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 Status
This office action is in response to amendments/arguments filed 01/12/2026. Claims 1, 4, 7, and 9-10 are currently amended, support for the amendments being found in the original claims and the specification. No new matter has been entered. Claims 2-3, 5-6, 8, and 11-14 stand as originally presented. Claims 1-14 are currently pending in this office action.
Claim Objections
The objections of the prior office action are withdrawn because of the amendments to the claims.
Claim Rejections
The 35 USC 103 rejections of the prior office action are withdrawn because of applicant’s arguments. Upon further search and consideration, new grounds of rejection in view of newly searched art is made as below set forth.
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.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wei (CN 112803075 A, a machine translation from Espacenet is used as an English equivalent), in view of Ohzuku (US 20030087154 A1).
Regarding claim 1, and claim 7, Wei does not explicitly disclose a positive electrode active material comprising a compound represented by formula 1:
Li1.12Mn0.51Ni0.37-xMxO2
wherein:
M is Co or Cr, and
0<x<0.1.
However, Wei does disclose the following material:
Li1.13Mn0.517Ni0.256Co0.097O2 [0014]. This is extremely close to the claimed formula, differing only by .01 Li, less than 0.01 Mn, and an amount of Ni equal to the difference in Li and Mn, while satisfying 0<x<0.1.
The courts have held that a prima facie case of obviousness exists in cases where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997). As a result, it found that a prima facie case of obviousness exists against the claimed formula 1 in view of the material disclosed by Wei.
Regarding claim 1, Wei does not explicitly disclose the oxidation state of the Ni ion, however controlling oxidation state of the Ni and Mn ions in lithium nickel manganese oxides is a practice that is known in the art and would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention. For example, Ohzuku discloses a lithium-containing composite oxide containing manganese and nickel (abstract), which according to one embodiment also preferably contains Co [0043]. Further, Ohzuku discloses that the oxidation state of the Ni ions is 2.0 to 2.5, overlapping the claimed range (abstract). Ohzuku teaches that controlling the oxidation state of the nickel gives a positive electrode active material having more excellent function [0057], a longer storage life, and excellent cycle life [0034].
As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to control the oxidation state of the Ni ions in the positive active material of Wei to be within a range of 2.0 to 2.5. A person of ordinary skill would have been motivated to do this in order to obtain a positive active material having more excellent function, a longer storage life, and excellent cycle life, as taught by Ohzuku. After having done this, it would have been obvious to a person of ordinary skill to routinely select an oxidation state from amongst the overlapping portion of the disclosed ranges (2.0-2.5 overlaps the claimed range of 2< oxidation state <2.27) because selection of overlapping portions of ranges has been held to be a prima face case of obviousness (see MPEP 2144.05(1)).
Regarding claim 7, Wei discloses a lithium-ion battery [0013] comprising at least one lithium-ion battery cell [0024] including the positive electrode compound represented by formula a [0014], the battery being rechargeable ([0033] discloses a capacity retention after 100 cycles, nessecitating that the battery is rechargeable).
Regarding claim 2 and claim 8, Wei in view of Ohzuku discloses the positive electrode active material of claim 1/7, but does not disclose that 0.01<x<0.09. Instead, Wei uses a Co concentration of 0.097. However, 0.097 is extremely close to 0.09, and the courts have held that a prima facie case of obviousness exists in cases where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997). As a result, it found that a prima facie case of obviousness exists against the claimed X range for the formula 1 in view of the material disclosed by Wei.
Regarding claim 3 and claim 9, Wei in view of Ohzuku discloses the positive electrode active material of claim 1/7, wherein 2.04 < oxidation state < 2.25 (Ohzuku discloses that the oxidation state of the Ni ions is 2.0 to 2.5, overlapping the claimed range (abstract). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed inventio to routinely select an oxidation state from amongst the overlapping portion of the disclosed ranges (2.0-2.5 overlaps the claimed range of 2.04< oxidation state <2.25) because selection of overlapping portions of ranges has been held to be a prima face case of obviousness (see MPEP 2144.05(1))).
Regarding claim 4 and claim 10, Wei in view of Ohzuku discloses the positive electrode active material of claim 1/7, but does not explicitly disclose one of the materials listed in claim 4. However, Wei does disclose Li1.13Mn0.517Ni0.256Co0.97O2 [0014], which is extremely close to, for example, the claimed Li1.12Mn0.51Ni0.28Co0.9O2. the courts have held that a prima facie case of obviousness exists in cases where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997). As a result, it found that a prima facie case of obviousness exists against the active material in view of the material disclosed by Wei.
Regarding claim 5/12, Wei in view of Ohzuku discloses the positive electrode active material of claim 1/7, However Wei does not disclose the oxidation state of Mn. Ohzuku, however, discloses a lithium-containing composite oxide containing manganese and nickel (abstract), which according to one embodiment also preferably contains Co [0043]. Further, Ohzuku discloses that the oxidation state of the manganese is 3.5 to 4.0, overlapping the claimed value of “about 4”, which is understood to mean 4, plus or minus a certain amount. Ohzuku teaches that controlling the oxidation state of the manganese gives a positive electrode active material having more excellent function [0057], a longer storage life, and excellent cycle life [0034].
As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to control the oxidation state of the Mn in the positive active material of Wei to be within a range of 3.5 to 4. A person of ordinary skill would have been motivated to do this in order to obtain a positive active material having more excellent function, a longer storage life, and excellent cycle life, as taught by Ohzuku. After having done this, it would have been obvious to a person of ordinary skill to routinely select an oxidation state from amongst the overlapping portion of the disclosed ranges (3.5-4 overlaps the claimed value of “about 4”) because selection of overlapping portions of ranges has been held to be a prima face case of obviousness (see MPEP 2144.05(1)).
Regarding claim 6/14, Wei in view of Ohzuku discloses the positive electrode active material of claim 1/7, wherein M is Co [0014].
Regarding claim 11, Wei in view of Ohzuku discloses the rechargeable lithium-ion battery of claim 7, wherein each battery cell further includes a separator interposed between the positive electrode and the negative electrode [0173]-[0174].
Regarding claim 13, Wei in view of Ohzuku discloses the rechargeable lithium-ion battery of claim 7, wherein each battery cell has a specific capacity greater than 150 mAh/g ([0033] discloses a discharge specific capacity of, for example, 245 mAh/g).
Response to Arguments
Applicant’s arguments filed 09/15/2025 have been considered and are persuasive. Accordingly, the claim rejections of the prior office action are withdrawn. Specifically, applicant cites the fact that Barton does not disclose a material matching the claimed formula 1, only a general formula describing what materials can be made by the manufacturing process of Barton (pg. 6 of remarks), and disclosing no examples close to the claimed formula 1. Additionally, applicant cites data in the instant specification comparing a material of the claimed formula 1 to a commercial sample, which is the same as the claimed formula except does not include Co, pointing to improved properties such as discharge capacity, efficiency, and voltage over the commercial sample. Examiner agrees that the data shows unexpected results over a material not including Co, and indeed Co is not required in the formula disclosed by Barton, or if it is used, may range outside the claimed range.
Applicant’s arguments with respect to the new grounds of rejection for claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. To the extent that some of applicant’s arguments may be considered equally applicable to the rejection of Wei in view of Ohzuku, applicant’s arguments are considered but are not persuasive. For example, applicant argues that Ohzuku, despite disclosing an oxidation state range of 2.0-2.5 for the Ni in the active material, teaches away from an oxidation state for Ni larger than 2.0 (pg. 7 of remarks). Applicant argues this because Ohzuku teaches that bivalent Nickel is the target (oxidation state +2), and that the range of 2-2.5 represents experimental variation around that target in measured materials. However, just because a reference indicates a certain portion of a range as more preferable than other portions, does not invalidate the other portions of the disclosed range.
Further, in a given sample of active material, there will be possibly sextillions of Ni atoms. Despite an indicated preference for atoms in a 2.0 oxidation state, it would be virtually impossible to ensure that all Ni atoms were in a 2.0 state, and as a result it would have been understood by a person of ordinary skill in the art before the effective filing date of the claimed invention that attaining an oxidation state of exactly 2.0 for all Ni ions is not only impractical but impossible. Ohzuku accordingly indicates an acceptable range or tolerance for the oxidation state, and a person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to routinely select an oxidation state from within that disclosed range of 2.0-2.5, taking into account factors such as balancing the portions of Ni existing in the most desired oxidation state, with the practical limitations and constraints present. Accordingly, this argument is not persuasive.
Applicant additionally argues that Ohzuku does not deal with lithium manganese rich (LMR) materials, which applicant explains is characterized by excess lithium (Li= 1.12) and manganese rich stoichiometry, and that the chemistry of such materials is fundamentally different, and a person of ordinary skill in the art would not find the teachings of Ohzuku applicable to LMR materials (pg. 8 of remarks). However, applicant does not provide data to show this, and the data cited in the specification to indicate unexpected results was a comparison of a lithium manganese rich material with and without the inclusion of Co, but which otherwise were both LMC materials, and which both had the same oxidation states for the Mn and Ni ions. Further, applicant only cites data for the inclusion of Co in an amount of 0.08, but does not offer data for other ranges, such as above the claimed 0.1. As a result, applicant achieves a showing of unexpected results for the inclusion of Co in a LMR material including Li, Mn, and Ni, but does not demonstrate unexpected results for the other claimed aspects of the invention, such as oxidation state or the specific composition. As a result, applicant’s arguments are not found persuasive insofar as they may be considered applicable to the new rejection of Wei in view of Ohzuku.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACKARY R COCHENOUR whose telephone number is (703)756-1480. The examiner can normally be reached 1-9:00PM ET.
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/ZACKARY RICHARD COCHENOUR/Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752