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 .
Claim Interpretation
Claim 8 reciting “a terrace-step-kink structure” has been interpreted in view of Applicant’s fig. 1 and also “Terrace ledge kink model” (see attached PTO-892 reference U), as both are consistent with Specification p. 10, lines 18-24 and p. 11, lines 1-8.
Specification
The disclosure is objected to because of the following informalities: the abbreviations “NCA” and “NCM” are cited, however the full names of the abbreviations (commonly known respectively as “nickel cobalt aluminum” and “nickel cobalt manganese”?) should be explicitly recited at least once in the Specification, such as p. 32, lines 11-18 with the first recitation each of NCA and NCM.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended claim 1 recites “an interplanar distance at an outermost surface of the lithium composite oxide is smaller than an interplanar distance in an interior thereof”. There is no support in the Specification for this broad limitation. Examiner notes that p. 32, lines 11-18 (as per p. 5 Remarks 1/20/2026) specifically states “referring to FIG. 15 showing the interplanar distances between crystal planes in regions A and B in the TEM image of the lithium composite oxide included in the positive electrode active material according to Example 1, in the region A, 4.729 Å corresponding to the interplanar distance between the (003) crystal planes of a general NCA or NCM-type lithium composite oxide was measured”. Claims 2-13 are also rejected as depending on claim 1.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-10 and 12-13 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cho et al (US 2020/0343551).
With respect to claim 1, Cho discloses a positive electrode active material comprising a “nickel-based lithium metal oxide” (i.e. claimed “lithium composite oxide” that “easily intercalates/deintercalates lithium ions” (Abstract; para 0005), wherein the lithium composite oxide has a surface part that is a “layered crystal structure” (i.e. claimed “step structure” (figs. 4-5; para 0073 and 0219). Cho also teaches at para 0086-0133 a method of preparation of the lithium composite oxide of the positive electrode material similar to Applicant’s method of preparation at Specification p. 16-18. Since Cho teaches the claim requirements of the “positive electrode active material comprising a lithium composite oxide […] has a surface part with a step structure” and is prepared by a similar method as Applicant, a prima facie case of either anticipation or obviousness is established that Cho also teaches the resulting lithium composite oxide having a property of “an interplanar distance at an outermost surface of the lithium composite oxide is smaller than an interplanar distance in an interior thereof” (MPEP 2112.01, I).
With respect to claims 2 and 3, Cho further discloses the lithium composite oxide comprises Ni and Co and at least one of Mn and Al (para 0019-0021).
With respect to claim 4, Cho further discloses the surface part with the step structure is formed to intersect an extension direction of a (003) crystal plane of the lithium composite oxide (para 0054-0057 and 0219).
With respect to claims 5-7, Cho is cited as discussed for claim 1. Since Cho teaches the claim requirements of claim 1 (in addition to claims 2-4 and 8-10) for the lithium composite oxide with the step structure, a prima facie case of either anticipation or obviousness has been established that Cho also teaches the resulting lithium oxide with the step structure having properties of “the step structure formed on the surface part of the lithium composite oxide is formed such that one crystal plane belonging to at least one plane group selected from {0lx}, {02y} and {03z} plane groups among the crystal planes present on the surface part of the lithium composite oxide has a predetermined dihedral angle with another adjacent crystal plane (wherein x, y and z are each independently an integer of 0 to 12)” (claim 5), “the dihedral angle of one crystal plane, which belongs to at least one plane group selected from the {0lx}, {02y} and {03z} plane groups, with another adjacent crystal plane is 90o or more” (claim 6), and “a structure formed such that one crystal plane belonging to at least one plane group selected from the {01x},{02y } and {03z} plane groups among crystal planes present on the surface part of the lithium composite oxide has a predetermined dihedral angle with another adjacent crystal plane is periodically repeated on the surface part of the lithium composite oxide” (claim 7) (MPEP 2112.01, I).
With respect to claim 8, Cho further depicts in fig. 4A the step structure appearing as a terrace-step-kink structure (para 0046 and 0214-0218), similar to Applicant’s fig. 1 and shown in reference U (see PTO-892 10/20/2025).
With respect to claim 9, Cho further discloses the positive electrode active material of the lithium composite oxide is represented by Chemical Formula 3 comprising LiaNixCoyQ11-x-yO2, wherein 0.9≤a≤1.05, 0.6≤x≤0.98, 0.01≤y≤0.40, and Q1 is at least one metal element selected from Mn, Al, Cr, Fe, V, Mg, Nb, Mo, W, Cu, Zn, Ga, In, La, Ce, Sn, Zr, Te, Ru, Ti, Pb, and Hf (para 0019-0021), which reads on the claimed “Formula 1”.
With respect to claim 10, Cho further discloses the “positive [electrode] active material includes secondary particle in which a plurality of primary particles are aggregated” (para 0187), wherein a coating layer is formed on surfaces of the primary particles (para 0008, 0054, and 0068-0069), and the coating layer comprises a lithium-metal oxide of Li2SnO3 (para 0219), or more generally Chemical Formula 1 of Li2MO3 or Chemical Formula 2 Li8MO6, with M being a metal of oxidation number 4, and may include Li2SnO3, Li2ZrO3, Li2TiO3, Li2MnO3, Li2HfO3, Li8SnO6, Li8ZrO6, Li8TiO6, Li8MnO6, Li8HfO6, and/or a combination thereof (para 0065-0067).
With respect to claims 12 and 13, Cho further discloses the positive electrode active material is formed as a positive active material layer on a positive electrode current collector to form a positive electrode of a rechargeable or secondary battery (para 0131-0133 and 0155).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Cho et al (US 2020/0343551) as applied to claim 10 above, and further in view of Du et al (Enhanced high-voltage cycling stability of Ni-rich LiNi0.8Co0.1Mn0.1O2 cathode coated with Li2O-2B2O3).
With respect to claim 11, the reference is cited as discussed for claim 10. However Cho is limited in that while boron is suggested to be included with the lithium composite oxide (para 0079), the coating layer comprising boron is not specifically suggested.
Du teaches a coating layer of Li2O-2B2O3 applied onto cathode material (i.e. positive electro active material) of LiNi0.8Co0.1Mn0.1O2 (i.e. lithium composite oxide) (Abstract), similar to coating layer applied onto the positive electrode active material of the lithium composite oxide of Chemical Formula 3 of Cho; the Li2O-2B2O3 reads on the claimed “Formula 3”. Du cites the advantages of the Li2O-2B2O3 as lowering charge-transfer resistance between electrode and electrolyte in addition to improving structural stability during cycling (Abstract).
It would have been obvious to one of ordinary skill in the art to incorporate the Li2O-2B2O3 of Du as the coating layer of Cho to gain the advantages of lowering charge-transfer resistance between electrode and electrolyte and improving structural stability during cycling.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/064147 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending overlap in scope with the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-12 of the copending would also meet the requirements set forth in claims 1-13 of the current invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s Remarks on p. 5-9 filed 1/20/2026 are addressed below.
112 Rejections
Claims 4-5 and 10-11 have been amended to provide antecedent basis; the previous 112(b) rejections have been withdrawn.
102 Rejections
On p. 6-8, Applicant argues that Cho does not teach the new limitation “an interplanar distance at an outermost surface of the lithium composite oxide is smaller than an interplanar distance in an interior thereof” as recited by amended claim 1.
The Examiner respectfully disagrees. First, there is no support in the Specification for this limitation as discussed above in the 112 Rejections section. Second, Applicant’s arguments are not commensurate in scope to claim 1; at least Applicant’s arguments on p. 7-8 state a “boron coating” and “cobalt” are both required for particulars of interplanar distances in contrast to Cho, however neither are recited by claim 1. Claim 1 only recites a general “lithium composite oxide” is present, which Cho teaches, in addition to Cho teaching at 0086-0133 the lithium composite oxide being formed in a similar manner as Applicant at Specification p. 16-18. Therefore since Cho teaches the claim requirements of the “positive electrode active material comprising a lithium composite oxide […] has a surface part with a step structure” and is prepared by a similar method as Applicant, a prima facie case of either anticipation or obviousness is established that Cho also teaches the resulting lithium composite oxide having a property of “an interplanar distance at an outermost surface of the lithium composite oxide is smaller than an interplanar distance in an interior thereof” (MPEP 2112.01, I).
Double Patenting Rejections
On p. 8-9, Applicant argues that amended claim 1 of the present application is now distinct from co-pending 18/064147.
The Examiner respectfully disagrees since there is no support for certain limitations of amended claim 1 (as previously discussed above for the new matter rejections). As such, the rejections are maintained until at least the new matter rejections are overcome. In addition, both the present application and 18/064147 are directed to a lithium composite oxide that has a step structure from a part being removed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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