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 .
Election/Restrictions
Applicant's election with traverse of Claims 1-7 in the reply filed on 02/09/26 is acknowledged. The traversal is on the ground(s) that the restriction requirement is rendered moot in view of the amendments to the Claims (i.e. all Claims ultimately depend from independent Claim 1) (Pages 6-7 of Remarks).
Applicant’s amendments and corresponding arguments are persuasive. In view of Applicant’s amendments to the Claims, the restriction requirement is withdrawn.
Response to Amendment
Currently, the pending Claims are 1-18. The examined Claims are 1-18, with Claims 8 and 13 being amended.
Claim Objections
Claim 2 is objected to because of the following informalities: for sake of clarity, “wherein said size of said plurality of nanocrystals have an average crystallize size greater than…” should be written as “wherein said average crystallite size of said plurality of nanocrystals is greater than…” Appropriate correction is required.
Claim 8 is objected to because of the following informalities: (1) the word “Wherein” should be written as “wherein,” and (2) for sake of consistency with other dependent Claims, the preamble should be written as “The particle of claim 1 comprising:” Appropriate correction is required.
Claim 13 is objected to because of the following informalities: for sake of consistency, “x-ray diffraction” should be written as “X-ray diffraction.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 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 recites that a concentration of cobalt in said grain boundary is greater than a concentration of cobalt “in said nanocrystals.” Claim 1 is rendered particularly indefinite insofar as it is unclear if “in said nanocrystals” is in reference to the adjacent nanocrystals (i.e. the adjacent nanocrystals are the “said nanocrystals”) or in reference to the plurality of nanocrystals (i.e. the plurality of nanocrystals are the “said nanocrystals”). For purposes of examination, either of the aforementioned interpretations will be considered as meeting the limitations of the Claim.
Claim 2 is 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 2 recites the limitation "said size.” There is insufficient antecedent basis for this limitation in the claim (it is noted that the Claims initially refer to an “average crystallite size” and not just a “size”).
Claim 3 is 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 3 recites the limitation "said size.” There is insufficient antecedent basis for this limitation in the claim (it is noted that the Claims initially refer to an “average crystallite size” and not just a “size”).
Claim 4 is 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 4 recites the limitation "said size.” There is insufficient antecedent basis for this limitation in the claim (it is noted that the Claims initially refer to an “average crystallite size” and not just a “size”).
Claims 8-12 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 8 recites the limitation "the formula.” There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites that a concentration of cobalt in said grain boundary is greater than a concentration of cobalt “in said nanocrystals.” Claim 8 is rendered particularly indefinite insofar as it is unclear if “in said nanocrystals” is in reference to the adjacent nanocrystals (i.e. the adjacent nanocrystals are the “said nanocrystals”) or in reference to the plurality of nanocrystals (i.e. the plurality of nanocrystals are the “said nanocrystals”). For purposes of examination, either of the aforementioned interpretations will be considered as meeting the limitations of the Claim.
Claim 9 is 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.
The term “about” in each instance in Claim 9 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In other words, Claim 9 is rendered particularly indefinite insofar as it is unclear how far away a given value can be from a given one of the instantly claimed values (e.g. how far below 0.25 atomic percent or how far above 17 atomic percent) and still be considered “about” equal to said given one of the instantly claimed values.
Claim 10 is 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 10 recites said one of more elements residing in a Li layer, a “M layer,” or both, of the nanocrystals. Claim 10 is rendered particularly indefinite insofar as it is unclear if an “M layer” is a layer made of (or made from, or comprising, or consists essentially of, etc.) whatever constitutes “M” (as in “M” from Li1+xMO2+y), or if an “M layer” is something distinct from such a layer.
Claims 13-18 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 13 recites that a concentration of cobalt in said grain boundary is greater than a concentration of cobalt “in said nanocrystals.” Claim 13 is rendered particularly indefinite insofar as it is unclear if “in said nanocrystals” is in reference to the adjacent nanocrystals (i.e. the adjacent nanocrystals are the “said nanocrystals”) or in reference to the plurality of nanocrystals (i.e. the plurality of nanocrystals are the “said nanocrystals”). For purposes of examination, either of the aforementioned interpretations will be considered as meeting the limitations of the Claim.
Claim 14 is 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 14 recites the limitation "said step of calcining.” There is insufficient antecedent basis for this limitation in the claim (it is noted that while Claim 13 recites “calcining,” Claim 13 does not recite “a step” of calcining or that the method comprises explicit “steps” in the first place).
The term “about” in each instance in Claim 14 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In other words, Claim 14 is rendered particularly indefinite insofar as it is unclear how far away a given value can be from a given one of the instantly claimed values (e.g. how far below 25°C or how far above 450°C) and still be considered “about” equal to said given one of the instantly claimed values.
Claim 16 is 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 16 recites the limitation "said average size.” There is insufficient antecedent basis for this limitation in the claim (it is noted that the Claims initially refer to an “average crystallite size” and not just an “average size”).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6, 8, 11-13, 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 7, and 12 of U.S. Patent No. 11,158,853.
Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1 and 7, when considered together (i.e. Claim 7 depends from Claim 1), recite an electrochemically active polycrystalline particle which comprises, at least, all of the recited limitations of instant Claims 1-4, 6, 8-12. Furthermore, although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1, 12, and 17, with considered together (i.e. Claim 17 depends from Claim 12, wherein Claim 12 depends from Claim 1), recite a method of manufacturing an electrochemically active polycrystalline particle which comprises, at least, all of the recited limitations of instant Claims 13, 15-18
Claims 1-6, 8-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 8-12 of U.S. Patent No. 11,682,762.
Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 8-12, when considered together in accordance with the dependencies outlined in said Claims, recite an electrochemically active polycrystalline particle which comprises, at least, all of the recited limitations of instant Claims 1-6, 8-12.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (and rewritten to overcome all applicable objections and/or rejections under 35 U.S.C. 112(b), as previously described).
The closest prior art reference relevant to at least Claim 7 is Ofer et al. (US 2014/0197357).
Ofer teaches an electrochemical cell (100) comprising: an anode (102), an electrolyte ([0063]) and a cathode (101) (Figure 2, [0062]), the cathode comprising an active cathode material comprising a plurality of particles comprising a plurality of crystallites (i.e. primary particles) ([0025], [0060]), the plurality of crystallites each comprising a first composition including Li, Ni and O ([0036]), and a grain boundary between adjacent crystallites comprising a second composition having a layered α-NaFeO2 cubic structure ([0007]). Ofer teaches a process to achieve Co enrichment at grain boundaries, wherein a base composite LiMNiCoO (where M is, for example, Mg or Mn) is added to a solution of cobalt nitrate heated to 60ºC and stirred for 30min followed by spray drying ([0079]-[0080]).
However, Claim 1 requires, among all other limitations, that the plurality of nanocrystals have an average crystallite size of less than or equal to 105 nanometers as measured by X-ray diffraction.
Ofer neither teaches nor suggests a plurality of nanocrystals having an average crystallite size, as measured by X-ray diffraction, in accordance with the instantly claimed range. At best, Ofer discloses ranges for a length, a width, and a thickness of a crystallite, wherein each of said characteristics correspond to a crystallite size along a single axis as opposed to an average crystallite size calculated by taking average sizes along all lattice directions. Furthermore, Ofer is silent with respect to processing method(s) which would inherently produce a plurality of nanocrystals exhibiting, among other features, the claimed average crystallite size. Therefore, because Ofer neither teaches nor suggests the limitations of independent Claim 1, Ofer neither teaches nor suggests dependent Claim 7.
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (and rewritten to overcome all applicable objections and/or rejections under 35 U.S.C. 112(b), as previously described).
The closest prior art reference relevant to at least Claim 14 is Ofer et al. (US 2014/0197357).
Ofer teaches an electrochemical cell (100) comprising: an anode (102), an electrolyte ([0063]) and a cathode (101) (Figure 2, [0062]), the cathode comprising an active cathode material comprising a plurality of particles comprising a plurality of crystallites (i.e. primary particles) ([0025], [0060]), the plurality of crystallites each comprising a first composition including Li, Ni and O ([0036]), and a grain boundary between adjacent crystallites comprising a second composition having a layered α-NaFeO2 cubic structure ([0007]). Ofer teaches a process to achieve Co enrichment at grain boundaries, wherein a base composite LiMNiCoO (where M is, for example, Mg or Mn) is added to a solution of cobalt nitrate heated to 60°C and stirred for 30 min followed by spray drying ([0079]-[0080]).
However, Claim 13 requires, among all other limitations, that the plurality of nanocrystals have an average crystallite size of less than or equal to 85 nanometers as measured by X-ray diffraction.
Ofer neither teaches nor suggests a plurality of nanocrystals having an average crystallite size, as measured by X-ray diffraction, in accordance with the instantly claimed range. At best, Ofer discloses ranges for a length, a width, and a thickness of a crystallite, wherein each of said characteristics correspond to a crystallite size along a single axis as opposed to an average crystallite size calculated by taking average sizes along all lattice directions. Furthermore, Ofer is silent with respect to processing method(s) which would inherently produce a plurality of nanocrystals exhibiting, among other features, the claimed average crystallite size. Therefore, because Ofer neither teaches nor suggests the limitations of independent Claim 1 or Claim 13, Ofer neither teaches nor suggests dependent Claim 14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW W VAN OUDENAREN whose telephone number is (571)270-7595. The examiner can normally be reached 7AM-3PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Martin can be reached at 5712707871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW W VAN OUDENAREN/Primary Examiner, Art Unit 1728
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