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 .
Response to Amendment
The amendments filed 06/02/2026 overcome the prior nonstatutory double patenting rejection of record and the previous nonstatutory double patenting rejection is withdrawn.
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) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (US 20180205081 A1) in view of Paulsen et al. (US 20060071198 A1, provided in the previous office action), and XIAO et al., "Rational Design of a P2-Type Spherical Layered Oxide Cathode for High-Performance Sodium-lon Batteries", ACS CENTRAL SCIENCE, 2019, Vol. 5, No. 12, Pages 1937-1945 (9 pages total, provided by applicants IDS and present in the previous office action).
Yoshida teaches a Na-containing transition metal oxide particle with a P2 type structure for use in a positive electrode as the active material (Yoshida 0001, Table 1). An example given in table 1 of Yoshida shows the specific composition Na0.7Mn0.5Ni0.2Co0.3O2 in which the precursor was obtained by co-precipitation (Yoshida Table 1, fig. 2) and is spray coated or roll coated for the purposes of drying and/or coating (Yoshida 0048). Yoshida teaches that the particle is calcined between 770 and 1000oC for between 1 and 24 hours which overlaps with the claimed range and forms a prima facie case of obviousness in view of overlapping ranges and routine experimentation of a known range to get a desired crystal structure, See MPEP 2144.05 (Yoshida 0025). In this case calcination can be performed in air (Yoshida 0037) which is the same environment as described in the instant application making calcination as discussed in Yoshida read upon the broadest reasonable interpretation of the claim term “firing” as the particle is subjected to the same amount of heat for the same amount of time in the same atmosphere meaning the resulting particle will be the same.
Yoshida is silent to the precursor particle being spherical as well as the spray dry method covering 40% or more of the surface area of the precursor particle with NA salt, prompting one of ordinary skill to look at related art.
Paulsen teaches a similar method of making transition metal oxides for a cathode where a precursor particle is coated in a salt in the form of a partial or full coating and then heat treated (Paulsen 0037 0021-0022). It would have been obvious for a person having ordinary skill in the art at the time the invention was effectively filed to take modified Yoshida as described above and have the spray coating or roll coating method used in Yoshida fully cover the surface of the particle with salt as discussed in Paulsen as doing so is using a known technique, spray coating, in order to improve a similar product, a transition metal oxide, in the same way, See MPEP 2143.I.C.
Yoshida in view of Paulsen is silent to the precursor particle being spherical, prompting one of ordinary skill to look at related art.
In a similar field of endeavor as applicant, Xiao teaches a preparation method for making a transition metal oxide for a cathode that includes a spherical precursor that is composed of a salt. Further, the method includes mixing precursor microspheres with a solution containing a sodium salt. The precursor particle is then dried and calcined to obtain transition metal oxide microspheres containing Na which has a P2-type structure (Xiao, page 7 of the given PDF, first paragraph of the experimental section). Spherical particles are described as good because the microsphere structure can provide plentiful paths for electron transfer, which is beneficial to enhance the electrochemical properties (Xiao page 6 left side bottom of paragraph 3).
It would have been obvious for a person having ordinary skill in the art at the time the invention was effectively filed to take modified Yoshida as described above and have the precursor and final particles be spherical as discussed in Xiao as doing so allows for enhanced electrochemical properties. Both Xiao and Yoshida relate to similar processes of coating a transition metal oxide precursor particle with a Na solution and heat treating to form a NA-containing transition metal oxide particle presenting a reasonable expectation of success.
Regarding claim 9, Modified Yoshida teaches claim 8 as described above and the example composition, Na0.7Mn0.5Ni0.2Co0.3O2, meets the claimed limitations.
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 8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 18/590,404, henceforth referred to as Yubuchi and the claims filed 06/29/2026 are used for the purposes of citation and rejection.
Regarding claim 8, Yubuchi claims 1-4, 6, and 9-10 teach a method of producing a NA containing oxide with a P2-type structure comprising obtaining a spherical precursor particle via coprecipitation comprising at least Mn, Ni, and Co and coating 40 area % or more of the surface of the precursor particle with Na salt by spray drying before firing it at 700-1100oC for between 30 minutes to 3 hours.
Regarding claim 9, Claim 4 of Yubuchi teaches a chemical composition of the NA-containing transition metal oxide which significantly overlaps with the composition claimed in the instant claim 9 forming a prima facie case of obviousness in view of overlapping ranges, See MPEP 2144.05. As an example, the composition Na0.7Mn0.5Ni0.2Co0.3O2 meets the criteria of both sets of claims.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments for the 103 rejections with respect to claim(s) 8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SEAN ROBERT BROWN whose telephone number is (571)272-0640. The examiner can normally be reached M-F, 9-5 ET.
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, Galen Hauth can be reached at (571)270-5516. 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.
/SEAN R. BROWN/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
Prosecution Insights