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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 6/12/2026, with respect to claims 18-30, 32-34 have been fully considered and are persuasive. The rejection of claims 18-30, 32-34 has been withdrawn.
Applicant's arguments filed 6/12/2026 have been fully considered but they are not persuasive.
With respect to applicant’s request to hold the double patenting rejections based on copending application number 18/277,393 and 18/277,484 in abeyance (see Remarks filed 6/12/2026), these rejections have been maintained below in the absence of any arguments.
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 18-30, 32-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-33 of copending Application No. 18/277,393 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 18, claim 18 of the reference application discloses the positive electrode active material recited in claim 18 of the instant application with the exception of the claimed Ni content range.
Claim 18 of the reference application discloses a Ni content range that overlaps with instant claim 18. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding instant claims 19-27, claims 19-27 of the reference application discloses the claimed ratio ZrB/ZrA, x, y, b, secondary particle median size, carbon content and Zr thickness.
Regarding instant claims 28-30 directed to a method, claims 27-30 of the reference application discloses the claimed method.
Regarding instant claims 32-34 directed to a solid-state battery, and electric vehicle or hybrid vehicle, claims 31-33 of the reference application discloses a solid-state battery, and electric vehicle or hybrid vehicle.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 18-26, 28-30, 32-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-34 of copending Application No. 18/277,543 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 18, claim 18 of the reference application discloses the positive electrode active material recited in claim 18 of the instant application with the exception of the claimed Ni content range and primary particle average diameter range.
Claim 18 of the reference application discloses a Ni content range that overlaps with instant claim 18 and a primary particle average diameter range that overlaps with instant claim 18. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding instant claims 19-20, claims 20-21 of the reference application discloses the claimed ratio ZrB/ZrA.
Regarding instant claim 21, claim 22 of the reference application discloses x≥77 mol% which overlaps with the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding instant claim 22, claim 23 of the reference application discloses x≤91 mol% which overlaps with the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding instant claim 23, claim 24 of the reference application discloses the claimed y content.
Regarding instant claim 24, claim 25 of the reference application discloses the claimed b range.
Regarding instant claim 25, claim 26 of the reference application discloses the claimed secondary particle median size.
Regarding instant claim 26, claim 27 of the reference application discloses an overlapping carbon content range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding instant claims 28-30 directed to a method, claims 28-31 of the reference application discloses the claimed method.
Regarding instant claims 32-33 directed to a solid-state battery, and electric vehicle or hybrid vehicle, claims 32-34 of the reference application discloses a solid-state battery, and electric vehicle or hybrid vehicle.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 27 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18-34 of copending Application No. 18/277,543, as applied to claims 18-26, 28-30, 32-34 above, in view of Song et al. (US 2017/0133672A1).
Regarding claim 27, claim 18-34 of the copending application discloses all of the claim limitations as set forth above. However, claim 18-34 of the copending application does not further disclose the Zr thickness is at least 10 nm, as determined by TEM-EDS measurement.
Song discloses a positive electrode active material including a zirconium-containing coating layer (see Title, Abstract), wherein the coating layer has a thickness in the range of 1 nm to 20 nm ([0037]).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES LEE whose telephone number is (571)270-7937. The examiner can normally be reached M-F: 9AM - 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NICOLE BUIE-HATCHER can be reached at (571)270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James Lee/Primary Examiner, Art Unit 1725 7/23/2026
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