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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/01/2026 has been entered.
Claim Rejections - 35 USC § 112
Claims 1-2 and 4-5 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 recites “having a substantially uniform composition throughout the bulk of the material”. However, while there is support for the material having a “uniform laminar structure” (Specification, p. 11, Paragraph 1), there is no support for “substantially uniform composition throughout the bulk of the material” as claimed.
Regarding dependent claims 2 and 4-5, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Gunji et al. (US 2016/0276664 A1) (Gunji).
Regarding claims 1-2 and 4-5, Gunji teaches a lithium-ion secondary battery comprising a positive electrode active material (Gunji, Abstract) (i.e., a positive electrode active material for lithium-ion battery; claim 4, a lithium-ion battery, comprising a positive electrode active material according to claim 1). Gunji teaches the positive electrode active material can be represented by Lia+1NibMncAdO2+α, where 0.05 < a < 0.33, 0 < b < 0.45, 0.30 < c < 0.75, b/c < 1, 0 < d < 0.3, a+b+c+d = 1, -0.1 < α < 0.1; and wherein A is an element other than Li, Ni, and Mn, including Zn (Gunji, [0036]; [0038]). This formula overlaps with the formula of the present claim as discussed below.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Further, as the surface layer of Gunji overlaps with the claimed positive electrode active material, it is clear that the surface layer is a positive electrode active material and as it is a separate layer, it has a uniform composition throughout the bulk of the material.
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).
In the instant formula, when x = 0.3 and y = 0.02 (i.e., corresponds to claim 2 and claim 5), the formula is Li1.2Ni0.3Mn0.48Zn0.02O2. In Gunji, when a = 0.2, b = 0.3, c = 0.48, d = 0.02, and α = 0, these values meet the requirements of Gunji where a+b+c+d = 1 and b/c < 1, as well as being within each range requirement. Therefore, the formula of Gunji would be Li1.2Ni0.3Mn0.48Zn0.02O2 which is the same as the claimed formula.
Response to Arguments
Applicant primarily argues:
“2.1 Amendment to Claim 1: “substantially uniform composition throughout the bulk of the material” is fundamentally distinct from Gunji’s core-shell structure
In response to the Examiner's contention that the specification provides no explicit definition for "average composition" and no statement that the material is homogeneous, Applicant amends Claim 1 to recite a positive electrode active material "having a substantially uniform composition throughout the bulk of the material expressed by the following formula (I)." This amendment directly addresses the Examiner's concern
by making explicit what the specification clearly supports.
The amended term "substantially uniform composition throughout the bulk of the material" carries the following specific meanings, each directly supported by the specification:
"Substantially uniform composition" expressly conveys that the formula (I) describes the overall, uniform composition of the positive electrode active material as a whole. This is consistent with the specification's TEM/SAED data showing that the embodiments exhibit a uniform laminar structure, and with the explicit disclosure that Zn is homogeneously incorporated into the lattice rather than forming surface oxides or localized secondary phases. Specifically, the specification's XRD analysis expressly states that "the zinc ion is doped uniformly into the material rather than generating oxides on the surface or producing local by-products" (Specification, XRD Analysis section). This language supports that Zn is incorporated uniformly into the material and is not merely present as surface zinc oxide or localized by-products, which is consistent with the interpretation that the claimed composition is substantially uniform throughout the bulk. Furthermore, the specification's TEM/SAED analysis confirms that "all the embodiments including Embodiment 1, Embodiment 2, Embodiment 3 and Embodiment 4 exhibit a uniform laminar structure" (Specification, TEM/SAED section), which is wholly consistent with a substantially uniform composition throughout the bulk. In addition, the specification's summary expressly states that "by using the manufacturing method for the positive electrode active material, a uniform and stable laminar structure can be produced." The disclosed co-precipitation method, in which Mn, Ni, and Zn salts are introduced together to form a precursor followed by heat treatment, further supports that the claimed composition concerns the material as a whole rather than a separately formed surface layer. Accordingly, the amended claim language finds support in the specification as filed.
"Throughout the bulk of the material" specifies that the claimed composition characterizes the bulk material as a whole, rather than merely an isolated surface layer or coating. In materials science, "bulk" refers to the interior volume of a material as distinguished from its surface. This language directly forecloses the Examiner's alternative argument that Gunji's surface layer part - viewed in isolation - might satisfy the claim limitation: Gunji's positive electrode active material is, by Gunji's own description, a composite particle in which the core and the surface layer have different compositions. Gunji paragraph [0029] expressly states: "A surface and an inner part have different compositions." Accordingly, Gunji's material cannot satisfy the limitation "substantially uniform composition throughout the bulk of the material."
"Substantially" provides appropriate flexibility, recognizing that minor, inevitable compositional fluctuations inherent in the co- precipitation synthesis process do not negate the homogeneous nature of the material.
Furthermore, the term "positive electrode active material" in Claim 1 necessarily refers to the complete particle - core and surface layer together - not to any isolated sub-region thereof. Gunji itself consistently describes its positive electrode active material as a composite structure comprising a core part and a surface layer part (see e.g., Gunji Abstract, [0013], [0029]). Gunji's surface layer part, therefore, is not and cannot be an independent "positive electrode active material" within the meaning of the present claims.”
Remarks, p. 5-7
The examiner respectfully traverses as follows:
Firstly, as the examiner interprets the shell composition of Gunji to be the same material as the claimed positive electrode active material, the composition of Gunji also has a substantially uniform composition throughout the bulk of the material.
Further, the limitation “substantially identical throughout the bulk of the material” is not supported in the specification as disclosed above in the 35 U.S.C. 112(a) rejection. While the applicant points to the specification’s XRD analysis which states “the zinc ion is doped uniformly into the material rather than generating oxides on the surface or producing local by-products”, this language supports zinc being uniformly dispersed, but not the composition as a whole being substantially identical throughout the bulk of the material.
Applicant further points to the disclosure stating all the embodiments “exhibit a uniform laminar structure” as support. However, this provides support for a uniform structure, not the composition of the structure.
Applicant further argues:
“2.2. Gunji's Normalization Constraint Is Not a Physical Stoichiometric Constraint; the Specific Fixed Stoichiometry of the Claimed Formula Is Not Taught by Gunji
The Examiner argues that the constraints "b/c < 1" and "a+b+c+d = 1" in Gunji render the variables b, c, and d mutually dependent, and that this dependence is comparable to the stoichiometric constraint in the present claims. Applicant respectfully submits that this argument conflates two fundamentally different types of constraints.
Gunji's constraint "a+b+c+d = 1" is nothing more than a mathematical normalization condition: it states that the mole fractions of all metal elements sum to unity, which is a definitional requirement of any compositional formula and conveys no physical information about the actual amounts of transition metals present. Critically, because parameter a varies freely from 0.05 to 0.33, the total transition metal content b+c+d =
1-a is not fixed but fluctuates between 0.67 and 0.95. By contrast, the claimed formula imposes a physically meaningful stoichiometric design in which all three of the following conditions hold simultaneously:
The Li content is fixed at exactly 1.2 (constant);
" The total transition metal content (Ni + Mn + Zn) is fixed at exactly 0.8 (constant); and
" The Mn content is expressed as 0.8-x-y, meaning it is directly and simultaneously determined by both the Ni content (x) and the Zn content (y).
These three conditions together define a highly specific compositional architecture that is nowhere taught or suggested in Gunji. With respect to the Li content in particular: Gunji's formula contains Li in the amount of 1+a, spanning a broad range from 1.05 to 1.33. The Examiner selected a = 0.2, yielding Li = 1.2, merely to construct a numerical overlap with the claimed formula. However, Gunji provides no teaching, preference, or motivation that would direct a person of ordinary skill in the art to specifically select Li = 1.2 over any other value in Gunji's broad range. The Examiner's selection of a = 0.2 is therefore a textbook example of impermissible hindsight reasoning.”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
Whether the constraints are exactly the same, the fact remains that Gunji teaches constraints that overlap with the composition of the presently claimed. Therefore, the composition is taught by Gunji.
Applicant further argues:
“2.3. Gunji's Vast Parameter Space Cannot Be Navigated to the Claimed Stoichiometry Through Finite Experimentation; No Reasonable Expectation of Success Exists
The Examiner contends that because Gunji's formula overlaps with
the claimed formula, a person of ordinary skill in the art would be motivated to select values within Gunji's ranges that happen to satisfy the claimed stoichiometry, and would have a reasonable expectation of success in doing so. Applicant respectfully submits that this contention fundamentally mischaracterizes the scope of Gunji's disclosure and the degree of experimentation that would be required.
Gunji's parameter space is vast: a spans 0.05 to 0.33, b spans 0 to
0.45, c spans 0.30 to 0.75, and d spans 0 to 0.3, subject only to the constraints b/c < 1 and a+b+c+d = 1. The number of possible compositions within this multi-dimensional parameter space is effectively unlimited. A person of ordinary skill in the art starting from Gunji's disclosure would have no rational basis, guidance, teaching, or motivation to navigate this enormous parameter space toward the specific combination in which (i) Li = 1.2, (ii) Ni + Mn + Zn = 0.8, and (iii) Mn = 0.8-x-y - all simultaneously. Systematic exploration of Gunji's parameter space to arrive at this specific stoichiometric design would require essentially unlimited experimentation without any expectation of success, let alone a reasonable one. The Examiner's approach is therefore the very definition of impermissible hindsight reconstruction: only by working backward from the present invention's claims can one identify, from Gunji's vast and undifferentiated parameter space, the specific numerical values that happen to overlap with the claimed formula. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983).”
Remarks, p. 9-10
The examiner respectfully traverses as follows:
While applicant argues there is no reasonable expectation of success that the formula taught by Gunji would be capable of forming the claimed composition due to the vast parameter space, the fact remains that as Gunji teaches a formula that overlaps with the claimed formula (i.e., includes values and elements that fall within the claimed ranges and elements), Gunji teaches it is possible to form a composition using those elements and any value in the ranges taught so long as they are within the constraints.
Further, it is the Examiner’s position that hindsight was not used given the disclosure of Gunji itself teaches the ranges for a composition that overlaps with the claimed composition.
Applicant further argues:
“2.4. Unexpcted Results Further Support Non-Obviousness
The specification of the present application provides experimental data demonstrating that Zn doping in accordance with the claimed formula yields unexpectedly superior cycling performance compared to undoped materials:
…
As shown above, the incorporation of Zn resulted in a dramatic
increase in cycling stability: from 84.7% capacity retention (no Zn) to 99.1% at y = 0.011, and even to 108% at y = 0.023. Such unexpected and remarkable improvements in cycling performance were neither disclosed nor predicted in Gunji, and constitute strong objective evidence of non- obviousness. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
3. Applicant acknowledges the Examiner's observation that the experimental data does not cover the entire claimed range of x and y values (0 < x < 0.8 and 0 < y < 0.1). Applicant respectfully submits, however, that even the data that is of record demonstrates the unexpected nature of the Zn-doping effect and is further supports non-obviousness when considered together with the structural and compositional distinctions discussed above. If the Examiner requires additional data covering a broader range of x and y values, Applicant respectfully requests an Examiner Interview to discuss the specific showing that would be needed in order to place the application in condition for allowance.”
Remarks, p. 10-11
The examiner respectfully traverses as follows:
The data to show advantageous effects by incorporation of Zn in accordance with the claimed formula in the present invention is not persuasive for the following reasons.
The data does not show using the upper- and lower-ends of the ranges for x values of 0 < x < 0.8 and y values of 0 < y < 0.1. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges of x and y values.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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