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 .
Status of Claims
Claims 1-7 are pending.
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.
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Claims 1, 2, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 2, 10 of U.S. Patent No. 12,512,459 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent ‘459 claims a positive electrode active material for a non-aqueous electrolyte secondary battery, including a lithium-transition metal composite oxide represented by the composition formula LixMnyNizPaMbO2-cFC, wherein M represents atleast one element selected from the group consisting of Ti, Co, Si, Sr, Nb, W, Mo, Ca, Mg, Sb, Na, B, V, Cr, Fe, Cu, Zn, Ge, Zr, Ru, K, Bi, and Al, 1.0 < x ≤ 1.2, 0.4 ≤ y ≤ 0.8, 0≤z≤0.4, 0.002≤a<0.01, 0<b<0.05, 0<c<0.1, and x+y+z+a+b≤2. The elemental composition/range of Li, Mn, Ni, F, O are the same as the claim 1 in instant invention. Patent ‘459 teaches that the molar ratio of P is 0.002≤a<0.01. This implies that one of the elements in the cathode material is P (phosphorus). This element is within the alternatives listed in instant claimed invention (Claim 1). The claimed molar ratio of other element in instant invention is 0≤b≤0.05. Hence, the range in Patent ‘459 lies within the range of the instant invention. If the other non-limited element in Patent ‘459 is Ti then the molar ratio of that can be within 0<b<0.05. The claimed ratio of Ti in instant invention (Claim 1) is 0<a≤0.03. Hence, the ratio in Patent ‘459 includes the claimed range. The list of element alternatives listed in Patent ‘459 is also similar to the one listed in the instant invention. Based on above, Claim 1 is rejected on the grounds of non-statutory double patenting.
Similarly, in Claim 2, Patent ‘459 claims the positive electrode active material for a non-aqueous electrolyte secondary battery according to claim 1, wherein M represents two or more elements. This is akin to limitation of Claim 2 of instant invention wherein M represents atleast two elements selected from the group consisting of P, Co, Si, Sr, Nb, W, Mo etc.
Claim 10 of Patent ‘459 claims a non-aqueous electrolyte secondary battery, comprising: a positive electrode including the positive electrode active material according to claim 1; a negative electrode; a separator interposed between the positive electrode and the negative electrode; and a non-aqueous electrolyte. This is akin to the features claimed in Claim 7 of instant invention.
Based on above, Claims 1, 2, and 7 are rejected in view of Patent ‘459, Claims 1, 2, and 10.
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.
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Natsui et al (US 12,512,459 B2; effective filing date 09/30/2020).
Regarding Claim 1,
Natsui teaches a positive electrode active material for a non-aqueous electrolyte secondary battery, including a lithium-transition metal composite oxide represented by the composition formula LixMnyNizPaMbO2-cFC, wherein M represents atleast one element selected from the group consisting of Ti, Co, Si, Sr, Nb, W, Mo, Ca, Mg, Sb, Na, B, V, Cr, Fe, Cu, Zn, Ge, Zr, Ru, K, Bi, and Al, 1.0 < x ≤ 1.2, 0.4 ≤ y ≤ 0.8, 0≤z≤0.4, 0.002≤a<0.01, 0<b<0.05, 0<c<0.1, and x+y+z+a+b≤2 (Column 1, Lines 64-67; Column 2, Lines 1-5). The elemental composition of Li, Mn, Ni, F, O are the same as the elemental composition claimed. The list of element alternatives listed in Natsui is also similar to the one listed in the instant invention (P, Co, Si, Sr, Nb, W, Mo, Ca, Mg, Sb, Na, B, V, Cr, Fe, Cu, Zn, Ge, Zr, Ru, K, Bi, and Al).
Natsui teaches that the molar ratio of P is 0.002≤a<0.01. This implies that one of the elements in the cathode material is P (phosphorus). This element is within the alternatives listed in claimed invention. The claimed molar ratio of other element in instant invention is 0≤b≤0.05. Hence, the range in Natsui lies within the range of the instant invention. If the other non-limited element in Natsui is chosen to be Ti (titanium) then the molar ratio of that can be within 0<b<0.05. The claimed ratio of Ti in instant invention is 0<a≤0.03. Hence, there is overlap between the prior art ratio and the claimed ratio. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the claimed elemental ratios in the overlap region of Natsui and instant invention, in order to form a lithium composite oxide that is capable of delivering higher capacity, and reduced resistance (Column 1, Lines 55-62; Column 2, Lines 35-42).
Regarding Claim 2,
Natsui teaches M represents atleast one element selected from the group consisting of Ti, Co, Si, Sr, Nb, W, Mo, Ca, Mg, Sb, Na, B, V, Cr, Fe, Cu, Zn, Ge, Zr, Ru, K, Bi, and Al, 1.0 < x ≤ 1.2, 0.4 ≤ y ≤ 0.8, 0≤z≤0.4, 0.002≤a<0.01, 0<b<0.05, 0<c<0.1, and x+y+z+a+b≤2 (Column 1, Lines 64-67; Column 2, Lines 1-5). M can include atleast two elements selected from the group. Hence, it is possible to select elements and their respective elemental ratios such that the total molar ratio is in the ratio of the claimed value of TiaMb, M can be P and Co, ‘a’ can be 0.02, and ‘b’ can be 0.0099 +0.02. These values are within the claimed ratio. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to choose the values within the formula in Natsui such that it meets the limitations of Claim 2 in order to form a lithium composite oxide that is capable of delivering higher capacity, and reduced resistance (Column 1, Lines 55-62; Column 2, Lines 35-42).
Regarding Claim 3 and Claim 4,
Natsui teaches that M can represent atleast one element selected from the group of Ti, Co, Si, Sr, Nb, W, Mo, Ca, Mg, Sb, Na, B, V, Cr, Fe, Cu, Zn, Ge, Zr, Ru, K, Bi, and Al. This does not preclude using two or three elements from the group such as P, Al, Co or other such combinations.
Regarding Claim 5,
Natsui teaches the formula wherein M can represent three elements, of which two elements are selected from the group consisting of Sb, Sr, Si, Mg, Al. For example, the elements selected in Natsui can be Ti, Sb, Sr and other such combinations.
Regarding Claim 6,
Natsui teaches LixMnyNizPaMbO2-cFC, wherein M represents atleast one element selected from the group consisting of Ti, Co, Si, Sr, Nb, W, Mo, Ca, Mg, Sb, Na, B, V, Cr, Fe, Cu, Zn, Ge, Zr, Ru, K, Bi, and Al, 1.0 < x ≤ 1.2, 0.4 ≤ y ≤ 0.8, 0≤z≤0.4, 0.002≤a<0.01, 0<b<0.05, 0<c<0.1, and x+y+z+a+b≤2 (Column 1, Lines 64-67; Column 2, Lines 1-5). The element M can be Ti, and based on Natsui’s molar range for M between 0-0.05, this range includes the claimed range of 0.002-0.02. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to choose the molar range for Ti to coincide with the claimed range in order to form a lithium composite oxide that is capable of delivering higher capacity, and reduced resistance (Column 1, Lines 55-62; Column 2, Lines 35-42).
Regarding Claim 7,
Natsui teaches a non-aqueous electrolyte secondary battery that comprises a positive electrode with lithium oxide material as claimed, a negative electrode, a separator between the positive and negative electrode, and a non-aqueous electrolyte (Column 2, Lines 6-11).
Claim(s) 1-2, 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al (US 20150010823 A1).
Yu teaches a positive active material for lithium batteries represented by the following Chemical formula 2 (Paragraphs 0018-0022); LiaNi-bCocMndMeO2-fM’f wherein M is a cation element of V, Ga, Zr, Mg, Al, Ti, Cr, Fe, W, Mo, Si or a combination thereof; M’ is an anion element of F, S, Cl, Br or a combination thereof; 1.1 <a<1.5, 0<b<1, 0<=c<1, 0<d<1, 0<e<1, 0<f<1, and 0.8 <= b+c+d+e<1. In this formula, when a = 1.2, b = 0.3, c = 0.01, d = 0.6, e= 0.02 (for elements, M = Ti + Mg), f = 0.1 (for element M’ = F), then this is one instance of matching the claimed formula in Claim 1 and Claim 2. Hence, there is overlap between the claimed formula and the chemical formula 2 in Yu to be used as a positive active material in a rechargeable lithium battery. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the chemical formula 2 of Yu with specific elemental values in order to form a positive electrode active material with increased charge and discharge capacity, and improved cycle life characteristics when operating the battery at a high voltage (Paragraph 0058).
Yu also teaches a rechargeable lithium battery comprising the positive electrode with positive active material, a negative electrode, a separator, and an electrolyte (Paragraph 0085). Yu teaches that the electrolyte includes a non-aqueous organic solvent and lithium salt which makes it a non-aqueous electrolyte (Paragraph 0103).
Conclusion
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/SUHANI JITENDRA PATEL/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783