COMPOSITE PARTICLES FOR RECHARGEABLE BATTERY AND RECHARGEABLE BATTERY INCLUDING SAME
DETAILED ACTION
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 1/18/2024 and 9/16/2024 are is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 14 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 14 discloses “the positive electrode as claimed in claim 9”. There is no positive electrode claimed in claim 9.
Claim Rejections - 35 USC § 102
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 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 –
(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.
Claims 16, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US 2020/0168877 A1).
Regarding claim 16, Lee et al. teach a method of preparing composite particles for a non-aqueous electrolyte rechargeable battery (Paragraph 0001), the method comprising: mixing metal hydroxide particles and a flame retardant to form a mixture (Paragraph 0096 discloses mixing aluminum hydroxide with phosphoric acid and melamine as a flame-resistant resin.); and heating the mixture (Paragraph 0096 discloses heating the mixture for 12 hours.).
Regarding claims 18 and 19, Lee et al. teach the method as claimed in claim 16, wherein heating comprises heating and reacting mixture at greater or equal to about 40 °C and less than or equal to about 100 °C for greater than or equal to about 1 hour and less than or equal to about 48 hours (Paragraph 0096 discloses heating and reacting the mixture at 70°C for 12 hours.).
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.
Claims 1, 3-11, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2020/0168877 A1).
Regarding claims 1, 4, and 5, Lee et al. teach composite particles, the composite particles comprising a metal hydroxide and a flame retardant (Abstract; Paragraphs 0001, 0059, 0099 disclose a microcapsule comprising aluminum hydroxide and phosphoric acid.), wherein, the composite particles are for a non-aqueous electrolyte rechargeable battery (Paragraph 0001), and an integrated value of a volume-based particle size distribution of the composite particles is greater than or equal to about 0.1 micrometer (μm) and less than or equal to about 8 μm (Paragraph 0096 discloses the microcapsule final particle size is 1 µm.).
However, Lee does not disclose an amount of desorbed P2 (MS1) of the composite particles from about 80 °C to about 1400 °C as determined by thermal desorption gas mass spectrometry (TDS-MS) is greater than or equal to about 200×10-6 mole per gram (mol/g) and less than or equal to about 2500×10-6 mol/g, an amount of desorbed H2O (MS2) of the composite particles from about 80 °C to about 200 °C as determined by TDS-MS is greater than or equal to about 50×10-6 mol/g and less than or equal to about 1000×10-6 mol/g.
Regarding the desorption properties, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Furthermore, where claimed and prior art products are identical or substantially identical in structure or composition or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Furthermore, if a composition is physically the same, it must have the same properties. See MPEP 2112.01.
Regarding claim 3, Lee et al. teach the composite particles as claimed in claim 1. However, they do not teach wherein a ratio of MS1 and MS2 satisfies Formula (1): 0.5≤(MS1/MS2)≤10.0…(1).
However, it would be obvious to one of ordinary skill in the art to expect that Lee’s product comprises the same desorption properties based on the rationale that the composition taught by Lee and the claimed product are substantially identical and the methods for producing the products in Lee and the claimed product are also substantially identical. See MPEP 2112.01
Regarding claim 6, Lee et al. teach the composite particle as claimed in claim 1. However, they do not teach wherein an amount of an aluminum element is about 1 mass% to about 50 mass% and an amount of a phosphorus element is about 1 mass% to about 50 mass% as determined by inductively coupled plasma emission spectroscopy (ICP-AES).
Lee et al. discloses 30 parts by weight of aluminum hydroxide is mixed with 1.5 parts by weight of phosphoric acid which is within the ranges as required in the present application. Therefore, it would be obvious to one of ordinary skill in the art to expect the composition taught by Lee and the claimed product are substantially identical and the methods for producing the products in Lee and the claimed product are also substantially identical. See MPEP 2112.01
Regarding claim 7, Lee et al. teach the composite particle as claimed in claim 1. However, they do not teach wherein an amount of desorbed CH4 (MS3) of the composite particles from about 80 °C to about 1400 °C as determined by TDS-MS is greater than or equal to about 30×10-6 mol/g and less than or equal to about 500×10-6 mol/g, and an amount of desorbed CH3OH (MS4) of the composite particles from about 80 °C to about 1400 °C as determined by TDS-MS is greater than or equal to about 500×10-6 mol/g and less than or equal to about 3000×10-6 mol/g.
Regarding the desorption properties, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Furthermore, where claimed and prior art products are identical or substantially identical in structure or composition or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Furthermore, if a composition is physically the same, it must have the same properties. See MPEP 2112.01.
Regarding claim 8, Lee et al. teach the composite particle as claimed in claim 1. However, they do not teach wherein an amount of desorbed C6H6 (MS5) of the composite particles from about 80 °C to about 1400 °C as determined by TDS-MS is greater than or equal to about 100×10-6 mol/g and less than or equal to about 3000×10-6 mol/g.
Regarding the desorption properties, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Furthermore, where claimed and prior art products are identical or substantially identical in structure or composition or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Furthermore, if a composition is physically the same, it must have the same properties. See MPEP 2112.01.
Regarding claim 9, Lee et al. teach the composite particles as claimed in claim 1, wherein the metal hydroxide has a D50 value greater than or equal to about 10 nanometer (nm) and less than or equal to about 10 μm (Paragraph 0096 discloses the aluminum hydroxide particles have a D50 of 0.9 µm.).
Regarding claim 10, Lee et al. teach the composite particles as claimed in claim 1, wherein an amount of the metal hydroxide is greater than or equal to about 1 mass% and less than or equal to about 50 mass%, based on a total weight, 100 mass% of the composite particles (Paragraph 0096 discloses 30 parts by weight of aluminum hydroxide.).
Regarding claim 11, Lee et al. teach the composite particles as claimed in claim 1, wherein an amount of the flame retardant is greater than or equal to about 0.1 mass% and less than or equal to about 90 mass%, based on a total weight, 100 mass% of the composite particles (Paragraph 0096 discloses 1.5 parts by weight of phosphoric acid.).
Regarding claim 14, Lee et al. teach a non-aqueous electrolyte rechargeable battery (Paragraph 0105), the non-aqueous electrolyte rechargeable battery comprising a positive electrode (Paragraph 0101 discloses LiCoO2 being deposited on an aluminum foil current collector.), a negative electrode (Paragraph 0103) and a separator (Paragraphs 0098-0099) and a non-aqueous electrolyte (Paragraph 0105), wherein the positive electrode is the positive electrode as claimed in claim 9.
Regarding claim 17, Lee et al. teach the method as claimed in claim 16. However, they do not teach wherein mixing comprises a stirring speed greater than or equal to about 50 meter per minute (m/min) and less than or equal to about 500 m/min.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a stirring speed greater than or equal to about 50 meter per minute (m/min) and less than or equal to about 500 m/min, in the method of Lee, in order to increase homogeneity of the mixture. The skilled artisan recognizes that mixing speed directly effects blending. Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215(CCPA 1980) (see MPEP § 2144.05, II.).
Claims 1, 2, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2017/0358818 A1).
Regarding claim 1, Nakamura et al. teach composite particles, the composite particles comprising a metal hydroxide and a flame retardant (Abstract; Examples 1-7; Paragraph 0023; Fig. 9 disclose aluminum hydroxide being surface modified using silanes, titanates, aluminates, or fatty acids so that the dehydration temperature, i.e., the endothermic reaction temperature rises, so that the fire-retardant effect in the temperature range required for the battery reaction is reduced.), wherein, the composite particles are for a non-aqueous electrolyte rechargeable battery (Claims 1-10), and an integrated value of a volume-based particle size distribution of the composite particles is greater than or equal to about 0.1 micrometer (μm) and less than or equal to about 8 μm (Paragraph 0084 discloses particle diameter of the surface-modified aluminum hydroxide is favorably, for example, not less than 1 nm and not more than 5 μm, and more favorably not less than 1 nm and not more than 2 μm. Note that the particle diameter is a particle size (D50) of 50% of the cumulative value of the volume-based particle size distribution obtained by a laser diffraction method.).
However, Nakamura does not disclose an amount of desorbed P2 (MS1) of the composite particles from about 80 °C to about 1400 °C as determined by thermal desorption gas mass spectrometry (TDS-MS) is greater than or equal to about 200×10-6 mole per gram (mol/g) and less than or equal to about 2500×10-6 mol/g, an amount of desorbed H2O (MS2) of the composite particles from about 80 °C to about 200 °C as determined by TDS-MS is greater than or equal to about 50×10-6 mol/g and less than or equal to about 1000×10-6 mol/g.
Regarding the desorption properties, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Furthermore, where claimed and prior art products are identical or substantially identical in structure or composition or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Furthermore, if a composition is physically the same, it must have the same properties. See MPEP 2112.01.
Regarding claim 2, Nakamura et al. teach the composite particles as claimed in claim 1, wherein a specific surface area (BET) of the composite particles is greater than or equal to about 8 square meter per gram (m2/g) and less than or equal to about 150 m2/g (Paragraph 0088 discloses 0.5-50 m2/g.).
However, Nakamura et al. do not teach the BET is calculated by an adsorption isotherm measured by adsorbing nitrogen on to the composite particles.
Regarding the BET surface area of the surface-modified metal hydroxide, first as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the aluminum hydroxide that is surface modified as taught by Nakamura where the specific surface area as measured by BET method. Second, regarding adsorbing nitrogen on t to the composite particles, since nitrogen gas adsorption depends on hydrophobicity of the aluminum hydroxide surface and the aluminum hydroxide surface, an artisan would reasonably expect that Nakamura’s product comprises the specific surface area in comparable ranges for nitrogen adsorption based on the rationale that the composition taught by Nakamura and the claimed product are substantially identical as comprising hydrophobic surface modification (triethoxyvinylsilane coupling) and the methods for producing the products in Nakamura and the claimed product are also substantially identical.
Regarding claim 12, Nakamura et al. teach a positive electrode, the positive electrode comprising a positive electrode current collector and a positive electrode mixture layer on the positive electrode current collector (Paragraph 0045), wherein, the positive electrode is for a non-aqueous electrolyte (Claims 1-10), and the positive electrode mixture layer comprises a positive electrode active material and the composite particles as claimed in claim 1 (Paragraph 0127 discloses the surface-modified aluminum hydroxide is contained in at least one of the non-aqueous electrolyte solution, the positive electrode active material layer.).
Regarding claim 13, Nakamura et al. teach the positive electrode as claimed in claim 12, wherein an amount of the composite particles in the positive electrode mixture layer is greater than or equal to about 0.1 mass% and less than or equal to about 5 mass% (Paragraphs 0086 discloses the additive amount of the surface-modified aluminum hydroxide is favorably not less than 1% by mass, and more favorably not less than 5% by mass in terms of mass percentage with respect to the electrolyte. Further, Paragraph 0127 discloses the surface-modified aluminum hydroxide is contained in at least one of the non-aqueous electrolyte solution, the positive electrode active material layer, and the negative electrode active material layer, but it is favorably contained in at least the non-aqueous electrolyte solution (non-aqueous electrolyte.).
Regarding claim 14, Nakamura et al. teach a non-aqueous electrolyte rechargeable battery, the non-aqueous electrolyte rechargeable battery comprising a positive electrode, a negative electrode, a separator, and a non-aqueous electrolyte (Claims 8 and 10), wherein the positive electrode is the positive electrode as claimed in claim 9.
Regarding claim 15, Nakamura et al. teach the non-aqueous electrolyte rechargeable battery as claimed in claim 14, wherein an amount of the composite particles is greater than or equal to about 0.1 mass% and less than or equal to about 3.0 mass%, based on a total weight of the non-aqueous electrolyte rechargeable battery (Paragraphs 0086 discloses the additive amount of the surface-modified aluminum hydroxide is favorably not less than 1% by mass, and more favorably not less than 5% by mass in terms of mass percentage with respect to the electrolyte. Further, Paragraph 0127 discloses the surface-modified aluminum hydroxide is contained in at least one of the non-aqueous electrolyte solution, the positive electrode active material layer, and the negative electrode active material layer, but it is favorably contained in at least the non-aqueous electrolyte solution (non-aqueous electrolyte.).
Double Patenting
Claims 16-19 of this application is patentably indistinct from claims 15-18 of Application No. 18/416,603. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 16-19 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 15-18 of copending Application No. 18/416,603(reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 9-15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 10-14 of copending Application No. 18/416/603 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the all the claim limitations of the present claims are disclosed in ‘603.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL S GATEWOOD whose telephone number is (571)270-7958. The examiner can normally be reached M-F 8:00-5:30.
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Daniel S. Gatewood, Ph.D.
Primary Examiner
Art Unit 1729
/DANIEL S GATEWOOD, Ph. D/Primary Examiner, Art Unit 1729 July 6th, 2026
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