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 .
Status of Claims
Applicant’s amendment and arguments, dated 09/04/2026, have been fully considered. Claim(s) 1 and 7-9 is/are currently amended; and claim(s) 2-6 stand as originally or previously presented. The Examiner affirms that the original disclosure provides adequate support for the amendment.
Upon considering said amendment and arguments, the previous rejections under 35 U.S.C. 112(a) and 103, as set forth in the Office Action dated 06/04/2026 have been maintained, while the objections, rejections under 35 U.S.C. 112(b), and double patenting rejection have been withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/08/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-7 and 9 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for Li1+a(NibM11-b)O2, does not reasonably provide enablement for Li1+a(NibM11-b)1-aO2. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Claim 1 recites Li1+a(NibM11-b)1-aO2. Such recitations define the scope of the claims as a certain lithium complex oxide having a reduced metal content. For example, if a = 0.2 and b 0.9, then the compound would be Li1.2Ni0.72M10.08O2.
The disclosure teaches the general Chemical Formula 1, but fails to teach, or give examples of, specific compounds. Therefore, Applicant has not enabled one having ordinary skill in the art at the time of the invention to make and use the invention.
Furthermore, and in accordance with the In re Wands factors (see MPEP 2164.01(a)), the claims are not enabled when considered in light of the following factors:
Breadth of the claims: the breadth of the claims is unclear from an interpretive standpoint, but seems to intend a reduced metal content. For example, Ni0.72M10.08 as opposed to Ni0.9M10.1 when a = 0.2 and b = 0.9.
The nature of the invention: the invention is positive electrode active materials for lithium secondary batteries.
The state of the prior art: given the state of the prior art, as noted below in the rejections of e.g. claims 1 or 8, specifically where e.g. Ni0.81Co0.16Al0.03 (0.83 + 0.16 + 0.03 = 1) content is unaffected by excess lithium, e.g. Li1.02 or Li0.95 (Matsumoto: Example 1, Table 1), the recited (1-a) requires a more detailed disclosure by the Applicant in order to enable one skilled in the art to make and use the invention as claimed.
The level of one of ordinary skill in the art: one of ordinary skill in the art is considered to be a graduate in materials science or chemistry, skilled in the design of lithium complex oxides, and familiar with parameters that affect the rameters that affect teh supplies, and familiar with materials and conductorstime of the invention to make and use the invenperformance of such compounds.
The level of predictability in the art: the level of predictability in this art is considered to be moderate, insofar as there are some variables, e.g. precursor content and synthesis temperatures (see e.g. Instant Specification pg. 16, lines 2-6), known to affect such compounds.
The amount of direction provided by the inventor: the inventor does not provide adequate direction as to how to achieve the (1-a) reduced metal content recited in e.g. Chemical Formula 1 which meets the claim limitations. For example, no direction is provided for achieving actual compositions of the compound.
The existence of working examples: there are no examples in the specification which disclose specific compositions, specifically, the (1-a) reduced metal content recited in e.g. Chemical Formula 1, and therefore, the specification does not enable one of ordinary skill in the art the ability to make and/or use the invention commensurate in scope with the recited e.g. Chemical Formula 1.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure: the Applicant has not enabled one of ordinary skill in the art at the time of the invention to produce the invention commensurate in scope with the recited e.g. Chemical Formula 1 because it unclear how to achieve a reduced metal content, as required by (1-a). Therefore, an undue level of experimentation would be required for one of ordinary skill in the art at the time of the invention to produce the specifics of the claimed invention.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (US 2012/0119167 A1; hereinafter “Matsumoto”).
Regarding claims 1-3, Matsumoto discloses a positive active material for a lithium secondary battery (Title), comprising a compound represented by LibNi1-aMaO2, where 0.01≤a≤0.5 and 0.9≤b≤1.1 ([0039]), and thus does not explicitly disclose a compound represented by the recited Chemical Formula 1. Matsumoto further discloses that a molar content of lithium present in the structure of the positive active material, is 1.00 to 1.15 ([0043]), and thus does not explicitly disclose a molar content, measured through neutron diffraction analysis, of 1.02 to 1.15.
Matsumoto is analogous prior art to the current invention because they are concerned with the same field of endeavor, namely positive active materials for lithium secondary batteries.
Before the effective filing date of the current invention, it would have been obvious to one having ordinary skill in the art to routinely select the overlapping portions of the disclosed ranges (0.8 to 1.1 significantly overlaps 1 to 1.2, 0.5 to .99 significantly overlaps 0.8 to 1, and 1.00 to 1.15 significantly overlaps 1.02 to 1.15) because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)). The skilled artisan would find it further obvious that the method of measuring molar content reasonably appears to be irrelevant because molar content does not change based upon being observed.
However, Matsumoto does not disclose the recited (1-a) in Chemical Formula 1, nor the recited c-axis lattice constants or c-axis lattice constant variation ratio.
Due to the substantial similarity of production methods (see rejection of claim 8 below), it is submitted that the skilled artisan would find it further obvious that the material of Matsumoto would reasonably exhibit the same properties as recited because where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case or either anticipation or obviousness has been established (see MPEP 2112.01(I) and MPEP 2144.05(I); see also Instant Specification pg. 16, lines 2-6 which describe the importance of precursor content and synthesis temperatures in achieving the recited material).
Regarding claim 4, Matsumoto discloses all of the claim limitations as set forth above.
Matsumoto does not explicitly disclose that, in the positive active material, the nickel content in the lithium site is less than 5 atom%.
Before the effective filing date of the current invention, it would have been obvious to one having ordinary skill in the art that, due to the substantial similarity of production methods (see rejection of claim 8 below), the material of Matsumoto would reasonably exhibit the same atomic ratio as recited because where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case or either anticipation or obviousness has been established (see MPEP 2112.01(I) and MPEP 2144.05(I); see also Instant Specification pg. 16, lines 2-6 which describe the importance of precursor content and synthesis temperatures in achieving the recited material).
Regarding claims 5 and 6, Matsumoto discloses all of the claim limitations as set forth above.
Matsumoto further discloses that impurities, e.g. lithium carbonate, lithium sulfate, and lithium hydroxide, remain at the surface of grain boundaries due to firing, and accordingly discloses performing water washing in order to remove such impurities ([0066-0067]). However, Matsumoto does not explicitly disclose a content of Li2CO3 being less than 0.5 wt%, nor a content of Li2O being less than 1.0 wt%.
Before the effective filing date of the current invention, it would have been obvious to one having ordinary skill in the art that, due to the substantial similarity of production methods (see rejection of claim 8 below), the material of Matsumoto would reasonably exhibit the same impurity content as recited because where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case or either anticipation or obviousness has been established (see MPEP 2112.01(I) and MPEP 2144.05(I); see also Instant Specification pg. 16, lines 2-6 which describe the importance of precursor content and synthesis temperatures in achieving the recited material).
Regarding claim 7, Matsumoto discloses all of the claim limitations as set forth above.
Matsumoto further discloses that, in [Chemical Formula] 1, 0.9<b<1 (0.9≤b≤1.1 ([0039]).
Regarding claim 8, Matsumoto discloses a manufacturing method of a positive active material for a lithium secondary battery (Title) comprising:
mixing a precursor and a lithium raw material ([0043]), and
sintering the mixture in the temperature range of 680 °C to 780 °C (preferably 700 to 780 °C, [0060], which falls within the recited range.
Matsumoto further discloses preparing the precursor such that the precursor attains the molar ratio of nickel and minor component described in composition formula 1 (as noted above), and mixing with a lithium compound such that the amount of lithium becomes 1.00 to 1.15 in molar ratio ([0043]), and thus does not explicitly disclose Chemical Formula 11, nor a mole ratio of 1:1.06 to 1:1.3.
Matsumoto is analogous prior art to the current invention because they are concerned with the same field of endeavor, namely positive active materials for lithium secondary batteries.
Before the effective filing date of the current invention, it would have been obvious to one having ordinary skill in the art that the disclosed precursor of Matsumoto reasonably reads on the recited Chemical Formula 11 because the resultant positive active material is substantially similar to the recited positive active material (see rejection of claim 1 above), and thus the precursors would reasonably need to be substantially similar. The skilled artisan would find it further obvious to routinely select the overlapping portions of the disclosed ranges (1.00 to 1.15 significantly overlaps 1.06 to 1.3) because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)). The skilled artisan would find it further obvious that the method of measuring molar content reasonably appears to be irrelevant because molar content does not change based upon being observed.
Regarding claim 9, Matsumoto discloses all of the claim limitations as set forth above.
Matsumoto further discloses a lithium secondary battery (Title) comprising a positive electrode (1) containing [the] recited positive active material (as noted above), a negative electrode (3) and an electrolyte ([0113]).
Response to Arguments
Applicant's arguments filed 09/04/2026 have been fully considered but they are not persuasive.
Applicant argues (see Remarks dated 09/04/2026) that the amendment to claim 1, narrowing the recited ranges of a and b, overcomes the rejection under 35 U.S.C. 112(a).
The Examiner respectfully disagrees and submits that Applicant misunderstands the position of the Examiner. The Examiner maintains that the specification does not appear to enable the recited reduced metal content (indicated by “(1-a)” for the reasons set forth above. While the example of a = 0.2 and b = 0.9 was used in the rejection, the rejection does rely upon the specific recited ranges, but rather the inclusion of “(1-a)” which thus requires a reduced metal content. Accordingly, narrowing the ranges of a and b is immaterial to the substance of the rejection, and is therefore unpersuasive.
Applicant further argues that because the prior art reference Matsumoto adopts a method of washing away excess lithium with water, such a method prevents excess lithium from being incorporated into the structure, thereby preventing Matsumoto from being inherently regarded as having the same structural stability as claimed.
The Examiner respectfully disagrees and submits that the washing process of Matsumoto was relied upon simply for the rationale that such a washing process reduces the content of lithium impurities (see rejection of claims 5 and 6 as set forth above). Furthermore, such a washing process does not appear to reasonably interfere with the disclosed material (see rejection of claim 1 as set forth above), nor the disclosed method (see rejection of claim 8 as set forth above), both of which appear to be substantially similar to the Instant Invention, and thus reasonably conclude that the disclosed material and method would render the claimed inventions obvious, for the reasons set forth above. Accordingly, Applicant’s arguments are unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 M ERWIN whose telephone number is (571)272-3101. The examiner can normally be reached Monday-Friday: 6am-3pm PDT.
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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 M ERWIN/Primary Examiner, Art Unit 1725 09/15/2026
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