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
Applicants' election with traverse of Species Ia (claims 1, 2, and 7) in the reply filed on September 29, 2025 is acknowledged. The traversal is on the ground(s) that the product and process are not patentably distinct, and there would be no serious search or examination burden to examine both Groups I and II together due to similar classification and limitations. This is not found persuasive because consideration of both Groups I and II (“product” and “process of making”, respectively) would provide a burdensome search for the method claims of Group II due to a requirement of additional consideration of process steps to search and examine, namely the process steps that would not be required in a search for the components having different particle diameters of the product claims of Group I (also in referring to section 2 of the restriction requirement mailed August 4, 2025). Moreover, prior art applicable to one invention would not likely be applicable to the other invention (also refer to section 3 of the restriction requirement mailed August 4, 2025) due to the distinction between “product” and “process of making” claims discussed above. In addition, the three species (Ia, Ib, and Ic) are not only distinct from one another, but would also provide a burdensome search and examination based on the differing parameters provided for each of the species, as set forth in section 4 of the restriction requirement mailed August 4, 2025.
The requirement is still deemed proper and is therefore made FINAL.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
In this instance, the abstract recites the phrase that can be implied “of the present invention” (in the 1st line), as well as the legal term “comprising” (in the 1st line).
Claim Objections
Claim 1 is objected to because of the following informalities: in the 2nd line of claim 1, add “said positive electrode active material” before “comprising” for clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1, 2, and 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2020-35625 A, of which a complete copy of the Japanese document with a machine translation was provided with the Information Disclosure Statement dated February 6, 2023.
Regarding independent claim 1 and claim 7, JP ‘625 discloses a positive electrode active material and a non-aqueous electrolyte secondary battery that includes the positive electrode active material (see pages 2-5 of translation; and Tables 1-3), in which the positive electrode active material comprises a lithium-nickel-composite oxide containing lithium and nickel, wherein primary particles constituting each of secondary particles of the lithium-nickel-composite oxide have a variation coefficient of span of 17% or less (see the last paragraph on page 2 of translation), with the span being represented by a formula (α):
(D190 – D110)/D150 (α) in which (in referring to the last paragraph on page 2 of translation; and Tables 1-3):
D110 is a particle diameter corresponding to 10% of an integrated value in a number standard-particle diameter distribution of primary particle size;
D150 is a particle diameter corresponding to 50% of the integrated value in the number standard-particle diameter distribution of primary particle size, and the D150 is an average particle diameter; and
D190 is a particle diameter corresponding to 90% of the integrated value in the number standard-particle diameter distribution of primary particle size.
With regard to the variation coefficient of span of 17% or less, it is noted that the formula (α) of applicants’ claim 1 is represented in JP ‘625 as Y = (D90 – D10)/D50, with parameter D1 of applicants’ formula (α) being indistinguishable from parameter D in the formula of JP ‘625 (in referring to the last paragraph on page 2 of translation; and Tables 1-3). In referring to the variation coefficient of span being 17% or less, it is noted that JP ‘625 disclosed that (the molar ratio of D10 – the molar ratio of D90) / the molar ratio of D50 is suppressed to a range of between 0 and 0.08 (see the 1st paragraph on page 3 of translation).
With regard to the variation coefficient of span value range to be “17% or less”, this open-ended range would be anticipated and/or obvious since this range would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the variation coefficient of span range in view of JP ‘625, as set forth in MPEP 2144.05. “In the case where claimed ranges “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).
Regarding claim 2, JP ‘625 discloses a composition that is represented by the formula LiaNibM1-bO2, in which M is at least one element other than Li, Ni, and O, including the M is at least one of Co, Al, and W (see the last paragraph on page 2 of translation). Although JP ‘625 does not explicitly disclose exact values of a and b (in the ranges 0.95 ≤ a ≤ 1.40 and 0.2 < b < 1), one of ordinary skill in the art would have recognized that these broad ranges would be anticipated and/or obvious since the ranges would be readily contemplated by one of ordinary skill in the art. In addition, the elemental composition of each of Li, Ni, M, and O would be derived from mol% and wt% values of the elements in Tables 1-3 of JP ‘625, such that the amounts of the elements would be subject to routine experimentation with a reasonable expectation of success, for the purpose of obtaining a positive electrode active material for a non-aqueous electrolyte secondary battery that has excellent conductivity (see the first full paragraph on page 2 of translation). In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of JP ‘625, as set forth in MPEP 2144.05. “In the case where claimed ranges “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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 December 17, 2025