MULTI-ELEMENT POSITIVE ELECTRODE MATERIAL, AND PREPARATION METHOD THEROF AND APPLICATION THEREOF
DETAILED ACTION
Response to Amendments
This office action is in response to documents filed Nov. 7, 2025.
Applicant’s amendments and arguments have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action.
Status of Claims
Claims 1-2, 4-11, 13-15 and 18-19 are pending, wherein claims 1-2, 4 and 9 are amended, claims 7-11 and 13-14 are withdrawn, and claims 18-19 are newly added. Claim 19 is hereby withdrawn because of its dependency on the withdrawn claim 9. Claims 1-2, 4-6, 15 and 18 are being examined on the merits in this office action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Nov. 7, 2025 has been considered by the examiner.
Claim Interpretations
The transitional language “consisting essentially of” recited in claim 1 is construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355.
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 1-2, 4-6, 15 and 18 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.
Claim 1 is amended to recite “wherein peak intensity I was the maximum count (peak height)”. This recitation, however, is not supported by the instant specification as originally filed. New matters have been introduced, which is not permitted.
Claims 1-2, 4-6, 15 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is amended to recite “wherein peak intensity I was the maximum count (peak height)”. Applicant appears to refer “peak intensity” as “peak height”. However, this terminology (i.e., “peak intensity”) is inconsistent with accepted meaning.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “peak intensity” in claim 1 is used by the claim to mean “peak height,” while the accepted meaning is “a peak area under the diffraction peak, not just its height, reflecting the quantity of a crystalline phase” (e.g., simply google “peak intensity”; See also bottom of page 4 of the non-final office action dated Aug. 8, 2025, and bottom of page 3 of the final office action dated Feb. 5, 2025). The term is indefinite because the specification does not clearly redefine the term.
For purposes of examination, the ratio I(006)/I(012) is interpreted as referring to a ratio of peak area rather than a ratio of peak height because of a lack of support for a ratio of peak height in the specification as originally filed.
Claim Rejections - 35 USC § 103
Claims 1-2, 4-6 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 20160301069 A1 to Kwak et al. (hereafter Kwak).
Regarding claims 1-2, 4 and 18 Kwak teaches a cathode material (described as “positive electrode active material” in Kwak) consisting essentially of: a material having a composition represented by a formula Li(1+a)Ni(1-b-c)Mn(b)Co(c)M’(s)M’’(v)O2 ([0085]-[0088]). When M’=Mg and M’’=B, the formula reads on the Formula I as claimed in claims 1 and 4 when M=Mg and Q=B. As to the claimed ranges or proportions, recited in claims 1 and 4, of molar fraction of elements in the formula 1, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D. 357 O.G. 177; 57 USPQ 117, Taklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
The following copied limitations in claims 1, 2 and 18 represent characteristics or properties of the multiple cathode material as claimed. Since Kwak teaches a cathode material having same or similar composition, the claimed characteristics or properties are necessarily present. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. The burden is shifted to applicant to show that the prior art product does not necessarily possess the characteristics of the claimed product.
In claim 1:
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Regarding claims 5-6, Kwak teaches the cathode material according to claim 1, wherein the multiple cathode material has a median particle size of about 3 to about 30 µm ([0061]), overlapping the ranges of 3-20 µm and 4-17 µm, respectively. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kwak, as applied to claim 1 above, and further evidenced by Mane et al. (US 20210336240 A1, hereafter Mane).
Regarding claim 15, Kwak teaches the cathode material according to claim 1, but is silent as to the cathode material including LiOH. However, it is known that a surface phase containing LiOH will form when a lithium-containing cathode material is exposed to air, for example (See, e.g., [0022], in particular lines 14-19). As such, one of ordinary skill in the art would reasonably expect that the cathode material of Kwak includes LiOH on the surface of the cathode material.
Response to Arguments
Applicant's arguments filed on Nov. 7, 2025 have been fully considered but they are not persuasive.
1) Applicant argues:
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In response, this argument is not commensurate with the scope of the claims. The claims do not claim anything associated with “Q/M controlled” and “orientation thresholds” (unclear what it refers to). The claims also recite ratios other than b/a (Q/M), so why is it named as “Q/M controlled”?
2) Applicant argues:
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In response, claim 1 uses the transitional terminology “consisting essentially of” (interpreted as comprising, see above), which does not exclude additional, unrecited elements. The presence of ITO and/or ATO in Kwak’s positive electrode does not necessarily mean an inappropriateness of the rejection. The arguments should focus on which limitation(s) as claimed are not taught.
In response to “… it nowhere teaches a layered-oxide lattice that contains both Q and M under the quantified ratio 0 < b/a < 20”, it is respectfully noted that in the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688. Unless there is evidence showing the ratio is critical, the ratio is not patentably distinguishable.
Applicant further argues:
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In response, the argument is not commensurate with the scope of the claims because the claims do not appear to recite limitations associated with the terms “explicit layered-orientation metrics”, “layered-orientation relationships”, etc.
As to the arguments related to Figs. 9 and 10 of Kwak, it is respectfully noted that the figures appear to be XRD spectra of the combination of the positive electrode active material and ITO (or/and ATO), rather than an XRD spectrum of the positive electrode active material which was relied on in the rejections.
In response to the argument related to the sum of “Ni + Co + Mn +M + Q”, this is not required in the claim(s). Note however, even if it is required, the molar fractions and the sum of elements are not patentable since the selection of the proportions of elements would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688. Unless there is evidence showing the molar ratios or the sum is critical, they are not patentably distinguishable.
3) In response to applicant's arguments against the references individually (in this case, the Mane reference), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
4) Applicant argues:
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In response, this argument is not persuasive because of the reasons presented above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727