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 Group II in the reply filed on May 18, 2026 is acknowledged. The traversal is on the ground(s) that the WO 2017/029166 reference does not teach the Al or Ti is distributed in the instantly claimed product. This is not found persuasive because Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a particulate (oxy)hydroxide of TM comprising at least 75mol%, this technical feature is not a special technical feature as it does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-13 are pending. Claims 1-8, 13 are withdrawn.
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 9-12 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 9 recites “essentially radially oriented” and this renders the claim indefinite because it is unclear what constitutes “essentially”. Claim 9, line 6, recites “within the secondary particles” and there is insufficient antecedent basis for this limitation. Claims 10-12 are subsumed under the rejection.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-11 of U.S. Patent No. 12,570,545. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Patent 12,570,545 claims a particulate (oxy)hydroxide of TM, wherein TM comprises at least 70mol% of nickel and at least one of Co and Mn and at least one further metal selected from T, Zr, Mo, W, Al, Mg, Nb and Ta, wherein the (oxy)hydroxide comprises in a range from 0.05-1wt% of C as an organic carbon and wherein at least 60vol% of the secondary particles comprise agglomerated primary particles that are perfectly radially oriented; wherein TM is a combination of metals having the formula (NiaCobMnc)1-dMd, wherein a is 0.7-0.99, b is 0-0.2, c is 0-0.2, d is 0-0.1 and M is at least one of Al, Mg, Ti, Mo, Nb, Ta, W, Zr and wherein the (oxy)hydroxide particles have a form factor from 0.87-0.99 (Claims 7-11). US Patent 12,570,545 does not specifically claim Ti, Zr, Mg or Nb is homogeneously distributed within the secondary particles. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected for Ti, Zr, Mg or Nb to be homogeneously distributed within the secondary particles because of the organic carbon.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 June 26, 2026
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