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
A restriction requirement between product and process claims has not been made at this time because the method claims do not include any substantive method steps distinguishing them from the product claims. If substantive method limitations are added at a later date, restriction by original presentation may become necessary.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-7 of U.S. Patent No. 11440807 and Claims 1-11 of U.S. Patent No. 12412884. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims would be anticipated or obvious in view of the patented claims.
Claim Objections
Claim 11 is objected to because of the following informalities: To promote clarity, please amend “wherein the carbon coating layer and the carbon nanotube-containing layer” to “wherein the carbon coating layer to the carbon nanotube-containing layer” (emphasis added). Appropriate correction is required.
Claims 15 and 16 are objected to because of the following informalities: Please amend the preamble “A lithium secondary battery” to “The lithium secondary battery”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
While Claim 1 recites “a lithium borate-based compound-containing layer,” there is insufficient antecedent basis for the limitation “the lithium borate-based compound” recited in Claim 4.
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.
Claims 1, 2, and 12-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20170067085 A (“Choi et al.”).
With regards to Claim 1, Choi et al. teaches a cathode additive for a lithium secondary battery comprising a lithium (Li)-iron (Fe) oxide particles doped or undoped with a hetero-element, and a lithium borate-based compound-containing layer formed on the lithium-iron oxide particles (Title and Abstract).
With regards to Claim 2, Choi et al. teaches the lithium borate-based compound-containing layer is a coating layer consisting of a lithium borate-based compound (Abstract and Page 3: Line 9-33).
With regards to the manufacturing method of the cathode additive limitations recited in Claims 12 and 13, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). In the instant case, Choi et al. teaches lithium-iron oxide particles doped or undoped with a hetero-element, and a lithium borate-based compound-containing layer formed on the lithium-iron oxide particles (Title and Abstract).
With regards to Claim 14, Choi et al. teaches a cathode comprising a cathode active material, a binder, a conductive material, and the cathode additive (Abstract and Page 5: Lines 5-9).
With regards to Claims 15 and 16, Choi et al. teaches the lithium secondary battery comprising the conventional cathode, anode, separator, and electrolyte, wherein the anode contains carbonaceous materials and silicon compounds (Page 5: Lines 1-3 and 18-20).
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.
Claims 3, 4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20170067085 A (“Choi et al.”) as applied to Claim 1 above, and further in view of WO 2016048850 (“Gadkaree et al.”).
Choi et al. teaches a cathode additive as set forth above. Choi et al. does not teach the claimed concentration and material of the lithium borate-based compound-containing layer, and volume average particle diameter of the lithium-iron oxide particles.
However, Gadkaree et al. teaches a cathode additive comprising 1 to 50 microns volume average particle diameter sized lithium particles and a lithium borate-based compound-containing layer formed on the lithium particles. Gadkaree et al. teaches the lithium borate-based compound is at least one compound selected from the group consisting of lithium bis(oxalato)borate, lithium difluoro(oxalate)borate, and lithium tetrafluoroborate and is included in an amount from 50 to 10 wt% based on the total weight of the cathode additive ([0025], [0035], and [0039]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Choi et al.’s cathode additive have the claimed features, as demonstrated by Gadkaree et al., in order to produce a cathode additive that is stable against oxygen and moisture, and is suitable in electrochemical device, such as a lithium secondary battery [0005].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over KR 20170067085 A (“Choi et al.”) as applied to Claim 1 above, and further in view of JP 2019085314 (“Eguchi et al.”).
Choi et al. teaches lithium-iron oxide particles as set forth above.
Choi et al. does not teach the lithium-iron oxide particles having the claimed compound.
However, Eguchi et al. teaches that Li5FeO4 particles are known cathode materials (Abstract and Page 2: Lines 4-8). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Choi et al.’s lithium-iron oxide particles be Li5FeO4 as it is a known conventional lithium material in cathodes, have a small reversible capacity, and small generation of gas during charging (Page 2: Lines 4-8).
Claim 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 20170067085 A (“Choi et al.”) as applied to Claim 1 above, and further in view of Huynh et al. “Carbon-coated lifepo4–carbon nanotube electrodes for high-rate Li-Ion Battery.” Journal of Solid State Electrochemistry, vol. 22, no. 7, 3 Mar. 2018, pp. 2247–2254 (“Huynh et al.”).
Choi et al. teaches the cathode additive comprises lithium (Li)-iron (Fe) oxide particles with a lithium borate-based compound-containing layer, as set forth above. Choi et al. further teaches that borate-based compound-containing layer is the outermost layer in order to restrict the reactivity with the electrolyte and filling the defects of the lithium (Li)-iron (Fe) oxide particles (Page 3: Lines 5-7).
Choi et al. does teach the claimed carbon coating layer and carbon nanotube-containing layer.
However, Huynh et al. teaches a cathode additive comprising lithium (Li)-iron (Fe) oxide particles, a carbon coating layer, and a carbon nanotube-containing layer. Huynh et al. teaches a total weight percent of its carbon coating layer and carbon nanotube-containing layer is 15%wt, wherein the carbon coating layer portion was gradually replaced with carbon nanotubes by 5-15%wt (Abstract, 1st ¶ under Electrochemcial measurements on Page 2248, and Fig. 7). Therefore, one of ordinary skill in the art would optimize the content ratio of Huynh et al.’s a carbon coating layer and carbon nanotube-containing layer to exhibit an excellent performance in cycling test and rate capability (Abstract). For example, 2% of carbon black (carbon coating layer) and 13% of carbon nanotube (carbon nanotube-containing layer) meets the claimed weight ratios recited in Claims 8 and 11.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate a carbon coating layer and carbon nanotube-containing layer, as demonstrated by Huynh et al., between Choi et al.’s (Li)-iron (Fe) oxide particles and lithium borate-based compound-containing layer in order to enhance electrochemical performance (Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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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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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
Prosecution Insights