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 .
Response to Amendment
Applicant’s submission of amendments to claims on 12/18/2025 is hereby acknowledged.
Claim 5 is canceled and the limitations recited therein are incorporated into claim 1.
New claims 9 and 10 have been added.
Claims 1-4 and 4-10 are currently pending.
Response to Arguments
Applicant's arguments filed December 18, 2025 have been fully considered but they are not persuasive.
Applicants argue Natsui “does not expressly or inherently describe at least … ‘the lithium metal composite oxide as represented by a composition formula” recited in claim 1. See page 5, 3rd paragraph. The argument is not persuasive because as stated in the prior Office Action, mailed 9/22/2025, Natsui discloses a positive electrode active material containing a compound represented by a composition formula LixMeyAzOαFβ where Me includes Mn and Cu and A includes Si and P. The compound satisfies the following conditions: 1.3≤x≤2.1, 0.8≤y≤1.3, 0<z≤0.2, 1.8≤α≤2.9, and 0.1≤β≤1.2. See [0013]-[0016]. Therefore, Natsui does in fact explicitly disclose the claimed lithium metal composite oxide .
Applicants’ argument directed to “Patent Literature 1” (Remarks, page 5, 4th paragraph bridging page 6) is not persuasive because “Patent Literature 1” was not relied upon. Additionally, the argument directed to claimed composition formula containing Cu and F and their attendant benefits are not persuasive because Natsui’s composition includes both Cu and F. Thus, the composition formula disclosed in Natsui would have the same claimed benefits.
Citing Table 1 in Natsui, Applicants argue the molar ratio of lithium is 0.93 and fails to describe that x>1 (see Remarks, page 8, 1st paragraph). This is not found persuasive because Natsui specifically discloses if x is less than 1.3 then it results in insufficient capacity (see [0023]). Furthermore, teaching of a reference is not limited to examples but one must consider the reference as a whole. In this light, Natsui discloses 1.3≤x≤2.1 of lithium component.
Applicants argue Natsui does not recognize adding Cu to the composition would increase the average discharge potential (Remarks, page 8, 2nd paragraph). The argument is not persuasive because Natsui discloses a specific amount of Me metal (Cu) is required to obtain sufficient/high capacity battery. Applicants have not demonstrated that Cu is the only metal among the list of Me metal disclosed by Natsui that would provide the claimed function of Cu in the composition.
With respect to dependent claims 2-4 and 6-8, Applicants argue they stand or fall with the amended independent claim 1 (Remarks, page 9, under section B). Since claim 1 is not found to be allowable, neither are claims 2-4 and 6-8.
With respect to newly added dependent claim 9 directed to 1.8≤a+b+c+c+d≤1.98 (Remarks, page 9, under section C), no argument is made. However, it is noted Natsui discloses LixMeyAzOαFβ wherein 1.3≤x≤2.1 (equivalent to claimed “a”), 0.8≤y≤1.3 (equivalent to claimed “b+c”), 0<z≤0.2 (equivalent to claimed “d”), 1.8≤α≤2.9, and 0.1≤β≤1.2. Natsui’s disclosure encompasses the claimed range. Applicants have not presented any evidence of unexpected results of the claimed range.
With respect to newly added dependent claim 10, Applicants cite example 20 in Natsui to take the position that a person of ordinary skilled in the art would be motivated to arrive at claimed Cu molar ratio of c≥0.1.The argument is not persuasive because Natsui discloses 0.8≤y≤1.3 (equivalent to claimed “b+c”) and one of ordinary skilled in the art could determine an effective amount of “c” through routing experimentation absent any evidence of unexpected/superior result of claimed “c” amount.
In light of the amendments to the claims and addition of new claims, below is a modified rejection of Non-final Office Action mailed on 9/22/2025. Same reference is relied upon for the modified rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites “the transition metal” which lacks antecedent basis.
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.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0198861 to Natsui et al. (hereinafter “Natsui”).
Regarding claims 1, 6, and 7, Natsui discloses a lithium-ion battery (secondary battery) including positive electrode active material containing a compound (lithium metal composite oxide) that has a crystal structure belonging to a space group Fm-3m and that is represented by the following composition formula:
LixMeyAzOαFβ wherein Me denotes one or two or more elements selected from a group including Mn and Cu and A denotes one or two or more elements from a group consisting of B, Si, and P. The compound satisfies the following conditions:
1.3≤x≤2.1 (equivalent to claimed “a”),
0.8≤y≤1.3 (equivalent to claimed “b+c”),
0<z≤0.2 (equivalent to claimed “d”),
1.8≤α≤2.9, and
0.1≤β≤1.2.
It is noted the claimed formula requires Mn and Cu whereas Natsui discloses Me denotes a list of metals which includes Mn and Cu. The list of Me metals consists of 20 metals. It would have been obvious to one having ordinary skill in the art to select Mn and Cu as one of the combination from the list disclosed by Natsui with an expectation of equal result absent any evidence that Cu and Mn provide unexpected/superior results over other metal or metals from the list. Additionally, it is noted the amount of each metal in the formula is either within or overlaps with the claimed range. This is considered prima facie obvious.
Regarding claim 2 directed to b>c+d, Natsui discloses 0.8≤y≤1.3 (equivalent to claimed “b+c”) and 0<z≤0.2 (equivalent to claimed “d”) which reads on the claimed limitation.
Regarding claim 3, Natsui discloses the composition formula (x=y=z/(α+ β) is less than 1 results in the formation of a cation-deficient structure and more Li diffusion paths, which results in a high-capacity battery ([0050]).
Regarding claim 4, Natsui discloses use of fluorine within the positive electrode material compound to provide a high-capacity battery ([0060]).
Regarding claim 8, Natsui disclose a lithium-ion battery (secondary battery) including positive electrode active material ([0013]-[0018]). As shown in Fig. 1, the battery 10 comprises a positive electrode 21 containing the positive electrode active material, a negative electrode 22, a separator 14, and an electrolyte. The separator 14 is disposed between the positive electrode 21 and the negative electrode 22 ([0109]-[0111]).
Regarding claim 9 directed to 1.8≤a+b+c+c+d≤1.98, Natsui discloses LixMeyAzOαFβ wherein 1.3≤x≤2.1 (equivalent to claimed “a”), 0.8≤y≤1.3 (equivalent to claimed “b+c”), 0<z≤0.2 (equivalent to claimed “d”), 1.8≤α≤2.9, and 0.1≤β≤1.2. Natsui’s disclosure encompasses the claimed range. Applicants have not presented any evidence of unexpected results of the claimed range.
Regarding claim 10, Natsui discloses 0.8≤y≤1.3 (equivalent to claimed “b+c”) and one of ordinary skilled in the art could determine an effective amount of “c” through routing experimentation absent any evidence of unexpected/superior result of claimed “c” amount.
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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/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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