DETAILED ACTION
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 without traverse of Group I (i.e., claims 1-19) in the reply filed on 02/19/26 is acknowledged.
Applicant's election with traverse of Species I-A-1 and I-A-1-d (i.e., claims 1-8, 10-12 and 14-19) in the reply filed on 05/06/26 is acknowledged. The traversal is on the ground(s) that “all sub-species of the ternary sulfide contain the common metal of lithium in conjunction with a transitional metal. In view of the commonality…”. This is not found persuasive because as set forth in the 03/06/26 election of species, Species I-A-1 and I-A-2, and Sub-Species I-A-1-a/b/c/d/e encompasses materially different components/elements, thereby forming materially different compositions. In this respect, applicant has not yet provided any specific technical reason(s) or objective explanation to clearly support that Species I-A-1 and I-A-2, and Sub-Species I-A-1-a/b/c/d/e are not mutually exclusive in terms of either their structures, functional aspects, cooperative relationship, material/compositions, chemical properties and/or mechanical features and the likes within the context of the claimed invention. Further, applicant has not yet admitted on the written record that, or submitted or identified evidence to show, Species I-A-1 and I-A-2, and Sub-Species I-A-1-a/b/c/d/e are obvious variants. Therefore, the embodiments of Species I-A-1 and I-A-2, and Sub-Species I-A-1-a/b/c/d/e represent distinct and mutually exclusive species which do not overlap in scope. Moreover, applicant's attention is particularly directed to MPEP 809.02(a) which indicates how to identify species by illustrative figures, examples, mechanical means, particular materials, or other distinguishing characteristics. Accordingly, serious burden would be raised if the search of such different species was made as required for the separate, distinct and mutually exclusive species or embodiments.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Acknowledgment is made of applicant’s claim for domestic priority under 35 U.S.C. 119 (e).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/16/26 was considered by the examiner.
Drawings
The drawings were received on 06/16/23.
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 6-8 and 17-19 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 6-8 and 17-19 are indefinite as the molar fractions/amounts “x” and “y” are not stoichiometrically defined, thereby making it difficult, not to say unfeasible, to determine the specific material composition ultimately intended by the applicant. It is to be noted that the molar fractions/amounts “x” and “y” being “positive integers” is not sufficient to clearly, concretely and accurately define the specific molar proportion(s) required to make the electrode material. Thus, the specific stoichiometric relationship between the molar fractions/amounts “x” and “y” to clearly define a composition is unknown.
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.
Claim(s) 1-2, 6-8, 11, 14-15 and 17-19 are rejected under 35 U.S.C. 102a1 as being anticipated by the publication CN 110649252 (heretofore CN’252).
As to claims 1-2, 6-8, 11, 14-15, 17-19:
CN’252 discloses that it is known in the art to make an electrode material comprising a nickel-based/rich layered oxide and a sulfide-based/oxide-based coating/layer thereon and having an ionic conductivity of more than 1x10-3 S/cm, wherein the nickel-based/rich layered oxide has the formula LiNi1-x-yMnxCoyO2 wherein 1-x-7 is greater than 8 (see page 2, paragraph 7 to page 3, paragraph 10; page 3, paragraph 17 to paragraph 20).
Thus, the present claims are anticipated.
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, 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.
Claim(s) 3-5, 10, 12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over the publication CN 110649252 (heretofore CN’252) as applied to claim 1 above, and further in view of Elam et al 2015/0364747.
CN’252 is applied, argued and incorporated herein for the reasons manifested supra. However, the preceding reference does not expressly disclose the specific sulfide-based coating, its thickness.
As to claim 3-5, 10, 12 and 16:
Elam et al disclose that it is known in the art to make an electrode material comprising a lithium/zirconium-based material having a uniform thickness ranging from 1-10 nm (0010-0015; 0072-0075; 0178-0181; 0001-0003).
As to claim 10:
It is noted that the limitation “deposited by atomic layer deposition” is being construed as product-by-process limitation/claim, and that the product itself does not depend on the process of making it. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In that, it is further noted that the product in the instant claims is the same as or obvious over the product of the prior art. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any difference, the difference would have been minor and obvious. Therefore, the present claims are unpatentable over a reference that satisfies the claimed compositional or physical or property or structural limitations, and/or a reference that discloses a product made by a process that reasonably substantially comprises every limitation of the claimed process. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974);See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
In view of the above, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to use the specific sulfide-based coating and its thickness of Elam et al in the electrode material of CN’252 as Elam et al teach that the specifically disclosed sulfide-based coating comprising lithium/zirconium enhances conductivity while providing chemical and mechanical stability. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752
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