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
This application is a 371 of PCT/EP22/69469 (filed 07/12/22), which application claims priority to EP 211862219.8 (filed 07/16/21), and claims priority to EP 21198018.0 (filed 09/21/21).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Amendment(s)
The Preliminary Amendment filed 12/01/25 is entered.
Claims 1-13 are pending.
Drawings
The Drawings filed 12/15/23 are approved by the examiner.
Election/Restrictions
Applicant's election with traverse of Group II (claims 12-13) in the reply filed on 12/01/25 is acknowledged. The traversal is on the ground(s) that the groups are inexorably linked and no additional search burden would be necessary to examine the groups in one application. This is not found persuasive because, as stated in the Requirement, the searches required for the instant distinct groups are not coextensive.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The IDS statements filed 12/15/23 and 12/28/23 have been considered. Initialed copies accompany this action.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892 or by applicant on form PTO-1449, they have not been considered.
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.
Claims 12-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Instant claims 12-13 contain the preamble language “(oxy)hydroxide” which is open to multiple interpretations and therefore renders the scope of the claims indefinite. Specifically, it is unclear is “(oxy)hydroxide” requires both oxygen and hydroxyl groups present in the TM particulates (i.e. oxyhydroxide), or if such merely requires the presence of hydroxyl groups (i.e. a hydroxide). From the instant disclosure (para 0014 of instant PGPUB 2024/0425385 A1) it appears that the terminology refers to either hydroxides or oxyhydroxides, and the claims are being examined on the merits as such. Clarification is required.
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.
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.
Claim Construction
As stated in the above 112 rejection, the examiner construes the claim terminology “(oxy)hydroxide” to encompass both oxyhydroxide compounds and hydroxide compounds (alternatively). Additionally, the claim terminology TM is given it’s known meaning the art (i.e. transition metal). Lastly, the examiner construes the claim terminology “…TM is in an oxidation state of zero” to require that the transition metal is present in elemental/particulate form (see para 0028 and 0094 of the instant PGPUB).
KR 20200133346 A (pub 11-2020) discloses (Abstract):
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The reference specifies the claim particulate hydroxides comprising Ni(1-z)Pz(OH)2-z wherein z is at least one metal element selected from the group consisting of cobalt, zinc, manganese, magnesium, aluminum, yttrium and ytterbium (emphasis added; page 4 of English language translation). The reference additionally teaches a particulate elemental Ni coating layer on the hydroxide (page 5 of translation), which the meets the claimed “Ni is…oxidation state of zero”.
The reference teaches amounts of Ni in the coating to be in the range of 6-20 parts per 100 nucleus mass (page 5 of translation), which overlaps with the ranges instantly claimed. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
January 31, 2026