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/Restriction and Claim Status
Applicant’s election without traverse of Invention I, Claims 1 and 2 in the reply filed on 10 June 2026 is acknowledged. Claims 3–8 are withdrawn from further consideration pursuant to CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 1 and 2 are 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.
Claims 1 and 2 are indefinite because they recite the claim element “a specific surface area of the positive plate for the nonaqueous rechargeable battery after manufacturing the positive plate for the nonaqueous rechargeable battery”, and it is unclear from the claims whether the “specific surface area” recited here is meant to be the specific surface area of all of the recited components of the positive plate, i.e. a combination of the positive electrode substrate and the positive electrode mixture layer, or the specific surface area of the positive electrode mixture layer alone (i.e. without the positive electrode substrate). This second interpretation seems to be more consistent with typical measurements in the same field and also appears to be supported by e.g. [0076] of the instant specification which reads in part “Specifically, the specific surface area of the positive plate 30 after manufacturing the positive plate 30 is the specific surface area of the positive electrode mixture layer 32 of the positive plate after manufacturing the positive plate”. For the purposes of this office action, the second interpretation is applied, i.e. the above claim element has been instead interpreted as “a specific surface area of the positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery”.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsuyoshi et al. (JP 2018147644 A; see attached machine translation).
Regarding Claims 1 and 2, Matsuyoshi discloses a positive plate (see positive electrode 11, [0012], FIG. 4, 5) for a nonaqueous rechargeable battery (see energy storage element 1, [0012], FIG. 1–3, 6, which can be a non-aqueous electrolyte secondary battery, [0011]), comprising:
a positive electrode substrate (see metal foil 111, [0014], FIG. 4, 5); and
a positive electrode mixture layer (see active material layer 112, [0014], FIG. 4, 5) that contains at least a positive electrode active material (see active material, [0014], i.e. active material particles, [0016]).
Regarding wherein particles of the positive electrode active material having a specific surface area of a range of 1.5 m2/g to 3.0 m2/g prior to manufacture of the positive plate for the nonaqueous rechargeable battery are used, and
a difference between a specific surface area of the positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery and the specific surface area of the particles of the positive electrode active material prior to manufacture of the positive plate for the nonaqueous rechargeable battery is in a range of 0.66 m2/g to 1.8 m2/g,
these limitations are considered to be product-by-process limitations, and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to Applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292
(Fed. Cir. 1983), MPEP § 2113).
In the instant case, the above limitations are directed to a method of making the positive electrode active material, specify properties relating to starting materials used in that method of making, and are therefore not given patentable weight. As such, it is the Examiner’s interpretation that the actual claimed product appears to be a positive plate (or a nonaqueous rechargeable battery comprising a positive plate) comprising a positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery having a specific surface area equal to the sum of:
1) the specific surface area of the particles of the positive electrode active material prior to manufacture of the positive plate for the nonaqueous rechargeable battery, i.e. 1.5 m2/g to 3.0 m2/g, and
2) the difference between a specific surface area of the positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery and the specific surface area of the particles of the positive electrode active material prior to manufacture of the positive plate for the nonaqueous rechargeable battery, i.e. 0.66 m2/g to 1.8 m2/g.
In other words, the product of Claim 1 for which patentability should be determined in the instant case appears to be a positive electrode mixture layer having a specific surface area of a range of 2.1 m2/g to 4.8 m2/g (the minimum value of this range being the sum of the two minimum values of the ranges recited above, and the maximum value of this range being the sum of the two maximum values of the ranges recited above). Such a product is anticipated because Matsuyoshi discloses wherein the specific surface area of the positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery is 3.20 m2/g (see specific surface area s of the positive electrode active material layer of Test Example 1, [0070]).
Further regarding Claim 2, Matsuyoshi further discloses a nonaqueous rechargeable battery (see energy storage element 1, [0012], FIG. 1–3, 6, which can be a non-aqueous electrolyte secondary battery, [0011]) comprising the positive plate as set forth above.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuyoshi et al. (JP 2018147644 A; see attached machine translation).
Regarding Claims 1 and 2, Matsuyoshi discloses a positive plate (positive electrode 11, [0012], FIG. 4, 5) for a nonaqueous rechargeable battery (see energy storage element 1, [0012], FIG. 1–3, 6, which can be a non-aqueous electrolyte secondary battery, [0011]), comprising:
a positive electrode substrate (see metal foil 111, [0014], FIG. 4, 5); and
a positive electrode mixture layer (see active material layer 112, [0014], FIG. 4, 5) that contains at least a positive electrode active material (see active material, [0014], i.e. active material particles, [0016]).
Matsuyoshi does not disclose wherein particles of the positive electrode active material having a specific surface area of a range of 1.5 m2/g to 3.0 m2/g prior to manufacture of the positive plate for the nonaqueous rechargeable battery are used, and
a difference between a specific surface area of the positive electrode mixture layer for the nonaqueous rechargeable battery after manufacturing the positive plate for the nonaqueous rechargeable battery and the specific surface area of the particles of the positive electrode active material prior to manufacture of the positive plate for the nonaqueous rechargeable battery is in a range of 0.66 m2/g to 1.8 m2/g.
However, these limitations are considered to be product-by-process limitations, and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 227 USPQ 964,966).
In the instant case, the above limitations are directed to a method of making the positive electrode active material, specify properties relating to starting materials used in that method of making, and are therefore not given patentable weight.
Nonetheless, it is submitted that Matsuyoshi does disclose ([0022]) wherein particles of the positive electrode active material having a specific surface area of a range of 1.2 m2/g to 2.0 m2/g prior to manufacture of the positive plate for the nonaqueous rechargeable battery are used, and further discloses ([0019]) that the specific surface area of the positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery ranges from 2.5 m2/g to 4.0 m2/g. It can therefore be understood that Matsuyoshi discloses a difference between a specific surface area of the positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery and the specific surface area of the particles of the positive electrode active material prior to manufacture of the positive plate for the nonaqueous rechargeable battery is in a range of 0.5 m2/g (calculated by subtracting the maximum possible specific surface area of the particles of the positive electrode active material prior to manufacture of the positive plate for the nonaqueous rechargeable battery, 2.0 m2/g, from the minimum possible specific surface area of the positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery, 2.5 m2/g) to 2.8 m2/g (calculated by subtracting the minimum possible specific surface area of the particles of the positive electrode active material prior to manufacture of the positive plate for the nonaqueous rechargeable battery, 1.2 m2/g, from the maximum possible specific surface area of the positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery, 4.0 m2/g).
When the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I). It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portions of the ranges for the specific surface area of the particles of the positive electrode active material used to manufacture the positive plate for the nonaqueous rechargeable battery, and the difference between the specific surface area of the positive electrode mixture layer after manufacturing the positive plate for the nonaqueous rechargeable battery and the specific surface area of the particles of the positive electrode active material prior to manufacture of the positive plate for the nonaqueous rechargeable battery, with a reasonable expectation that such selection would successfully result in a functional positive plate.
Further regarding Claim 2, Matsuyoshi further discloses a nonaqueous rechargeable battery (see energy storage element 1, [0012], FIG. 1–3, 6, which can be a non-aqueous electrolyte secondary battery, [0011]) comprising the positive plate as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA MARIE FEHR, Ph.D. whose telephone number is (571)270-0860. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM EST.
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725
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