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 amendment received 4/7/2026 (“Amendment”) has been entered.
Response to Arguments
Applicant's arguments filed 4/7/2026 have been fully considered but they are not persuasive.
In response to applicant's argument with regards to the 112 rejection, it is noted that the features upon which applicant relies (i.e., MPa) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Claim 1 does not recite any unit of measure, thus rejection is maintained.
In response to the applicant’s argument with regards to the breaking strength, Examiner does not find this convincing. Remarks p 3-7. The claim only requires the following:
An active material containing composite materials containing a lithium manganese, a conductive agent. Then further claims a break strength and a density range of the active material layer. Examiner notes, a skilled artisan understands that the breaking strength of a material is material property that depends on the intrinsic composition and processing conditions and inherent properties (i.e. chemical composition, structure, particle size). It is noted, the claims are directed to a product and the process of making the product. Here, part of determining the breaking strength is determined by what the process is during the manufacturing phase (which is also admitted by the Applicant, i.e. firing temperature and dopants).. It is the Examiner’s position; the claimed breaking strength is expected to be within the claimed range if the materials and density range are taught by the prior art. As noted in the Non-final rejection, Isozaki teaches the claimed active material, i.e. lithium nickel cobalt manganese composite oxide the density to be in the required ranges, therefore the breaking strength is expected based on both of these factors and not solely on the density.
It appears the Applicant may be arguing unexpected results with regards to the claimed ratio of A/B . Remarks p. 7
Examiner suggests Applicant review MPEP 716.01C in order to understand the Applicant must provide actual proof to support the objective evidence.
The examiner finds that the data do not show unexpected results for at least the following reasons: a. Applicant has not demonstrated criticality of the claimed ranges. There is only one data point outside of the claimed ranges in Table 2; therefore, it is impossible to compare a sufficient number of tests both inside and outside the claimed range to show criticality of the claimed range (MPEP 716.02(d) II). b. Applicant has not explained that the results are unexpected and unobvious and of both statistical and practical significance (MPEP 716.02(b)). Specifically, Applicant has not explained what the significance of the difference of the A/B ratio in the range of 0.01-0.1. How does that difference impact the function of the electrode? Is there are marked improvement so as to demonstrate a practical significance? Similarly, the practical significance of the difference in improved performance is not explained. c. Applicant has not shown that the difference in the results (i.e., the results outside of the claimed ranges) is truly unexpected so as to be considered a difference of kind rather than one of degree (MPEP 716.02).
Applicant is reminded that the burden is on applicant to show that difference in results are in fact unexpected and unobvious and of both statistical and practical significance. MPEP 716.02 (b).
In addition, the prior art does not need to recognize the same advantages as Applicant. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Further, Applicant has not provided any showing of objective evidence of secondary considerations, such as unexpected results, to show the criticality of the claimed subject matter. To be of probative value, any objective evidence should be supported by actual proof. Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991). The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 716.01(c).
The rejection is maintained.
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.
Claim1 thus dependent claims 2-9 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. Examiner notes, claim 1 requires the ratio of the breaking strength to be within a range of 0.01 to 0.1. In the instant specification, it describes that the “The breaking strength A of the composite material particles is desirably within the range of 2 MPa to 10 MPa. The breaking strength A of the composite material particles is more preferably within the range of 2.5 MPa to 10 MPa. The strength ratio A/B obtained by dividing the breaking strength A of the composite material particles by the breaking strength B of the active material particles is made 0.01 to 0.1. The strength ratio A/B is more preferably within the range of 0.01 to 0.04” [0038]. Claim 2 is noted to claim the recited ranges required to achieve the breaking strength to be within a range of 0.01 to 0.1. It is unclear to the Examiner if one can achieve the breaking strength to be within the required ranges without knowing the ranges (MPa) of the composite material particles or if the one can calculate the breaking strength based on the claimed MPa? The Examiner has rejected the claims as the breaking strength being an inherent characteristic which is dependent on the density of the active material. Applicant should amend the claim to clarify how the breaking strength ranges are achieved, if necessary.
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) 1-3 and 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20120270093A1 (Isozaki)
Regarding claim 1, Isozaki teaches a non-aqueous electrolyte battery [abs]; and teaches an electrode comprising: an active material-containing layer containing composite material particles, the composite material particles including active material particles, an electro- conductive agent, and a binder, the active material particles containing a lithium nickel cobalt manganese composite oxide [abs, 0019-0025] and a density of the active material-containing layer being within a range of 3.2 g/cm3 to 3.8 g/cm3 [0043-0044; . 2.5 g/cm3 or more and 3.5 g/cm3 or less; which falls within the claimed ranges]. Isozaki is silent with respect to a strength ratio A/B of a breaking strength A of the composite material particles to a breaking strength B of the active material particles being within a range of 0.01 to 0.1.
With regards to this limitation, the Examiner notes, the instant specification teaches the breaking strength is affected by the electrode density [0020-0022], therefore since Isozaki teaches the density to be withing the claimed ranges, it inherently teaches the breaking strength as claimed.
An inherent feature does not need to be recognized by the art at the time of the invention, but only that the subject matter is in fact inherent in the prior art reference. See MPEP $2112(II).
Regarding claim 2, as noted in claim 1, Isozaki inherently teaches the breaking strength, thus it is the Examiners position, Isozaki also inherently teaches the claimed “wherein the breaking strength A of the composite material particles is within a range of 2 MPa to 10 MPa, and the breaking strength B of the active material particles is within a range of 30 MPa to 300 MPa” as the breaking strength is affected by the density [noted from the instant spec para 0037-0038] and if the composite particles density is within the claimed range, the MPa will also be within the same range. An inherent feature does not need to be recognized by the art at the time of the invention, but only that the subject matter is in fact inherent in the prior art reference. See MPEP $2112(II).
Regarding claim 3, Isozaki teaches wherein an average particle size of the active material particles is within a range of 2 µm to 6 µm [0042- average particle diameter (secondary particle diameter) of 4 μm or more and 15 μm and less; which falls within the claimed ranges] .
Regarding claim 5, Isozaki teaches wherein the lithium nickel cobalt manganese composite oxide is represented by a general formula LiaNil-x-y-zCoxMnyMzO2, where 0.9 < a 1.25, 0< x < 1, 0< y < 1, 0< z < 0.2,x + y + z < 1, and M includes one or more metal elements other than Ni, Co, and Mn [0038; LiaNi1−x−y−zCoxMnyMzO2 (wherein, a, x, y, and z are 0.9<a≦1.25, 0<x≦0.4, 0<y≦0.45, and 0≦z≦0.1; all fall within the claimed ranges].
Regarding claim 6, Isozaki teaches wherein the metal elements include at least one selected from the group consisting of Mg, Ca, Al, Ti, V, Cr, Zr, Nb, Mo, and W [0038- Mg, Al, Ti, Zr].
Regarding claim 7, Isozaki teaches wherein a proportional content of the electro-conductive agent to a total mass of the active material particles, the electro- conductive agent, and the binder is within a range of 3% by mass to 20% by mass [0047; the binder is 2 wt % or more and 7 wt % or less].
Regarding claim 8, Isozaki teaches a battery comprising: a positive electrode; and a negative electrode, the positive electrode including the electrode according to claim 1 [0019, whole document].
Regarding claim 9, Isozaki teaches a battery pack comprising the battery according to claim 8 [0019].
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20120270093A1 (Isozaki) and further in view of US20160056450A1 (Yoshikawa).
Regarding claim 4, Isozaki does not teach wherein the active material-containing layer has a particle size distribution for which a ratio D90/D10 of a particle size D9o at a cumulative frequency of 90% from a small particle size side to a particle size D10 at a cumulative frequency of 10% from the small particle size side is 4 or less. Yoshikawa teaches a positive electrode and a nonaqueous electrolyte battery [abs]. Yoshikawa teaches a similar positive electrode layer as Isozaki and teaches the particle diameter d10 within a range of 0.5 μm to 3 μm and the particle diameter d90 within a range of 4 μm to 10 μm [0021-0022]. Upon calculation, Yoshikawa teaches the D90/D10 to be 4 or less; i.e. D90 at 10µm/D10 at 3µm = 3.3 which is less than 4 and falls within the recited range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Isozaki in view of Yoshikawa as having the D90 and D10 in the range, the energy density of the battery is improved [0021-0028].
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.
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/S.G./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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