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 .
Response to Amendment
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.
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, 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Harada (US 10,862,118 B2) in view of Nakahara et al. (US 2015/0243979 A1). (Perfler (Nanoindentation, High-Temperature Behavior, and Crystallographic/ Spectroscopic Characterization of the High-Refractive-Index Materials TiTa2O7 and TiNb2O7, “inorganic chemistry, Vol. 54, No. 14, pp. 6836-6848 (2015) is cited as evidence of inherency of the bond angle distortion.)
Claims 1 and 5: Harada ‘118 discloses an active material comprising an Nb2TiO7 phase having a monoclinic crystal structure (col. 4, lines 1-4). The '118 patent teaches that the Nb2TiO7 phase has a crystal structure with a symmetry of space group C2/m, in which metal ions (Nb and Ti) and oxide ions constitute a backbone framework composed of (Nb,Ti)O6 octahedra (col. 3, lines 60-67). Harada also discloses that the Nb2TiO7 phase may additionally contain an Nb10Ti2O29 phase and may be doped with at least one substituent selected from K, Zr, Sn, V, Ta, Mo, W, Y, Fe, Co, Cr, Mn, Ni, and Al (col. 13, lines 42-45). Primary particle D50 within the range of 0.1 μm to 3.34 μm is also disclosed (col. 8, lines 1-5). The electrode, secondary battery (with the active material as the negative electrode), battery pack with protective circuit and external power distribution terminal, and vehicle with a regenerative energy mechanism are all expressly disclosed.
Harada ‘118, however, does not expressly disclose:
(1) A crystallite diameter of the niobium-titanium oxide phase being within the range from 98 nm or greater to 110 nm or less; and
(2) A bond angle distortion in the (Nb,Ti)O6 octahedron site of 0.8 σ²/deg² or less, including the specific bond angle distortion at the 2a site of the C2/m monoclinic crystal structure as recited in claim 5.
These two limitations are addressed by the secondary references below.
Nakahara '979 discloses a titanium-niobium composite oxide-based electrode active material for use in lithium secondary batteries. The reference discloses the same class of monoclinic TiNb2O7-type active materials as the primary reference Harada (‘118).
One of ordinary skill in the art would have been motivated to combine the teachings of Harada with those of Nakahara '979 for the following reasons:
Both references are directed to the same technical field — niobium-titanium composite oxide (NTO) active materials for use as anodes in lithium-ion secondary batteries — and are assigned to the same corporate entity (Toshiba). Both share common inventors (Harada, Takami). A person of ordinary skill in the art would naturally look to related prior art from the same research group when seeking to optimize the crystallite size of an NTO active material, as controlling crystallite size is a recognized tool for optimizing battery performance in this class of materials. Nakahara discloses a titanium-niobium composite oxide active material of the same monoclinic TiNb2O7-type as Harada, for use as a negative electrode active material in lithium secondary batteries, and reports a crystallite size of 100 nm ([0053], Example 2), which falls within the range of 98 nm to 110 nm recited in claim 1. Nakahara further teaches that controlling the crystallite size of such niobium-titanium oxide active materials to specified values results in improved discharge capacity and cycle retention ([0008]–[0009]).
Both Harada and Nakahara are directed to niobium-titanium composite oxide active materials for the negative electrode of lithium secondary batteries, are assigned to the same entity (Toshiba), and share common inventors. A person of ordinary skill in the art seeking to improve the discharge capacity and cycle retention of the Nb2TiO7 active material of Harada would have looked at the related teaching of Nakahara and would have selected a crystallite diameter of approximately 100 nm as taught therein for that purpose. Where a claimed range overlaps a range disclosed in the prior art, a prima facie case of obviousness exists. MPEP 2144.05(I).
Perfler discloses a comprehensive crystallographic and spectroscopic characterization of TiNb2O7 — the exact compound that constitutes the niobium-titanium oxide phase of the present claims. Using single-crystal X-ray diffraction, Perfler reports the crystal structure of TiNb2O7 with monoclinic symmetry in space group I2/m (No. 12), which is equivalent to the C2/m space group recited in claim 5. The publication reports full crystallographic data including complete bond angle information for all five symmetrically distinct octahedral metal sites (M1–M5) in TiNb2O7, including the site corresponding to the 2a Wyckoff position under C2/m symmetry.
Perfler is cited herein as evidence that the bond angle distortion limitation of claims 1 and 5 is inherently present in the Nb2TiO7 active material disclosed by Harada. Because Harada discloses an active material comprising TiNb2O7 with a C2/m monoclinic crystal structure — the identical compound and crystal structure characterized in Perfler — the (Nb,Ti)O6 octahedral bond angle geometry reported by Perfler for TiNb2O7 is necessarily present in the Harada active material. Accordingly, Harada’s active material inherently possesses the bond angle distortion at the (Nb,Ti)O6 octahedron site, including at the 2a Wyckoff site, as reported by Perfler for this compound. The bond angle distortion value recited in claims 1 and 5 (0.8 °²/deg² or less) therefore does not distinguish the claimed active material from the active material disclosed in Harada, as confirmed by the structural data of Perfler for the same compound.
Harada '118 patent discloses an active material containing an Nb2TiO7 phase, electrode, secondary battery, battery pack, and vehicle, and anticipates each and every limitation of claims 3, 4, 6, 7, 8, 9, 10, 11, 12, and 13 as set forth below.
Claim 3: Harada teaches Nb2TiO7 (Abstract).
Claim 4 recites that at least one phase contains at least one selected from a group consisting of K, Zr, Sn, V, Ta, Mo, W, P, Y, Fe, Co, Cr, Mn, Ni, and Al. Harada '118 expressly discloses this limitation. The '118 patent teaches: "M(I) and M(II) include at least one selected from the group consisting of K, Zr, Sn, V, Ta, Mo, W, P, Y, Fe, Co, Cr, Mn, Ni, and Al" (col. 13, lines 42-45; describing the dopant elements for both the Nb2TiO7 phase and the Nb10Ti2O29 phase). This list is identical in both content and scope to that recited in claim 4.
Claim 6 recites an electrode comprising the active material according to claim 1. Harada '118 expressly discloses this limitation. Harada ‘118 states: "According to a second embodiment, an electrode is provided. The electrode includes the active material according to the first embodiment." (col 14, lines 53-55). The active material of the first embodiment of the '118 patent is the same niobium-titanium composite oxide phase active material as described in the independent claim of the present application.
Claim 7 recites that the electrode further comprising an active material-containing layer, the active material-containing layer comprising the active material. Harada '118 discloses this limitation. The '118 patent describes the electrode as comprising an active material-containing layer that includes the niobium-titanium composite oxide active material coated on a current collector describing the electrode structure with an active material layer (col. 13, lines 6-17). This is identical in scope to the limitation recited in claim 7.
Claim 8 recites a secondary battery comprising: a positive electrode; a negative electrode; and an electrolyte, the negative electrode comprising the electrode according to claim 6. Harada '118 expressly discloses this limitation. The '118 patent states: "a secondary battery including a negative electrode, a positive electrode, and an electrolyte. The negative electrode is the electrode according to the second embodiment." (col. 3, lines 17-20). This is a direct correspondence to the structure recited in claim 8 of the present application.
Claim 9 recites a battery pack comprising the secondary battery according to claim 8. Harada '118 expressly discloses this limitation. The '118 patent provides: "a battery pack includes the secondary battery according to the third embodiment." (col. 3, lines 22-23). This directly corresponds to the battery pack limitation recited in claim 9.
Claim 10 recites the battery pack further comprising: an external power distribution terminal; and a protective circuit. Harada '118 discloses this limitation. The '118 patent describes the battery pack as including an external power distribution terminal (col. 25, lines 38-39) and a protective circuit (col. 21, lines 64-67) describing external terminal connections and protective circuit elements, respectively. These structural elements correspond directly to those recited in claim 10.
Claim 11 recites that the battery pack comprising plural of the secondary battery, the secondary batteries being electrically connected in series, in parallel, or in combination of in-series connection and in-parallel connection. Harada '118 discloses this limitation. The '118 patent describes the battery pack as capable of including plural secondary batteries connected in series, in parallel, or in a combination of in series and in parallel (claim 9). This is identical to the connection configurations recited in claim 11.
Claim 12 recites a vehicle comprising the battery pack according to claim 9. Harada '118 expressly discloses this limitation. The '118 patent, claim 7, states: "a battery pack comprising the secondary battery." This is a direct anticipation of the vehicle limitation recited in claim 12.
Claim 13 recites that the vehicle comprises a mechanism configured to convert kinetic energy of the vehicle into regenerative energy. Harada '118 expressly discloses this limitation. The '118 patent, claim 11, states that the vehicle comprises "a mechanism configured to convert kinetic energy of the vehicle into regenerative energy." This language is identical to that recited in claim 13.
Response to Arguments
Applicant's arguments filed 08/14/2026 have been fully considered but they are not persuasive.
1 - Inherency of the bond angle distortion. Applicant argues that the position that a bond angle distortion of 0.8 σ2/deg2 or less is inherent to Nb2TiO7 is technically incorrect, because Comparative Examples 1, 2, and 4 of the present application are Nb2TiO7 of the C2/m monoclinic structure yet exhibit a bond angle distortion greater than 0.8 σ2/deg2 (present Table 2), and that inherency may not be established by mere probabilities or possibilities.
This argument is not persuasive. Harada discloses an active material of the same composition (Nb2TiO7) and the same monoclinic C2/m crystal structure as recited in claim 1. Where the claimed and prior art products are identical or substantially identical in composition and structure, a prima facie case of obviousness is established, and the burden shifts to applicant to demonstrate that the prior art product does not necessarily possess the characteristic relied upon. See MPEP 2112.01(I). Comparative Examples 1, 2, and 4 are not the product disclosed by Harada; they were prepared under synthesis and pulverization conditions different from those of Example 1 of Harada (for example, dry bead milling to an average particle size of 1.0–3.5 µm, rather than the crushing and mixing in an agate mortar with sieving employed in Harada). Those comparative examples therefore do not establish that the active material disclosed by Harada possesses a bond angle distortion greater than 0.8 σ2/deg2.
As discussed during the July 22, 2026 interview, in order to establish that the product of Harada does not meet this limitation, it would be necessary to reproduce Example 1 of Harada and to determine the actual bond angle distortion of the resulting product; applicant has not done so. Applicant’s assertion that the synthesis methods are “very similar” is argument of counsel, which cannot take the place of evidence in the record. See MPEP 2145(I). Applicant has thus not carried the burden of showing that the product of Harada does not inherently possess the claimed bond angle distortion, and the rejection is maintained.
2 - Simultaneous attainment of the three limitations and grinding conditions. Applicant argues that attaining all three of the recited limitations; the crystallite diameter, the bond angle distortion, and the average primary particle size; requires careful adjustment of synthesis and grinding conditions, such as thin-film spin grinding, that none of the cited references teach, and that one of ordinary skill could not have attained all three simultaneously.
This argument is not persuasive. Claim 1 is a product claim directed to an active material defined by its composition, crystal structure, and physical properties; it does not recite any method of manufacture. The patentability of a product does not depend on its method of production, and where the claimed product is the same as or obvious from a product of the prior art, it is not rendered patentable by a difference in the process used to make it. See MPEP 2113. Applicant’s contentions concerning grinding conditions and the difficulty of simultaneously obtaining the three properties are directed to the manner of making the active material, which is not recited in claim 1 and does not distinguish the claimed product from the product rendered obvious by Harada in view of Nakahara.
Moreover, each recited property is taught or suggested by the applied art: the composition, the crystal structure, and the primary particle size D50 (0.1–10 µm, overlapping the claimed 0.1–3.34 µm) by Harada; the crystallite diameter (100 nm, within the claimed 98–110 nm) by Nakahara; and the bond angle distortion as addressed in (1) above.
3 - The KSR rationale. Applicant argues, citing the Examination Guidelines in view of KSR Int’l Co. v. Teleflex Inc., that a conclusion of obviousness cannot be supported unless all claimed elements were known in the prior art, and that the applied references do not make all elements of claim 1 known, whether explicitly or inherently.
This argument is not persuasive for the reasons given above. Each element of claim 1 is taught or suggested by the applied prior art, whether expressly (the composition, the crystal structure, the primary particle size, the crystallite diameter, and the downstream electrode, secondary battery, battery pack, and vehicle embodiments) or inherently (the bond angle distortion). The proposed combination applies the known crystallite-size teaching of Nakahara to the known Nb2TiO7 active material of Harada to obtain the predictable benefit of improved discharge capacity and cycle retention, yielding no more than the predictable result of a known active material having a known, beneficial crystallite size.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ATEF A SHAT whose telephone number is (571)270-0364. The examiner can normally be reached 8am-5pm.
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/ATEF A SHAT/Examiner, Art Unit 1712
/MICHAEL B CLEVELAND/Supervisory Patent Examiner, Art Unit 1712
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