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
This application contains claims 3-6 and 8-16 drawn to inventions nonelected with traverse. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144). See MPEP § 821.01.
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).
Response to Arguments
The examiner acknowledges the applicants’ amendment/response received by the USPTO on April 9, 2026. The amendments overcome prior objections to the abstract and claim 1. Claims 3-6 and 8-16 remain withdrawn from consideration as drawn to non-elected inventions, and the applicants are referred to above section 1 pertaining to these non-elected claims. Claims 1, 2, and 7 remain under consideration in the application.
Applicants' arguments filed April 9, 2026 have been fully considered but they are not persuasive.
With regard to the applicants’ remarks/arguments on pages 9-12 of the amendment/response, the applicants argue that JP ‘625 relates to secondary particles and not to the claimed primary particles. The examiner respectfully disagrees based on the broadest reasonable interpretation of the claimed invention. In referring to the “particle diameter” limitations of independent claim 1, the applicants only refer to primary particles and not to secondary particles. The examiner took these two terminologies to be interchangeable since the applicants did not explicitly claim both the primary particles and the secondary particles to be different. In this scenario, the examiner can call the secondary particle of the JP ‘625 reference to be the claimed primary particle, as interpreted in view of applicants’ invention. JP ‘625 discloses the claimed formula with the same particle size distribution, and therefore having a “variation coefficient of span of 17% or less” is merely based on routine experimentation to achieve the best result (in referring to the paragraph beginning with “With regard to the variation coefficient…” in the above 35 USC 102/103 rejection section.
In order to obtain more favorable consideration in overcoming the prior art rejection, the examiner suggests that the applicants incorporate one or more limitations that reflect teachings from paragraph [0021] of applicants’ specification, in order to distinctly claim both the primary particles and the secondary particles so that such limitation(s) can be distinguished over the broadest reasonable interpretation of the teachings of JP ‘625.
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 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 April 28, 2026
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