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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 20, 2026 has been entered.
Summary
The Applicant’s arguments and claim amendments received July 20, 2026 have been entered into the file. Currently, claims 1, 3, 5-7, and 9 are amended; and claims 2, 4, and 8 are cancelled; resulting in claims 1, 3, 5-7, and 9-11 pending for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1, and by dependency claims 3, 6-7, and 9-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a lithium composite oxide particle having an average particle diameter of 5 to 20 µm, does not reasonably provide enablement for any positive electrode active material.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
The breadth of the claims;
The nature of the invention;
The state of the prior art;
The level of one of ordinary skill;
The level of predictability in the art;
The amount of direction provided by the inventor;
The existence of working examples; and
The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Regarding claim 1, upon applying this test to the claims, it is believed that undue experimentation would be required because of the following:
Breadth of the claims: Independent claim 1 broadly recites that the average value of the major axis length of a pore observed in a lithium composite oxide particle is 0.038d-0.15d, wherein d is the average particle diameter of the lithium composite oxide particle, but does not further limit the average particle diameter of the lithium composite oxide particle. By providing the ratio of the major axis length of a pore to the average particle diameter without providing either measurement, the scope of the particle and pore size is broad. The scope of claim 1 is significantly broader than a lithium composite oxide particle having an average particle diameter of 5-20 µm as specified in dependent claim 5.
Level of predictability in the art: The level of predictability in the art is low, as there are many options for average particle diameters of lithium composite oxide particles used in positive electrode active materials. While it is acknowledged that one of ordinary skill in the art may be able to provide a lower limit on the possible average particle diameters, the upper limit is not clearly defined by the art, and results in many possible values.
Amount of direction provided by the inventor: The inventor specifies in dependent claim 5 that the lithium composite oxide particle has an average particle diameter of 5-20 µm. Page 8 of the instant specification additionally discloses that the average particle diameter of the secondary particle may be 5-20 µm, however, the instant specification does not provide any direction on a positive electrode material meeting the limitations of claim 1 that does not meet the limitation of claim 5.
Existence of working examples: The working examples provided (Examples 1-6) in the instant specification include lithium composite oxide particles having an average particle diameter of 13.0-13.1 µm. There are no additional examples providing direction on how to achieve the claimed pore diameter to average particle diameter ratio with smaller or larger lithium composite oxide particles.
Quantity of experimentation needed: The quantity of experimentation necessary to meet the claimed pore diameter to average particle diameter ratio with a lithium composite oxide particle having a diameter outside of the range claimed in claim 5 is excessive. While one of ordinary skill in the art may be able to consider a lower limit, the range on the upper limit of the diameter is very high.
Regarding claims 3, 6-7, and 9-11, these claims are rejected based on their dependency on claim 1.
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.
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.
Claims 1, 3, 5-6, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yura, et al. (JP 2014067546 A).
Regarding claim 1, Yura teaches a positive electrode active material for a lithium secondary battery (¶ [0001], Ln. 1-3). Yura teaches that the positive electrode active material follows the formula LiMO2, wherein M may include Co, Ni, Mn, and Al (¶ [0073], Ln. 1-5). For example, in Examples 1-10, the positive electrode active material is LiNi0.8Co-0.15Al0.05O2, capable of lithium intercalation/deintercalation and meeting the limitations of claimed Formula 1 wherein M1 is Al, w=1, x=0.15, y=0.05, z=0, and α=0 (¶ [0125], Ln. 1-4). Yura teaches that the porosity of the positive electrode active material particles is 3-30% (¶ [0068], Ln. 1-2) and that the desired porosity is achieved using a pore-forming agent (¶ [0071], Ln. 1-3). Specifically, Yura teaches the use of a spherical pore-forming agent in Examples 1-3, 6-8, and 11 (Table 1). As Yura teaches the use of a spherical pore-forming agent, the major axis length (b) and minor axis length (a) of the pores would be the same, resulting in a b/a ratio of 1, within the claimed range of 1-3. The average particle diameter of the positive electrode active material particles (d) is 1-100 µm (¶ [0044], Ln. 1-2) and the average pore diameter (b) is 0.1-5 µm, resulting in pore diameters ranging from 0.001d-5d, overlapping the claimed range of 0.038d-0.15d (¶ [0048], Ln. 3-5). More specifically, in Examples 1-10 the average pore diameter (b) ranges from 0.01d-0.36d (Table 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Yura teaches that the porosity of the positive electrode active material is 3-30% in order to improve charge and discharge characteristics without compromising capacity (¶ [0068], Ln. 1-4). Yura does not expressly teach the average area of pores observed from a cross-sectional SEM of the positive electrode active material and therefore does not expressly teach that the average area is 0.02-1.0 µm2.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the average area of pores of Yura to be within 0.02-1.0 µm2 based on the disclosure in Yura. One of ordinary skill in the art would recognize that Yura teaches a positive electrode active material that may have a low porosity and small pore diameter. Based on the teaching that porosity may be 3-30% and the examples providing pore diameters as low as 0.2 µm (Table 2), one of ordinary skill in the art would find it obvious to form a positive electrode active material with low porosity and small pore size based on the teachings of Yura, and therefore would find it obvious to include a positive electrode active material with an average area of pores ranging from 0.02-1.0 µm2. One of ordinary skill in the art would be motivated to make this modification in order to increase the capacity of the electrode.
Regarding claim 3, Yura teaches all of the limitations of claim 1 above, including that the pores are formed using a pore-forming agent (¶ [0071], Ln. 1-3). As Yura teaches the use of a spherical pore-forming agent, the proportion of pores with a b/a ratio of 1 would be greater than 50%, meeting the limitation that the proportion of pores with a b/a ratio of greater than 3 is less than 50%.
Regarding claim 5, Yura teaches all of the limitations of claim 1 above. Yura further teaches that the average particle diameter of the positive electrode active material particles is 1-100 µm, and more preferably 3-50 µm, overlapping the claimed range of 5-20 µm (¶ [0062], Ln. 1-3). Specifically, Examples 1-11 include particle diameters ranging from 13-17 µm (Table 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 6, Yura teaches all of the limitations of claim 1 above, including that the porosity (occupancy rate of the pores) of the positive electrode active material is 3-30%, overlapping the claimed range of 0.3-3.5% (¶ [0068], Ln. 1-4). Yura teaches the void ratio (porosity) of the positive electrode active material is determined by determining a void portion using a cross-sectional image of the positive electrode active material and dividing the area of the void portion by the sum of the area of the void portion and positive electrode material (¶ [0105], Ln. 1-7). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 9, Yura teaches all of the limitations of claim 1 above. Yura further teaches that the surface of the positive electrode active material particles may be coated with another material (¶ [0145], Ln. 1-2). Yura gives examples of coatings including alumina, zirconia, alumina fluoride, lithium cobalt oxide, and carbon (¶ [0145], Ln. 5-7). The coatings of Yura meet the limitations of claimed Formula 2 wherein a=1, M3 is Co, b=1, and c=2 (lithium cobalt oxide); a=0, M3 is Al, b=2, c=3 (alumina); and a=0, M3 is Zr, b=1, c=2 (zirconia).
Regarding claims 10-11, Yura teaches a lithium-ion secondary battery including a positive electrode plate, negative electrode plate, separator, electrolyte, and battery case (¶ [0036], Ln. 4-6). The positive electrode plate includes a positive electrode active material layer (¶ [0037], Ln. 1-2), wherein the positive electrode active material includes the positive electrode active material particles meeting the limitations of claim 1 above (¶ [0043], Ln. 8-12).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yura, et al. (JP 2014067546 A) as applied to claim 1 above, and further in view of Woo, et al. (KR 20180094567 A), cited on IDS.
Regarding claim 7, Yura teaches all of the limitations of claim 1 above. Yura does not expressly teach the BET specific surface area of the positive electrode active material and therefore does not expressly teach that the BET specific surface area is 0.2-2.0 m2/g.
Woo teaches a positive electrode active material for a lithium secondary battery including a lithium composite oxide core and a surface portion located on the core portion (¶ [0022], Ln. 1-3). Woo teaches that the lithium composite oxide core may include nickel, cobalt, and manganese (¶ [0042], Ln. 1). Additionally, Woo teaches that the BET specific surface area of the positive electrode active material is 0.1-1.2 m2/g (¶ [0047], Ln. 1-2), specifically teaching positive electrode active materials in Examples 1-6 having BET specific surface areas ranging from 0.3-1.2 m2/g (Table 1). Woo teaches that the BET specific surface area is directly related to the area where lithium ions are oxidized and reduced through the electrolyte, and therefore as BET increases, the reaction area with the electrolyte increases (¶ [0076], Ln. 1-3, 8-9).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the BET specific surface area of the positive electrode active material of Yura to be low based on the teachings of Woo. One of ordinary skill in the art would be motivated to target a specific surface area between 0.3 and 1.2 m2/g based on the examples provided by Woo, such that the area where lithium ions are oxidized and reduced through the electrolyte is low. One of ordinary skill in the art would want to keep this area low in order to suppress side reactions between the positive electrode active material and the electrolyte.
Response to Arguments
Response-Claim Objections
The previous objection to claim 1 for informalities is withdrawn in light of the Applicant’s amendments to claim 1 in the response filed July 20, 2026.
Response-Claim Rejections – 35 U.S.C. 102 and 103
In light of the Applicant’s amendment to claim 1 to narrow the ratio of pore diameter to average particle diameter and cancellation of claim 4, the previous rejections of claims 1, 3, 6, and 10-11 under 35 U.S.C. 102 over Yu-Mi, et al. (JP 2012004109 A), claims 4-5 under 35 U.S.C. 103 over Yu-Mi, and claims 7-9 under 35 U.S.C. 103 over Yu-Mi in view of Woo, et al. (KR 20180094567 A) are withdrawn.
Applicant’s arguments filed July 20, 2026 with respect to amended claim 1 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 filed July 20, 2026 with respect to unexpected results have been fully considered but they are not persuasive. The Applicant argues, see pages 9-10 of the remarks, that controlling the pore area and size exhibits unexpected results, pointing to Examples 1-2 and 4-6 in comparison to Comparative Examples 1-5. This argument is not persuasive. In looking to Examples 1-2 and 4-6, the average pore area ranges from 0.7-1.0, resulting in charge capacities ranging from 225.1-227.5 mAh/g, discharge capacities of 210.0-211.7 mAh/g, charge/discharge efficiencies of 92.7-93.7% and retentions of 93.8-94.8%. Similarly, Example 3, which has a pore area outside of the claimed range and Comparative Examples 1-5 result in charge capacities ranging from 223.8-227.6 mAh/g, discharge capacities of 207.3-211.1 mAh/g, charge/discharge efficiencies of 92.4-93.1% and retentions of 89.7-94.3%. The results from the examples with pore areas outside of the claimed range are comparable to and in some instances better than the examples pointed to. Thus, it is not clear from the data presented how a pore area within the claimed range results in improved electrochemical properties and stability. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance (MPEP 716.02(b)(I)). Further, it is noted that the results relied upon are obtained from a lithium secondary battery, whereas claim 1 is drawn to a positive electrode active material. The results must be commensurate in scope with the claimed invention (MPEP 716.02(d)).
Conclusion
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/SARAH J JACOBSON/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
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