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 .
Double Patenting
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent Application No. 18,430,376. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-10 of the instant application recite substantially the same subject matter as claims 1-4 of co-pending application 18,430,376 and have a point of overlap where X=60 and Y=40. Furthermore, claims 5-18 of the co-pending application also read on claims 11-20 of the instant application at the same point of overlap. In the case where the claimed ranges “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). MPEP §2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 5 and 15 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.
Claims 5 and 15 recite the limitation "the LiNi0.7Co0.1Mn0.2O2 " in line 3. There is insufficient antecedent basis for this limitation in the claim.
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 1-3, 7-10, 11-13, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by He et al. (CN109411751A as cited in the IDS dated 02/02/24, reference made to attached English translation).
Regarding claim 1, He discloses a positive electrode of a lithium-ion battery(¶[0036]-[0037)), comprising:
a current collector(i.e. aluminum foil); and a positive electrode material;
wherein the positive electrode material comprises a binder, a conductive agent(i.e. conductive carbon black) and a positive electrode active composite; the positive electrode active composite consists of a lithium iron phosphate material and a ternary material(¶[0051], LFP is lithium iron phosphate and NCM is a nickel cobalt manganese ternary material, ¶[0028]); and
mass percentages of the lithium iron phosphate material and the ternary material in the positive electrode active composite are X and Y, respectively, X+Y=100%, where X=60% and Y=40%(¶[0051]);
wherein the positive electrode of the lithium-ion battery is configured to prepare a lithium-ion battery, and an upper limit voltage of the lithium-ion battery is V1, a lower limit voltage of the lithium-ion battery is V2, wherein 3.85v≤V1≤4.1v, 2v≤V2≤2.8v. In this case the cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Regarding claim 2, He discloses a positive electrode according to claim 1, and further discloses wherein the lithium-ion battery comprises an activation voltage V3, wherein the activation voltage V3 is greater than or equal to 4.2 V and less than or equal to 4.4 V; when a cell capacity is subjected to a certain attenuation with an attenuation capacity of Closs, the lithium-ion battery is charged to reach the activation voltage V3 and an increased charging capacity from V1 to V3 is not greater than the attenuation capacity Closs.
In this case the cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Regarding claim 3, He discloses a positive electrode according to claim 1, and further discloses wherein the ternary material comprises a lithium nickel manganese cobalt oxide(¶[0011]).
Regarding claim 7, He discloses a positive electrode according to claim 1, and further discloses wherein the positive electrode material is obtained by mixing a slurry made from the lithium iron phosphate material and a slurry made from the ternary material(¶[0034]). Furthermore Claim 7 is considered product-by-process claim in that the material is obtained by mixing into a slurry. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding claim 8, He discloses a positive electrode according to claim 1, and further discloses wherein the V1 is 3.85v, 3.95v, 4.05v or 4.1v; and the V2 is 2v, 2.2v, 2.4v, 2.6v, 2.6v or 2.8v. In this case the cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Regarding claims 9 and 10, He discloses a positive electrode according to claim 1. Claims 9 and 10 are considered product-by-process claim in that the positive electrode is used in a battery with an electrolyte. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding claim 11, He discloses A lithium-ion battery(¶[0043]), comprising:
a cell; and
an electrolyte;
wherein the cell comprises a positive electrode, a negative electrode and a separator; and
the separator is located between the positive electrode and the negative electrode(¶[0047]);
wherein the positive electrode comprises([0037]):
a current collector(i.e. aluminum foil); and a positive electrode material;
wherein the positive electrode material comprises a binder, a conductive agent(i.e. conductive carbon black) and a positive electrode active composite; the positive electrode active composite consists of a lithium iron phosphate material and a ternary material(¶[0051], LFP is lithium iron phosphate and NCM is a nickel cobalt manganese ternary material, ¶[0028]); and
mass percentages of the lithium iron phosphate material and the ternary material in the positive electrode active composite are X and Y, respectively, X+Y=100%, where X=60% and Y=40%(¶[0051]);
wherein the positive electrode of the lithium-ion battery is configured to prepare a lithium-ion battery, and an upper limit voltage of the lithium-ion battery is V1, a lower limit voltage of the lithium-ion battery is V2, wherein 3.85v≤V1≤4.1v, 2v≤V2≤2.8v. In this case the cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Regarding claim 12, He discloses a lithium-ion battery according to claim 11, and further discloses wherein the lithium-ion battery comprises an activation voltage V3, wherein the activation voltage V3 is greater than or equal to 4.2 V and less than or equal to 4.4 V; when a cell capacity is subjected to a certain attenuation with an attenuation capacity of Closs, the lithium-ion battery is charged to reach the activation voltage V3 and an increased charging capacity from V1 to V3 is not greater than the attenuation capacity Closs.
In this case the cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Regarding claim 13, He discloses a lithium-ion battery to claim 11, and further discloses wherein the ternary material comprises a lithium nickel manganese cobalt oxide(¶[0011]).
Regarding claim 17, He discloses a lithium-ion battery according to claim 11, and further discloses wherein the positive electrode material is obtained by mixing a slurry made from the lithium iron phosphate material and a slurry made from the ternary material(¶[0034]). Furthermore Claim 7 is considered product-by-process claim in that the material is obtained by mixing into a slurry. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding claim 18, He discloses a lithium-ion battery according to claim 11, and further discloses wherein the V1 is 3.85v, 3.95v, 4.05v or 4.1v; and the V2 is 2v, 2.2v, 2.4v, 2.6v, 2.6v or 2.8v. In this case the cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Regarding claim 19, He discloses a lithium-ion battery according to claim 11 and further discloses the electrolyte comprises an electrolyte additive of a carbonate additive(i.e. 1,2-propylene glycol carbonate, ¶[0047]).
Regarding claim 20, He discloses a lithium-ion battery according to claim 19 and further discloses the electrolyte further comprises a lithium salt and a solvent(¶[0047]);
wherein the lithium salt is lithium hexafluorophosphate and
the solvent contains ethylene carbonate and dimethyl carbonate.
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.
Claims 4-5 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over He et. al. (CN109411751A as cited in the IDS dated 02/02/24, reference made to attached English translation).
Regarding claim 4, He discloses a positive electrode according to claim 1, and discloses a range of suitable nickel-cobalt-manganese ternary cathode materials(¶[0028]) including LiNi0.83Co0.07Mn0.10O2, LiNi0.75Co0.1Mn0.154O2 and a LiNi0.65Co0.1Mn0.25O2. In the case where the claimed ranges “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). MPEP §2144.05.
Regarding claim 5, He discloses a positive electrode according to claim 4, and discloses a range of suitable nickel-cobalt-manganese ternary cathode materials including LiNi0.83Co0.07Mn0.10O2 which given the mole ratio of the atoms present would inherently have a quasi-crystal morphology. Additionally the limitations “wherein the LiNi0.83Co0.07Mn0.10O2 has a quasi-crystal morphology and a particle size D50 of the LiNi0.7Co0.1Mn0.2O2 is 4.9 μm) do not exclude the selection of LiNi0.75Co0.1Mn0.154O2 and a LiNi0.65Co0.1Mn0.25O2 therefore claim 5 is rejected for the same reasons as claim 3. Claims 4-5 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over He et. al. (CN109411751A as cited in the IDS dated 02/02/24, reference made to attached English translation).
Regarding claim 14, He discloses a lithium-ion battery according to claim 11, and discloses a range of suitable nickel-cobalt-manganese ternary cathode materials(¶[0028]) including LiNi0.83Co0.07Mn0.10O2, LiNi0.75Co0.1Mn0.154O2 and a LiNi0.65Co0.1Mn0.25O2. In the case where the claimed ranges “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). MPEP §2144.05.
Regarding claim 15, He discloses a lithium-ion battery according to claim 14, and discloses a range of suitable nickel-cobalt-manganese ternary cathode materials including LiNi0.83Co0.07Mn0.10O2 which given the mole ratio of the atoms present would inherently have a quasi-crystal morphology. Additionally the limitations “wherein the LiNi0.83Co0.07Mn0.10O2 has a quasi-crystal morphology and a particle size D50 of the LiNi0.7Co0.1Mn0.2O2 is 4.9 μm) do not exclude the selection of LiNi0.75Co0.1Mn0.154O2 and a LiNi0.65Co0.1Mn0.25O2 therefore claim 5 is rejected for the same reasons as claim 3.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over He et. al. (CN109411751A as cited in the IDS dated 02/02/24, reference made to attached English translation) as applied to claim 1 above, and further in view of Umeyama(US20150333324A1).
Regarding claim 6, , He discloses a positive electrode according to claim 1, but does not disclose wherein the lithium iron phosphate material comprises LiFePO4 with a particle size D50 of 1.1 μm and a carbon coating content of 1.2%.
Umeyama, related to positive electrodes, teaches a positive electrode with LiFePO4(¶[0088]) with a carbon coating with a mass ratio between the base material (lithium iron phosphate particle) and the coating layer (carbon) is about 98:2 to 99:1(¶[0090]) with an average particle size of 1-6 µm(¶[0092]).
One of ordinary skill in the art would have realized adding the carbon coat on to the LiFePO4 particles of He and sizing the particles according to the teaching of Umeyama would have improved conductivity and dispersion(¶[0091]-[0092]).
Therefore it would have been obvious to one of ordinary skill in art to have added the carbon coat and sizing of the particles according to Umeyama to the material od He to improve conductivity and dispersion.
In the case where the claimed ranges “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). MPEP §2144.05.
Regarding claim 16, , He discloses a lithium-ion according to claim 11, but does not disclose wherein the lithium iron phosphate material comprises LiFePO4 with a particle size D50 of 1.1 μm and a carbon coating content of 1.2%.
Umeyama, related to positive electrodes, teaches a positive electrode with LiFePO4(¶[0088]) with a carbon coating with a mass ratio between the base material (lithium iron phosphate particle) and the coating layer (carbon) is about 98:2 to 99:1(¶[0090]) with an average particle size of 1-6 µm(¶[0092]).
One of ordinary skill in the art would have realized adding the carbon coat on to the LiFePO4 particles of He and sizing the particles according to the teaching of Umeyama would have improved conductivity and dispersion(¶[0091]-[0092]).
Therefore it would have been obvious to one of ordinary skill in art to have added the carbon coat and sizing of the particles according to Umeyama to the material od He to improve conductivity and dispersion.
In the case where the claimed ranges “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). MPEP §2144.05.
Conclusion
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/K.J.A./Examiner, Art Unit 1726 /RYAN S CANNON/Primary Examiner, Art Unit 1726
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