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 .
Applicant has amended the claims to include limitations from a dependent claim changing the scope of the claims. The amendments to the claims find support in the original filing. No new matter is presented. The amendment to the claims does not overcome the previous rejections as more fully below set forth.
The rejections under section 112 have been withdrawn at this time.
The remarks submitted in conjunction with the amended claims on 11/21/2025 are not persuasive for the reasons below set forth.
Terminal Disclaimer
The terminal disclaimers filed on 12/10/2025 (2) disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 18724065 and 18724040 has been reviewed and is accepted. The terminal disclaimers have been recorded.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-4, 6-10 and 12-15 is/are rejected under 35 U.S.C. 102 (a) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Pacheco Benito Gilardi Mornaghini, Zurcher Spahr (WO 2018/046773A1) alternatively as evidenced by and/or obvious over Sigma (2019) (see MPEP 2124)
Claim Interpretation Introduction
INSTANT SPECIFICATION [0023] When used for "lithium-containing composite metal compounds", the phrase "having a spatially stable crystal structure" means that the compound has structural stability, namely a crystal structure that is conducive to intercalation into and deintercalation out of lithium ions (abbreviated as "intercalation-deintercalation"), and where the crystal structure remains basically stable during the intercalation-deintercalation of lithium ions without major lattice changes.
The examiner notes that the instantly claimed invention recites a species of lithium containing composite metal compound of lithium cobalt manganese oxide (which is notably used in the instant specification examples); as such the examiner maintains that any lithium cobalt manganese oxide meets the limitations for a spatially stable crystalline structure such as layered, spinel olivine an tunnel including the lithium cobalt manganese oxide and the commercially available products of the cited reference. 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)
Regarding claims 1-4, 6-10, and 12-15
Pacheco Benito Gilardi Mornaghini, Zurcher Spahr (WO 2018/046773A1) teaches and discloses:
WO discloses carbonaceous nano leaves in a polymer blend as a conductive additive or lubricant, etc. (Abstract) [0001]
The composition comprises the nano sheared carbonaceous materials [0020] and composite materials comprising same including a polymer, lithium nickel manganese cobalt oxide, and manganese oxides [0021] (meeting the limitation of claim 1 for a lithium containing composite metal compound with spatially stable crystalline structure and one transition metal, claim 2 for layered/spinel/olivine/tunnel structure, claim 3 for transition metal of nickel and cobalt, claim 4 for lithium nickel cobalt manganese oxide and in addition claim 15 for an magnesium salt of magnesium oxide)
The composition may be in the form of a dispersion in a suitable solvent such as water or alcohol or mixed with additives or binders [0023] (meeting the limitation of claims 7-10)
The dispersion will contain 0.1-10 wt.% carbonaceous materials [0080] solvents for the dispersion include, but are not limited to water, water / alcohol mixtures, water / dispersing agent mixtures, water / thickener mixtures, water / binder mixtures, water / additional additive(s) mixtures, N- methyl-2-pyrrolidone (NMP), as well as mixtures thereof. [0082] (meeting the limitation of claims 7-9 for aqueous and solvent)
The composition of the nano leaves may be used as an additive for polymers, functional materials, car body panels or brake pads and may be used as a dry film lubricant such as on metal parts [0024] [0025](meeting claim 10 for a powder coating)
The composition polymeric materials include resins such as phenolic and epoxy resins [0087] (meeting the limitation of claim 1 for a resin, claim 6 for epoxy resin)
The loading of the carbonaceous material particles in the composite polymer is 3-5 wt.% [0088] The composition may comprise the carbonaceous materials at a ratio to non-carbonaceous materials of 1:99 to 99:1 wt. % [0079]
The reference teaches:
A composite material comprising the carbonaceous sheared nano-leaves in particulate form according to any one of embodiments 1 to 7 or 20, or the composition of embodiment 21 and a polymer, NMC, Mn02.
(NMC – lithium nickel manganese cobalt oxide [0043]) [0021] (meeting claims 1 and 15)
The composition as a slurry comprising the carbon additive, PVDF (i.e. polyvinylidene chloride) and NMC (lithium manganese cobalt oxide) is coated onto aluminum foil [0144](P36 L8-18) (meeting claim 13 for a metal substrate and claim 14 for aluminum substrate and claim 12 for direct to metal coating)
0.2 g carbonaceous nano leaves, 9.8 g commercially available lithium nickel manganese cobalt oxide are homogenized powder. 2 g each compressed [0117]
Secondary products include the carbonaceous materials as a filler for polymers for battery and capacitor electrodes for electrically and/or thermally conductive polymer composite materials such as auto body panels, powder metallurgy, fuel cell and anticorrosion coatings [0084] [0016](meeting the intended use as anticorrosion and meting claim 12 for primer/direct metal coating)
The composition as a slurry comprising the carbon additive, PVDF (i.e. polyvinylidene fluoride- resin) and NMC (lithium manganese cobalt oxide) is coated onto aluminum foil [0144] (meeting claim 13 for a metal substrate and claim 14 for aluminum substrate and claim 12 for direct to metal coating)
The composition may be cured [0116-0117] (i.e. a curing agent is not required in the instant claims as such the disclosures of the prior art anticipate the instant claims nor is a curing agent species set forth – the examiner notes that heat as applied in the prior art may meet the limitation for a curing agent; however, in the event a chemical curing agent is required, adding one would be rendered obvious to one of ordinary skill in the art at the time of filing the invention as the reference expressly contemplates curing.)
The composition in a dispersion or solvent may include additives such as a dispersant or surfactant. [0056] (meeting the limitation for optional additives of claim 11 when present) The composition may comprise additives such a defoamers, preservatives, biocides and amines including AMP 90 DOW [0098] (an alkanolamine) (meeting claim 11)
No chromium is required/recited.
As above set forth the examiner maintains the prior art having taught the claimed lithium nickel cobalt manganese oxide species will necessarily possess the claimed spatially stable crystalline structure and will possess a layered / spinel/ olivine or tunnel structure. 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)
The prior art teaches commercially available products. Sigma is a lithium complex is commercially available and possesses a layered crystalline structure further evidencing that the lithium cobalt manganese oxide of the reference would be expected to be layered crystal structure. (the instant claims recite a “layered structure” as such this product meets the claim limitations)
Assuming arguendo the claimed species as taught by the cited prior art does not necessarily possess the aforementioned properties, the prior art teaches using a commercially available product would render obvious the inclusion of layered lithium manganese cobalt oxides such as that of Sigma and to try same in the WO to one of ordinary skill in the art at the time of filing the invention.
Sigma was previously provided. The excerpt cited is below provided for convenience of applicant.
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(lithium cobalt manganese oxide are layered)
Claim(s) 5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pacheco Benito Gilardi Mornaghini, Zurcher Spahr (WO 2018/046773A1) alternatively as evidenced by Sigma (2019) (see MPEP 2124) as applied to claims 1, 3-4, and 6-10 and 12-15 above.
Regarding claims 5 and 11:
Pacheco Benito Gilardi Mornaghini, Zurcher Spahr (WO 2018/046773A1) discloses the limitations above set forth.
The loading of the carbonaceous material particles in the composite polymer is 3-5 wt.% [0088] The composition may comprise the carbonaceous materials at a ratio to non-carbonaceous materials of 1:99 to 99:1 wt. % [0079] (thereby overlapping the wt. % of the lithium cobalt manganese oxide and polymer/resin)
The composite may be used with NMC MNO.sub.2, etc. in automotive applications, thermal storage, electrically conductive materials, etc. [0087] and the loading ratio of carbonaceous nano leaves varies depending on the desired thermal conductivity requirements and mechanical stability of the composite polymer. Good results can be achieved with 3-30 wt.% carbon nano leave particles to polymer [0088] (i.e. 5% of carbon nano leave particle and 5 % NMC MNO.sub.2 is a ratio of 1:1 as contemplated by the reference and is and amount of the lithium complex within the range of claim 5)
See MPEP 2144.05(I): "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)" Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Response to Arguments
Applicant's arguments filed 11/21/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach the limitations of “has a layered structure, a spinel structure, an olivine structure or a tunnel structure” This is not persuasive. The prior art teaches lithium nickel manganese cobalt oxide. This will necessarily possess the claimed layered structure. The reference also teaches a commercial product of same. The examiner notes the instant specification expressly indicates any commercially available product may be used further recognizing the inherent features of the claimed lithium compound. See instant Specification:
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Giving the claims the broadest reasonable interpretation in view of the specification: Any known commercially available product will meet the claim limitations as the layered structure will necessarily occur.
As above set forth the examiner maintains the prior art having taught the claimed lithium nickel cobalt manganese oxide species will necessarily possess the claimed layered / spinel/ olivine or tunnel structure. 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)
As above set forth in the rejection the recited lithium complex of the reference anticipates the claimed limitation for layered. MPEP 2131.04 Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 USC 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973).
Assuming arguendo the claimed species as taught by the cited prior art does not necessarily possess the aforementioned properties, an alternative rejection is also set forth. The prior art teaches using a commercially available product would render obvious the inclusion of layered lithium manganese cobalt oxides such as that of Sigma and to try same in the WO to one of ordinary skill in the art at the time of filing the invention.
Sigma was previously provided. The excerpt cited is below provided for convenience of applicant.
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As such a prima facie showing of obviousness is also established.
Applicant argues the reference is concerned with conductivity and not corrosion resistance This is not persuasive.
In response to applicant's argument that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The examiner notes that the intended use in the preamble as an anticorrosive coating does not further limit the claimed composition as the body of the claim fully sets forth all of the compositional limitations.. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)
Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) of anti-corrosion. When reading the preamble in the context of the entire claim, the recitation anti corrosion is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The prior art having taught the claimed composition including the recited species will necessarily be capable of imparting anti corrosion properties. Notwithstanding same, the examiner notes the reference does in fact consider its use in anti-corrosion coatings (see [0084] of the reference)
The applicant has not provided information on different crystalline structures rather only suggest that different lithium salts (such as lithium carbonate) perform differently. Since the prior art teaches the claimed lithium complex it meets the claim limitations.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732