, including that the sulfide-based solid electrolyte includes one or more of various lithium compounds (see paragraph [0048] of Oh et al.) having a combination of lithium (Li) and a group consisting of O, F, S, and P, as well as another group consisting of F, S, and P, Oh et al. do not disclose any of the claimed group of compounds of the sulfide-based solid electrolyte. However, one of ordinary skill in the art would have recognized that since lithium (Li), S, and P are present in the compound Li2S-P2S5 of applicants’ claim 12, selection of different elements contemplated in paragraph [0048] of Oh et al. would have been obvious to try under routine experimentation by choosing from a finite number of identified, predictable solutions with a reasonable expectation of success, for the purpose of further optimizing suppression of side reactions between the positive electrode active material and the electrolyte, thereby improving lifetime characteristics of a battery (see paragraph [0024] of Oh et al.). With regard to the types of materials that are suitable for use, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 May 22, 2026
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