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 1-12 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.
In claim 1, line 25, is “position unit vector P’” the same as or different from “the position unit vector P’” in line 15? For the purposes of examination, the Examiner will be treating them as the same. As claims 2-12 depend either directly or indirectly from claim 1, they are rejected for the same reason.
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.
Claim 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/280352 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application anticipate the claims of the instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2019/0260024, hereinafter “Nakamura”; listed in the IDS filed 14 February 2025).
Regarding claim 1, Nakamura teaches a positive electrode active material (positive electrode active material 10, see Fig. 3 and [0079] – the composition discussed in [0079] either falls within, overlaps, or is close enough to the claimed ranges of the Applicant’s material (see [0020]-[0022] of filed Specification), that a prima facie case of obviousness exists; see MPEP §2144.05) comprising
an inner region that is a region from a center of a positive electrode active material particle to R/2 (see Fig. 3 – inner region equated to region from center c2 to distance d2/4, where d2 is the particle diameter, toward the surface away the center c2); and
an outer region that is a region from R/2 to a surface of the positive electrode active material particle (see Fig. 3 – outer region equated to the region from d2/4 from center, or halfway between the center c2 and the surface, to surface),
wherein R is a distance from the center of the positive electrode active material particle of the surface thereof (see Fig. 3 – equated to d2/2),
wherein a proportion (C1) of a plurality of crystallites C is 25% to 80% with respect to a total number of crystallites in the outer region (at least 50%, see [0090]).
Applicant is reminded that the process of determining measurements of a product fails to further limit the structure of the product itself.
Regarding claim 2, Nakamura teaches wherein the proportion (C1) of the plurality of crystallites C is 30% to 60% with respect to the total number of crystallites in the outer region (at least 50%, see [0090]).
Regarding claim 3, Nakamura teaches wherein the proportion (C1) of the plurality of crystallites C to the total number of crystallites in the outer region is larger than a proportion (C2) of the plurality of crystallites C to a total number of crystallites in the inner region (at least 50% is in the outer region, and it is more preferable at least 70%, see [0090]).
Regarding claim 4, Nakamura teaches wherein a difference between the proportion (C1) of the plurality of crystallites C to the total number of crystallites in the outer region and the proportion (C2) of the plurality of crystallites C to the total number of crystallites in the inner region is at least 3% (at least 50% is in the outer region, and it is more preferable at least 70%, see [0090]).
Regarding claims 5-9, Applicant is reminded that the process of determining measurements of a product fails to further limit the structure of the product itself. Furthermore, as Hiratsuka teaches a material that either falls within, overlaps, or is close enough to the composition of the Applicant’s material (see [0020]-[0022] of filed Specification), it must follow that the material of Hiratsuka also has the claimed material properties of the instant invention.
Regarding claim 10, Nakamura teaches wherein the positive electrode active material is a lithium composite transition metal oxide represented by Formula 1 below:
[Formula 1]
Lix[NiaCobM1cM2d]O2-yAy
wherein,
M1 is at least one element selected from the group consisting of Mn and Al,
M2 is at least one element selected from the group consisting of W, Cu, Fe, V, Cr, Ti, Zr, Zn, Al, Ta, Y, In, La, Sr, Ga, Sc, Gd, Sm, Ca, Ce, Nb, Mg, B, and Mo,
A is at least one element selected from the group consisting of F, Cl, Br, I, At, and S, and
0.98≤x≤1.20, 0<a<1, 0<b<1, 0<c<1, 0≤d≤0.2, and 0≤y≤0.2 (see [0079] – Nakamura teaches Li1+uNixMnyMzO2+β, wherein -0.05 ≤ u ≤ 0.05, 0.1 ≤ x < 0.8, 0.1 ≤ y ≤ 0.6, 0 ≤ z ≤ 0.8, x + y + z = 1.0, and 0 ≤ β ≤ 0.5, and where M is at least one additional element selected from Co, Ti, V, Cr, Zr, Nb, Mo, Hf, Ta, Fe, and W.)
The composition of the positive electrode active material of Nakamura either falls within, overlaps, or is close enough to the claimed ranges in a manner which provides a prima facie case of obviousness. See MPEP §2144.05.
Regarding claim 11 Nakamura teaches a positive electrode (see [0079] and [0112]-[0116]) comprising the positive electrode active material of claim 1 (see rejection for claim 1 above).
Regarding claim 12, Hiratsuka teaches a lithium secondary battery (see [0111]) comprising the positive electrode of claim 11 (see rejection for claim 11 above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN HA whose telephone number is (571)270-5934. The examiner can normally be reached M-F 8:00-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.S.H/Examiner, Art Unit 1735 18 December 2025
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735