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 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 1-12 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 “a thermogravimetric analysis performed at a heating rate of 10oC/min, an on-set temperature at which a thermal-decomposition peak appears is equal to or greater than 232.2oC” (emphasis added). There is no support in the Specification for: 1) the phrase “heating rate” of the claimed “10oC/min”; and 2) the open-ended range “equal to or greater than 232.2oC” for the claimed “on-set temperature”. Examiner notes that p. 38, lines 4-8 teaches the phrase “temperature increase rate” for the claimed “10oC/min”, and Table 5 Examples 1-6 teach the range of 231.2-236.7oC for the claimed “on-set temperature”. Claims 2-12 are also rejected as depending on claim 1.
Amended claim 2 recites the formula “0<x+y+z+z’<1”. There is no support in the Specification for this formula.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al (US 2020/0343551) 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 claims 1 and 3-4, Cho discloses a positive electrode active material consisting of: at least a “nickel-based lithium metal oxide” (i.e. claimed “lithium composite oxide” of primary particles that contain at least Li, Ni, and B, wherein “a plurality of primary particles are aggregated” to form secondary particles (Abstract; para 0005, 0073-0079, and 0187); and wherein a coating layer is formed on surfaces of the primary particles (para 0008, 0054, and 0068-0069). The claim reciting “at least part of the coating layer is removed from the surface of the secondary particle” relates to a product-by-process limitation, and thus has not been given patentable weight (MPEP 2113I-III). In addition, Cho teaches preparing a sample of the lithium composite oxide with coating layer “by cutting the cross section of particles with an Ar ion-slicer to examine a coating formation result with STEM” (para 0215), which would expectantly remove at least part of the coating layer from a surface of a secondary particle.
However Cho is limited in that while the coating layer comprises at least one lithium-metal oxide of Chemical Formula 1 of Li2MO3 and/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), which reads on the claimed “Formula 3”, 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 2”. 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 with the at least one lithium-metal oxide of the coating layer of Cho to gain the advantages of lowering charge-transfer resistance between electrode and electrolyte and improving structural stability during cycling.
In summary, the combination of Cho and Du teaches the composition of claim 1. The claim requirement of “a thermogravimetric analysis performed at a heating rate of 10oC/min, an on-set temperature at which a thermal-decomposition peak appears is equal to or greater than 232.2oC” is a product-by-process limitation and has not been given patentable weight, since “determination of patentability is based on the product itself” since if “the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable” (MPEP 21113, I).
With respect to claim 2, 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), and boron is between about 0.001-0.1 mol relative to 1 mol of metal (para 0079), which reads on the claimed “Formula 1”.
With respect to claim 5, the claim reciting “the coating layer is formed by thermal treatment of a mixture of a precursor of the lithium composite oxide and a boron-containing raw material” relates to a product-by-process limitation, and thus has not been given patentable weight (MPEP 2113I-III). In addition Du teaches forming the coating layer by a thermal treatment of mixing a precursor of the lithium composite oxide and a boron-containing raw material (2.1 Material Synthesis).
With respect to claim 6, the claim reciting “at least a part of the coating layer is removed from the surface of the secondary particle through washing of the lithium composite oxide” relates to a product-by-process limitation, and thus has not been given patentable weight (MPEP 2113 I-III). In addition Du teaches washing the lithium composite oxide (2.1 Material Synthesis); thus at least a part of the coating layer is removed from the surface of the secondary particle.
With respect to claim 7, the claim reciting “the content of residual boron in the lithium composite oxide after washing of the lithium composite oxide is 0.3 mol% or less” relates to a product-by-process limitation, and thus has not been given patentable weight (MPEP 2113 I-III). In addition Cho teaches that after processing, a final product of the lithium composite oxide comprises a content of residual boron of 0.001-0.1 mol (relative to 1 mol of metal para 0079).
With respect to claim 8, the claim reciting “the amount of LiOH elution measured by neutralization titration using HCl for the positive electrode active material satisfies Equation 1 below: [Equation 1] r < (19,153 x x1)+ x2 (Here, xl is the content (mol%) of boron in the lithium composite oxide before washing, x2 is the amount (ppm) of LiOH converted from the HCl consumption corresponding to the x-axis value of a first peak appearing at the smallest x-axis value in the differential graph shown by differentiating the pH value with respect to the amount of HCl input by the neutralization titration for the lithium composite oxide before washing, and r is the elution amount (ppm) of LiOH for the lithium composite oxide after washing)” relates to a product-by-process limitation, and thus has not been given patentable weight (MPEP 2113 I-III).
With respect to claim 9, the claim reciting “the amount of LiOH elution measured by neutralization titration using HCl for the positive electrode active material satisfies Equation 2 below: [Equation 2] y1 ≤ r ≤ y1 + (y2 x (1-y3) x 18,429) (Here, yl is the amount (ppm) of LiOH converted from the HCl consumption corresponding to the x-axis value of a first peak appearing at the smallest x-axis value in the differential graph shown by differentiating the pH value with respect to the amount of HCl input by the neutralization titration for the lithium composite oxide after washing, y2 is the content (mol%) of boron in the lithium composite oxide before washing, y3 is the change rate of the content of boron in the lithium composite oxide before and after washing, and has a value greater than 0 and less than or equal to 0.90, and r is the elution amount (ppm) of LiOH for the lithium composite oxide after washing)” relates to a product-by-process limitation, and thus has not been given patentable weight (MPEP 2113 I-III).
With respect to claim 10, the claim reciting “for the lithium composite oxide, a ratio of the porosity in the secondary particle after washing/the porosity in the secondary particle before washing is 1.7 or more” relates to a product-by-process limitation, and thus has not been given patentable weight (MPEP 2113 I-III). In addition the combination of references Cho and Du has Du teaching washing the lithium composite oxide (2.1 Material Synthesis); with the washing resulting in a ratio of porosity of the secondary particle after washing to before washing being 1.7 or more (MPEP 2112.01, I).
With respect to claims 11 and 12, modified Cho further discloses the positive electrode active material is formed as a positive active material layer to form a positive electrode of a rechargeable or secondary battery (para 0131-0133 and 0155).
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/063767 (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 1-13 of the copending would also meet the requirements set forth in claims 1-12 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.
Claim Objections
Claim 9 has been amended as previously suggested; the previous objection has been withdrawn.
112 Rejections
Claims 1 and 6-7 have been amended to clarify the “secondary particles”; the previous 112(b) rejections have been withdrawn.
Claim 2 has been amended to recite the formula “0<x+y+z+z’<1”; the previous 112(b) rejection has been withdrawn.
Claims 6-10 have each been amended to provide antecedent basis; the previous 112(b) rejections have been withdrawn.
Claim 10 has been amended to clarify the claimed “ratio”; the previous 112(b) rejections have been withdrawn.
103 Rejections
On p. 6-7, Applicant argues that the combination of Cho and Du does not teach the new limitation “a thermogravimetric analysis performed at a heating rate of 10oC/min, an on-set temperature at which a thermal-decomposition peak appears is equal to or greater than 232.2oC” 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, the limitation is a product-by-process limitation, and has not been given patentable weight as discussed above in the 103 Rejections section.
On p. 7-8, Applicant argues that “at least a part of the coating layer is removed from the surfaces of the secondary particles” as recited by amended claim 1 is not a product-by-process limitation, and that Cho and Du do not teach the limitation.
The Examiner respectfully disagrees since “determination of patentability is based on the product itself” since if “the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable” (MPEP 21113, I). In this case, the combination of Cho and Du do teach the product as recited by claim 1 as discussed above in the 103 Rejections section.
All other arguments on p. 8-9 to claim 1 are directed towards the subject matter addressed in the 103 Rejections above and therefore have been addressed accordingly.
Double Patenting Rejections
On p. 9, Applicant argues that amended 1 of the present application is now distinct from co-pending 18/063767.
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 18/063767 are directed to a lithium composite oxide that has surface part removed which forms a step structure.
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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