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 Arguments
Applicant's arguments filed 05/27/2026 have been fully considered but they are not persuasive. Applicant argues the nanohardness cannot be inherent because the value can vary with crystal orientation, residual stress, defects, local microstructure and various phases of the phase change materials. However the materials cited in the rejection of claim 1 have the same chemical formulas, crystal structures, phase change ability, mass fraction ratio, and D50 for both of the cited ternary and phase change materials.
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.).
Furthermore, "[T]he discovery of a previously unappreciated property, such as nanohardness, of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Additionally, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. 102, on 'prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). In this case the arguments and specification do not show in which way, specifically, the claimed materials is structurally different from that of Kawamura such that the nanohardness would be outside the claimed range.
Terminal Disclaimer
In view of the terminal disclaimer filed 05/26/2026 the double patenting rejection is withdrawn.
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 nm, 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
THIS ACTION IS MADE FINAL. 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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/K.J.A./ Examiner, Art Unit 1726 /RYAN S CANNON/Primary Examiner, Art Unit 1726
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