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 .
Election/Restrictions
Applicant’s election of group I in the reply filed on 06/09/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The term “Equation 1” in claim 1 as well as in specification should read “Inequation 1”.
The data shown in the Tables of the specification should have data deviations/errors presented. For example, in Table 1, 104.8±?, 102.1±?
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.
Claim 6 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 6 recites the limitation "the positive electrode active material". There is insufficient antecedent basis for this limitation in the claim. See the rejection below for how the limitation is interpreted.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al (PG Pub 20210384497), and further in view of CN112952048, hereinafter as, Nakano and ‘048.
Regarding claims 1-2 and 4, Nakano teaches a lithium secondary battery (See, Figs. 1-2) comprising:
a positive electrode and a negative electrode and a negative electrode (e.g., [0021]-[0026]),
wherein the positive electrode comprises a lithium composite transition metal compound comprising nickel and cobalt represented by the formula LiaNibMncCodMxO2, which reads on the formula as recited in claim 4 when M is Mg. The molar fraction range of each element in the claimed formula as well as the range of x+y as claimed overlap those of Kuroda, respectively. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
a average particle diameter (D50) of the lithium composite transition metal compound being 1 µm to 30 µm [para 77] which is overlapped the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
,Nakano teaches the negative electrode comprises a carbon-based active material (e.g., graphite, [0047]) and a silicon-based active material (e.g., silicon oxide, [0043]) (See [0037]-[0049]). However, Nakano does not teach weight of silicon base active material.
‘048 teaches negative electrode material comprising silicon based material and carbon based material where the silicon based material is the silicon-carbon composite where the weight amount of silicon based material is 2-20% which is within claimed range.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a Si-C physically or chemically combined with a carbon-based material as an alternative to the negative electrode active material of Nakano, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07.
As for combination, the silicon-based active material is included in an amount of 1 part by weight to 20 parts by weight based on 100 parts by weight of the total amount of the silicon-based active material and the carbon-based active material
As to the limitation associated with the inequation 1, the “a” and “b”, and “c” represent characteristic or property of the silicon-based active material and the carbon-based active material, respectively. Since modified Nakano teaches the same materials as claimed, the characteristics or properties are expected to be necessarily present. Products of identical chemical composition cannot have mutually exclusive properties (See MPEP § 2112.01). As for “a*”, Nakano further teaches that the ratio of the silicon-based active material based on 100 parts by weight of the total amount of the silicon-based active material and the carbon-based active material in the negative electrode is adjustable ([0049]). Therefore, one of ordinary skill in the art would have readily arrived at the claimed inequation 1 by adjusting the said ratio through routine experimentations.
Also, since modified teaches the claimed lithium composite transition metal compound, it is considered that a BET specific surface area of the lithium composite transition metal compound may be 0.5 m2/g to 1.1 m²/g. It is noted that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 3, modified Nakano teaches the lithium secondary battery of claim 1, wherein the lithium composite transition metal compound comprises nickel in a molar ratio of 0 to 1. The claimed ratio range of 0.8 or more overlaps or lies inside the range of 0 to 1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 5, modified Nakano in view of Choi teaches the same silicon-carbon composite, the characteristic or property of having a discharge efficiency of from 85% to 95% is reasonably expected to be present. Products of identical chemical composition cannot have mutually exclusive properties (See MPEP § 2112.01).
Regarding claim 6, modified Nakano teaches the lithium secondary battery of claim 1, and further teaches only the lithium composite transition metal compound can be used as the positive electrode active material ([0071]), meaning the positive electrode comprises 100 parts by weight of the lithium composite transition metal compound based on 100 parts by weight of the positive electrode active material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UYEN M TRAN whose telephone number is (571)270-7602. The examiner can normally be reached Monday-Friday 9am-6pm.
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/UYEN M TRAN/Primary Examiner, Art Unit 1726
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