DETAILED ACTION
Claims 1-10 are pending as amended on 15 May 2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s amendment overcomes the rejection of claims 5 and 6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. The rejection has been withdrawn.
Applicant’s arguments have been fully considered but are not persuasive.
Applicant argues that US2022/0115648A1 (Hanazaki) fails to teach the specific combination of Co, Mn, Al, Zr and Mg from a list of 23 possible metals. The examiner disagrees. It has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992).
Further, the claims do not exclude additional metal elements or combinations from Hanazaki’s list. Instant claim 5 requires at least one additional element selected from a list of 17 elements, 14 of which are on Hanazaki’s list; instant claim 6 requires at least one additional element selected from a list of 22 elements, 19 of which are on Hanazaki’s list. Thus instant claims 5 and 6 both provide a very broad genus giving rise to many possible combinations as well, which are rendered obvious since Hanazaki’s list discloses a majority of the claimed elements.
Applicant argues that Hanazaki does not teach the claimed amount of Al, Zr and Mg or those required by instant claims 5 and 6. The examiner disagrees. As acknowledged by Applicant, “1-x” in Hanazaki’s formula Li1-aNixMe1-xO2 represents the total amount of all Me components, thus the amount of each of the individual “Me” is no more than “1-x”. Hanazaki teaches that 0.7≤x≤1.0 ([0072]-[0075]), thus 0≤1-x≤0.3, therefore the content of each of the “Me”, i.e., Al, Zr and Mg is equal or less than 30 mol%, which encompasses each of the claimed content of Al, Zr, and Mg, respectively, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Applicant argues that instant examples indicate improved particle strength and performance when the second positive active material includes Ni, Co, and Mn as transition metals and all of Al, Zr, and Mg as doping elements. However, as discussed above, the claims are directed to a vast amount of combinations, while the results are from a particular combination of specific amount of each element, i.e., the improvement only occurs when each doping element is doped in a specific amount (instant specification [0111]) . Thus Applicant's showing of unexpected results is not commensurate in the scope with the claims. MPEP 716.02(d) states: Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See also In re Peterson, 315 F.3d 1325, 1329-31,65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003); In re Grasselli, 713 F.2d 731,741,218 USPQ 769, 777 (Fed. Cir. 1983).
Applicant argues that Hanazaki fails to disclose any example including al five types of component elements. However, Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See MPEP 2123 II.
With respect to new claim 10, Applicant argues that Hanazaki fails to teach mixing the first and second positive active material together. The examiner acknowledges that Hanazaki teaches embodiment wherein the first and second positive active material are in separate layers, however, Hanazaki also exemplifies an embodiment wherein the first and second positive active material are mixed together prior to apply to the electrode (Table 1, Example No.4, [0116] and [0133]), which achieve comparable performance, i.e., resistance and capacity retention (Table 1 and [0133]).
Claim Rejections - 35 USC § 103
Claims 1-9 stand, and new claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hanazaki.
Regarding claims 1 and 9, Hanazaki teaches a secondary battery includes a positive electrode comprising a positive electrode active material layer, a negative electrode, and an electrolyte ([0009]), wherein the positive electrode active material layer comprises a first particle group consisting of a plurality of first positive electrode active material particles in the form of single particles, and a second particle group consisting of a plurality of second positive electrode active material particles in the form of secondary particles obtained by aggregation of primary particles ([0009], [0011] and Figure 3).
Hanazaki teaches each of the first positive electrode active material particle and the second positive electrode active material particle may independently include a metal oxide represented by the formula Li1-aNixMe1-xO2 ([0070]-[0072]), which meets the claimed lithium nickel based composite, wherein 0.7≤x≤1.0 ([0075]), which encompasses the claimed nickel content of 80 mol% or more.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include nickel at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Hanazaki teaches “Me” in the formula Li1-aNixMe1-xO2 represents at least one selected from a group consisting of Co, Mn, Al, Zr, B, Mg, Fe, Cu, Zn, Sn, Ba, Sr, Ca, W, etc. ([0076]), which meets the claimed first positive active material and renders the claimed second positive active material obvious when Me comprises a combination of Co, Mn, Al, Zr and Mg.
Regarding claims 2-4, Hanazaki teaches in formula Li1-aNixMe1-xO2, 0.7≤x≤1.0 ([0072]-[0075]), thus 0≤1-x≤0.3, i.e., the content of each of the “Me”, i.e., Al, Zr and Mg is equal or less than 30 mol%, which encompasses each of the claimed content of Al, Zr, and Mg, respectively, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Regarding claim 5, Hanazaki teaches the first positive electrode active material particle may include a metal oxide represented by the formula Li1-aNixMe1-xO2 ([0070]-[0072]), wherein “Me” represents at least one selected from a group consisting of Co, Mn, Al, Zr, B, Mg, Fe, Cu, Zn, Sn, Ba, Sr, Ca, W, Mo, Nb, Ti, Si, V, Cr, and Ge([0076]), which renders the elements in the claimed formula 4 obvious when Me comprises a combination of Co, Mn, Al, Zr and Mg, and at least one of B, Fe, Cu, Ba, Sr, Ca, W, Mo, Nb, Ti, Si, V and Cr, which meets the claimed M6.
Hanazaki teaches in the formula Li1-aNixMe1-xO2, −0.3≤a≤0.3 ([0074]), thus 0.7≤1-a≤1.3, which encompasses the claimed a4; 0.7≤x≤1.0 ([0075]), which encompasses the claimed x4; thus 0≤1-x≤0.3, i.e., the content of each of the “Me”, i.e., Co, Mn, Al, Zr, Mg and M6 is equal or less than 30 mol%, which encompasses the claimed y4, z4, b4, c4, d4, respectively, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Regarding claim 6, Hanazaki teaches the second positive electrode active material particle may include a metal oxide represented by the formula Li1-aNixMe1-xO2 ([0070]-[0072]), wherein “Me” represents at least one selected from a group consisting of Co, Mn, Al, Zr, B, Mg, Fe, Cu, Zn, Sn, Ba, Sr, Ca, W, Mo, Nb, Ti, Si, V, Cr, and Ge([0076]), which renders the elements in the claimed formula 1 obvious when Me comprises at least one of Co, Mn, Al, Zr, B, Mg, Fe, Cu, Zn, Sn, Ba, Sr, Ca, W, Mo, Nb, Ti, Si, V and Cr, which meets the claims M1 and M2, respectively.
Hanazaki teaches in the formula Li1-a2NixMe1-xO2, −0.3≤a≤0.3 ([0074]), thus 0.7≤1-a≤1.3, which encompasses the claimed a1; 0.7≤x≤1.0 ([0075]), which encompasses the claimed x1; thus 0≤1-x≤0.3, i.e., the content of each of the “Me” is equal or less than 30 mol%, which encompasses the claimed y1, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Regarding claim 7, Hanazaki teaches the first positive electrode active material particles may have an average particle size of 1 μm to 5 μm ([0056]), which meets the claimed size of the second positive active material; and the second positive electrode active material particles may have an average particle size of 5 μm to 20 μm ([0064]-[0065]), which meets the claimed size of the first positive active material.
Regarding claim 8, Hanazaki teaches the first positive electrode active material particles may have a mass fraction of 10% to 30% with respect to the total of the first positive electrode active material particles and the second positive electrode active material particles ([0092]), which meets the claimed amount of the second positive active material, thus the second positive electrode active material particles have a mass fraction of 70 to 90 %, which meets the claimed amount of the first positive active material.
Regarding claim 10, Hanazaki exemplifies mixing the first particle group and the second particle group to prepare a slurry and applying it to the positive electrode surface (Table 1, Example No.4, [0110], [0116] and [0133]), which meets the claim.
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 AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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