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 .
Information Disclosure Statement
The information disclosure statement filed 03/09/2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the Non-Patent Literature Document “search report of Taiwan application no.: 111141275” does not include a publication date. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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).
In the instant formula, when x = 0.3 and y = 0.02 (i.e., corresponds to claim 2 and claim 4), 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:
“Claim 1 recites a positive electrode active material "having an average composition
expressed by the following formula (I):"
Li1.2NixMn0.8-x-yZnyO2 (I), wherein x and y satisfy 0 <x< 0.8 and 0 <y<0.1
The term "average composition" unambiguously means that Formula (I) describes the bulk, overall composition of the positive electrode active material as a whole – i.e., the active material is homogeneous in composition throughout its volume.
In stark contrast, Gunji discloses a positive electrode active material having a core- shell structure comprising (1) a core part and (2) a surface layer part formed on the core part. Gunji expressly states in paragraph [0029]: "Primary particles of a positive electrode active material are particles each having a core part and a surface layer part formed on the core part. A surface and an inner part have different compositions." (Emphasis added.)
Gunji's formula Lia+1NibMncAdO2+α – where A is an element other than Li, Ni, and Mn (including Zn), with 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, and -0.1 <a< 0.1 – is explicitly described as representing only the surface layer part of Gunji's core-shell particles. See Gunji, paragraphs [0036] and [0038].
Therefore, the Examiner's assertion that Gunji's formula numerically overlaps with the claimed Formula (I) is legally and technically flawed. A numerical overlap between a surface layer formula and an average composition formula does not establish that Gunji teaches a material with the claimed average composition. Gunji's core-shell material and the presently claimed homogeneous material are fundamentally different in both structure and concept. Gunji does not teach, suggest, or render obvious a positive electrode active material in which the entire bulk of the material has the average composition expressed by Formula (I).”
Remarks, p. 5-6
The examiner respectfully traverses as follows:
Firstly, while applicant argues that the term “average composition” means it is the bulk, overall composition for the positive electrode and that the active material is homogeneous in its composition, there is no definition in the specification for “average composition”, nor does the specification explicitly state that the composition is homogeneous.
As there is no definition for an “average composition”, the examiner interprets the limitation to mean a positive electrode active material that includes the composition expressed by formula (I). Therefore, the positive electrode active material of Gunji meets the claim limitation as it includes a composition that overlaps with the claimed composition expressed by formula (I).
Further, even if “average composition” meant the bulk, overall composition, the surface material of Gunji would meet the claim limitation as it is made entirely of the composition that overlaps with the claimed composition.
Applicant further argues:
“The claimed formula Li1.2NixMn0.8-x-yZnyO2 embodies a specific stoichiometric constraint: the Mn content is expressed as "0.8-x-y," meaning it is directly and simultaneously dependent on both the Ni content (x) and the Zn content (y).
Consequently, the total transition metal content (Ni + Mn + Zn) is constrained to
be exactly 0.8 at all times.
Gunji's formula Lia+1NibMncAdO2+α does not impose any such constraint. Parameters b (Ni), c (Mn), and d (element A, e.g., Zn) are fully independent variables within their respective ranges, with the only constraint being a+b+c+d = 1 and various range limits. There is no teaching in Gunji that the Mn content should be determined by or linked to both the Ni and Zn contents in the manner set forth in the present claims.
The Examiner's approach of post-hoc selecting the values a = 0.2, b = 0.3, c = 0.48, d = 0.02, and a = 0 from Gunji's broad parameter space and observing that they happen to equal a specific point within the claimed range is the very definition of impermissible hindsight reconstruction. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). Gunji provides no motivation, rationale, or reasonable expectation of success for selecting this specific combination of values in order to arrive at a material having the stoichiometric relationship expressed in Formula (I).”
Remarks, p. 4
The examiner respectfully traverses as follows:
While applicant argues that because Gunji’s composition does not have an Mn content that is directly and simultaneously dependent on both the Ni content and Zn content, the fact remains that Gunji teaches an overall composition that overlaps with the claimed range. Further, the fact that there are constraints on the composition in Gunji including b/c < 1 and a+b+c+d = 1, means that they are not independent variables and rather dependent on each other.
Further, while applicant argues that the examiner used hindsight reconstruction by selecting values for a, b, c, and d and observing that they are equal to a specific point in the claimed range, the examiner only used these values as an example to prove that the overall composition overlaps with the claimed composition. The examiner has not stated that the composition of Gunji anticipates the composition of the claimed composition, but rather that composition of Gunji overlaps with the composition of the claimed composition. As the composition of Gunji overlaps with the claimed composition and includes ranges for each element that allows for this overlap, one of ordinary skill in the art would choose values in the ranges set forth by Gunji which includes values that would form a composition that overlaps with the claimed composition. Therefore, the ranges provided by Gunji provide the motivation, rationale, and reasonable expectation of success for any value chosen in those ranges as long as they also follow the constraints set forth by Gunji.
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).
Applicant further argues:
“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 demonstrated above, the incorporation of Zn in accordance with the claimed formula resulted in a dramatic increase in cycling stability: from 84.7% capacity retention (no Zn) to 99.1% at y = 0.01, and even to 108% at y = 0.02. 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).”
Remarks, p. 5
The examiner respectfully traverses as follows:
While applicant argues that unexpected and remarkable improvements in cycling performance were neither disclosed nor predicted in Gunji, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further, the data to show advantageous effects by Zn doping in the present invention is not persuasive for the following reasons.
The data does not show using the upper and lower ends of the claimed x and y ranges, i.e., 0 < x < 0.8 and 0 < y < 0.1, rather it only shows x values of 0.14, 0.15, 0.23, and 0.22, and y values of 0.011 and 0.023 (Specification, Table 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 range of the x and y values, i.e., 0 < x < 0.8 and 0 < y < 0.1.
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 Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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/C.M.C./Examiner, Art Unit 1732
/KELING ZHANG/Primary Examiner, Art Unit 1732
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