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 1-12 in the reply filed on 2/11/2026 is acknowledged. The traversal is on the ground(s) that the patent statutes authorize, but do not require, the USPTO to restrict an application to one invention if two or more independent and distinct inventions are claimed in one application and that there is a related field of technology of all the inventive groups. This is not found persuasive because, as explained in the Requirement for Restriction mailed on 1/08/2026, the search burden required to examine both groups would be excessive for multiple reasons, including that the method claims of Group II would require a different search than the product claims of Group I.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 35 USC 119(a)-(d) or (f).
Information Disclosure Statement
Information Disclosure Statements (IDS) submitted 3/30/2023, 11/01/2023, 6/04/2024, and 5/29/2026 have been received and considered by the examiner.
Claim Interpretation
All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
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.
Claim 8 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 8 is unclear because it lists the metal hydroxide particles as comprising alumina. However, alumina is aluminum oxide (and therefore is not a metal hydroxide particle), so it is unclear how the metal hydroxide particle can comprise alumina.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. US-20120288761-A1 (hereinafter “Park”) in view of Lee et al. US-20200168877-A1 (hereinafter “Lee”) and Nakamura et al. US-20170358818-A1 (hereinafter “Nakamura”).
Regarding Claim 1, Park discloses a composite particle for a non-aqueous electrolyte rechargeable battery, the composite particle comprising metal hydroxide particles and conductive particles in Fig. 1 (see Examples 1 and 10, abstract, and paragraphs [0010]-[0018], [0044], and [0057]). Park teaches composite particles formed by bonding aluminum hydroxide and acetylene black in Example 10 (see paragraphs [0044] and [0057]), which are the same materials used in Example 1 of the instantly filed application (see paragraph [0116] of the instantly filed application).
In same field of endeavor of metal hydroxide particles in batteries (see abstract), Lee discloses composite particles comprising aluminum hydroxide and a phosphoric acid surface treatment (see abstract and paragraphs [0001], [0015], [0059], [0064], and [0099]).
Further, in the same field of endeavor of metal hydroxide particles in batteries (see abstract), Nakamura discloses using a surface modified aluminum hydroxide particle in a battery electrode to improve cycle characteristics by suppressing side reactions and that the processing agent is not limited (see paragraphs [0009]-[0012] and [0079]-[0080]). So, a skilled artisan would be capable of combining the teachings of Lee and Nakamura and using phosphoric acid as a surface treatment for the composite particles of Park. As such, a skilled artisan is capable of forming composite particles comprising aluminum hydroxide and acetylene black with a surface treatment of phosphoric acid, as disclosed in the instantly filed application in Example 1 (see paragraphs [0116] and [0119] of the instantly filed application).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the composite particles of Park wherein the aluminum hydroxide particles have a phosphoric acid surface treatment, as disclosed by Lee and Nakamura, in order to improve cycle characteristics by suppressing side reactions.
Park, Lee, and Nakamura are silent on wherein a volume resistivity of the composite particle at the time of about 60 MPa pressurization is greater than or equal to about 0.10 Ωcm and less than or equal to about 4 × 104 Ωcm, wherein an endothermic amount of the composite particle between about 50° C to about 250° C in differential scanning calorimetry is greater than or equal to about 150 J/g and less than or equal to about 500 J/g, and wherein an amount of desorbed P2 (MS1) of the composite particle from about 80° C to about 1400° C by thermal desorption gas mass spectrometry (TDS-MS) is greater than or equal to about 300 × 10-6 mol/g and less than or equal to about 3000 × 106 mol/g.
Regarding the measured properties, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. V. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a newuse, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Furthermore, where claimed and prior art products are identical or substantially identical in structure or composition or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Furthermore, if a composition is physically the same, it must have the same properties (see MPEP 2112.01).
Regarding Claim 2, modified Park discloses the composite particle of claim 1 (see rejection of claim 1 above).
Park is silent on wherein an amount of desorbed H2O (MS2) of the composite particle from about 80° C to about 200° C as determined by a thermal desorption gas mass spectrometry (TDS-MS) is greater than or equal to about 30 × 106 mol/g and less than or equal to about 1500 × 106 mol/g, and a desorption gas amount ratio (MS1/MS2) satisfies Formula (1): 0.5≤MS1/MS2≤5.0--- (1) .
However, it would be obvious to one of ordinary skill in the art to expect that modified Park’s product comprises the same desorption properties based on the rationale that the composition taught by modified Park and the claimed product are substantially identical (see MPEP 2112.01).
Regarding Claim 3, modified Park discloses the composite particle of claim 1 (see rejection of claim 1 above).
Modified Park is silent on wherein a ratio (AD / AG) of a peak area (AD) around 1350 cm-1 and a peak area (AG) around 1580 cm-1 measured by Raman spectroscopy of the composite particle is greater than or equal to about 0.5 and less than or equal to about 3.5, and a peak full width at half maximum (G′-FWHM) around 2680 cm-1 measured by Raman spectroscopy of the composite particle is greater than or equal to about 60 cm-1 and less than or equal to about 150 cm-1.
However, where the claimed and prior art products are identical or substantially identical in structure or composition or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Furthermore, if a composition is physically the same, it must have the same properties (see MPEP 2112.01).
Regarding Claims 4-5, modified Park discloses the composite particle of claim 1 (see rejection of claim 1 above).
Park and Lee are silent on wherein a specific surface area (BET) of the composite particle is greater than or equal to about 8 m2/g and less than or equal to about 600 m2/g.
However, Nakamura discloses the specific surface area of the surface-modified aluminum hydroxide is typically, for example, not less than 0.5 m2/g and not more than 50 m2/g and the specific surface area of the surface-modified aluminum hydroxide can be measured by the BET method (see paragraphs [0088]). This overlaps and therefore renders obvious the claimed range of a specific surface area (BET) of the composite particles being greater than or equal to about 8 square meter per gram (m²/g) and less than or equal to about 150 m²/g. A skilled artisan would recognize this as a typical and appropriate size for aluminum hydroxide particles in a battery.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the composite particles of Park wherein a specific surface area (BET) of the composite particles being greater than or equal to about 8 square meter per gram (m²/g) and less than or equal to about 150 m²/g, as disclosed by Nakamura, as it is taught as being a typical and appropriate size for metal hydroxide particles in a battery.
Park, Lee, and Nakamura are silent on a specific surface area (BET1) of the composite particle calculated based on an adsorption isotherm measured by adsorbing water vapor is greater than or equal to about 8 m2/g and less than or equal to about 600 m2/g, and a specific surface area (BET2) of the composite particle calculated based on an adsorption isotherm measured by adsorbing nitrogen is greater than or equal to about 8 m2/g and less than or equal to about 600 m2/g and wherein a specific surface area ratio (BET1/BET2) satisfies Formula (2): 0.2≤BET1/BET2≤5.0 ---(2).
However, , since the composite particle of modified Park is substantially the same as the instant application, a skilled artisan would expect the product of modified Park to comprise the specific surface in comparable ranges for nitrogen adsorption and water vapor adsorption.
Regarding Claims 6-7, modified Park discloses the composite particle of claim 1 (see rejection of claim 1 above).
Modified Park is silent on wherein an amount of desorbed CH4 (MS3) of the composite particle from about 80° C to about 1400° C by thermal desorption gas mass spectrometry (TDS-MS) is greater than or equal to about 30 × 10-6 mol/g and less than or equal to about 1000 × 10-6 mol/g, and an amount of desorbed CH3OH (MS4) of the composite particle from about 80° C to about 1400° C by TDS-MS is greater than or equal to about 10 × 10-6 mol/g and less than or equal to about 3000 × 10-6 mol/g and wherein an amount of desorbed C6H6 (MS5) of the composite particle from about 80° C to about 1400° C by TDS-MS is greater than or equal to about 1 × 10-6 mol/g and less than or equal to about 4000 × 10-6 mol/g.
Regarding the desorption properties, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. V. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a newuse, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Furthermore, where claimed and prior art products are identical or substantially identical in structure or composition or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Furthermore, if a composition is physically the same, it must have the same properties (see MPEP 2112.01).
Regarding Claim 8, modified Park discloses the composite particle of claim 1 (see rejection of claim 1 above). Park further discloses the metal hydroxide particles comprise aluminum hydroxide (see paragraphs [0044] and [0057]).
Regarding Claim 9, modified Park discloses the composite particle of claim 1 (see rejection of claim 1 above). Park further discloses a positive electrode for a non-aqueous electrolyte rechargeable battery, the positive electrode comprising a positive electrode mixture layer comprising: a plurality of composite particles each being in the form of the composite particle according to the aforementioned claim 1 (see paragraphs [0035]-[0036] and [0044]-[0045]). Park also discloses including the composite particles in a range of 0.05 to 10% by weight in the electrode, relative to the electrode active material and teaches a specific embodiment where the composite particles are included in an amount 0.5% by weight relative to the cathode active material (see paragraphs [0036], [0045], and [0057]). This value falls within and therefore anticipates the composite particles being in a range of greater than or equal to about 0.1 wt% and less than or equal to about 5.0 wt% based on a total weight, 100 wt%, of the positive electrode mixture layer.
Regarding Claim 10, modified Park discloses the composite particle of claim 1 (see rejection of claim 1 above). Park further discloses a negative electrode for a non-aqueous electrolyte rechargeable battery, the negative electrode comprising a negative electrode mixture layer comprising: a plurality of composite particles each being in the form of the composite particle according to the aforementioned claim 1 (see paragraphs [0035]-[0036] and [0050]). Park also discloses including the composite particles in a range of 0.05 to 10% by weight in the electrode, relative to the electrode active material and teaches a specific embodiment where the composite particles are included in an amount 1.0% by weight relative to the anode active material (see paragraphs [0036] and [0050]). This value falls within and therefore anticipates the composite particles being in a range of greater than or equal to about 0.1 wt% and less than or equal to about 5.0 wt% based on a total weight, 100 wt%, of the negative electrode mixture layer.
Regarding Claim 11, modified Park discloses the positive electrode of claim 9 (see rejection of claim 9 above). Park further discloses a non-aqueous electrolyte rechargeable battery, comprising a positive electrode, a negative electrode, a separator, and a non-aqueous electrolyte, wherein the positive electrode is the positive electrode of claim 9 (see paragraphs [0035]-[0037] and [0044]-[0045]).
Regarding Claim 12, modified Park discloses the positive electrode of claim 10 (see rejection of claim 10 above). Park further discloses a non-aqueous electrolyte rechargeable battery, comprising a positive electrode, a negative electrode, a separator, and a non-aqueous electrolyte, wherein the negative electrode is the negative electrode of claim 10 (see paragraphs [0035]-[0037] and [0050]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYDNEY L KLINE whose telephone number is (703)756-1729. The examiner can normally be reached Monday-Friday 8:00am-5:00pm.
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/S.L.K./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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