DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. 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
3. In response to the amendment received on 12/1/2025:
Claims 1-15 are pending in the current application. Claims 8, 10, and 12 have been amended and Claims 12-15 stand withdrawn.
The previous rejection under 35 USC 112 is overcome in light of the amendment.
The previous prior art-based rejections have been maintained (although an unneeded rejection has also been withdrawn) and are repeated below for convenience. A response to arguments is provided below.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 102
5. 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.
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.).
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
6. 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.).
7. 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.).
8. 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.
9. 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.
Response to Arguments
10. Applicant's arguments filed 5/21/2026 have been fully considered but they are not persuasive.
Arguments directed at claim 1
11. Applicant argues that the claimed CC/DC property of Natsui is not inherent because Table 1 of Applicant’s disclosure shows that CC/DC results of the Li6CoO4 additive change when the battery activation conditions are changed.
The Office has considered this argument and respectfully disagrees. An argument claiming that the CC/DC value of a battery having substantially the same structure as the instant invention depends upon the activation conditions of said battery seems to actually support the Office’s position that the prior art would provide the same results as those claimed since “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
The skilled artisan would be capable of activating the battery of Natsui and the claimed property CC/DC would naturally arise from the battery upon selection of specific operating conditions.
Accordingly, such an argument is not found to be persuasive, and the rejection of record is maintained.
Conclusion
12. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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, Ula Tavares-Crockett can be reached on 5712721481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LISA S PARK/Primary Examiner, Art Unit 1729
Prosecution Insights