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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 18-25 and 33-34 in the reply filed on July 28, 2026 is acknowledged.
Claims 26-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 28, 2026.
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 November 19, 2023, March 19, 2025, October 17, 2025, and February 20, 2026 have been considered by the examiner.
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.
Claims 18-25 and 33-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-24 and 31-32 of copending Application No. 18/562,318 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claims 18-19 of the instant invention, claim 17 of copending Application no. 18/563,318 also recites a positive electrode active material for lithium-ion rechargeable batteries, wherein the positive electrode active material comprises Li, M', and oxygen, wherein M' comprises: Ni in a content x between 60.0 mol% and 95.0 mol%, relative to M'; Co in a content y, wherein 0≤y≤40.0 mol%, relative to M'; Mn in a content z, wherein 0≤z≤70.0 mol%, relative to M'; D in a content a, wherein 0≤a≤2.0 mol%, relative to M', wherein D comprises an element other than Li, O, Ni, Co, Mn, F, and W; F in a content b, wherein b>0, relative to M'; W in a content c, wherein c>0, relative to M'; S in a content d, wherein d>0, relative to M'; B in a content e, wherein 0≤e≤4.0 mol%, relative to M'; wherein x, y, z, a, c, d, and e are measured by Inductively Coupled Plasma - Optical Emission Spectrometry (ICP-OES); wherein b is measured by Ion Chromatography (IC); and wherein x+y+z+a+b+c+d+e is 100.0 mol%. Claim 17 of copending Application no. 18/563,318 also recites that the positive electrode active material includes ratios of FB/FA, WB/WA, and SB/SA greater than 1, wherein the variables are defined the same way as claimed in the instant invention. Thus, a positive electrode active material meeting the limitations of claim 17 of copending Application no. 18/563,318 meets the limitations of claims 18-19 of the instant invention, wherein the content of S overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Regarding claim 20 of the instant invention, claim 18 of copending Application no. 18/563,318 includes the limitations of claim 17 and additionally recites that the ratio of BB/BA is greater than 1, wherein the variables are defined the same way as claimed in the instant invention.
Regarding claim 21 of the instant invention, claim 22 of copending Application no. 18/563,318 includes the limitations of claim 17 and additionally recites that the ratio of BB/BA is greater than 2.0.
Regarding claim 22 of the instant invention, claim 19 of copending Application no. 18/563,318 includes the limitations of claim 17 and additionally recites that the ratio of FB/FA is greater than 2.0.
Regarding claim 23 of the instant invention, claim 20 of copending Application no. 18/563,318 includes the limitations of claim 17 and additionally recites that the ratio of WB/WA is greater than 2.0.
Regarding claim 24 of the instant invention, claim 23 of copending Application no. 18/563,318 includes the limitations of claim 17 and additionally recites that D comprises at least one element of the group consisting of: Al, Ba, Ca, Cr, Fe, Mg, Mo, Nb, Si, Sr, Ti, Y, V, Zn, and Zr.
Regarding claim 25 of the instant invention, claim 24 of copending Application no. 18/563,318 includes the limitations of claim 17 and additionally recites that D has a content a between 0.01 mol% and 2.0 mol%, relative to M.
Regarding claim 33 of the instant invention, claim 31 of copending Application no. 18/563,318 recites a battery comprising the positive electrode active material according to claim 17, meeting the limitations of instant claim 18.
Regarding claim 34 of the instant invention, claim 32 of copending Application no. 18/563,318 recites a portable computer, a tablet, a mobile phone, an electrically powered vehicle, or an energy storage system comprising a battery according to claim 31, meeting the limitations of instant claim 33.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 18-25 and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Tochio, et al. (US 2022/0069300 A1), in view of Eom, et al. (US 2022/0190326 A1).
Regarding claims 18-20, Tochio teaches a positive electrode active material for a non-aqueous electrolyte secondary battery including a lithium transition metal oxide including Ni, Nb, and an external additive including at least one element selected from the group consisting of W, B, and Al adhered onto surfaces of the lithium transition metal oxide (¶ [0014], Ln. 1-9). Tochio teaches that the content of nickel relative to the metal elements excluding Li is 90-100 mol%, overlapping the claimed range of 60.0-95.0 mol% (¶ [0024], Ln. 1-4). The external additives may be added using compounds including tungsten oxides, boron oxides, aluminum oxides, or other compounds including sulfuric acid compounds (¶ [0043], Ln. 1-18). Tochio teaches that the content of W, B, and Al may be 0.01-0.3 mol%, overlapping the claimed ranges of greater than 0 for W and 0-4.0 mol% for B (¶ [0044], Ln. 1-8). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)). In Example 5, Tochio teaches a lithium composite oxide including 90.75 mol% Ni, 1 mol% Co, 4 mol% Mn, 4 mol% Al, and 0.25 mol% Nb, with 0.1 mol% W, 0.1 mol% B, and 0.05 mol% Al included in the external additive (Table 1). The W, B, and Al are added by mixing the transition metal oxide with WO3, H3BO3, and Al2(SO4)3 prior to heating (¶ [0082], Ln. 1-6). Thus, Tochio teaches a positive electrode active material including Ni, Co, Mn, Al, Nb, W, S, and B as claimed, wherein Nb represents claimed element D. As Tochio teaches that the tungsten, boron, and aluminum collect at the surface of a lithium transition metal oxide and are introduced after the composite oxide particles are initially formed using WO3, H3BO3, and Al2(SO4)3, wherein aluminum is introduced using a sulfate, the concentration of tungsten, boron, and sulfur will be higher at the surface of the particles. Therefore, when defining the content of tungsten, boron, and sulfur (WA, BA, and SA) by the molar ratio provided by a formula of the positive electrode active material, and defining the content of tungsten, boron, and sulfur (WB, BB, and SB) by X-ray photoelectron spectroscopy analysis, the ratios of WB/WA, BB/BA, and SB/SA will be greater than 1, as there is a higher concentration of tungsten, boron, and sulfur at the surface of the particle. Tochio does not expressly teach a lithium composite oxide particle including fluorine.
Eom teaches a positive electrode active material for secondary battery including a lithium composite transition metal oxide including 70 mol% or more nickel and having a coating portion formed on the surfaces of the lithium composite transition metal oxide particles including fluorine (¶ [0010], Ln. 1-8). Eom teaches that the fluorine is added by coating with a fluorine-based polymer such as PVDF in addition to a metal coating source (¶ [0054], Ln. 1-10). PVDF is specifically used because of its high reactivity with the lithium composite transition metal oxide (¶ [0052], Ln. 1-9) and the fluorine-based polymer is included in an amount of 0.03-5 parts by weight based on the weight of the lithium composite transition metal oxide (¶ [0053], Ln. 1-6). The metal coating source may include oxides or hydroxides of aluminum, titanium, zirconium, magnesium, tungsten, and strontium (¶ [0054], Ln. 1-4). Eom teaches that mixing the lithium composite transition metal oxide with the fluorine-based polymer and metal coating source prior to heat treatment results in significantly less residual lithium by-product, improves surface defects, achieves excellent stability, and reduces initial resistance (¶ [0065], Ln. 1-14).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the positive electrode active material of Tochio to include a fluorine-based polymer along with the external additives prior to heating based on the teachings of Eom. One of ordinary skill in the art would find it obvious to apply the teachings of Eom to the positive electrode active material of Tochio as both teach lithium transition metal oxide positive electrode materials with similar compositions, including a high nickel content and including metal additive coatings including tungsten oxide. One of ordinary skill in the art would be motivated to include the fluorine-based polymer in addition to the metal additives prior to heating in order to reduce residual lithium by-product, improve surface defects, increase stability, and reduce initial resistance. In including a fluorine-based polymer in the positive electrode active material of Tochio as taught by Eom, one of ordinary skill in the art would recognize that the fluorine will be present in a higher concentration at the surface of the positive electrode active material particles. Thus, when defining the content of fluorine (FA) by the molar ratio provided by a formula of the positive electrode active material and defining the content of fluorine (FB) by X-ray photoelectron spectroscopy analysis, the ratio of FB/FA will be greater than 1, as there is a higher concentration of fluorine at the surface of the particle. Additionally, it would be obvious to one of ordinary skill in the art to modify the amounts of Ni, Co, Mn, Al, Nb, W, S, B, and F included in the positive electrode active material of the combined references such that the subscripts for each element add up to 100.0 mol%. One of ordinary skill in the art would find it obvious to balance the charges of the elements included, and be motivated to include the elements including Ni, Co, Mn, Al, Nb, W, S, B, and F in a balanced stoichiometric ratio.
Regarding claims 21-23, Tochio in view of Eom teaches all of the limitations of claims 18 and 20 above. As Tochio teaches that the tungsten, boron, and aluminum collect at the surface of a lithium transition metal oxide and are introduced after the composite oxide particles are initially formed using WO3, H3BO3, and Al2(SO4)3, and Tochio in view of Eom similarly teaches the fluorine-based polymer is introduced in the same manner, the concentration of tungsten, boron, and fluorine will be higher at the surface of the particles. Therefore, the ratios of WB/WA, BB/BA, and FB/FA will be greater than 2.0, as there is a higher concentration of tungsten, boron, and fluorine at the surface of the particle.
Regarding claims 24-25, Tochio in view of Eom teaches all of the limitations of claim 18 above, including a positive electrode active material including Ni, Co, Mn, Al, Nb, W, S, B, and F. In this case, Nb represents claimed element D. Tochio teaches that Nb is included in the lithium transition metal oxide in a content of 0-3 mol%, and more preferably 0.2-1.5 mol%, within the claimed range of 0.01-2.0 mol% (¶ [0025], Ln. 1-8).
Regarding claim 33, Tochio in view of Eom teaches a positive electrode active material meeting all of the limitations of claim 18 above, and Tochio further teaches that the positive electrode active material is used in a non-aqueous electrolyte secondary battery (¶ [0018], Ln. 1-4).
Regarding claim 34, Tochio in view of Eom teaches a battery meeting the limitations of claim 33 above. Although Tochio does not expressly teach that the battery is used in a portable computer, tablet, mobile phone, electrically powered vehicle, or energy storage system, one of ordinary skill in the art would recognize that the purpose of the non-aqueous electrolyte secondary battery is to be used for portable energy storage. Further, Eom teaches that the lithium secondary battery is suitable for portable devices such as mobile phones, notebook computers, digital cameras, electric cars, or a power storage system (¶ [0091], Ln. 1-8, ¶ [0093], Ln. 1-5). Thus, one of ordinary skill in the art would find it obvious to use the battery of Tochio in view of Eom in a portable device, electric car, or power storage system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tsuyoshi, et al. (JP 2020149963) teaches a lithium nickel-tungsten-containing oxide used as a positive electrode active material (¶ [0014], Ln. 1-4). The oxide is represented by the general formula LiaNibWcMdDeOfFg, wherein M is selected from Co, Mn, Al, Mo, and Zr, and D is an element other than Li, Ni, W, M, O, and F (¶ [0020], Ln. 5-10). Tsuyoshi teaches that F improves the properties of LNW oxides (¶ [0028], Ln. 3). The theoretical composition of Example 1 taught by Tsuyoshi is LiNi0.95Co0.04W0.01Na0.01P0.01O2F0.01 (¶ [0131], Ln. 7-9).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH J JACOBSON whose telephone number is (703)756-1647. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm.
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/SARAH J JACOBSON/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
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