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 1-13 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 20, is “a position unit vector P’” the same as or different from “a position unit vector P’” in line 9? For the purposes of examination, the Examiner will be treating them as the same. As claims 2-13 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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/027654 (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) 1-7 and 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiratsuka (US 2020/0343549).
Regarding claim 1, Hiratsuka teaches a positive electrode active material having a plurality of crystallites A (see [0021]-[0027] – the composition discussed in [0027] either falls within, overlaps, or is close enough to the claimed ranges of the Applicant’s material (see [0022]-[0024] of filed Specification and so the material of Hiratsuka must also have a plurality of crystallites A), that a prima facie case of obviousness exists; see MPEP §2144.05), wherein the plurality of crystallites A has
a crystalline long-axis (as Hiratsuka teaches a material that either falls within, overlaps, or is close enough to the composition of the Applicant’s material (see [0022]-[0024] of filed Specification), it must follow that the material of Hiratsuka also has a crystalline long-axis) and a crystalline c-axis (as Hiratsuka teaches a material that either falls within, overlaps, or is close enough to the composition of the Applicant’s material (see [0026]-[0030] of filed Specification), it must follow that the material of Hiratsuka also has a crystalline c-axis), wherein a proportion of the plurality of crystallites A is 25% to 80% with respect to a total number of crystallites in a cross section of a positive electrode active material particle (as Hiratsuka teaches a material that either falls within, overlaps, or is close enough to the composition of the Applicant’s material (see [0022]-[0024] of filed Specification), it must follow that the material of Hiratsuka also has a proportion of the plurality of crystallites A is 25% to 80% with respect to a total number of crystallites in a cross section of a positive electrode active material particle).
Applicant is reminded that the process of determining measurements of a product fails to further limit the structure of the product itself.
Regarding claims 2-6, 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 [0022]-[0024] of filed Specification), it must follow that the material of Hiratsuka also has the claimed material properties of the instant invention.
Regarding claim 7, Hiratsuka teaches wherein the positive electrode active material has a crystalline size of 100 nm to 200 nm (100 to 200 nm, see [0017]).
Regarding claim 9, Hiratsuka teaches wherein the positive electrode active material has an average particle diameter of a primary particle of 0.05 μm to 8 μm (not less than 0.5 μm; see [0017]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 10, Hiratsuka teaches wherein the positive electrode active material has an average particle diameter of a secondary particle of 2 μm to 25 μm (not less than 8 μm; see [0017]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 11, Hiratsuka teaches wherein the positive electrode active material is a lithium composite transition metal oxide represented by Formula 1:
[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 [0027] – LiaNixCoyM(1-x-y)O2, wherein 1.00 ≤ a ≤ 1.15, 0.8 ≤ x < 1.0, 0 ≤ y ≤ 0.2, and where M includes at least one element selected from manganese (Mn), magnesium (Mg), zirconium (Zr), molybdenum (Mo), tungsten (W), aluminum (Al), chromium (Cr), vanadium (V), cerium (Ce), titanium (Ti), iron (Fe), gallium (Ga), and indium (In).)
The composition of the positive electrode active material of Hiratsuka 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 12 Hiratsuka teaches a positive electrode (see [0021]-[0027]) comprising the positive electrode active material of claim 1 (see rejection for claim 1 above).
Regarding claim 13, Hiratsuka teaches a lithium secondary battery (see [0064]) comprising the positive electrode of claim 12 (see rejection for claim 12 above).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiratsuka as applied to claim 1 above, and further in view of YURA et al. (US 2010/0330429; hereinafter “Yura”).
Regarding claim 8, Hiratsuka is silent to wherein the positive electrode active material has a micro strain of 0.04% to 0.25%.
Yura teaches a positive electrode active material with a lattice strain of 0.05x10-3 to 0.9x10-3 (equivalent to 0.005% to 0.09%; see abstract and [0048]). Yura teaches that when the lattice strain is not within this range, the rate property or the high-temperature cycle property may be deteriorated (see [0048]).
In view of Yura’s teachings, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the active material of Hiratsuka to include, wherein the positive electrode active material has a lattice strain of 0.005% to 0.09%, as taught by Yura, because when the lattice strain is not within this range, the rate property or the high-temperature cycle property may be deteriorated (see [0048]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP §2144.05(I). Furthermore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP §2144.05(II).
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.S.H/Examiner, Art Unit 1735 17 December 2025
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735