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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 1/20/2026 is acknowledged.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-26 of copending Application No. 18/021,225 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons
Regarding claim 1, claim 19 of the copending application teaches a material for a positive electrode of a battery, comprising a ternary material and a phase-transition material, wherein the phase-transition material undergoes phase transition in a charge/discharge voltage window of the ternary material; the ternary material has a single crystal structure, the phase-transition material has a single crystal structure or a poly-crystalline structure, and the phase-transition material is coated on a surface of the ternary material; a weight ratio of the ternary material to the phase-transition material is 80:20-99.8:0.2; the ternary material has a nanohardness of 0.001-5 GPa, and the phase-transition material has a nanohardness of 0.01-10 GPa; and the ternary material has a D50 of 3.0-6.0 pm, and primary particles in the phase-transition material have a D50 of 10-50 nm, which correspond to the limitations of claim 1.
Regarding claim 2, claim 20 of the copending application teaches the nanohardness of the ternary material is 0.2-1.4 GPa, and the nanohardness of the phase-transition material is 1.5-3.5 GPa., which correspond to the limitations of claim 2.
Regarding claim 3, claim 21 of the copending application teaches wherein the ternary material has a tap density of 2.0-2.8 g/cm3 and the phase-transition material has a tap density of 0.8-1.5 g/cm3., which correspond to the limitations of claim 3.
Regarding claim 4, claim 22 of the copending application teaches wherein the D50 of the ternary material is 3.5- 5.0 µm, and the D50 of the primary particles in the phase-transition material is 20-40 nm., which correspond to the limitations of claim 4.
Regarding claim 5, claim 23 of the copending application teaches wherein the ternary material has a chemical formula of LiNixCoyMzO2, wherein x+y+z=1, and M comprises Mn, Al, Zr, Ti, Y, Sr, or W., which correspond to the limitations of claim 5.
Regarding claim 6, claim 24 of the copending application teaches wherein the ternary material comprises a nickel- cobalt-manganese ternary material or a nickel-cobalt-aluminum ternary material, which correspond to the limitations of claim 6.
Regarding claim 7, claim 25 of the copending application teaches wherein the phase-transition material has an olivine structure, and the phase-transition material has a chemical formula of LiABwPO4, wherein v+w=1, A comprises Fe, Co, Mn, Ni, Cr or V, and B comprises Fe, Co, Mn, Ni, Cr or V, which correspond to the limitations of claim 7.
Regarding claim 8, claim 26 of the copending application teaches wherein the phase-transition material comprises lithium manganese iron phosphate, lithium manganese vanadium phosphate, or lithium chromium iron phosphate, which correspond to the limitations of claim 8.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-2, 4-8 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura (JP 2020053390A as cited in IDS dated 9/3/2024, reference made to English translation).
Regarding claims 1, 2, 4-8 and 14-18 Kawamura discloses a ternary material ( LiNix Coy Mnz O2 where x + y + z = 1, 0≦x, y, z ≦ 1) with a layered crystal structure (¶[0014]) and a particle size of 1-30 µm (¶[0015]) which one of ordinary skill in the art would recognize this particle size range would overlap with a median particle size D50 of 3-6 µm. The ternary material is mixed with a phase change material (as identified in the instant specification, ¶[0077]) lithium manganese iron phosphate with an olivine crystal structure(¶[0055]) which may be 30-100 nm (¶[0020]) which one of ordinary skill in the art would recognize this particle size range would overlap with a median particle size D50 of 10-50 µm, where the mass fraction of the lithium iron phosphate is 30% (example 1) or 25% example 3 (¶[0057]). Inherently, the ternary material has a nanohardness of 0.001 Gpa-5 Gpa, and the phase change material has a nanohardness of 0.01 GPa-10 GPa since the materials are the same as those specified in the instant specification (see olivine lithium manganese iron phosphate ¶[0060], and lithium nickel cobalt manganese oxide ¶[0013]-[0014]).
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 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). MPEP §2144.05.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kawamura (JP 2020053390A as cited in IDS dated 9/3/2024, reference made to English translation) as applied to claim 1 above, in view of Tokuda (US20120244425A1).
Regarding claim 3, Kawamura discloses the mixed positive electrode material according to claim 1, but does not explicitly disclose wherein the ternary material has a tap density of 2.0 g/cm3-2.8 g/cm3, and the phase change material has a tap density of 0.8 g/cm3-1.5 g/cm3.
Tokuda, related to positive electrode active materials, teaches a positive electrode active materials containing lithium iron phosphate(¶[0248]) and lithium nickel cobalt manganese active materials (¶[0250]) should have an overall tap density of 0.1 g/cm3 to preferably less than 2.0 g/cm3 to optimize battery capacity and lithium ion diffusion(¶[0260]).
One of ordinary skill in the art would have recognized setting the overall tap density of the mixed positive electrode material of Kawamura to the parameters of Tokuda would lead to overlapping ranges of the ternary material tap density of 2.0 g/cm3-2.8 g/cm3, and the phase change material tap density of 0.8 g/cm3-1.5 g/cm3 given the mass fraction ratios of claim 1 and this would optimize battery capacity and lithium ion diffusion.
Therefore it would have been obvious to have set the tap density of the mixed positive electrode active material to those taught by Tokuda in order to optimize battery capacity and lithium ion diffusion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN J. ARMSTRONG whose telephone number is (703)756-1243. The examiner can normally be reached Monday-Friday 10 am-6 pm EST.
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/RYAN S CANNON/Primary Examiner, Art Unit 1726
/K.J.A./Examiner, Art Unit 1726