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 Oct. 24, 2023 and May 24, 2024 have been considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
At least claims 1 and 12 recite a result: (E/H)/D50 > 1.3. However, the specification does not sufficiently disclose under what conditions one can obtain the result as claimed. One of ordinary skill in the art would not be able to make and use the invention. See MPEP § 2163.03 V, which is copied below:
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim Rejections - 35 USC § 102/103
Claims 1-4, 7-11 and 14 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2), as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Li et al. (US 20220052338 A1, hereafter Li).
Regarding claims 1-4, 7-11 and 14, Li teaches a cathode active material (“a positive electrode active material”, Abstract) for a lithium secondary battery (“a lithium-ion secondary battery”, Abstract) comprising particles (one of ordinary skill in the art would readily appreciate that a cathode active material is composed of numerous particles) of lithium metal oxide represented by, for example, the formula LiNi0.55Co0.05Mn0.4O2 ([0051]), wherein a cobalt content is 5 mol% among all metal elements excluding lithium in the lithium metal oxide particles (reading on the cobalt content as claimed in claims 1 and 3, and a nickel content in each of the lithium metal oxide particles is 55 mol% of all metal elements excluding lithium (reading on the nickel content as claimed in claim 4). The above formula teaches that as claimed in claim 11.
The ranges of (E/H)/D50 as claimed in claims 1 and 2 and the values of E and H as claimed in claims 8 and 9 all represent properties or characteristics of the lithium metal oxide particles as claimed. Since Li teaches the same lithium metal oxide particles as claimed, the claimed properties and characteristics are necessarily present. Products of identical chemical composition cannot have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Li further teaches an average particle diameter, represented by D50, of the lithium metal oxide particles can be 7 µm ([0051]), anticipating the range as claimed in claim 7.
Li further teaches a lithium secondary battery, comprising a cathode (“positive electrode plate”) containing the cathode active material for a lithium secondary battery of claim 1 and an anode (“negative electrode plate”) facing the cathode (See, at least, [0124]). Note that one of ordinary skill in the art would appreciate that a cathode and an anode in a battery are facing each other.
Claims 1-2 and 7-10 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2), as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Li et al. (US 20220052338 A1, hereafter Li).
Regarding claims 1-2 and 7-10, Li teaches a cathode active material (“a positive electrode active material”, Abstract) for a lithium secondary battery (“a lithium-ion secondary battery”, Abstract) comprising particles (one of ordinary skill in the art would readily appreciate that a cathode active material is composed of numerous particles) of lithium metal oxide represented by, for example, the formula Li1+xNiaCobMncO2 (See the formula in [0007]: when d=0 and y=0), wherein a nickel content and a cobalt content in each of the lithium metal oxide particles are in a range of approximately 39.2 mol% to 91.8 mol% and in a range of from approximately 1.35% to 23.2% (calculated from the data in [0007]) among all metal elements excluding lithium in the lithium metal oxide particles, respectively.
The ranges of (E/H)/D50 as claimed in claims 1 and 2 and the values of E and H as claimed in claims 8 and 9 all represent properties or characteristics of the lithium metal oxide particles as claimed. Since Li teaches the same lithium metal oxide particles as claimed, the claimed properties and characteristics are necessarily present. Products of identical chemical composition cannot have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Li further teaches an average particle diameter, represented by D50, of the lithium metal oxide particles can be 7 µm ([0051]), anticipating the range as claimed in claim 7.
Claims 12-13 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2), as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tsunozaki et al. (US 20140113193 A1, hereafter Lsunozaki).
Regarding claims 12-13, Li teaches a cathode active material for a lithium secondary battery (“lithium composite oxide”, see at least Abstract and [0044]) comprising particles (one of ordinary skill in the art would readily appreciate that a cathode active material is composed of numerous particles) of lithium metal oxide represented by, for example, the formula LiMn0.5Ni0.5O2 ([0029]), which contains lithium and nickel and contains no cobalt. The formula reads on that as claimed in claim 13.
The range of (E/H)/D50 as claimed in claim 12 represents a property or characteristic of the lithium metal oxide particles as claimed. Since Li teaches the same lithium metal oxide particles as claimed, the claimed property or characteristic is necessarily present. Products of identical chemical composition cannot have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Claim Rejections - 35 USC § 103
Claims 5-6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Li.
Regarding claim 5, Li teaches the cathode active material for a lithium secondary battery according to claim 1, and the instantly claimed range of the cobalt content overlaps the above range of from approximately 1.35 mol% to 23.2 mol%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 6, Li teaches the cathode active material for a lithium secondary battery according to claim 5, and the instantly claimed range of the nickel content overlaps the above range of from approximately 39.2 mol% to 91.8 mol%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 11, Li teaches the cathode active material for a lithium secondary battery according to claim 1, and the above formula Li1+xNiaCobMncO2 ([0007]) reads on the instantly claimed formula.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727
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