DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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.
Claims 5 – 8 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 pre-AIA the applicant regards as the invention.
Claim 5 recites the “Ni ratio” which is unclear, as is this the amount of Ni relative to what? For the purpose of evaluating the prior art, this has been interpreted as per page 5 of Applicants’ as-filed disclosure:
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(similar amendment to claim 5 would overcome this rejection).
Claims 6 – 9 recite limitations directed to a “small” and “large” particle. The term “small” and “large” in claim 6 is a relative term which renders claims 6 - 9 indefinite. Both terms “small” and “large” are not defined by the claim (or, claims 7 or 8), the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This rejection can be overcome by amending claim 6 to recite the specific average particle sizes of the two ‘sizes’ of particles or by amending claim 6 to positively recite that the “small particle” is smaller in average particle diameter than the “large” particle, provided this finds support in the as-filed disclosure.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 4, 6 – 9, 11 and 12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kintsu et al. (U.S. Patent App. No. 2021/0296638 A1).
Regarding claim 1, Kintsu et al. discloses a positive electrode comprising a positive electrode composite material layer, wherein the positive electrode composite material layer includes an active material particle and a carbon nanotube (Title; Abstract).
Kintsu et al. fails to disclose an exact range of a content in wt% of the carbon nanotubes (CNTs)1 nor area resistivity explicitly in the claimed W-cm2 range2.
However, Kintsu et al. teach that the amount of added CNTs can be varied to effect the properties of the positive electrode in a range of 0.04 – 0.24 weight percent (examples and Table 1: percent by mass). Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to determine an amount of CNTs meeting applicants’ claimed wt% range by optimizing the results effective variable through routine experimentation. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the area resistivity being 0.10 W-cm2 or more, Kintsu et al. teach area resistivity values of 10 W-cm2 or less (Paragraph 0058 and examples), which overlaps significantly with the claimed range. The Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the area resistivity, especially as different means of measurement may return slightly different values, through routine experimentation, especially given the teaching in Kintsu et al. regarding the desire to have area resistivity values of10 W-cm2 or less. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Kintsu et al. to control the amount of CNTs and the area resistivity to meet the claimed limitations as taught by Kintsu et al., as these appear to be routine optimizations within the general disclosure of the Kintsu et al. reference.
Regarding claim 2, the amount of CNTs is deemed obvious for the reasons set forth above.
Regarding claim 3, the area resistivity is deemed obvious for the reasons set forth above.
Regarding claim 4, Kintsu et al. discloses a density meeting the claimed limitations (Paragraph 0059).
Regarding claims 6 – 9, Kintsu et al. disclose a mixture of ‘small’ and ‘large’ particles meeting the claimed average sizes and ratios (Paragraphs 0031 – 0057 and examples).
Regarding claim 11, the Examiner takes Official Notice that ‘additives’ are conventional in the battery arts, from dispersants to additional conductive aids or binders. For support of the Examiner’s position, see (for example) Kintsu et al., Paragraphs 0029 – 0030.
Regarding claim 12, Kintsu et al. discloses the non-aqueous secondary battery as noted above (Title; Abstract and citations above).
Claims 5 and 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kintsu et al. as applied above, and further in view of Kim et al. (U.S. Patent App. No. 2012/0107683 A1).
Kintsu et al. is relied upon as described above.
Regarding claim 5, Kintsu et al. fails to disclose low Ni overall, though only discloses a high Ni for one of the two types of particles. Regarding claim 10, Kintsu et al. fails to disclose using surface-modified CNTs.
However, Kim et al. teach that it is known that the active materials for positive electrodes can comprise a wide range of transition metal oxides, some with high Ni content and some with even no Ni content (Paragraph 0049). The Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the Ni “ratio” of the totality of the active material particles to be 60% or less through routine experimentation, especially given the teaching in Kim et al. regarding the known use of many, equivalent positive electrode active material particles. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
I.e. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, using a high Ni ‘ratio’ active material or an active material with a Ni ‘ratio’ of 60% or less are deemed functional equivalents in the field of known positive active materials. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Similarly, using non-surface-modified CNTs and surface modified CNTs are deemed functional equivalents in their use in positive electrodes, as taught by Kim et al. (at least Paragraph 0055).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Kintsu et al. to meet the composition requirements of claim 5 and the type of CNTs recited in claim 10, as both of these aspects are recognized as functionally equivalents in the battery arts and would be within the knowledge of a person of ordinary skill in the art preforming routine optimization and performance enhancements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
June 9, 2026
1 While Table 1 appears to show embodiments that might anticipate the claimed limitations, the Examiner is unclear if Kintsu et al.’s teaching of “percentage by mass” of the CNTs is based on a total solid content of the positive electrode material layer or just based on relative to the active material alone, as the specification does not talk about the “percentage by mass” of the CNTs to add other than relative to single- versus multi-walled CNTs. As such, the Examiner has decided this rejection falls better under 35 U.S.C. 103.
2 Regarding area resistivity, the Examiner notes that there is some question whether different measurement techniques would report different ranges of W-cm2, which leads to a question of exactly how different is the claimed range from the higher “10 W-cm2 or less” range taught in the Kintsu et al. reference. The Examiner notes that the present claim does not recite how the area resistivity is measured, so is open to any and all potential measurement techniques with regard to area resistivity.
Prosecution Insights