DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election of Group I (Claims 1-11) in the reply filed on 1/2/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
Priority
3. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
4. Information disclosure statements (IDS), submitted April 12, 2023, March 27, 2024, and May 6, 2024, have been received and considered by the examiner.
Claim Interpretation
5. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
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.
6. Claims 8 and 10 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. Claim 8 contains the trademark/trade name “Ketjen black”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a trademarked type of carbon black material, and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102 / 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 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.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
7. Claims 1-2, 4, and 8 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Natsui US PG Publication 2015/0064577, or, in the alternative, under 35 U.S.C. 103 as being obvious over Natsui US PG Publication 2015/0064577, as evidenced by Hoppe et al. Z. anorg. Alig. Chem 534 (1986) 61-68 (hereinafter “Hoppe NPL”).
Regarding Claims 1-2, Natsui discloses a lithium secondary battery 10 comprising a negative electrode 22 including a negative electrode current collector 16 and a negative electrode mixture layer (active material layer) 17 disposed on the negative electrode current collector (Fig. 1, para 0047), and further comprising a positive electrode 21 including a positive electrode current collector 12 and a positive electrode mixture layer (active material layer) 13 disposed on the positive electrode current collector 12 and containing a positive electrode active material (e.g. Li6Mo2O7 as a main material, para 0040) and a positive electrode additive represented by formula 1, such as Li6CoO4 (paras 0040-0041) which meets Formula 1 when q=0 and p=6 (see entire disclosure and especially Fig. 1, paras 0039-0041 and 0047-0048). Natsui does not specifically recite wherein the positive electrode additive has a ratio (CC/DC) of initial charge capacity (CC) to initial discharge capacity (DC) during initial charging/discharging of 50 to 100, or 60 to 80 (as claimed in Claim 2). However, the skilled artisan would expect that because Natsui’s battery has the same composition as claimed, including using the same additive as almost exclusively exemplified in the instant disclosure (see Examples 1-3 which use Li6CoO4), the skilled artisan would understand that the battery of Natsui would be capable of being operated such that the positive electrode additive has a ratio (CC/DC) of initial charge capacity (CC) to initial discharge capacity (DC) during initial charging/discharging of 50 to 100 or 60 to 80. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
In the alternative, if it is not inherent that Natsui’s battery would be operated such that the positive electrode additive has a ratio (CC/DC) of initial charge capacity (CC) to initial discharge capacity (DC) during initial charging/discharging of 50 to 100 or 60 to 80, Natsui does teach in para 0041 that e.g. Li6CoO4 (having a higher initial charge/discharge efficiency*) is mixed with Li6Mo2O7 to arrive at the desired initial charge/discharge efficiency of “close to 100%” to offset the lower initial charge/discharge efficiency of Li6Mo2O7, and so the skilled artisan would understand that the initial charge/discharge efficiency (ratio) would be closer to 100% or 100, which the skilled artisan would find to be a range that overlaps or falls within the claimed ratio of 50 to 100 and is overlapping or within or close to the claimed ratio of 60 to 80 (meeting Claim 2). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
*The Office notes that although Natsui says in para 0041 that Li6CoO4 has a low initial charge/discharge efficiency, Natsui explains this by reciting the that initial charge capacity is higher than the initial discharge capacity, which would give a high efficiency, and is used to increase the initial charge/discharge efficiency of Li6MoO7 which has an initial charge capacity lower than initial discharge capacity. “Low initial charge/discharge efficiency” as related to Li6CoO is thought to be a typographical error.
Regarding Claim 4, Natsui does not discuss the space group of the electrode additive Li6CoO4 but “Hoppe NPL” shows that this material is in the space group P42/nmc (see highlighted portion of abstract).
Regarding Claim 8, Natsui discloses wherein a carbon material such as natural or artificial graphite, Ketjen black, carbon fiber (whiskers), carbon black, or acetylene black can be added to the positive electrode active material layer to improve electronic conductivity (paras 0044, 0053).
Claim Rejections - 35 USC § 103
8. Claim 3 is rejected under 35 U.S.C. 103 under 35 U.S.C. 103 as being unpatentable over Natsui US PG Publication 2015/0064577, as applied to Claim 1, and further in view of Bucur US PG Publication 2017/0194640.
Regarding Claim 3, Natsui discloses the claimed lithium secondary battery as described in the rejection of Claim 1, which is incorporated herein in its entirety. Natsui fails to specifically disclose wherein the positive electrode mixture layer has a weight change rate before and after initial charging/discharging of 0.01 to 2.00%. However, in the same field of endeavor of positive electrode design for batteries, Bucur discloses that mass loss as a result of battery cycling should be minimized (see e.g. para 0004, “unacceptably high mass loss during cycling”). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the lithium secondary battery of Natsui such that the positive electrode mixture layer has a weight change rate before and after initial charging/discharging is minimized such that the rate is 0.01 to 2.00% because Bucur teaches that mass loss as a result of battery cycling should be minimized and “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
9. Claims 5-6 are rejected under 35 U.S.C. 103 under 35 U.S.C. 103 as being obvious over Natsui US PG Publication 2015/0064577.
Regarding Claim 5, Natsui discloses the claimed lithium secondary battery as described in the rejection of Claim 1, which is incorporated herein in its entirety. Natsui discloses wherein positive electrode active material includes e.g. 80% and up to 98% Li6Mo2O7 plus other active materials and related additives that are added in quantities that optimize the initial charge/discharge efficiency (see e.g. paras 0039-0041) and Natsui further discloses a specific example where Li6Mo2O7 is included in an amount of 95% of the mass of the active material particles and has additives in amounts of 2% and 3% (para 0059) and discloses that the active material particle mixture is mixed in an amount of 70 parts by mass relative to the conductive and binding materials added to the positive electrode mixture layer (para 0059). The skilled artisan would understand that 2% or 3% of the active material particles would amount to 2-3% of the active material mixture which is present at 70% of the total layer weight, and so would be between .01% and 2% of the total mass of the layer. Although this value is not taught for an electrode using Li6CoO4, specifically, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the electrode and battery of Natsui using the same amount of Li6CoO4 as taught for other additives such that a content of the positive electrode additive is 0.01 to 5 parts by weight with respect to a total of 100 parts by weight of the positive electrode mixture layer since Natsui teaches this amount for other additives that are used as functional equivalents, since the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 6, Natsui discloses wherein the positive electrode active material includes e.g. Li(Ni,Co,Mn)O2 or LiMeO2 or LiαMoβ-xMexOγ (where Me can be at least one selected from Mn, Co, Ni, etc, and Mo), (see e.g. para 0040 and paras 0080-0082) which the skilled artisan would understand meets Formula 2 of Lix[NiyCozMnwM2v]Ou and uses amounts of each of Ni, Co, and Mn that add up to 1 (to balance the 1 mole of Li), which would give values of x=1 (1 mol Li), u=2 (2 mol O), and values of y, z, and w of greater than zero and less than 1, resulting in overlapping ranges of the claimed values of y, z, and w.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
10. Claim 7 is rejected under 35 U.S.C. 103 under 35 U.S.C. 103 as being unpatentable over Natsui US PG Publication 2015/0064577, as applied to Claim 1, and further in view of Yushin US PG Publication 2020/0373555.
Regarding Claim 7, Natsui discloses the claimed lithium secondary battery as described in the rejection of Claim 1, which is incorporated herein in its entirety. Natsui fails to specifically disclose wherein the positive electrode mixture layer comprises 0.1 to 5 parts by weight conductive material with respect to a total weight of the positive electrode mixture layer. However, in the same field of endeavor of positive electrode design for batteries, Yushin discloses that the content of conductive additive in a positive or negative electrode is optimized to be around 0.02 wt% to around 10 wt% in order to prevent reduction of volumetric capacity or increase pore tortuosity or increase first cycle losses or unnecessarily increase electrode costs by using too much, and to prevent insufficient electrical connectivity within the electrode or loss of power rate or mechanical stability or inferior electrode resistance by using too little (see para 0046). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the electrode and battery of Natsui using 0.1 to 5 parts by weight conductive material with respect to a total weight of the positive electrode mixture layer because Yushin discloses that the content of conductive additive in a Li ion battery’s positive or negative electrode is optimized to be around 0.02 wt% to around 10 wt% to benefit many electrochemical and physical properties.
11. Claims 9-11 are rejected under 35 U.S.C. 103 under 35 U.S.C. 103 as being unpatentable over Natsui US PG Publication 2015/0064577, as applied to Claim 1, and further in view of Zhu US PG Publication 2024/0030407.
Regarding Claims 9-11, Natsui discloses the claimed lithium secondary battery as described in the rejection of Claim 1, which is incorporated herein in its entirety. Natsui discloses wherein the negative electrode active material can comprise silicon particles (meeting Claim 11) and carbon such as natural or artificial graphite, acetylene black, Ketjen black (meeting Claim 10) (see e.g para 0048) but fails to specifically disclose amounts used together such that e.g. a content of silicon material is 1 to 20 parts by weight with respect to 100 parts by weight of the negative electrode mixture layer. However, in the same field of endeavor of lithium battery design using silicon-carbon anodes, Zhu discloses wherein silicon-based anodes, which can provide a high capacity battery, suffer from a large volume change with absorption and release of lithium ions which results in pulverized silicon (para 0004) but simply reducing Si particle size has its own issues (para 0005), but that designing a silicon-based anode having silicon nanoparticles dispersed in a silicon oxycarbide matrix and a carbonaceous phase where the content of Si nanoparticles in the active material is 1 to 80% by mass or 10 to 70% by mass (both ranges which include the claimed “1 to 20 parts by weight” based on the weight of the active material (para 0035), and then the active material is used in an amount of 80 parts by weight versus 20 parts by weight conductive additive and other additives (para 0135) which would amount to 20 parts by weight or less of Si particles in the negative active material layer. Zhu teaches that this design allows for improved performance of Si-based electrodes based on cycle characteristics, charge-discharge performance since previously described issues are not seen (see e.g. paras 0012-0021). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the negative electrode and battery of Natsui such that the negative electrode uses the design of Zhu where silicon particles are housed in the described matrix where Si particles are present in an amount of 1 to 20 parts by weight with respect to 100 parts by weight of the negative electrode mixture layer because this design allows for improved performance of Si-based electrodes based on cycle characteristics, charge-discharge performance since previously described issues are not seen.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Liu CN109713238 discloses a positive electrode additive Li5+aFexAyBzO4 where Co can be a doped element in the formula (see abstract and paras 0009-0010).
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/LISA S PARK/Primary Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729