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 .
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 18-34 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 18 recites the limitation “wherein M′ comprises: Ni in a content x between 70.0 mol % and 95.0 mol %, relative to M′; Co in a content y between 0.0 mol % and 40.0 mol %, relative to M′; Mn in a content z between 0.0 mol % and 40.0 mol %, relative to M′”. This limitation renders the claim indefinite because a Co content between 30.0 mol % and 40.0 mol % and a Mn content between 30.0 mol % and 40.0 mol % conflicts with the claimed Ni content which has a lower range of 70.0 mol %.
Claim 26 recites the limitation "the secondary particle median size D50". There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation "the carbon content". There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 28 recites the broad recitation “mixing said lithium transition metal-based oxide compound with a source of Zr”, and the claim also recites “preferably Zr alkoxide in lithium alkoxide containing alcohol solvent” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 31 recites the limitation “wherein M′ comprises: Ni in a content x between 70.0 mol % and 95.0 mol %, relative to M′; Co in a content y between 0.0 mol % and 40.0 mol %, relative to M′; Mn in a content z between 0.0 mol % and 40.0 mol %, relative to M′”. This limitation renders the claim indefinite because a Co content between 30.0 mol % and 40.0 mol % and a Mn content between 30.0 mol % and 40.0 mol % conflicts with the claimed Ni content which has a lower range of 70.0 mol %.
Further, dependent claims 19-34 are rendered indefinite due to their dependency on any of the indefinite claims as set forth above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22-23 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 22 recites the limitation “x≥77.0 mol %” which does not specify an upper range and, thus, fails to further limit the range recited in claim 18 “Ni in a content x between 70.0 mol % and 95.0 mol %, relative to M′”.
Claim 23 recites the limitation “x≤91.0 mol %” which does not specify a lower range and, thus, fails to further limit the range recited in claim 18 “Ni in a content x between 70.0 mol % and 95.0 mol %, relative to M′”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto (JP2021197209A, refer to English equivalent US 2023/0187628A1).
Regarding claim 28, Fujimoto discloses a method for the manufacturing of a positive electrode active material for solid-state batteries (Method for Producing Positive Electrode Active Material for Lithium Ion Secondary Battery [0094]-[0140], Fig. 1), comprising the consecutive steps of
preparing a lithium transition metal-based oxide compound (lithium transition metal composite oxide synthesizing process S3 [0098]),
mixing said lithium transition metal-based oxide compound with a source of Zr, preferably Zr alkoxide in lithium alkoxide containing alcohol solvent, thereby obtaining a mixture (particles of the lithium transition metal composite oxide obtained in the lithium transition metal composite oxide synthesizing process S3 are mixed with a liquid coating agent containing a lithium compound and a zirconium compound [0099], [0119]-[0126]), and
heating the mixture in an oxidizing atmosphere in a furnace at a temperature between 350° C. and less than 500° C., for a time between 1 hour and 20 hours so as to obtain the positive electrode active material (heat-treated at a temperature of 300° C. or more and 600° C. or less, and for 1 to 5 hours [0099], [0127]-[0141]; 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 claim 29, Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses the method comprises a further step, before heating said mixture, of drying said mixture (dried [0099], [0133]-[0134]).
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto (JP2021197209A, refer to English equivalent US 2023/0187628A1), as applied to claims 28-29 above, in view of Wu et al. (CN110957474A, refer to English equivalent US2021/0111405A1).
Regarding claim 30, Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses the method comprises a further step, before heating said mixture, of drying said mixture (dried [0099], [0133]-[0134]), but does not disclose by means of vacuum heating.
Wu discloses a positive active material including an inner core and a coating layer, and preparation method thereof (Title, Abstract), wherein the method for preparing a positive active material includes a step of vacuum drying the inner core of the positive active material prior to secondary sintering with a surface coating-forming compound to form a coating layer of the positive active material ([0009]).
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.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto (JP2021197209A, refer to English equivalent US 2023/0187628A1), as applied to claims 28-29 above, in view of JP2004311408A, refer to English machine translation by EPO.
Regarding claim 31, Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses the positive electrode active material is a positive electrode active material comprising Li, M′, and oxygen (lithium transition metal composite oxide [0058]-[0087]), wherein M′ comprises:
Ni in a content x between 70.0 mol % and 95.0 mol %, relative to M′ (nickel content is 1-x-y, wherein 0<x≤0.22 and 0≤y≤0.15 [0059]; 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.);
Co in a content y between 0.0 mol % and 40.0 mol %, relative to M′ (cobalt content is x, wherein 0<x≤0.22 [0059]; 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.);
Mn in a content z between 0.0 mol % and 40.0 mol %, relative to M′,
D in a content a between 0.0 mol % and 2.0 mol %, relative to M′, wherein D comprises at least one element of the group consisting of: Al, B, Ba, Ca, Cr, Fe, Mg, Mo, Nb, S, Si, Sr, Ti, Y, V, W, and Zn, and (element M, which may be selected from a group including Mg, Al, Ca, Cr, Fe, Mg, Mo, Nb, Si, Ti, V, W, and Zn, has a content of y, wherein 0≤y≤0.15 [0059]; 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.),
wherein the positive electrode active material comprises secondary particles having a plurality of primary particles (secondary particles formed by aggregating primary particles [0074]),
wherein said primary particles have an average diameter of at least 250 nm as determined by measuring primary particle size in an image taken by SEM (primary particles with particle size of 0.1 micrometer to 2.0 micrometers [0074]; 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.).
Although Fujimoto further discloses a zirconium content of 0.13 mmol or more and 0.30 mmol or less per 1 m2 of a surface of the particles or 0.90 mass % measured using ICP ([0078]-[0081], [0182]) and the positive electrode active material has a Zr content ZrB, wherein ZrB is determined by XPS analysis, wherein ZrB is expressed as molar fraction compared to the sum of molar fractions of Co, Mn, Ni, and Zr as measured by XPS analysis (ratio Zrs/Nis+Cos+Zrs of a sum of substance quantities of Ni, Co, Zr and a substance quantity of Zr existing on a surface of the positive electrode active material measured using XPS, see Abstract, [0084]-[0085], [0183]), the reference does not expressly disclose Zr in a content b between 0.1 mol % and 5.0 mol %, relative to M′, wherein x, y, z, a, and b are measured by ICP, wherein x+y+z+a+b is 100.0 mol %, wherein the ratio ZrB/ZrA>50.0.
JP2004311408A discloses a proportion of zirconium compound present on the surface of the lithium transition metal composite oxide measured by ICP is preferably 0.01 to 2 mol% of zirconium with respect to the lithium transition metal composite oxide, wherein a content of 0.01 mol% or more is preferable because zirconium can be present on the entire surface of the lithium transition metal composite oxide and 2 mol% or less is preferable because discharge capacity decreases, such that low temperature characteristics, cycle characteristics and thermal stability are improved, and high load characteristics and low temperature load characteristics are improved (see p.4). JP2004311408A further discloses determining the zirconium compound using ICP (see p.3,12).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the zirconium content (mol%) in order to arrive at a desired balance between surface coverage and discharge capacity, leading to improvement in low temperature characteristics, cycle characteristics, thermal stability, high load characteristics and low temperature load characteristics (MPEP 2144.05).
Accordingly, the combination envisages ZrB between 0.80 and 0.97 (see Fujimoto: Abstract, [0084]-[0085], [0183]) and ZrA between 0.01 to 2 mol%, i.e., between 0.0001 and 0.02 (see JP2004311408A: p.4) with the calculated ratio ZrB/ZrA between 40 and 9700 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.
Claim(s) 18-27, 32-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto (JP2021197209A, refer to English equivalent US 2023/0187628A1) in view of JP2004311408A, refer to English machine translation by EPO.
Regarding 18, Fujimoto discloses a positive electrode active material for solid-state batteries (Title, Abstract), wherein the positive electrode active material comprises Li, M′, and oxygen (lithium transition metal composite oxide [0058]-[0087]), wherein M′ comprises:
Ni in a content x between 70.0 mol % and 95.0 mol %, relative to M′ (nickel content is 1-x-y, wherein 0<x≤0.22 and 0≤y≤0.15 [0059]; 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.);
Co in a content y between 0.0 mol % and 40.0 mol %, relative to M′ (cobalt content is x, wherein 0<x≤0.22 [0059]; 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.);
Mn in a content z between 0.0 mol % and 40.0 mol %, relative to M′,
D in a content a between 0.0 mol % and 2.0 mol %, relative to M′, wherein D comprises at least one element of the group consisting of: Al, B, Ba, Ca, Cr, Fe, Mg, Mo, Nb, S, Si, Sr, Ti, Y, V, W, and Zn (element M, which may be selected from a group including Mg, Al, Ca, Cr, Fe, Mg, Mo, Nb, Si, Ti, V, W, and Zn, has a content of y, wherein 0≤y≤0.15 [0059]; 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.), and,
wherein the positive electrode active material comprises secondary particles having a plurality of primary particles (secondary particles formed by aggregating primary particles [0074]),
wherein said primary particles have an average diameter of at least 250 nm as determined by measuring primary particle size in an image taken by SEM (primary particles with particle size of 0.1 micrometer to 2.0 micrometers [0074]; 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.).
Although Fujimoto further discloses a zirconium content of 0.13 mmol or more and 0.30 mmol or less per 1 m2 of a surface of the particles or 0.90 mass % measured using ICP ([0078]-[0081], [0182]) and the positive electrode active material has a Zr content ZrB, wherein ZrB is determined by XPS analysis, wherein ZrB is expressed as molar fraction compared to the sum of molar fractions of Co, Mn, Ni, and Zr as measured by XPS analysis (ratio Zrs/Nis+Cos+Zrs of a sum of substance quantities of Ni, Co, Zr and a substance quantity of Zr existing on a surface of the positive electrode active material measured using XPS, see Abstract, [0084]-[0085], [0183]), the reference does not expressly disclose Zr in a content b between 0.1 mol % and 5.0 mol %, relative to M′, wherein x, y, z, a, and b are measured by ICP, wherein x+y+z+a+b is 100.0 mol %, wherein the ratio ZrB/ZrA>50.0.
JP2004311408A discloses a proportion of zirconium compound present on the surface of the lithium transition metal composite oxide measured by ICP is preferably 0.01 to 2 mol% of zirconium with respect to the lithium transition metal composite oxide, wherein a content of 0.01 mol% or more is preferable because zirconium can be present on the entire surface of the lithium transition metal composite oxide and 2 mol% or less is preferable because discharge capacity decreases, such that low temperature characteristics, cycle characteristics and thermal stability are improved, and high load characteristics and low temperature load characteristics are improved (see p.4). JP2004311408A further discloses determining the zirconium compound using ICP (see p.3,12).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the zirconium content (mol%) in order to arrive at a desired balance between surface coverage and discharge capacity, leading to improvement in low temperature characteristics, cycle characteristics, thermal stability, high load characteristics and low temperature load characteristics (MPEP 2144.05).
Accordingly, the combination envisages ZrB between 0.80 and 0.97 (see Fujimoto: Abstract, [0084]-[0085], [0183]) and ZrA between 0.01 to 2 mol%, i.e., between 0.0001 and 0.02 (see JP2004311408A: p.4) with the calculated ratio ZrB/ZrA between 40 and 9700 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 claim 19, modified Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses the primary particles have an average diameter of at least 280 nm (primary particles with particle size of 0.1 micrometer to 2.0 micrometers [0074]; 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 claim 20, modified Fujimoto discloses all of the claim limitations as set forth above. Modified Fujimoto further discloses the ratio ZrB/ZrA is at least 80 (ZrB between 0.80 and 0.97, see Fujimoto, Abstract, [0084]-[0085], [0183]; ZrA between 0.0001 and 0.02, see JP2004311408A, p.4; calculated ratio ZrB/ZrA between 40 and 9700 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 claim 21, modified Fujimoto discloses all of the claim limitations as set forth above. Modified Fujimoto further discloses the ratio ZrB/ZrA is at most 500 (ZrB between 0.80 and 0.97, see Fujimoto, Abstract, [0084]-[0085], [0183]; ZrA between 0.0001 and 0.02, see JP2004311408A, p.4; calculated ratio ZrB/ZrA between 40 and 9700 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 claim 22, modified Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses x≥77.0 mol % (nickel content is 1-x-y, wherein 0<x≤0.22 and 0≤y≤0.15 [0059]; 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 claim 23, modified Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses x≤91.0 mol % (nickel content is 1-x-y, wherein 0<x≤0.22 and 0≤y≤0.15 [0059]; 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 claim 24, modified Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses 0 mol %≤y≤20 mol % (cobalt content is x, wherein 0<x≤0.22 [0059]; 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 claim 25, modified Fujimoto discloses all of the claim limitations as set forth above. JP2004311408A further discloses b/(a+x+y+z) is at least 0.10 mol % and at most 1.00 mol % (0.01 to 2 mol%, see p.4; 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 claim 26, modified Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses the secondary particle median size D50 is at least 2.0 μm and at most 15.0 μm, as determined by laser diffraction particle size analysis (secondary particle with a particle size of 3 to 15 micrometers [0074]).
Regarding claim 27, modified Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses the carbon content is at least 600 ppm and at most 8000 ppm, as determined by carbon analyzer (carbon content is 0.05 to 0.40 mass% [0090]; 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 claim 32, modified Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses a solid-state battery comprising the positive electrode active material according to claim 18 (all-solid-state lithium ion secondary battery [0160]-[0161]; see rejection of claim 18 above).
Regarding claim 33, modified Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses said solid-state battery comprises a sulfide based solid electrolyte comprising Li, P, and S (sulfide-based solid electrolyte [0157]).
Regarding claim 34, modified Fujimoto discloses all of the claim limitations as set forth above. Fujimoto further discloses an electric vehicle or a hybrid electric vehicle comprising the battery according to claim 32 (electric vehicle [0163]; see rejection of claim 32 above).
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 18-34 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 and primary particle average diameter range.
Claim 18 of the reference application discloses a Ni content range (50 to 75 mol%) that overlaps with instant claim 18 (70 to 95 mol%) and a primary particle average diameter range (170 nm to 340 nm) that overlaps with instant claim 18 (at least 250 nm). 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 19, claim 18 of the reference application discloses a primary particle average diameter range (170 nm to 340 nm) that overlaps with instant claim 19 (at least 280 nm). 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 20-21, claims 19-20 of the reference application discloses the claimed ratio ZrB/ZrA.
Regarding instant claim 22, claim 21 of the reference application discloses x≥55 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 22 of the reference application discloses x≤72 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 24, claim 23 of the reference application discloses the claimed y content.
Regarding instant claim 25, claim 24 of the reference application discloses the claimed b range.
Regarding instant claim 26, claim 25 of the reference application discloses the claimed secondary particle median size.
Regarding instant claim 27, claim 26 of the reference application discloses a carbon content range that falls within the claimed range.
Regarding instant claims 28-31 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 31-32 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 18-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-34 of copending Application No. 18/277,484 (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 (50 to 85 mol%) that overlaps with instant claim 18 (70 to 95 mol%) and a primary particle average diameter range (170 nm to 340 nm) that overlaps with instant claim 18 (at least 250 nm). 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 19, claim 18 of the reference application discloses a primary particle average diameter range (170 nm to 340 nm) that overlaps with instant claim 19 (at least 280 nm). 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 20-21, claims 19-20 of the reference application discloses the claimed ratio ZrB/ZrA.
Regarding instant claim 22, claim 21 of the reference application discloses x≥55 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 22 of the reference application discloses x≤72 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 24, claim 23 of the reference application discloses the claimed y content.
Regarding instant claim 25, claim 24 of the reference application discloses the claimed b range.
Regarding instant claim 26, claim 25 of the reference application discloses the claimed secondary particle median size.
Regarding instant claim 27, claim 26 of the reference application discloses a carbon content range that falls within the claimed range.
Regarding instant claims 28-31 directed to a method, claims 27-31 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 31-32 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.
Conclusion
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/James Lee/Primary Examiner, Art Unit 1725 2/25/2026