DETAILED ACTION
This is the first office action on the merits for 18/250,026, filed 4/21/2023, which is a national stage entry of PCT/KR2021/007492, filed 6/15/2021, which claims priority to Korean applications KR10-2021-0075646, filed 6/10/2021, and KR10-2020-0137613, filed 10/22/2020.
Claims 1-27 are pending; Claims 1-12 are considered herein.
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
Claims 13-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/21/2025.
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following references, which are not currently applied in a rejection.
U.S. Patent Application Publication 2005/0136331 A1: This reference teaches the following composition: Li4Ni3(P2O7)(PO4)2 (paragraph [0043]), which is similar to the compounds of the instant claims.
U.S. Patent Application Publication 2012/0235082 A1: This reference teaches the following composition: Li2Co0.5Ni0.5(P2O7) (paragraph [0007]), which is similar to the compounds of the instant claims.
Double Patenting
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, and 13-15 of U.S. Patent No. 12,046,752 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 6, and 13-15 of U.S. Patent No. 12,046,752 B2 teach all of the limitations of instant claims 1-10.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 12 of copending Application No. 18,739,751 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 6, 12 of copending Application No. 18,739,751 teach all of the limitations of instant Claims 1-10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 7 and 11-12 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.
Claim 7 recites “Li6Ti3Ni2(P2O7).” This composition is indefinite, because Claim 1 requires the subscript on the (P2O7) component to be 4. Therefore, the metes and bounds of Claim 7 are indefinite, because Li6Ti3Ni2(P2O7) appears to fall outside of the scope of Claim 1.
Claim 11 recites “wherein in a dQ/dV charge/discharge differential curve of a battery having an electrode including the compound of Formula 1, a dQ/dV peak voltage at which a maximum discharge curve area appears in a voltage range of 3.OV to 5.5V at a current of 0.025C is 4.7 V or higher with respect to Li/Li+.” The metes and bounds of this claim are indefinite, because it is unclear whether the properties in Claim 11 result merely from the electrode material of Claim 1, or from battery structures that are unclaimed. Claim 11 is further indefinite, because it is unclear whether battery structures are required to meet the claim, or whether the claim merely recites and intended use of the material of Claim 1 or an inherent property of the material of Claim 1.
Claim 12 recites “wherein in a dQ/dV charge/discharge differential curve of a battery having an electrode including the compound of Formula 1, a ratio (A2/A1) of an area (A2) of a discharge curve at 4.7V to 5.5V to an area (A1) of a discharge curve at 3.5V to 5.5V under conditions of a voltage of 3.OV to 5.5V is 0.4 or more.” The metes and bounds of this claim are indefinite, because it is unclear whether the properties in Claim 12 result merely from the electrode material of Claim 1, or from battery structures that are unclaimed. Claim 12 is further indefinite, because it is unclear whether battery structures are required to meet the claim, or whether the claim merely recites and intended use of the material of Claim 1 or an inherent property of the material of 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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sanz, et al. (Chem. Mater. 2000, 12, 671-676), as evidenced by Ito, et al. (U.S. Patent Application Publication 2021/0408531 A1) and further in view of Barker, et al. (U.S. Patent Application Publication 2004/0206938 A1).
In reference to Claim 1, Sanz teaches a composition, Li6Co5(P2O7)4 (Abstract, Table 4).
This disclosure teaches the limitations of Claim 1, of a composition comprising LiX(Ni1-yMy)z(P2O7)4, wherein 5≤x≤7 (i.e. 6) and 4≤z≤6 (i.e. 5).
This disclosure does not teach that the composition comprises Ni1-yMy-, wherein 0.2≤y<1. Instead, the composition corresponds to the instance in which M is Co and y is 1.
Evidentiary reference ITO teaches that Li6Co5(P2O7)4 can function as an electrode active material in a lithium battery (paragraph [0036]).
To solve the same problem of providing a lithium pyrophosphate comprising cobalt, Barker teaches that Ni and Co are both redox-active metals that can be used in combination in such a compound (paragraphs [0025]), and particular in a 1:1 ratio (paragraph [0079]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have formed the compound of Sanz to have a composition of 1:1 Ni:Co, based on the teachings of Barker. One of ordinary skill in the art would have had a reasonable expectation of success in this modification, because Barker teaches that Ni and Co are both redox-active metals that can be used in combination in a lithium pyrophosphate material in a 1:1 ratio (paragraph [0079]).
This modification results in the following composition: Li6(Ni1-yCoy)5 (P2O7)4, wherein y is 0.5, which teaches the limitations of Claim 1, wherein 0.2≤y<1 (i.e. 0.5).
This disclosure teaches the limitations of Claim 2, wherein M is Co.
This disclosure teaches the limitations of Claim 3, wherein M is Co.
This disclosure teaches the limitations of Claim 4, wherein 5.5≤x≤6.5 or 5.8≤x≤6.2 (i.e. 6), wherein 0.3≤y≤0.9 (i.e. 0.5), and wherein 4.8≤z≤5.2 or 4.9≤z≤5.1 (i.e. 5).
This disclosure teaches the limitations of Claim 5, wherein 5.8≤x≤6.2 (i.e. 6) and wherein 4.9≤z≤5.1 (i.e. 5).
This disclosure teaches the limitations of Claim 6, wherein the compound is represented by Formula 2, Lix(Ni1-yCoy)x(P2O7)4, wherein 5≤x≤7 (i.e. 6), 0.2≤y<1 (i.e. 0.5), and 4≤z≤6 (i.e. 5).
In reference to Claim 7, the composition of modified Sanz, Li6(Ni0.5Co0.5)5(P2O7)4, or Li6Ni2.5Co2.5 (P2O7)4 does not exactly correspond to any of the compositions in Claim 7.
However, as described above, Barker teaches that Ni and Co may be suitably used in combination within the lithium pyrophosphate material with a reasonable expectation of success, and does not limit the ratio of Ni and Co in the material.
Therefore, it is the Examiner’s position that one of ordinary skill in the art at the time the instant invention was filed would have been motivated to optimize the ratios of Ni and Co within the composition, in order to arrive at the desired structure and properties of the final material.
It is the Examiner’s position that this routine optimization would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at the claimed materials of Li6Ni2Co3(P2O7)4, Li6Ni3Co2(P2O7)4, Li6Ni1Co4(P2O7)4, and Li6Ni4Co1(P2O7)4 recited in Claim 7, without undue experimentation.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In reference to Claims 8-9, modified Sanz does not explicitly teach the limitations of Claims 8-9,
However, he teaches a composition that meets the limitations of Claim 1, as described above.
Sanz further teaches that the Li6Co5(P2O7)4 material has a triclinic crystal structure having a space group of p1 (Abstract).
Therefore, there is reasonable basis to conclude that the material of modified Sanz has a triclinic crystal structure having a space group of p1 (as recited in Claim 10), and that the structure of the material of modified Sanz is substantially identical to the material of the instant claims.
Consequently, it is the Examiner’s position that there is reasonable basis to conclude that the material of modified Sanz has the properties recited in Claims 8-9,
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
In reference to Claim 10, Sanz teaches that the Li6Co5(P2O7)4 material has a triclinic crystal structure having a space group of p1 (Abstract).
Therefore, there is reasonable basis to conclude that the material of modified Sanz has a triclinic crystal structure having a space group of p1, thus teaching the limitations of Claim 10.
In reference to Claims 11 and 12, these claims are indefinite, as described above. The following rejections represent the Examiner’s best understanding of the indefinite claim limitations.
However, it is the Examiner’s position that, if the limitations of Claims 11-12 are directed toward an intended use of the electrode active material, then the active material of Claim 1, as taught by modified Sanz, is capable of use in a device as required by Claims 11-12.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Alternatively, if the limitations of Claims 11-12 are directed toward a property of the claimed positive electrode material, then there is reasonable basis to conclude that the active material of Claim 1, as taught by modified Sanz, has the properties recited in Claims 11-12, because it teaches the compositional limitations of Claim 1.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Claims 1-7 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Iwata, et al. (U.S. Patent Application Publication 2020/0243839 A1), in view of Barker, et al. (U.S. Patent Application Publication 2004/0206938 A1).
In reference to Claim 1, Iwata teaches a composition, Li5.88Co5.06(P2O7)4 (paragraph [0026]).
This disclosure teaches the limitations of Claim 1, of a composition comprising LiX(Ni1-yMy)z(P2O7)4, wherein 5≤x≤7 (i.e. 5.88) and 4≤z≤6 (i.e. 5.06).
This disclosure does not teach that the composition comprises Ni1-yMy-, wherein 0.2≤y<1. Instead, the composition corresponds to the instance in which M is Co and y is 1.
To solve the same problem of providing a lithium pyrophosphate-type electrode active material (see, e.g., Barker, paragraph [0079]), Barker teaches that Ni and Co are both redox-active metals that can be used in combination in such a compound (paragraphs [0025]), and particular in a 1:1 ratio (paragraph [0079]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have formed the compound of Iwata to have a composition of 1:1 Ni:Co, based on the teachings of Barker. One of ordinary skill in the art would have had a reasonable expectation of success in this modification, because Barker teaches that Ni and Co are both redox-active metals that can be used in combination in a lithium pyrophosphate material in a 1:1 ratio (paragraph [0079]).
This modification results in the following composition: Li5.88(Ni1-yCoy)5.06(P2O7)4, wherein y is 0.5, which teaches the limitations of Claim 1, wherein 0.2≤y<1 (i.e. 0.5).
This disclosure teaches the limitations of Claim 2, wherein M is Co.
This disclosure teaches the limitations of Claim 3, wherein M is Co.
This disclosure teaches the limitations of Claim 4, wherein 5.5≤x≤6.5 or 5.8≤x≤6.2 (i.e. 5.88), wherein 0.3≤y≤0.9 (i.e. 0.5), and wherein 4.8≤z≤5.2 or 4.9≤z≤5.1 (i.e. 5.06).
This disclosure teaches the limitations of Claim 5, wherein 5.8≤x≤6.2 (i.e. 5.88) and wherein 4.9≤z≤5.1 (i.e. 5.06).
This disclosure teaches the limitations of Claim 6, wherein the compound is represented by Formula 2, Lix(Ni1-yCoy)x(P2O7)4, wherein 5≤x≤7 (i.e. 5.88), 0.2≤y<1 (i.e. 0.5), and 4≤z≤6 (i.e. 5.06).
In reference to Claim 7, the composition of modified Iwata, Li5.88(Ni0.5Co0.5)5.06(P2O7)4, or Li5.88Ni2.53Co2.53(P2O7)4 does not exactly correspond to any of the compositions in Claim 7.
However, it is the Examiner’s position that the teachings of modified Iwata render obvious the compositions of Li6Ni2Co3(P2O7)4 and Li6Ni3Co2(P2O7)4, recited in Claim 7.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 I. In the instant case, the claimed compositions Li6Ni2Co3(P2O7)4 and Li6Ni3Co2(P2O7)4, as recited in Claim 7, do not overlap with the taught composition of Li5.88Ni2.53Co2.53(P2O7)4, but are sufficiently close to the taught compound as to render the claimed compositions of Li6Ni2Co3(P2O7)4 and Li6Ni3Co2(P2O7)4 obvious.
In reference to Claims 11 and 12, these claims are indefinite, as described above. The following rejections represent the Examiner’s best understanding of the indefinite claim limitations.
However, it is the Examiner’s position that, if the limitations of Claims 11-12 are directed toward an intended use of the electrode active material, then the active material of Claim 1, as taught by modified Iwata, is capable of use in a device as required by Claims 11-12.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Alternatively, if the limitations of Claims 11-12 are directed toward a property of the claimed positive electrode material, then there is reasonable basis to conclude that the active material of Claim 1, as taught by modified Iwata, has the properties recited in Claims 11-12, because it teaches the compositional limitations of Claim 1.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Conclusion
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/SADIE WHITE/Primary Examiner, Art Unit 1721