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 .
Response to Amendment
Examiner acknowledges amended Claim 1-4, withdrawn-currently amended Claim 6-9, and new Claims 11-20 in the response filed on 1/30/2026.
Response to Arguments
Applicant's arguments filed 1/30/2026 have been fully considered but they are not persuasive.
With regards to arguments that Wada’s examples does not disclose all the features in Claim 1, it is noted that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed....” In re Fulton, 391 F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In the instant case, Wada broadly discloses its first positive electrode active material having a Ni content of 10 to 60 mol% and its second positive electrode active material having a Ni content of 70 to 90 mol% ([0020]-[0021])
Wada further discloses its first positive electrode active material (second positive electrode mixture) is LiNi0.45Co0.1Mn0.45O2, and its second positive electrode active material (first positive electrode mixture) is LiNi0.8Co0.1Mn0.1O2, which satisfy Applicant’s claimed Chemical Formulas 1 and 2, 0.4 ≤ x < 0.9 (Ni content for the first positive electrode active material), and 0.4 < u ≤ 0.9 (Ni content for the second positive electrode active material) (Abstract, [0007], [0020], [0021], [0030], [0035], Table 1, and Example 13). Please also see 35 U.S.C. 112(b) rejection below for further discussion.
Applicant argues that Guo discloses that Guo’s electrode active material layer configuration is completely opposite that of Wada (the second electrode active material having a lower Ni mol% is closer to the current collector than the first electrode active material having a higher Ni mol%) such that one of ordinary skill in the art would not have had even looked to the teachings of Guo to modify Wada.
However, Applicant’s arguments are unpersuasive. The present claims are cast in open language, and are therefore open to additional layers being present (e.g. between the positive electrode current collector and the lower layer region). In that regard, Guo does teach a lower layer region having a Ni content about 30 to about 80% facing a positive electrode current collector and an upper layer region having a Ni content of about 50% to about 90% facing the lower layer. As disclosed in Example 27 (paragraphs [0138] and [0139]), Guo teaches first and second layers are alternated with each other, wherein the second layer closest to the current collector corresponds to Applicant’s lower layer region and the first layer farthest away from the current collector corresponds to Applicant’s upper layer region (i.e. the middle two layers in the 4 layer structure).
While Guo do not disclose all the features of the present claimed invention, Guo was used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely a lower layer region having a Ni content about 30 to about 80% and an upper layer region having a Ni content of about 50% to about 90%, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that one of ordinary skill in the art would not have had a reason to modify Wada’s second positive electrode active material to contain more than 60 mol% Ni because a greater amount of Ni led to heat generation of the battery, as evidenced by Wada at Tables 1-4, Example 1 vs. Comparative Example 1 and ¶[0093].
However, Applicant’s arguments are unpersuasive. Wada’s disclosure does not explicitly disparage, criticize, or teach away from a nickel content greater than 60 mol%. The comparative examples do not provide sufficient evidence to isolate nickel content above 60% as the factor responsible for the battery heat generation, nor does it demonstrate that any or all values above 60 mol% of nickel would produce said heat generation. Moreover, Comparative Examples 2 and 3 also exhibit the undesirable heat generation of the battery even though their nickel content falls within Wada’s preferred range of less than 10 to 60 mol%, indicating that the observed deficiencies cannot be reasonably be attributed solely to the nickel content.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 reciting “tetrafluoroethylene” fails to comply with the written description requirement. Please amend “tetrafluoroethylene” to “polytetrafluoroethylene”.
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.
Claims 1-5 and 10-20 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, Claim 1 recites the broad recitation of [Chemical Formula 1] Li1+a[NixMnyCoz]M1tO2, where 0.4 ≤ x <0.9, and the claim also recites the Ni content of the first positive electrode active material is 65-75 mol% which is the narrower statement of the range/limitation. Claim 1 further recites the broad recitation of [Chemical Formula 2] Li1+b[NiuMnvCow]M2sO2, where 0.4 < u ≤ 0.9, and the claim also recites the Ni content of the second positive electrode active material is 81-90 mol%.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of evaluating prior art, prior art disclosing the inequalities 0.4 ≤ x <0.9 and 0.4 < u ≤ 0.9 in the Chemical Formulas meet the instant limitations.
With regards to Claim 15, D50 is associated to a particle size distribution. Therefore, please amend “a particle diameter, D50,” to “an average particle diameter, D50,” to promote clarity.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The instant claim recites the second positive electrode active material includes Li[Ni0.86Mn0.05Co0.07]Al0.2O2. The instant limitation fails to further limit [Chemical Formula 2] because Al0.2 is outside the range of 0 ≤ s < 0.1. Furthermore, u + v + w + s = 1 cannot be satisfied.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. For the purpose of evaluating prior art, prior art disclosing [Chemical Formula 2] recited in Claim 1 meets the instant limitation.
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, 5, 10-12, 15, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2019029205 (“Wada et al.”). Examiner notes that Applicant provided an English translated document in the IDS 3/31/2023, and all citations will refer to said document.
With regards to Claim 1, Wada et al. teaches a positive electrode comprising a positive electrode current collector and a positive electrode active material layer disposed on at least one surface of the positive electrode current collector. The positive electrode active material layer having a lower layer (first layer) region facing the positive electrode current collector and containing a first positive electrode active material (second positive electrode mixture) and a first binder polymer, and an upper layer region (second layer) facing the lower layer region and containing a second positive electrode active material (first positive electrode mixture) and a second binder polymer, wherein a Ni content of the second positive electrode active material is larger than a Ni content of the first positive electrode active material.
Wada et al.’s teaches its first positive electrode active material (second positive electrode mixture) is LiNi0.45Co0.1Mn0.45O2, and its second positive electrode active material (first positive electrode mixture) is LiNi0.8Co0.1Mn0.1O2, which satisfy Applicant’s claimed Chemical Formulas 1 and 2 (Abstract, [0007], [0020], [0021], [0030], [0035], Table 1, and Example 13).
With regards to Claims 5 and 19, Wada et al. teaches a weight ratio of the lower layer region to the upper layer region is within 20:80-80:20 (e.g. 30:70) ([0025] and Table 1).
With regards to Claim 10, Wada et al. teaches a lithium secondary battery comprising the positive electrode (Abstract and [0007]).
With regards to Claims 11 and 12, Wada et al. teaches each of the first binder polymer and the second binder polymer includes polyvinylidene fluoride, wherein a weight percentage of the first binder polymer in the lower layer region is 1 wt%, wherein a weight percentage of the second binder polymer in the upper layer region is 1 wt%, and therefore a weight percentage of a combined wight of the first binder polymer and the second binder polymer based on a total weight of the positive electrode material layer is within the range of 1-3 wt% [0079].
With regards to Claim 15, Wada et la. teaches the first positive electrode active material has a particle diameter, D50, of 4 μm, and wherein the second positive electrode active material has a D50 of 12 μm ([0026] and [0049]).
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.
Claims 2, 3, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019029205 (“Wada et al.”) as applied to Claim 1 above.
With regards to Claims 2-3, Wada et al. teaches the Ni content of the second positive electrode active material is 70-100 mol% based on a total transition metals of the second positive electrode active material ([0007], [0020], [0021], and Table 1). It would have been obvious to one of ordinary skill in the art at the time of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
With regards to Claim 14, please see paragraph [0020]. Examiner notes that product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05.
Claims 4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019029205 (“Wada et al.”) as applied to Claim 1 above, and further in view of CN 110429252 (“Guo et al.”). Examiner notes that Applicant recognized that US Pub. No. 20210313563 is the US counterpart for CN ‘252 in the IDS 8/11/2025, and all citations will refer to the US publication.
Wada et al. teaches the first positive electrode active material is Lia2Nib2Coc2Md2O2, where M=Mn, 0.9≤a2≤1.2, 0.1≤b2≤0.6, 0.1≤c2≤0.6, and 0.1≤d2≤0.55 [0021]. Examiner notes that product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05.
Thus, Wada et al. teaches the Ni content of the first positive electrode active material is 10-60 mol% based on a total transition metals of the first positive electrode active material. Wada et al. further teaches that the Ni content of the second positive electrode active material is 70-100 mol% based on a total transition metals of the second positive electrode active material ([0007], [0020], [0021], and Table 1).
Wada et al. does not teach the Ni content of the first positive electrode active material is 65-70 mol% based on a total transition metals of the first positive electrode active material.
However, Guo et al. teaches a positive electrode comprising a lower layer region facing the positive electrode current collector and an upper layer region facing the lower layer region, wherein the lower layer region has a Ni content about 30 to about 80% and an upper layer region having a Ni content of about 50% to about 90% ([0043], [0044], [0077], [0078], and Example 27). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Wada et al.’s Ni content of the first positive electrode active material be 65-70 mol% based on a total transition metals of the first positive electrode active material in order to obtain a cathode with improved rate performance, cycle performance, and safety performance (Abstract).
Claims 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019029205 (“Wada et al.”) as applied to Claim 1 above, and further in view of US Pub. No. 20190013545 (“Kim et al.”).
With regards to Claims 16-18, Wada et al. teaches the positive electrode active material layer as set forth above.
Wada et al. does not teach the thicknesses of the positive electrode active material layer, the lower layer region, and the upper layer region as claimed.
However, Kim et al. teaches a positive electrode active material layer comprising a lower layer region having a thickness of 15 to 40 μm and an upper layer region having a thickness of 30 to 80 μm, and therefore a total thickness of its positive electrode active material layer is 45 to 120 μm (Fig. 4 and [0052]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the thicknesses of Wada et al.’s lower layer region and upper layer region as claimed in order to achieve desirable performance characteristics [0007].
With regards to Claim 20, Wada et al. does not teach the porosity of its positive electrode active material layer.
However, Kim et al. teaches its lower layer region having a porosity of 18 to 34% and its upper layer region having a porosity of 20 to 40%. Thus, the porosity of its positive electrode active material layer overlaps with the claimed porosity range of 20-40%. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have a porosity of Wada et al.’s positive electrode active material layer be 20-40% in order to achieve desirable performance as disclosed in paragraph [0007].
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
US Pub. No. 20180301740 teaches a positive electrode (E) comprising a positive electrode current collector (10) and a positive electrode active material layer disposed on at least one surface of the positive electrode current collector. The positive electrode active material layer having a lower layer region (20) facing the positive electrode current collector and containing a first positive electrode active material and a first binder polymer, and an upper layer region (30) facing the lower layer region and containing a second positive electrode active material and a second binder polymer, wherein a Ni content of the second positive electrode active material is larger than a Ni content of the first positive electrode active material (Abstract, Fig. 1, [0017], [0029], [0043]-[0048], [0075], [0077], and [0081]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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