CTNF 18/369,600 CTNF 75777 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 Preliminary Amendment The preliminary amendment filed September 18, 2023: Claims 1-2, 4, 6-10, 13-18 and 20-21 are pending. Claims 3, 5, 11-12 and 19 have been canceled as per Applicant’s request. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement The information disclosure statement filed December 12, 2023 has been placed in the application file and the information referred to therein has been considered as to the merits. With respect to foreign language references and foreign language patent office communications with no translation of the document: “If no translation is submitted, the examiner will consider the information in view of the concise explanation and insofar as it is understood on its face, e.g., drawings, chemical formulas, English language abstracts, in the same manner that non-English language information in Office search files is considered by examiner in conducting searches.” See MPEP §609.04(a)(II) (D) and 37 CFR 1.98(a)(3)(ii). Drawings The replacement sheet drawings received November 15, 2023 are acceptable for examination purposes. Specification The specification received September 18, 2023 has been reviewed for examination purposes. Claim Objections 07-29-01 AIA Claim 14 is objected to because of the following informalities: the term “The” (capitalized) within the body of the claim (see lines 9 and 12) should not be capitalized. See 112 rejection to claim 14 below further suggesting suitable alternative claim language to address this objection and 112 rejection to these limitations . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 4, 6, 14 and 23-24 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. Claim 4 appears to recite M’ in duplicate as claim 4 has been amended to recite: “and/or wherein M' is selected from the group consisting of Ti, Nb, Mo, V, Zr, and any combination thereof, and/or wherein M' is selected from the group consisting of Ti, Nb, Mo, V, Zr, and any combination thereof.” It appears that the second recitation of M’ in claim 4 is a redundant recitation to the previously recited first recitation of M’ in claim 4 which is identical in scope to each other. Applicant is advised to cancel the second iteration of and/or wherein M' is selected from the group consisting of Ti, Nb, Mo, V, Zr, and any combination” at lines 4-5 of claim 4 to overcome this rejection. Claim 6 recites the limitation "the material" in line 6. There is insufficient antecedent basis for this limitation in the claim as neither claims 1 nor 6 clearly define what “the material” is. It is suggested to replace the term “material” with “composition” (see claim 1, line 1). Claim 14 recites the limitations "the low temperature 1 st charge capacity" in line 3; “compositions” in line 3; “the 1 st cycle” in line 3; "the low temperature 1 st discharge capacity" in line 6; “compositions” in line 6; “the 1 st cycle” in line 7;. "The high temperature 1 st charge capacity" in line 9; “compositions” in line 9; “the 1 st cycle” in line 10; "the high temperature 1 st discharge capacity" in line 12; “compositions” in line 12; and “the 1 st cycle” in line 12. There is insufficient antecedent basis for these limitation in the claim. The following suggestions may overcome the 112 rejections above: "a low temperature 1 st charge capacity" in line 3; “composition” in line 3; “a 1 st cycle” in line 3; "a low temperature 1 st discharge capacity" in line 6; “composition” in line 6; “a 1 st cycle” in line 7;. "a high temperature 1 st charge capacity" in line 9; “composition” in line 9; “a 1 st cycle” in line 10; "a high temperature 1 st discharge capacity" in line 12; “composition” in line 12; and “a 1 st cycle” in line 13. Claim 23 is indefinite as it recites “A battery or electrochemical cell”. The genus is indefinite as a person of ordinary skill in the art would appreciate that a battery is a type of electrochemical cell. Therefore, the phrase “electrochemical cell” would be understood to include batteries and not exclude them. The disclosure does not provide any teaching as to what distinguishes the inventive batteries from electrochemical cells either. Claim 24 recites a use claim, in particular “use of a lithium metal oxide according to claim 1 as a cathode material …”. In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." The language of claim 21 parallels the language noted in the citation above as it recites use of the composition of claim 1 “as a" cathode active material in conjunction with other components. Claim Rejections - 35 USC § 102/103 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-27-aia AIA Claim s 1-2, 4, 6-7, 9-10, 13-18 and 20-24 are rejected under 35 U.S.C. 102( a)(1 ) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wang et al. “A disordered rock-salt Li-excess cathode material with high capacity and substantial oxygen redox activity: Li 1.25 Nb 0.25 Mn 0.5 O 2 ” . As to claim 1, Wang discloses a lithium metal oxide composition having the general formula: Li 1+0.25 Nb 0.25 Mn 0.5 O 2 Li 1+x M’ y M 1-x-y O 2 x=0.25; y=0.25 1-x-y=0.5 and where the composition has a lithium cation disordered rock-salt structure. As to claim 4, M is Mn and M’ is Nb (title, abstract and examples). As to claim 6 , Wang does not teach of adding fluorine (known to provide substitution for oxygen deficiencies) in the composition. As to claim 7, the composition has the general formula of Li 1+0.25 Nb 0.25 Mn 0.5 O 2 Li 1+x M’ y M 1-x-y O 2 . As to claim 9 , claim 9 recites a composition including Mo y2 but only requires that the sum of y1+y2 is in a range of 0<y1+y2 < 0.7. The claim includes compositions where y2 can be zero. Wang teaches of Li 1+0.25 Nb 0.25 Mn 0.5 O 2 Li 1+x M’ y M 1-x-y O 2 where M’ is Nb and Nb=0.25; Mo=0 and the sum of Nb and Mo is 0.25+0 which is 0.25, falling in the range of claim 9. As to claim 10, Wang teaches of Li 1+0.25 Nb 0.25 Mn 0.5 O 2 Li 1+x M’ y M 1-x-y O 2 where M’ is Nb. As to claim 13, the energy density of the composition of Wang is 909 Wh/kg (conclusion on page 73). As to claim 14, the composition exhibits an initial discharge capacity of 287mAh/g at first cycle (see paragraph bridging pages 70-71). As to claim 15, Wang teaches of synthesis by providing Li 2 CO 3 , Nb 2 O 5 and Mn 2 O 3 precursor materials and heating at 1000 o C for 12hrs (calcining) in argon (see paragraph bridging pages 70-71). As to claim 16, the aforementioned precursors include at least one or more metal oxides and metal salts, for example (see paragraph bridging pages 70-71).. As to claim 17, the mixture is mixed in a planetary ball mill (see paragraph bridging pages 70-71). As to claim 18, the aforementioned precursor materials are calcined in Ar at 1000 o C for 12hrs (see paragraph bridging pages 70-71). As to claim 20, the inert atmosphere is Ar gas (see Experimental Section on page 6928). As to claim 21, the composition is employed in an electrode (see Experimental Section on page 71). As to claim 22, the electrode composition discussed above in and further detail in Wang includes carbon black (carbon) and PTFE (binder; see Experimental Section on page 71). As to claim 23, the electrode is further employed in a battery or electrochemical cell (see Experimental Section on page 71). As to claim 24, the composition of claim 1 is used as a cathode active material in a cathode in conjunction with an opposing electrode (anode) and an electrolyte for charging and discharging (see Experimental Section on page 71 and resultant charge/discharge profiles). As to claims 1 and 2, while Wang does not explicitly teach of 0< a < 0.5 (claim 1) or 0< a < 0.5 (claim 2), this characteristic of the cathode composition of Wang as Wang recognized that anionic redox occurs in the composition which would be understood to result in the formation of minor oxygen vacancies within the composition of Wang due to minor oxygen loss, thereby resulting in the formation of sub-stoichiometric oxygen in the composition of Wang (i.e., oxygen less than 2 in the formula disclosed in Wang). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under 35 U.S.C. 102. “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) Wang recognized that anionic redox occurs in the composition which would be understood to result in the formation of minor oxygen vacancies within the composition of Wang due to minor oxygen loss. According to Wang, although no clear oxygen reduction plateau is observed in the discharge profiles, the EELS results confirm the reversible oxygen reduction (bottom right-hand column on page 72). Wang further concludes that a disordered rock-salt composition with Li-excess, Li 1+0.25 Nb 0.25 Mn 0.5 O 2 , has been synthesized and tested. It shows a high capacity of 287 mAhg−1 and specific energy density of 909 Wh/kg in the first cycle at 55°C. Combined in situ XRD and EELS measurements indicate that Mn and O both reversibly contribute to the charge transfer with oxygen providing almost half of that capacity. By example, Li 2 CO 3 , Nb 2 O 5 and Mn 2 O 3 precursor materials and heating at 1000 o C for 12hrs (calcining) in argon (see paragraph bridging pages 70-71). The composition of Li 1.25 Nb 0.25 Mn 0.5 O 2 is according to the target stoichiometry. Rietveld refinement using this structural model yields excellent agreement with the experimental observation (Rwp = 2.639, χ2 = 1.520). The lattice parameter is given as 4.1738 (1) Å. The cell is charged to 4.8V (Experimental and Fig. 2). In the least, upon subjecting the cell of Wang to at least one charge cycle of Wang upwards of 4.8V, at least a minor amount of irreversible loss of oxygen would occur, resulting in a slightly sub-stoichiometric oxygen content in the active material with a reasonable amount falling in the range of claims 1 and 2. Therefore, when the composition of Wang is subjected to cycling, it is reasonable to expect that some degree of oxygen loss (within the ranges of claims 1 and 2) will occur thus resulting in an oxygen deficiency (sub-stoichiometric amount of oxygen, i.e. less than 2) in the composition of Wang, absent clear evidence to the contrary. The Examiner invites applicant to provide that that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). In the event that the degree of oxygen vacancies in Wang does not fall expressly in the ranges of claims 1 and 2, since a degree of oxygen vacancy is expected in Wang during cycling, a departure from the pristine form of the composition of Wang whereby some degree of oxygen is lost, the resultant compositions of Wang would still reasonably obviate the particular claimed ranges of claims 1 and 2, absent a sufficient showing of criticality to the claimed range from the oxygen deficiencies of Wang, if any. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele , 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) . Claim Rejections - 35 USC § 103 07-22-aia AIA Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. “A disordered rock-salt Li-excess cathode material with high capacity and substantial oxygen redox activity: Li 1.25 Nb 0.25 Mn 0.5 O 2 ” as applied to claim 1 above, and further in view of Carroll et al. (U.S. Patent Application Publication No. 2018/0034042) . As to claim 8, Wang does not teach of the specific compositions of Li 1.30 Nb 0.25 Mn 0.45 O 2-a or Li 1.30 Nb 0.2 Mn 0.5 O 2-a. As discussed above, Wang teaches of Li 1.25 Nb 0.25 Mn 0.5 O 2 and recognized that oxygen vacancies will occur during redox reaction of the oxygen anion during initial cycling. Therefore, a decrease from pristine O 2 to a lower amount of O2 is expected as a result (see Wang above). Carroll is drawn to the same field of endeavor, providing for Li-Nb-Mn-O 2 compositions of disordered rock salt metal oxides wherein the stoichiometric amount of excess lithium to niobium are incrementally explored in Table 1 including Li 1.3 to Nb 0.2 and Li 1.3 to Nb 0.25 to provide for improved discharge capacity and high specific energy density (see Tables 1-3). Substitution of these parameters of Wang would result in Li 1.3 Nb 0.2 Mn 0.5 O 2 and Li 1.3 Nb 0.25 Mn 0.45 O 2 . It would have been well within the skill of the ordinary worker in the art to vary the stoichiometric amounts of lithium, niobium and manganese according to Carroll within the compositions of Wang with a reasonable and predictable expectation that such differences would not depart from the scope of Wang while providing cation-disordered rock salt structures of Li-Nb-Mn-O having excellent electrochemical properties such as improved discharge capacity and high specific energy density. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of Wang by varying the stoichiometric amounts of lithium, niobium and manganese in accordance with additional teachings of Carroll as it would have provided for cathode active materials having excellent electrochemical properties such as improved discharge capacity and high specific energy density. Furthermore, with respect to the differences in stoichiometry, the differences between the cathode stoichiometry of Wang and certain examples in claim 8 are minor in difference. For example Wang teaches of Li 1.25 Nb 0.25 Mn 0.5 O 2 which compared to Li 1.3 Nb 0.2 Mn 0.5 O 2 of claim 8 is held to be a minor difference, both teaching of an excess lithium cathode having niobium and manganese where the differences in the amount of lithium and niobium are minor differences. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner , 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In addition, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele , 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Again, upon modifying the stoichiometric amounts of Li-Nb-Mn of Wang in accordance with the teachings of Carroll, it is still reasonable to expect that some degree of oxygen loss (within the ranges of claims 1 and 2) will occur thus resulting in an oxygen deficiency (sub-stoichiometric amount of oxygen, i.e. less than 2) in the composition of modified-Wang (modified in view of Carroll), absent clear evidence to the contrary. By example, Li 2 CO 3 , Nb 2 O 5 and Mn 2 O 3 precursor materials and heating at 1000 o C for 12hrs (calcining) in argon (see paragraph bridging pages 70-71). The composition of Li 1.25 Nb 0.25 Mn 0.5 O 2 is according to the target stoichiometry. Rietveld refinement using this structural model yields excellent agreement with the experimental observation (Rwp = 2.639, χ2 = 1.520). The lattice parameter is given as 4.1738 (1) Å. The cell is charged to 4.8V (Experimental and Fig. 2). In the least, upon subjecting the cell of Wang to at least one charge cycle of Wang upwards of 4.8V, at least a minor amount of irreversible loss of oxygen would occur, resulting in a slightly sub-stoichiometric oxygen content in the active material with a reasonable amount falling in the range of claim 1 for the compositions noted in claim 8. In addition, given the minor differences in stoichiometry between Wang and certain examples in claim 8 and given the teachings of Carroll to consider incremental changes in relative stoichiometry of lithium, niobium and manganese, modification of Wang to amounts outside of the specific example of Wang would have still expectedly exhibited a degree of sub-stoichiometric oxygen during cycling. Therefore, when the composition of modified-Wang, at least when it is subjected to cycling, some degree of oxygen loss, including irreversible oxygen loss (within the ranges of claims 1 for a composition of claim 8) will occur thus resulting in an oxygen deficiency (sub-stoichiometric amount of oxygen, i.e. less than 2), absent clear evidence to the contrary. The Examiner invites applicant to provide that that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Application Publication No. 2016/0049640 discloses various Li-Nb-Me-O disordered rock-salt compositions. U.S. Patent Application Publication No. 2019/0088940 discloses various Li-Ti-Me-O disordered rock-salt compositions . Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGG CANTELMO whose telephone number is (571)272-1283. The examiner can normally be reached Mon-Thurs 7am to 5pm. 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, Basia Ridley can be reached at (571) 272-1453. 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. /GREGG CANTELMO/ Primary Examiner, Art Unit 1725 Application/Control Number: 18/369,600 Page 2 Art Unit: 1725 Application/Control Number: 18/369,600 Page 3 Art Unit: 1725