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 .
Priority
2. 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
3. Information disclosure statements (IDS), submitted May 19, 2023 and September 9, 2024, have been received and considered by the examiner.
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 § 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 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.
5. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuu US PG Publication 2018/0254482 in view of Choi US PG Publication 2012/0219840.
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Regarding Claims 1 and 4-5, Matsuu discloses a non-aqueous electrolyte secondary battery 10 comprising a positive electrode having a positive electrode mixture layer 1, a negative electrode 2/4, a separator 5 interposed between the positive and negative electrodes (see Fig 1 and para 0057), and a non-aqueous electrolyte (para 0068), wherein the positive electrode mixture layer includes
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since Matsuu teaches general formula A:
and further exemplifies for positive electrode active material particle A the specific material LiNi0.8Co0.1Mn0.1O2 (Examples 1-9, para 0075) which meets the claimed first general formula, and the positive electrode mixture layer further includes a second lithium-transition metal composite oxide represented by the formula LiaNi2-a-bMebO2 wherein 0<a≤0.5, 0≤b≤0.5, and Me represents at least one metal element excluding Li and Ni, since Matsuu teaches
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wherein Matsuu’s range of α (amt of Li, 0< α ≤ 1.15) overlaps or is very close to that of claimed x (0.8 ≤ x ≤ 1.2), Matsuu’s range of b (amt of Co, 0 < b ≤ 0.2) fits with claimed b (combination of metals, 0 ≤ b ≤ 0.5), Matsuu’s range of Al balances the amount of Ni and Co (since the amount of Al should be 1-a, and Ni’s amt is 0.7 ≤ a ≤ 0.9). See entire disclosure and especially paras 0031-0037, 0045-0046, 0057, 0063-0069, 0075, 0086, 0095.
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.).
Matsuu recites that the separator can be formed from a porous resin membrane, and can include a layer including inorganic particles such as aluminum oxide, i.e. alumina or Al2O3, (para 0069, meeting Claim ) but does not specifically disclose wherein the separator has a substrate and a surface layer formed on a surface of the substrate facing a side of the positive electrode, the surface layer including inorganic particles and a binder where the inorganic particle content is greater than or equal to 85 mass% and less than or equal to 95 mass% relative to a total mass of the surface layer (Claim 4). However, in the same field of endeavor of non-aqueous electrolyte secondary battery design using two positive electrode active materials and a separator including inorganic oxide filler, Choi discloses wherein a separator (called a membrane herein) is advantageously formed as a polymer substrate coated with an active layer containing binder polymer and inorganic oxide particles such as alumina with the advantage that this membrane’s design improves battery performance by enable smooth movement of lithium ions, provides protection against short-circuit, avoids issues such as brittleness and interfacial resistance and where the mix of inorganic particles and acrylic resin (e.g. acrylonitrile or polymethylmethacrylate, meeting Claim 5) binder particles is preferably 80% to 99% by weight (largely overlapping the claimed range of Claim 4) and is optimized for the best porosity and adhesion between particles with optimized mechanical physical properties of the membrane and performance of the battery (see entire disclosure and especially paras 0076-0099).
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 include the separator structure (the membrane) of Choi in the battery of Matsuu such that the separator has a substrate and a surface layer formed on a surface of the substrate facing a side of the positive electrode and a mass % of inorganic particles of 80% to 99% by weight (largely overlapping the claimed range of greater than or equal to 85 mass% and less than or equal to 95 mass%) and using a binder using an acrylic resin (e.g. acrylonitrile or polymethylmethacrylate) because Choi teaches MANY advantages to this structure, including improved battery performance by enable smooth movement of lithium ions, protection against short-circuit, and avoidance of issues such as brittleness and interfacial resistance, and because the mass% content is optimized for the best porosity and adhesion between particles with optimized mechanical physical properties of the membrane and performance of the battery. 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.).
Regarding Claim 2, Matsuu teaches that the content of the second lithium-transition metal composite oxide is greater than or equal to 0.1 mass% and less than or equal to 10 mass% relative to the total mass of the positive electrode mixture layer in every example set (para 0075, 0086, 0095 gives a ratio of first material:second material:conductive:assistant binder of 89.24:2.76:4:4) and while this example does not use the specific material for the second positive active material described above in the rejection of Claim 1, the skilled artisan would have found it obvious to model any experimental design after the design (and mass percents) in the given examples such that the second lithium-transition metal composite oxide is including in an amount greater than or equal to 0.1 mass% and less than or equal to 10 mass% relative to the total mass of the positive electrode mixture layer because 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 3, Matsuu modified by Choi does not specifically disclose the second lithium-transition metal composite oxide having the claimed properties. However, because the formula of Matsuu described above encompasses the claimed formula (with overlapping stoichiometric value ranges), the skilled artisan would expect to arrive at material having the same spectroscopic properties as what is claimed, such as diffraction peak having a peak top at a diffraction angle (2θ) of greater than or equal to 21.40° and less than or equal to 21.65° since a reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson 49 USPQ2d 1949 (1999).
6. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuu US PG Publication 2018/0254482 in view of Choi US PG Publication 2012/0219840, as applied to Claim 1, and further in view of Lee KR2019-033214.
Regarding Claim 6, Matsuu modified by Choi teaches the battery as described in the rejection of Claim 1, which is incorporated herein in its entirety. Matsuu discloses wherein the negative electrode includes a negative electrode active material such as a mixture of two or more of a carbon material and a metal element such as Si or a compound containing the metal element such as a silicon oxide (para 0063) but Matsuu modified by Choi does not specifically disclose wherein a content of the second active material is greater than or equal to 1 mass% and less than or equal to 15 mass% relative to a total mass of the negative electrode active material. However, in the same field of endeavor of non-aqueous electrolyte secondary battery design, Lee discloses wherein a negative electrode is formed that uses a silicon based negative electrode (anode) active material and specific carbon-based negative electrode (anode) active materials in combination (e.g. carbons with different hardnesses), wherein the silicon-based material is include in the negative electrode active material in an amount of 45 wt% or less (a range encompassing the claimed range) based on the total active material mixture weight with the benefit that this design can suppress expansion of the silicon-based active material and prevent degradation of the permeability of the electrolyte by minimizing crushing of the silicon-based material during manufacturing and improving adhesive force between the active material and current collector, all which improve life characteristics of the battery and provide for high energy density and high capacity (see entire disclosure and especially paras 0010-0033).
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 use the negative electrode of Lee in the battery of Matsuu modified by Choi such a content of the second active material (Si-based) is greater than or equal to 1 mass% and less than or equal to 15 mass% relative to a total mass of the negative electrode active material because Lee teaches this design, which includes multiple carbon materials having differing hardnesses, can suppress expansion of the silicon-based active material and prevent degradation of the permeability of the electrolyte by minimizing crushing of the silicon-based material during manufacturing and improving adhesive force between the active material and current collector, all which improve life characteristics of the battery and provide for high energy density and high capacity.
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.).
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Akoto JP2018-163781 discloses a nonaqueous electrolyte secondary battery having two lithium-transition metal composite oxide positive electrode active materials mixed together, a carbon-based anode, and a separator formed of a substrate having an alumina or aramid-based coating on its surface (see entire disclosure and especially paras 0059-0068).
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/LISA S PARK/Primary Examiner, Art Unit 1729