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 .
Prosecution Reopened
In view of the appeal brief filed on 04/24/2026, PROSECUTION IS HEREBY REOPENED. A new grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of US Patent No. 12308415 in view of Paulsen et al. (US 20210143423 A1 relying on provisional application 62/649,646 for priority date).
Reference application 12308415 Claim 1 and 4 teaches the following limitations:
A positive electrode active material for a secondary battery, the positive electrode active material comprising (Per Claim 1 of 12308415: A positive electrode active material for a secondary battery, the positive electrode active material comprising):
a lithium composite transition metal oxide including nickel (Ni), cobalt (Co), and manganese (Mn), wherein the lithium composite transition metal oxide comprises the nickel (Ni) in an amount of 65 mol% or more and the manganese (Mn) in an amount of 5 mol% or more based on a total amount of transition metals (Per Claim 1 of 12308415: a lithium composite transition metal oxide including nickel (Ni), cobalt (Co), and manganese (Mn), wherein the lithium composite transition metal oxide comprises the nickel (Ni) in an amount of 65 mol% or more and the manganese (Mn) in an amount of 5 mol% or more based on a total amount of transition metals),
and wherein the positive electrode active material comprises a single particle (Per Claim 1 of 12308415: wherein the positive electrode active material comprises a single particle)
Reference patent 12308415 Claims 1 and 4 does not have the following limitations:
at least one particle growth-promoting element selected from the group consisting of strontium (Sr), zirconium (Zr), magnesium (Mg), yttrium (Y), and aluminum (Al),
To solve the same problem of providing a lithium composite transition metal oxide positive electrode active material (see Abstract), Paulsen teaches the general formula, Li1+a((Niz(Ni1/2Mn1/2)y Cox)1-k Ak)1-aO2 where in A is selected from a list which includes Al, Mg, Zr, and Sr. Paulsen further teaches that A is a dopant for the positive electrode electrolyte material, see [0038]-[0039].
Absent a showing of persuasive secondary considerations, it would have been obvious to one having ordinary skill in the art to have incorporated Al, Mg, Zr, or Sr into the positive electrode material of Claim 1 of 16979401 in order to provide a dopant.
wherein the positive electrode active material produces a main peak with a maximum heat flow at 235 °C or more when the positive electrode active material is thermally analyzed by differential scanning calorimetry (DSC) (Per Claim 4 of 12308415: wherein the positive electrode active material produces a main peak with a maximum heat flow at 235 C or more when the positive electrode active material is thermally analyzed by differential scanning calorimetry (DSC).)
and wherein the positive active material has an average particle diameter (D50) of from 3 µm to 7µm (Per Claim 1 of 12308415: and wherein the positive electrode active material has an average particle diameter (D50) of from 3µm to 7 µm).
Claims 2-3 and 5-6 are rejected under on the ground of nonstatutory double patenting due to their dependence on Claim 1.
Allowable over the Art and Response to Arguments
Applicant argues on pages 5-11 in the appeal brief dated 04/24/2026 that the modification of He in view Paulsen is improper because there secondary particle materials of He and Paulsen are materially different and, therefore, one of ordinary skill would not be motivated to apply the methods of Paulsen to the secondary particles of He. This argument is found persuasive and the rejection under U.S.C. 35 §103 is withdrawn. It was further considered to formulate and art rejection with Paulsen as the primary reference. However, Applicant has previously argued on pages 5-7 of the response dated 11/01/2024 that Paulsen does not teach the limitation of “wherein the positive electrode active material produces a main peak with a maximum heat flow at 235 C or more when the positive electrode active material is thermally analyzed by differential scanning calorimetry (DSC).” Applicant made the argument that the pre-sintering prior to addition of the Li-bearing precursor results in the materially different product than that of Paulsen and is needed to achieve the DSC value for the claimed positive electrode material. This argument was found and remains persuasive.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kayla E Clary whose telephone number is (571)272-2854. The examiner can normally be reached Monday - Friday 8:00-5:00 (PT).
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, Allison Bourke can be reached on 303-297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.E.C./
Kayla E. ClaryExaminer, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
Prosecution Insights