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/Restriction
Applicant’s election of Group I (product) as well as Species VII (lithium periodate) and C (hydrogen periodate ion of HIO6-), represented by claims 1–4 and 6–10, in the reply filed on 12/10/25 is acknowledged. Claim(s) 11–17 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply.
Additionally, as Applicant’s electing lithium periodate as the I-containing material includes electing a (meta)periodate ion (IO4-), the subsequent election of a hydrogen periodate ion of HIO6- (Species C) is incommensurate with the above species. Thus, the reply will be treated as subsequently electing corresponding Species A (IO4-) such that claim 5 is rejoined, so claims 1–10 will be fully examined for patentability under 37 CFR 1.104.
In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
It is recommended that Applicant amend the claims as follows:
In claim 1, line 6, “the iodine-containing material containing” should read “the iodine-containing material contains” for proper grammar.
In claim 7, lines 2 and 3, “wherein iodine-containing material is present” should read “wherein the iodine-containing material is present” for proper grammar and antecedence.
In claim 8, lines 1 and 2, “positive electrode active material slurry for a lithium-ion secondary battery comprising the positive electrode active material” should read “positive electrode active material slurry for a lithium-ion secondary battery, comprising the positive electrode active material” to clarify that the slurry contains the active material, as in specification’s ¶ 0088.
Appropriate correction is required.
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.
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.
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) 1–6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, alternatively, under 35 U.S.C. 103 as obvious over Kwon et al. (US 20180175440 A1, from 03/29/23 IDS) (Kwon).
Regarding claims 1–5, Kwon discloses a positive electrode active material for a lithium-ion secondary battery (Title), comprising a lithium transition metal oxide (LiCoO2 core, e.g., ¶ 0036), and an iodine-containing material at least partially covering the lithium transition metal oxide (iodine as part of LiI coating, ¶ 0039).
Although Kwon is silent to the iodine’s oxidation state, Kwon discloses mixing LiI with a lithium-based active material precursor, followed by heating at 300~600°C for 10 h (¶ 0038–0041; see also Samples 1-1 and 1-2, which were fired at 300°C and 450°C, respectively, ¶ 0052). Importantly, the instant specification notes that the iodine with the recited oxidation-number range forms after firing (e.g., ¶ 0062; see also XPS analysis of Ex. 1-1 vs. Comp. Ex. 1-1, (¶ 0158), where periodate (IO4-), i.e., 7+ iodine, was detected), where firing occurs at preferably 200–450°C (¶ 0085) for preferably 2–5 h (¶ 0086). Thus, although Kwon does not mix the materials in the solid state before firing, absent demonstrated criticality to this step, as Kwon discloses a substantially similar starting material (LiI, ¶ 0072) that is mixed with and fired alongside a lithium metal oxide under firing conditions substantially similar to the instant disclosure (e.g., ¶ 0085/0086 and examples), it is submitted that Kwon’s iodine would necessarily oxidize to a periodate and, thus, assume a +7 oxidation state (MPEP 2112.01 (I)), satisfying +3 to +7 (claim 1), +5 to +7 (claim 2), and +7 (claim 3).
Assuming, arguendo, that Kwon’s iodine would not necessarily assume the above oxidation state, based on the above rationale—and considering that Kwon is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely I-coated positive active material—the skilled artisan, before the claimed invention’s effective filing date, would have reasonably expected Kwon’s iodine to oxidize to a periodate and, thus, assume a +7 oxidation state, absent additional evidence (MPEP 2112.01 (I)).
It is submitted that the above disclosure further reads on claims 4 and 5; i.e., by the iodine’s seemingly at least partially oxidizing to a periodate of IO4-, such would further read on claim 4’s periodate ion and claim 5’s metaperiodate (IO4-).
Regarding claim 6, Kwon discloses the positive electrode active material for a lithium-ion secondary battery according to claim 1 but is silent to evaluating the material via XPS and, thus, is silent to the recited peak.
However, based on claim 1’s rationale, the skilled artisan, before the claimed invention’s effective filing date, would have reasonably expected Kwon’s material to display a I 3d5/2 peak at a binding energy falling within or at least overlapping the instant 622–626 eV (MPEP 2112.01 (I)) such that the skilled artisan could have routinely selected within the overlap with a reasonable expectation of achieving a successfully coated active material with suitable physical properties and iodine content (MPEP 2144.05 (I)).
Claim Rejections - 35 USC § 103
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kwon et al. (US 20180175440 A1) (Kwon), as applied to claim 1.
Regarding claim 7, Kwon discloses the positive electrode active material for a lithium-ion secondary battery according to claim 1 but appears to fail to articulate the iodine material’s wt% in the above Samples 1-1 or 1-2 and, thus, 0.001–10.0 wt% based on the total weight of the active material.
Kwon generally discloses, however, that the coating layer (including LiI and Li3BO3, ¶ 0019) is preferably present at 0.05~0.1 wt% of the core + coating (¶ 0017, 0018), and the molar ratio of Li3BO3:LiI in the coating is 8~9:1~2 (¶ 0019). Per the below calculations, such appears capable of satisfying the recited range.
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More importantly, however, Kwon discloses that when the amount of coating layer is lower than the above range, there is little to no improvement of ion conductivity or flexibility, whereas when the amount of coating is greater than the above range, the electrode layer’s performance deteriorates due to excessively small amount of active core material (¶ 0033). Similarly, Kwon discloses that when the Li3BO3:LiI ratio is lower than the above range, the amount of I is too low, reducing ion conductivity and flexibility, whereas when the ratio is above the range, battery capacity deteriorates (¶ 0032). To balance all these effects, then, it would have been obvious to arrive at the recited range by routinely optimizing the I-containing material’s wt% (MPEP 2144.05 (II)).
Claim(s) 8–10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kwon et al. (US 20180175440 A1) (Kwon), as applied to claim 1, in view of Allie et al. (US 20170179472 A1) (Allie).
Regarding claim 8, Kwon discloses the positive electrode active material of claim 1.
Kwon further discloses that the positive active layer (positive electrode layer 10) includes the active material as well as a conductive material, a solid electrolyte, and a binder (¶ 0044). However, in being unconcerned with the manner in which this layer is fabricated, Kwon fails to explicitly articulate a positive electrode active material slurry for a lithium-ion secondary battery comprising the positive electrode active material.
Allie, in teaching a similar battery with a composite electrode containing active material, solid electrolyte, and binder (Abstract), teaches that the electrode may be produced as an active-material slurry coated atop a current collector (¶ 0062–0064).
Allie is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely electrode active-material slurries for secondary batteries.
It would have been obvious to one of ordinary skill in the art, before the claimed invention's effective filing date, that Kwon's active layer must necessarily be produced in some manner, and, as demonstrated by Allie, the skilled artisan would find it obvious to use slurry casting—and, thus, obtain a positive electrode active material slurry comprising the active material—with the reasonable expectation of achieving a successful electrode, as taught by Allie.
Regarding claims 9 and 10, Kwon discloses a lithium-ion secondary battery comprising a positive electrode comprising a positive electrode active material layer (e.g., ¶ 0042–0047), containing the positive electrode active material of claim 1 (¶ 0042).
As seen above in ¶ 0042, Kwon discloses the active layer as positive electrode layer 10, but, in being unconcerned with the rest of the battery’s structure, Kwon fails to explicitly disclose that the active layer is atop a current collector.
Allie, in teaching a composite electrode structure for a similar battery (Title, Abstract), teaches providing an active layer atop a current collector for electrical contact (e.g., ¶ 0048, ¶ 0062–0064).
Allie is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely electrodes in secondary batteries.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate Allie’s current collector below Kwon’s active layer with the reasonable expectation of predictably achieving successful current collection and electrical contact, as suggested by Allie.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1–3 and 6–10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–4, 6, 7, and 9 of copending Application No. 18/284234 (reference application, published as US 20240162422 A1). Although the claims at issue are not identical, they are not patentably distinct from each other as follows:
Ref. claims 1 and 2 together encompass instant claims 1 and 2. Further, ref. claim 2’s 5+ to 7+ overlaps instant claim 3’s 7+ such that the skilled artisan could have selected within the overlap with a reasonable expectation of producing a successful iodine coating (MPEP 2144.05 (I)). Further, ref. claim 3 reads on instant claim 6. Ref. claim 4’s wt% range encompasses instant claim 7’s range such that the skilled artisan could have selected within the overlap with a reasonable expectation of producing a successful iodine coating (MPEP 2144.05 (I)). Ref. claims 6, 7, and 9 read on claims 8–10, respectively.
Claims 1–3 and 7–10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5–7, and 9–11 of copending Application No. 18/289279 (reference application, published as US 20250300168 A1). Although the claims at issue are not identical, they are not patentably distinct from each other as follows:
Ref. claims 1, 5, and 6 together encompass instant claims 1 and 2. Further, ref. claim 2’s 5+ to 7+ overlaps instant claim 3’s 7+ such that the skilled artisan could have selected within the overlap with a reasonable expectation of producing a successful iodine coating (MPEP 2144.05 (I)). Ref. claim 7’s wt% range encompasses instant claim 7’s range such that the skilled artisan could have selected within the overlap with a reasonable expectation of producing a successful iodine coating (MPEP 2144.05 (I)). Ref. claims 9–11 read on claims 8–10, respectively.
The above are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Conclusion
The cited art made of record but not relied upon is considered pertinent to applicant's disclosure:
US 20250023042 A1: lithium-metal-oxide positive active material coated with lithium iodate, but this reference (with EFD 04/19/22) fails to qualify as prior art given the instant application’s 371 filing date of—and, thus, EFD no later than—12/24/21.
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/J.S.M./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 2/13/2026