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 .
Status of Claims and Other Notes
Claims 1–19 and 21–35 are pending.
Claims 1–19 and 21 are being treated on their merits.
Claims 22–35 are withdrawn from consideration.
Claim 20 is canceled.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The paragraph numbers cited in this Office Action in reference to the instant application are referring to the paragraph numbering of the PG-Pub of the instant application. See US 2023/0357048 A1.
Drawings
The drawings were received on 02 February 2026. These drawings are acceptable.
Applicants' amendments have overcome the objections to the drawings.
Specification
Applicants' amendments have overcome the objections to the specification.
Claim Rejections - 35 USC § 112
Claims 1–19 and 21 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 recites the limitation "greater than 0 weight percent to 2 weight percent, …, of a compound." It is unclear if the required amount is greater than 0 weight percent and less than and equal to 2 weigh percent, or greater than any number between 0 weight percent and 2 weight percent. The Office recommends the limitation "greater than 0 weight percent and less than or equal to 2 weight percent, …, of a compound" or "greater than 0 weight percent and up to 2 weight percent, …, of a compound," which is similar to the amendment presented in currently amended claim 13.
Claim 2 recites the limitation "greater than 0 weight percent to 2 weight percent, …, of a compound." It is unclear if the required amount is greater than 0 weight percent and less than and equal to 2 weigh percent, or greater than any number between 0 weight percent and 2 weight percent. The Office recommends the limitation "greater than 0 weight percent and less than or equal to 2 weight percent, …, of a compound" or "greater than 0 weight percent and up to 2 weight percent, …, of a compound," which is similar to the amendment presented in currently amended claim 13.
Claim 3 recites the limitation "greater than 0 weight percent to 2 weight percent, …, of a compound." It is unclear if the required amount is greater than 0 weight percent and less than and equal to 2 weigh percent, or greater than any number between 0 weight percent and 2 weight percent. The Office recommends the limitation "greater than 0 weight percent and less than or equal to 2 weight percent, …, of a compound" or "greater than 0 weight percent and up to 2 weight percent, …, of a compound," which is similar to the amendment presented in currently amended claim 13.
Claim 4 is directly dependent from claim 1 and includes all the limitations of claim 1. Therefore, claim 4 is also 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 5 recites the limitation "greater than 0 weight percent to 2 weight percent, …, of a compound." It is unclear if the required amount is greater than 0 weight percent and less than and equal to 2 weigh percent, or greater than any number between 0 weight percent and 2 weight percent. The Office recommends the limitation "greater than 0 weight percent and less than or equal to 2 weight percent, …, of a compound" or "greater than 0 weight percent and up to 2 weight percent, …, of a compound," which is similar to the amendment presented in currently amended claim 13.
Claim 6 recites the limitation "greater than 0 weight percent to 2 weight percent, …, of a compound." It is unclear if the required amount is greater than 0 weight percent and less than and equal to 2 weigh percent, or greater than any number between 0 weight percent and 2 weight percent. The Office recommends the limitation "greater than 0 weight percent and less than or equal to 2 weight percent, …, of a compound" or "greater than 0 weight percent and up to 2 weight percent, …, of a compound," which is similar to the amendment presented in currently amended claim 13.
Claim 7 recites the limitation "greater than 0 weight percent to 2 weight percent, …, of a compound." It is unclear if the required amount is greater than 0 weight percent and less than and equal to 2 weigh percent, or greater than any number between 0 weight percent and 2 weight percent. The Office recommends the limitation "greater than 0 weight percent and less than or equal to 2 weight percent, …, of a compound" or "greater than 0 weight percent and up to 2 weight percent, …, of a compound," which is similar to the amendment presented in currently amended claim 13.
Claims 8–19 are directly dependent from claim 1 and include all the limitations of claim 1. Therefore, claims 8–19 are also 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 21 recites the limitation "the method of claim 1" and includes all the limitations of claim 1. Therefore, claim 21 is also 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 Rejections - 35 USC § 103
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (US 2014/0367610 A1, hereinafter Noguchi).
Regarding claim 21, Noguchi discloses a cathode active material, made by a method comprising:
adding a lithium compound to a precipitate to form a mixture (see mixed, [0068]); and
heat-treating the mixture under conditions effective to provide the cathode active material (see fired, [0068]),
wherein the cathode active material comprises at least one phase having a spinel structure (TABLE 1, [0072]; TABLE 2, [0073]; TABLE 4, [0077]; TABLE 5, [0082]);
wherein the cathode active material comprises Li in a Li:metal ratio of 1:1.9 to 1:2.1 (TABLE 1, [0072]; TABLE 2, [0073]; TABLE 4, [0077]; TABLE 5, [0082]),
wherein the cathode active material comprises nickel, and Co, Mn, Al, Cu, Fe, Mg, Na, Ca, Zn, F, Si, Li, or a combination thereof (TABLE 1, [0072]; TABLE 2, [0073]; TABLE 4, [0077]; TABLE 5, [0082]).
Noguchi does not explicitly disclose:
contacting a mixed metal composition with water to form a first solution, the mixed metal composition comprising nickel, and greater than 0 weight percent to 2 weight percent, based on the total weight of the mixed metal composition, of a compound comprising Co, Mn, Al, Cu, Fe, Mg, Na, Ca, Zn, F, Si, Li, or a combination thereof;
adding a salt of nickel, a salt manganese, or a combination thereof to the first solution to provide a second solution;
adding a cosolvent to the second solution to provide a third solution;
combining the third solution and a basic solution to form a precipitate.
Claim 21 recite the limitation "the method of claim 1." Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 See MPEP §§ 2113 and 2114. The instant application discloses the method of claim 1 produces a cathode active material represented by Li1+xM2+yO4-zAz wherein M is Ni and Mn (e.g., [0038]). The limitation "method of claim 1" defines cathode active material. Therefore, claim 21 may be unpatentable even though the cathode active material of Noguchi is made by a different process. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same... [footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). See MPEP § 2113.
Allowable Subject Matter
Claims 1–19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record is Xie et al. (CN 103633392 A, hereinafter Xie).
Xie discloses a method of making a cathode active material, the method comprising contacting a mixed metal composition with water to form a first solution (see mixed solution, [0050]; a 1 mol/L solution of hydrochloric acid inherently contains water), the mixed metal composition comprising nickel and manganese (see mixed solution, [0050]), and a compound comprising Co, Mn, Al, Cu, Fe, Mg, Na, Ca, Zn, F, Si, Li, or a combination thereof (see concentration, [0051]; adding a salt of nickel, a salt of manganese, or a combination thereof to the first solution to provide a second solution (see nickel chloride …, [0052]); adding a cosolvent to the second solution to provide a third solution (see glycerin, [0052]); combining the third solution and a basic solution to form a precipitate (see mixed solution, [0053]); adding a lithium compound to the precipitate to form a mixture (see lithium carbonate, [0077]); and heat-treating the mixture under conditions effective to provide the cathode active material (see heated, [0077]).
Xie does not disclose, teach, or suggest the following distinguishing feature:
A method of making a cathode active material, the method comprising a mixed metal composition comprising greater than 0 weight percent to 2 weight percent, based on the total weight of the mixed metal composition, of a compound comprising Co, Al, Cu, Fe, Mg, Na, Ca, Zn, F, Si, Li, or a combination thereof; wherein the cathode active material comprises at least one phase having a spinel structure; wherein the cathode active material comprises Li in a Li:metal ratio of 1:1.9 to 1:2.1.
Response to Arguments
Applicant's arguments with respect to claim 21 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.
Applicant's arguments with respect to the 35 U.S.C. § 112(b) rejections and rejoinder have been fully considered but they are not persuasive.
Applicants argue "greater than 0 to [value]" is used to indicate an amount greater than 0, but not greater than the upper value (P12/¶2). It is noted that the features upon which applicant relies (i.e., greater than 0, but not greater than [value]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants argue claims 22–35 should be rejoined because they are allowable (P18/¶3). Claims 22–35 have not been treated on their merits; and do not include all the limitations of an allowable claim. See MPEP § 804.01. Therefore, claims 22–35 are not suitable for rejoinder.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Luo (CN 104659438 A) discloses a method of making a cathode active material, the method comprising contacting a mixed metal composition with water to form a first solution (see mixed solution, [0050]; a 6 mol/L solution of hydrochloric acid inherently contains water), the mixed metal composition comprising nickel (see positive electrode material solution, [0071]), and greater than 0 weight percent to 2 weight percent, based on the total weight of the mixed metal composition, of a compound comprising Co, Mn, Al, Cu, Fe, Mg, Na, Ca, Zn, F, Si, Li, or a combination thereof (see iron, [0071]; see manganese, [0072]; see calcium, [0072]; see zinc, [0072]; see cobalt, [0073]; see magnesium, [0074]); adding a salt of nickel, a salt of manganese, or a combination thereof to the first solution to provide a second solution (see adding, [0075]); combining the third solution and a basic solution to form a precipitate (see mixed solution, [0076]).
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 Sean P Cullen, Ph.D. whose telephone number is (571)270-1251. The examiner can normally be reached Monday to Thursday 6:00 am to 4:00 pm CT, Friday 6:00 am to 12:00 pm CT.
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/Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725