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 .
Election/Restriction
Applicant’s 7/24/26 election without traverse of Group II (claims 9-12) is acknowledged. Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim.
Claim Interpretation
Claim 9’s recitation “for a lithium secondary battery” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67 (CCPA 1976); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). See also MPEP 2111.02 II, citing Kropa v. Robie, Rowe v. Dror, 112, F.3d 473, 478 (Fed. Cir. 1997) (stating that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”), and Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (similar statement). Intended-use language within the body of a claim likewise raises a question/doubt as to the limiting effect thereof. See MPEP 2103 I. C. Absent structural differences between a claim and a prior art material or article, a recitation of the claimed material or article’s intended use cannot alone patentably distinguish the claimed invention from the prior art. See MPEP 2114 I-II, citing, e.g., Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987); MPEP 2111.02 II, citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (stating that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”). See also In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (stating that “a mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable”). Thus, if the prior art structure is capable of performing the intended use, it meets the claim. See MPEP 2111.02 II, citing In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citing, inter alia, In re Zierden).
Drawings
The 1/23/24 drawings are provisionally accepted. Due to their complexity and/or numerosity, applicant’s assistance is requested to ensure that all component labels therein are correctly identified in the specification and vice versa. 37 CFR 1.3 (courtesy required).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 9-12 are rejected under AIA 35 U.S.C. 103 as being unpatentable over the 2019 Zhou et al. article (“Zhou”) (see applicant’s 9/30/24 IDS). Regarding claim 9, Zhou teaches a lithium-titanium-oxide anode (Li4Ti5O12, “LTO”) anode material having an amount of oxygen vacancies therein; Zhou teaches that “more oxygen vacancies will increase the distortion of the lattice, causing serious deterioration in anode performance” and “Li ion mobility”, as well as that “the control of the concentration of oxygen defects in the material is particularly important.” See Zhou at, e.g., abstr.; §1 (ln. 1-2); pp. 2-3 (bridging par.) & 6 (1st par.); Fig. 1. Zhou is thus considered to regard the amount (and thus area ratio) of oxygen vacancy/defect in its LTO anode to be a result-effective variable, and as such, the minimization thereof (i.e. to a value/amount as close to zero as possible, such as within the claimed range) would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention via routine experimentation; it has been held that “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 MPEP 2144.05, citing In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Regarding claims 10-11, as Zhou does not indicate the presence of any dopant metals, the claimed conditions are considered to be met. MPEP 2144.01 (implicit teachings/inferences).
Regarding claim 12, Zhou renders the anode material of claim 9 (from which claim 12 depends) prima facie obvious as detailed above. As such, Zhou’s anode material may thus reasonably be expected to possess and satisfy the properties and functionality limitations of claim 12, as claim 12 merely states properties of claim 9’s anode material. As such, claim 12 is likewise rendered prima facie obvious by Zhou’s teachings vis-à-vis claim 9. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977); MPEP 2112.01. This conclusion of obviousness is buttressed by the Federal Circuit’s holding that “[w]hen a chemical composition is claimed, a prima facie case of obviousness under Section 103 may be established by [the prior art’s teaching of] a
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similar composition, the presumption being that similar compositions have similar properties.” See, e.g., In re Soni, 54 F.3d 746 (Fed. Cir. 1995) (internal citations omitted); Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985); MPEP 2112.01 I-II; MPEP 2144.09 I, citing In re Payne, 606 F.2d 303, 313 (CCPA 1979).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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, Anthony Zimmer can be reached at (571) 270-3591. 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.
/DANIEL BERNS/ August 18, 2026
Primary Examiner
Art Unit 1736
Prosecution Insights