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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has complied with all of the conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 10/27/2023, 01/03/2024, 09/26/2024, 01/07/2025, 03/04/2025, 03/18/2025, and 09/02/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings received on 10/27/2023 were reviewed and are acceptable.
Specification
The specification filed on 10/27/2023 was reviewed and is acceptable.
Claim Objections
Claim 7 is objected to because of the following informalities: “formula 1” in line 2 should be replaced with --Chemical Formula 1--.
Claim 8 is objected to because of the following informalities: “formula 11” in line 3 should be replaced with --Chemical Formula 11--.
Appropriate correction is required.
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.
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.
Claim 9 is 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 9 recites the limitation “a positive active material according to claim 1” in lines 2-3. It is unclear whether this is intended to be another separate and distinct material, consistent with the use of “a…material”, or is intended to be the same material previously recited, consistent with “according to claim 1”. For purposes of this Office Action, it will be assumed that this is intended to be the same previously recited material, consistent with the claim’s dependency.
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]).
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(s) 1-9 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-11 of copending Application No. 18/268515 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the positive active materials are substantially similar and only recite different inherent properties.
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 M ERWIN/Primary Examiner, Art Unit 1725 05/24/2026
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