DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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, because the specification, while being enabling for a coated active material that includes the subject matter of claims 2 and 5, as well as the active materials listed in Paragraph 0103 of the published PGPUB (
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), does not reasonably provide enablement for the infinitely possible combination of a generic ‘active material’ with a ‘coating layer’. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Specifically, Applicants’ invention is clearly directed to a positive electrode active material wherein the residue is controlled to be within a certain range in order to control the interfacial resistance (Paragraphs 0052 – 0053 and example discussion of the PGPUB).
The test of enablement is whether one skilled in the art could make and use the claimed invention coupled with information known in the art without undue experimentation (See United States v. Theketronic Inc., 8 USPQ2d 1217 (Fed. Cir. 1988)). Whether undue experimentation is required is not based upon a single factor but rather a conclusion reached by weighing many factors (See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400 and MPEP 2164.01.)
(A) The breadth of the claims;
The pending claims (at least the independent claims) are broad. There are literally an infinite number of possible combinations that would potentially read on the claimed breadth of an ‘active material’ and a ‘coating layer’, given the lack of specific material compositions.
(B) The nature of the invention;
Battery technology is not a very complex type of invention, per se, as it has been known for many years. However, there are many different formulations for active materials and appropriate coatings for use on active materials and the Examiner acknowledges that chemical variations do not always yield predictable results.
(C) The state of the prior art;
The battery art is in a relatively crowded art since it has been made for many years.
(D) The level of one of ordinary skill;
The level of ordinary skill in the art is probably a research chemist or PhD having a minimum of two or three years of experience.
(E) The level of predictability in the art;
The art is relatively predictable – a good battery will exhibit known and predicable good performance characteristics, including resistance values. However, it is unclear in the art whether combinations, such as carbon (an active material, especially in negative electrodes) coated with either a resin, inorganic oxide, or even graphene would present any improvement in ‘interfacial resistance’ when demonstrating a supernatant transmittance in the claimed range, and the present specification does not provide any illumination to this question. This is but one potential ‘example’ of embodiments of materials that are not shown in the as-filed disclosure as exhibiting improvement over the prior art within the disclosed scope of the application.
(F) The amount of direction provided by the inventor;
The direction provided by the inventor is that the active material is a positive electrode active material and that the ‘core’ (i.e. active material) falls within certain known positive electrode active material compositions (see Paragraph 0103 of the PGPUB) and that the coating is a Li-M-X coating, as broadly recited in claim 5. However, none of the present claims combine these aspects into a single claim and, as such, none of the individual claims are deemed sufficiently enabled by the present disclosure. Amendment to include the limitations of claims 2 and 5, as well as the materials recited broadly in Paragraph 0103 of the PGPUB would overcome the rejection of record as being sufficiently enabling for the coated active materials meeting the supernatant transmittance as well as meeting the disclosed improvement set forth by Applicants. The Examiner notes that while the scope of such a claim is significantly broader than the working embodiments, the Examiner confirms that Applicants need not provide working embodiments for the scope of the invention and that enablement would be deemed sufficient based on the disclosure of the selection of the ‘active material’ and ‘coating layer’ as discussed above.
(G) The existence of working examples; and
The specification has a singular embodiment at two different supernatant transmittance values, but see discussion immediately preceding this.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Millions of experiments are required in order to determine what will and will not work. It is the Examiner's contention that the interaction of the various components are likely within the skill level of a POSITA, so the interactions among the components may, or may not, present an undue burden. However, without specific limitations on exact compositions for the ‘active material’ and the ‘coating layer’, the Examiner deems that the breadth of the claim scope is immense and not fully enabled relative to what is taught in the as-filed specification.
Given the above analysis of the factors, which courts have determined, are critical in asserting whether a claimed invention is enabled, it must be considered that a skilled artisan would have to conduct undue and excessive experimentation in order to practice the claimed invention. Applicant is advised to positively set forth specific comparative shielding structures with definite structural limitations or to present specific arguments on the record as to why a POSITA would view the claimed limitations as enabling.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 already recites that the coating layer comprises Li, M1 and X1 and all claim 6 does is rephrase this in terms of a1, b1 and g1 being >0 (however, the scope of the two claims are identical, since a1, b1 and g1 *must* be greater than zero since claim 5 requires these three elements/element groups to be present). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
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 of this title, 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 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 2, and 4 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Miki et al. (U.S. Patent App. No. 2014/0356774 A1).
Regarding claim 1, Miki et al. discloses an ‘active material’ (Title; Abstract: toner particle) with a coating layer (at least Paragraph 0030: shell).
While Miki et al. does not explicitly disclose the claimed supernatant transmittance at 550 nm, Miki et al. does disclose a supernatant transmittance of 50 – 95% at 800 nm (Title; Abstract; and at least Paragraphs 0050 – 0063).
Given the similarity in measurement and significant overlap in percentage (the claimed range falling fully within the disclosed range), the Examiner deems there is sound basis the examples in Miki et al. that meet the disclosed 50 – 95% transmittance at 800 nm would inherently meet the claimed transmittance at 550 nm.
However, alternative to inherency and anticipation, the Examiner deems that the Miki et al. disclosure still would render obvious the claimed invention as it merely involves using a different wavelength of light and optimizing the supernatant transmittance to be at 550 nm versus 800 nm is deemed to be within the knowledge of a person of ordinary skill in the art when seeking to improve upon the Miki et al. teaching and disclosure regarding using the transmittance as a means to provide a toner having improved chargeability and durability (at least Paragraph 0022). It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Miki et al., should it be demonstrated to not anticipate the claimed scope, to render obvious the claimed scope as it merely involves measurement at a different wavelength of light.
Regarding claims 3 and 4, these limitations are deemed anticipated or rendered obvious for the same reasoning as set forth above.
Claims 1 2, and 4 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sawamoto et al. (U.S. Patent App. No. 2020/0241435 A1).
Regarding claim 1, Sawamoto et al. discloses an ‘active material’ (Title; Abstract; and Paragraphs 0048, 0049, 0075: carrier core particle) with a coating layer (surface oxide layer).
While Sawamoto et al. does not explicitly disclose the claimed supernatant transmittance at 550 nm, Sawamoto et al. does disclose a supernatant transmittance of 85% or more at 400 nm (Title; Abstract; and at least Paragraphs 0044 – 0047).
Given the similarity in measurement and significant overlap in percentage, the Examiner deems there is sound basis the examples in Sawamoto et al. that meet the disclosed 85% or more transmittance at 400 nm would inherently meet the claimed transmittance at 550 nm.
However, alternative to inherency and anticipation, the Examiner deems that the Sawamoto et al. disclosure still would render obvious the claimed invention as it merely involves using a different wavelength of light and optimizing the supernatant transmittance to be at 550 nm versus 400 nm is deemed to be within the knowledge of a person of ordinary skill in the art when seeking to improve upon the Sawamoto et al. teaching and disclosure regarding using the transmittance as a means to mitigate other forms of color contamination (at least Paragraphs 0016 – 0020). It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Sawamoto et al., should it be demonstrated to not anticipate the claimed scope, to render obvious the claimed scope as it merely involves measurement at a different wavelength of light.
Regarding claims 3 and 4, these limitations are deemed anticipated or rendered obvious for the same reasoning as set forth above.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: while no claim has been indicated as allowable, the Examiner acknowledges that the prior art of record fails to teach or render obvious a positive electrode active material meeting the combined limitations of claims 1, 2 and 5, wherein the active material is:
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. Amendment to positively recite these aspects would distinguish over the art of record and overcome the pending 112 rejections set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Examiner notes that the commonly-assigned prior art cited herewith is not deemed to raise double patenting issues even though they are attempting to characterize the same underlying concept (amount of residue), since they are using different characterization means and there is no evidence of record that the different characterization means would mean the same or similar amounts of residue.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
June 11, 2026
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