DETAILED ACTION
Claim Analysis
The present application contains one active independent claim(s) (claim 1) and fifteen active dependent claims (claims 2 - 16).
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 21 of copending Application No. 18/812,072 (PGPUB 2024/0413344 A1 to Kubota et al.). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, Kubota et al. claims a secondary battery (claim 1) comprising: an electrode formed of an electrode active material and an electrode-constituting material (claim 1: ‘electrode active material’ and ‘conductive material’), wherein at least a part of the electrode active material is covered with a covering material (claim 11), and at least a part of the electrode-constituting material is also covered with the covering material (claim 1).
Regarding claim 2, Kubota et al. meets the claimed limitation (claims 1 and 9).
Regarding claims 3 – 7, Kubota et al. meets the claimed limitations on the covering material (claims 2 – 8).
Regarding claims 8 – 10, Kubota et al. meets the claimed limitations on the secondary and primary particles (claim 16).
Regarding claim 11, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the covering material weight ratio through routine experimentation, especially given the teaching in Kubota et al. regarding the desire to control the amount of the covering material (claim 1). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 12, Kubota et al. discloses the claimed material (claim 9).
Regarding claim 13, Kubota et al. disclose the claimed positive electrode (claim 17).
Regarding claim 14, the Examiner takes Official Notice that these classes of materials are conventional active materials for positive electrodes. For support of the Examiner’s position of Official Notice, see cited and applied art below.
Regarding claim 15, Kubota et al. meets this claimed limitation for the same reasons as set forth in claim 1.
Regarding claim 16, the Examiner takes Official Notice that secondary batteries have positive and negative electrodes as conventional in the battery arts. For support of the Examiner’s position of Official Notice, see cited and applied art below.
Claims 1 – 5 and 7 - 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 17/504,631 (PGPUB 2022/0037639 A1 to Inoue). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, Inoue claims a secondary battery (claim 16) comprising: an electrode formed of an electrode active material and an electrode-constituting material (claims 1 and 15: ‘electrode active material’ and ‘conductive particles’), wherein at least a part of the electrode active material is covered with a covering material (claim 1), and at least a part of the electrode-constituting material is also covered with the covering material (claim 15).
Regarding claim 2, Inoue meets the claimed limitation (claim 15).
Regarding claims 3 – 5 and 7, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the type of covering material through routine experimentation, especially given the teaching in Inoue (claims 3 – 5) and the general knowledge in the art regarding known coating materials applied to electrode structures in lithium ion secondary batteries1. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 8 - 10, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the use of agglomerations of primary particles into secondary particles and of the location of the covering material through routine experimentation, especially given the teaching in Inoue (claims 1 and 6) and the general knowledge in the art regarding the known use of primary/secondary particle agglomerates as applied to electrode structures in lithium ion secondary batteries2. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the covering material weight ratio through routine experimentation, especially given the teaching in Inoue regarding the desire to control the thickness of the covering material (claim 2). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 12, the Examiner takes Official Notice that these classes of materials are conventional conductive materials for positive electrodes. For support of the Examiner’s position of Official Notice, see cited and applied art below.
Regarding claim 13, Inoue disclose the claimed positive electrode (claim 17).
Regarding claim 14, the Examiner takes Official Notice that these classes of materials are conventional active materials for positive electrodes. For support of the Examiner’s position of Official Notice, see cited and applied art below.
Regarding claim 15, Inoue meets these limitations for the same reasons as set forth in claim 1.
Regarding claim 16, the Examiner takes Official Notice that secondary batteries have positive and negative electrodes as conventional in the battery arts. For support of the Examiner’s position of Official Notice, see cited and applied art below.
Claim Objections
Claim 6 is objected to because of the following informalities: in line 1, the phrase “toclaim” should have a space (i.e. “… according to_claim 1, wherein…”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: in line 1, the phrase “toclaim” should have a space (i.e. “… according to_claim 1, wherein…”. 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.
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 pre-AIA the applicant regards as the invention.
Claim 16 recites the limitation "the electrodes" (i.e. plural) in line 2. There is insufficient antecedent basis for this limitation in the claim as claim 1 only refers to a single electrode. For the purpose of evaluating the prior art, the Examiner has interpreted this claim as if it recited “… to claim 1, wherein the secondary battery comprises at least two electrodes, and wherein the electrodes are…”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 15 depends, already recites that the materials are the same (“… covered with the covering material”). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
(a)(2) The claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 – 5, 7 and 13 – 16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Christensen et al. (U.S. Patent No. 11,527,754 B2 and corresponding PGPUB 2021/0143430 A1 and WO publication, WO 2019/063431).
Regarding claim 1, Christensen et al. discloses a secondary battery (Title; Abstract; and at least column 1) comprising: an electrode formed of an electrode active material (ibid: ‘active electrode particles’ and ‘ionically conductive particles’) and an electrode-constituting material (ibid: ‘electrically conductive particles’), wherein at least a part of the electrode active material is covered with a covering material (ibid and see also col. 5, line 58 bridging col. 6, line 2), and at least a part of the electrode-constituting material is also covered with the covering material (ibid).
Regarding claim 2, Christensen et al. meets the claimed limitation for the reasons set forth above.
Regarding claims 3 – 5 and 7, Christensen et al. discloses encompassing materials for the coating layer (at least col. 2, lines 33 – 37).
Regarding claim 13, Christensen et al. disclose the claimed positive electrode (col. 8, line 14 bridging col. 9, line 8).
Regarding claim 14, Christensen et al. discloses the claimed materials (col. 4, lines 40 – 67).
Regarding claim 15, Christensen et al. meets these limitations for the same reasons as set forth in claim 1.
Regarding claim 16, Christensen et al. disclose the claimed electrodes (col. 8, line 14 bridging col. 9, line 8).
Claim Rejections - 35 USC § 103
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 8 – 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Christensen et al. as applied above, and further in view of Koyama et al. (U.S. Patent No. 11,705,551 B2 and corresponding PGPUB 2021/0193983 A1).
Christensen et al. is relied upon as described above.
Regarding claims 8 -10, Christensen et al. fail to disclose forming the active material as primary particles agglomerated into secondary particles wherein the covering material meets the claimed structural limitations in claims 9 and 10.
However, the Examiner deems that a skilled artisan would readily appreciate that forming secondary particles meeting the claimed limitations is art recognized as an equivalent structure for active materials in electrodes as it provides for a porous structure allowing for increased surface area for ion migration. This type of structure is taught in Koyama et al. (Figure 7 and relevant disclosure). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, using active materials that are coated secondary particles formed from agglomeration of primary particles versus coated, single, non-agglomerated particles are functional equivalents in the field of active materials for electrodes in secondary batteries. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Christensen et al. to use active material particles and covering layers meeting the claimed limitations as taught by Koyama et al., as agglomerated active material particles with coating layers meeting the claimed limitations in terms of structural location are obvious to a skilled artisan as a known, functionally equivalent structure for active material particle material for use in secondary batteries.
Claims 11 and 12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Christensen et al. as applied above.
Christensen et al. is relied upon as described above.
Regarding claim 11, Christensen et al. fails to explicitly disclose the claimed wt% of the covering layer meeting the claimed limitations. Regarding claim 12, Christensen et al. discloses graphite (col. 5, lines 1 – 11) as a conductive material, but fails to explicitly disclose carbon black.
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the wt% of the covering layer meeting the claimed limitations through routine experimentation, especially given the teaching in Christensen et al. regarding the desire to control the thickness values of the coating layer (col. 5, lines 30 – 40). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the choice of conductive material, substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the Examiner takes Official Notice that carbon black and graphite are known functional equivalents in the field of conductive materials used in secondary battery electrodes3. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Christensen et al. to control the wt% of the covering material to meet the limitations of claim 11 and to use carbon black as a known functional equivalent to graphite for the conductive ‘electrode-constituting material’ for the reasons recited above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
February 23, 2026
1 For support of this Official Notice of ‘general knowledge’, see cited and applied art below regarding the different, known coating materials.
2 For support of this Official Notice of ‘general knowledge’, see cited and applied art below regarding the use of agglomerations of primary particles into porous, secondary particles in electrodes for improved lithium ion migration/surface area.
3 For support of the Examiner’s position of Official Notice, see pertinent prior art cited below; especially to Morozumi et al. (‘855 B2) (col. 14, lines 5 – 61).