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 and Claim Status
The amendment filed 26 September 2025 has been entered. Applicant’s amendments to the claims have overcome each and every 112 Rejection set forth in the Office Action mailed 1 July 2025. Claims 1–9 and 18–20 are canceled. Claims 10–17 and 21–23 are pending in the application.
Claim Objections
MPEP 714.II.C(B) states that all claims being currently amended must be presented with markings to indicate the changes that have been made relative to the immediate prior version. In the case of Claim 10, in line 2 “the oxide” was amended to instead read “wherein an oxide”. However, markings in the 26 September 2025 amended claim set do not reflect this change accurately, i.e. it is not shown via strikethrough that “the” was deleted. Claim 10 is therefore objected to for this reason.
Claim 10 is further objected to because of the following informality: in lines 5–6, “and the carbon-composite oxide particles” should read “and sintering the carbon-composite oxide particles” (as was previously written in the claims filed 20 May 2025). Appropriate correction is required. Claims 11–17 and 21–23 are objected to as they depend upon Claim 10.
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 (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 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 10, 12–17, and 22–23 are rejected under 35 U.S.C. 103 as being unpatentable over Suh et al. (US 2024/0145668 A1) in view of Zheng et al. (CN 112864359 A; see attached machine translation).
Regarding Claims 10 and 12, Suh discloses a method for preparing an electrode active material (see manufacturing method of a cathode additive, [0016]; [0088] discloses that the cathode additive can be used as an electrode—specifically cathode—active material), comprising:
providing carbon-composite oxide particles, wherein an oxide comprised in the carbon-composite oxide particles are of a formula (1):
MaOb (1),
wherein element M is Fe, a > 0, b > 0 (see iron oxide-carbon precursor, [0017]; one of ordinary skill in the art will understand that “iron oxide” will satisfy formula (1), as both Fe and O are present in an iron oxide in non-zero amounts; note that [0166] identifies the iron oxide-carbon precursor in Example 1 as containing Fe2O3); and
sintering the carbon-composite oxide particles and a Li source (see lithium precursor, [0018], [0042]) to obtain carbon coated metal oxide particles ([0018], [0042]; the Instant Application utilizes the term “sintering” to refer to the heating of the carbon-composite oxide particles and Li source to temperatures of e.g. 500 to 700 °C (see [0101] of the PGPub of the Instant Application), while Suh utilizes the term “calcining” to refer to the heating of the carbon-composite oxide particles and Li source to temperatures of e.g. 550 to 700 °C (see [0052] of Suh); as these terms appear to describe very similar processes, one of ordinary skill in the art will understand that “calcining” as described by Suh is analogous to the “sintering” of the Instant Application), wherein a metal oxide comprised in the carbon coated metal oxide particles is Li5FeO4 ([0042]).
Suh does not explicitly disclose wherein a median particle size Dv50 of the carbon composite oxide particles is in the range of 10–200 nm (Claim 10), or more narrowly wherein the carbon-composite oxide particles have a median particle size Dv50 ranging from 20 nm to 100 nm (Claim 12).
Zheng teaches a method for preparing an electrode active material (see carbon composite lithium vanadium fluorophosphate electrode material, [n0017]) comprising providing carbon-composite oxide particles (see carbon-composite vanadium trioxide, [n0004]); and sintering the carbon-composite oxide particles and a lithium source (see lithium source, [n0005]) to obtain carbon coated lithium vanadium fluorophosphate particles ([n0019]–[n0020]).
Zheng teaches ([n0019]) that the carbon-composite oxide particles are very uniform and in the form of nanoparticles, and that the final electrode active material can be guaranteed to be in the nanoparticle size range due to the inhibition of the carbon coating layer. One of ordinary skill in the art can understand based on the teachings of Zheng, therefore, that in the case where a carbon-composite oxide particle is utilized as a precursor for an electrode active material formed via sintering with a lithium source, the particle size, i.e. median particle size Dv50, of the carbon-composite oxide particles can affect the median particle size Dv50 of the final electrode active material via the carbon coating layer.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05). In the instant case, the median particle size Dv50 of the carbon composite oxide particles is a variable that achieves the recognized result of affecting the median particle size Dv50 of the final electrode active material, as taught by Zheng, thus making the median particle size Dv50 of the carbon-composite oxide particles a result-effective variable.
Suh and Zheng are analogous to the claimed invention as they are in the same field of electrode active materials. It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method for preparing an electrode active material of Suh such that the median particle size Dv50 of the carbon-composite oxide particles ranges from 10–200 nm (Claim 10), or more narrowly 20 to 100 nm (Claim 12), for the purpose of affecting the median particle size Dv50 of the final electrode active material.
Suh discloses ([0072]) that a median particle size Dv50 of the carbon coated metal oxide particles is in the range of 500 nm–15 µm, which overlaps with the claimed range of 411–892 nm. Note that when the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I). Suh discloses ([0072]) that a median particle size Dv50 within this range allows the carbon coated metal oxide particles to be uniformly mixed to exhibit appropriate characteristics in the positive electrode.
A person of ordinary skill in the art prior to the effective filing date of the claimed invention would have thus found it obvious to select the overlapping portions of the ranges for the median particle size Dv50 of the carbon coated metal oxide particles with a reasonable expectation that such selection would successfully result in a method for preparing an electrode active material which results in carbon coated metal oxide particles being uniformly mixed to exhibit appropriate characteristics in the positive electrode.
Regarding Claims 13 and 22, modified Suh discloses the method for preparing an electrode active material according to Claim 10, but does not disclose wherein a carbon content in the carbon-composite oxide particles ranges from 10 wt% to 40 wt% (Claim 13), or more narrowly 20 wt% to 30 wt% (Claim 22), based on a total weight of the carbon-composite oxide particles.
Suh teaches ([0033]) that the carbon content, which comprises a uniform carbon coating layer to which carbon nanotubes are bonded, affects the electrical conductivity and irreversible capacity of the electrode active material.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05). In the instant case, the carbon content is a variable that achieves the recognized result of affecting the electrical conductivity and irreversible capacity of the electrode active material, as taught by Suh, thus making the carbon content a result-effective variable. It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method for preparing an electrode active material of modified Suh such that the carbon content in the carbon-composite oxide particles ranges from 10 wt% to 40 wt% (Claim 13), or more narrowly 20 wt% to 30 wt% (Claim 22), based on a total weight of the carbon-composite oxide particles, for the purpose of achieving suitable electrical conductivity and irreversible capacity.
Regarding Claim 14, modified Suh discloses the method for preparing an electrode active material according to Claim 10. Suh further discloses ([0052]) wherein:
temperature of the sintering process is within a range of 550 °C to 700 °C, which anticipates the claimed range of 500 °C to 700 °C.
Regarding Claim 15, modified Suh discloses the method for preparing an electrode active material according to Claim 10. Suh further discloses ([0053]–[0054]) wherein the Li source is an oxide.
Regarding Claim 16, modified Suh discloses the method for preparing an electrode active material according to Claim 10. Suh further discloses wherein:
the Li source is lithium oxide ([0053]–[0054]); and
a molar ratio of lithium element in the Li source to the element M in the carbon-composite oxide particles is 5 ([0167] discloses that Li2O and the Fe2O3-CNT precursor were uniformly mixed at a molar ratio of 5:1).
Regarding Claim 17, modified Suh discloses the method for preparing the electrode active material according to Claim 10. Suh further discloses wherein the carbon-composite oxide particles are prepared by a liquid phase precipitation method ([0164]–[0166] describes a liquid phase precipitation method wherein the iron oxide-carbon precursor is obtained via filtration and drying).
Regarding Claim 23, modified Suh discloses the method for preparing the electrode active material according to Claim 14. Suh further discloses ([0167]) wherein:
the temperature of the sintering process is 600 °C, which anticipates the claimed range of 550 °C to 650 °C.
Claims 11 and 21 are rejected 35 U.S.C. 103 as being unpatentable over Suh et al. (US 2024/0145668 A1) in view of Zheng et al. (CN 112864359 A; see attached machine translation) as applied to Claim 10 above, as evidenced by Ma et al. (WO 2021/189424 A1; US 2022/0102724 A1 used for citation purposes).
Regarding Claims 11 and 21, modified Suh discloses the method for preparing an electrode active material according to Claim 10, but does not explicitly disclose wherein the carbon-composite oxide particles have a powder resistivity less than 100 Ω[Symbol font/0xD7]cm (Claim 11), or more narrowly less than 10 Ω[Symbol font/0xD7]cm (Claim 21).
It is well-known in the field of electrode active materials that the powder resistivity of an electrode active material affects the active ion transport performance and electronic conductivity of the electrode during the charging and discharging process, as evidenced by Ma ([0044]).
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05). In the instant case, powder resistivity is a variable that achieves the recognized result of affecting the active ion transport performance and electronic conductivity of the electrode during the charging and discharging process, as evidenced by Ma, thus making powder resistivity a result-effective variable.
Ma is analogous to the claimed invention as it is in the same field of electrode active materials. It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method for preparing an electrode active material of modified Suh such that the carbon-composite oxide particles have a powder resistivity less than 100 Ω[Symbol font/0xD7]cm (Claim 11), or more narrowly less than 10 Ω[Symbol font/0xD7]cm (Claim 21), for the purpose of achieving suitable active ion transport performance and electronic conductivity of the electrode during the charging and discharging process.
Response to Arguments
Applicant’s arguments filed 26 September 2025 regarding the rejection of Claims 10 and 12 as unpatentable over Suh in view of Zheng have been fully considered but are not persuasive.
Applicant argues that it would not have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method for preparing an electrode active material of Suh such that the median particle size Dv50 of the carbon-composite oxide particles ranges from 10–200 nm (Claim 10), or more narrowly 20–100 nm (Claim 12), for the purpose of affecting the median particle size Dv50 of the final electrode active material, because the advantages of the claimed particle sizes disclosed in paragraphs [0019] and [0056] of the Instant Application are not obvious. However, as set forth in the rejection of Claims 10 and 12 above, Zheng renders obvious the modification of Suh via routine experimentation such that the median particle size Dv50 of the carbon-composite oxide particles ranges most narrowly from 20 to 100 nm. As described in the rejections above, Zheng teaches a similar method to the Instant Application wherein the particle size of the carbon-composite oxide particles is understood to affect the median particle size Dv50 of the final electrode active material; as such, the median particle size Dv50 of can be understood as a result-effective variable. While Applicant argues that the advantage set forth for the modification of Suh by the teachings of Zheng do not correspond to the advantages described in the Instant Application, it is first submitted that “it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)) (MPEP 2144.IV), and further that one advantage cited by the Applicant in [0057] matches that described in the rejection above, i.e. that the median particle size Dv50 affects the particle size of the final material. As such, Applicant’s argument is not persuasive.
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 JULIA MARIE FEHR, Ph.D. whose telephone number is (571)270-0860. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM EST.
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/J.M.F./Examiner, Art Unit 1725
/Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725
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