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 .
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 7, and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamitsuji et al. (WO 2021/132350 using US 2023/0011769 as an English language equivalent – both references previously of record).
Considering claims 1 and 12, Kamitsuji teaches a Ni-based alloy which is heat resistant (abstract) for furnaces, such as roller hearth kilns and rotary kilns, for producing cathode materials of batteries (Paragraph 4). An example is taught of a cylindrical retort (e.g. a kiln having a portion) where the Ni-alloy comprises by mass Ni-86.9%, Al-11.3%, Zr: 0.68%, and B: 0.017% (Paragraph 66; Table 4 Inventive Example 12). This Ni-based alloy containing Zr falls within the instantly claimed substances and anticipates that which is claimed. See MPEP 2131.03.
Considering claim 7, Kamitsuji teaches where the inner surface of the retort contacts the cathode material (Paragraph 66).
Considering claims 10-11, Kamitsuji does not expressly teach where the Ni-alloy satisfies the claimed ICP-MS analysis with heating and conditions (a)-(c). However, as outlined above, Kamitsuji teaches a substantially identical substance in a kiln as that which is claimed and therefore one would expect the kiln to display the claimed ICP-MS analysis as substantially identical materials are expected to display substantially identical properties. See MPEP 2112.01.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kamitsuji et al. (WO 2021/132350 using US 2023/0011769 as an English language equivalent) as applied to claim 1 above.
Considering claims 2-3, in addition to the teachings as outlined in claim 1 above, Kamitsuji teaches where the Ni-based alloy comprises by mass: Cr: 0-1.0% (Paragraph 39), W: (0.001-5.0%), etc., Ni-remainder (Paragraph 31).
While not expressly teaching a singular example of the claimed substances this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Kamitsuji as Kamitsuji teaches a Ni-based alloy with composition overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of the those in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 4, Kamitsuji teaches examples of alloys having 90.0% Ni and 92.3% Ni (Table 1, Inventive Examples 2 and 10). See MPEP 2144.05.
Considering claim 5, Kamitsuji teaches where the Cr content ranges from 0-1.0% (Paragraph 39). See MPEP 2144.05.
Considering claim 13, Kamitsuji teaches alloy compositions overlapping Formulas 2 and 3 as outlined in claims 2 and 3 above. See MPEP 2144.05.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hajduk et al. (US 2022/0003499).
Considering claims 1-3 and 12-13, Hajduk teaches a rotary kiln with a Ni-based alloy (abstract). An example is taught of a rotary kiln with a rotary tube with a coating of the Ni-based alloy (Paragraph 46) and where the Ni content may be 30-99.5% (Paragraph 17) and may contain Cr, Mo, Cu, Ti, and Al in an amount of 0.5-40% (Paragraphs 19-20). This is considered to teach a kiln capable of performing the claimed intended use of “with which raw materials for preparing active materials and/or prepared active materials come into contact during firing” as this is a substantially identical kiln structure as that which applicant discloses in lines 1-8 on p.2 of the originally filed specification.
While not expressly teaching a singular example of the claimed kiln with portion comprising a substance this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Hajduk as Hajduk teaches a Ni-based alloy with composition overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of the those in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 4, Hajduk teaches where the alloy has a composition by mass of Ni: 90.0% (Paragraph 48). See MPEP 2144.05.
Considering claim 5, Hajduk teaches where the Ni-based alloy may contain Cr, in an amount of 0.5-40% (Paragraphs 19-20). See MPEP 2144.05.
Considering claim 6, Hajduk teaches where the Ni-based alloy is a coating (Paragraph 46).
Considering claim 7, Hajduk teaches where the tube has an inner surface with the Ni-based coating (Paragraph 46; Fig. 1) (i.e. an inner wall comprising the portion).
Considering claim 8, Hajduk teaches where the thickness of the coating is 0.5 mm (Paragraph 49). See MPEP 2131.03.
Considering claim 9, Hajduk teaches where the tube (i.e. cylindrical retort) may have a diameter of 100-3,000 mm (Paragraph 36) and the coating may have a thickness of 0.1-1.5 mm (Paragraph 25) overlapping the claimed percentage. See MPEP 2144.05.
Considering claims 10-11, Hajduk does not expressly teach where the Ni-alloy satisfies the claimed ICP-MS analysis with heating and conditions (a)-(c). However, as outlined above, Hajduk teaches a substantially identical substance in a kiln as that which is claimed as therefore one would expect the kiln to display the claimed ICP-MS analysis as substantially identical materials are expected to display substantially identical properties. See MPEP 2112.01.
Terminal Disclaimer
The terminal disclaimer filed on 16 July 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent Application Number 17/912,823 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments, see remarks p.8, last section, filed 16 July 2026, with respect to Double Patenting Rejections have been fully considered and are persuasive. The rejection of claims 1-13 has been withdrawn. Applicant has filed the requisite terminal disclaimer.
Applicant’s arguments, see remarks p.9, 1st section, filed 16 July 2026, with respect to 35 USC 112(b) have been fully considered and are persuasive. The rejection of claims 1-13 has been withdrawn. Applicant has amended the claims to remove indefiniteness.
Applicant’s arguments, see remarks p.11 last section – p.12 continuing section, filed 16 July 2026, with respect to the rejection(s) of claim(s) 1, 4, 6-8, and 10-12 under 35 USC 102(a)(1) in view of Hajduk have been fully considered and are persuasive. Applicant has amended the claims to remove Al as a material and Hajduk no longer anticipates the claimed substance. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hajduk under 35 USC 103. Applicant’s remarks regarding Hajduk as applied to 35 USC 103 are addressed below.
Applicant's arguments filed 16 July 2026 regarding 35 USC 102(a)(1) in view of Kamitsuji and rejections under 35 USC 103 in view of Kamitsuji and Hajduk have been fully considered but they are not persuasive. Applicant’s arguments are addressed as follows:
Applicant argues that Kamitsuji does not anticipate the instant claims in that Al has been removed as an “X” element and therefore does not meet the at least one element for the recited group as Al is disclosed as an essential element by Kamitsuji (p.10 last two paragraphs – p.11 continuing paragraph). This is not persuasive as the instant claims positively recite Zr which is disclosed by Kamitsuji as being in an amount of 0.68% (Paragraph 66; Table 4 Inventive Example 12) which falls within and anticipates the claimed composition. See MPEP 2131.03. Regarding the presence of Al within the disclosure of Kamitsuji, the instant claims recite the open-language transitional phrase “comprising” and therefore this does not preclude the presence of other materials. See MPEP 2111.03.
Applicant argues that the teachings of Kamitsuji regarding other materials requires a teaching, suggestion or motivation to modify the reference which Kamitsuji does not provide (p.12, last paragraph – p.13 continuing paragraph). This is not persuasive as the courts have held that a combination of prior art elements known to yield predictable results supports a conclusion of obviousness. See MPEP 2143 (I)(A). Kamitsuji teaches where the Ni-based alloy comprises by mass: Cr: 0-1.0% which increases oxidation resistance (Paragraph 39), W: 0.001-5.0% which enhances creep rupture strength (Paragraph 36), etc., Ni-remainder (Paragraph 31) which is considered to both teach sufficient motivation to combine and to support that the combination thereof predictably improves properties of the disclosed Ni-alloy.
Applicant argues that the instant invention is directed to both the active material and the retort whereas Kamitsuji is directed to the retort only (remarks p.13, point 1). This is not persuasive as the instant claims are directed to a kiln with a portion comprising the claimed substance. The claims are not directed to a retort and the kiln recites “for preparing…” which occurs before the preamble of the claim and lacks sufficient structure and is considered an intended use of the kiln. See MPEP 2111.02. Therefore, applicant’s argument is not commensurate with that which is claimed as these are unclaimed features. See MPEP 2145 (VI).
Applicant argues that Kamitsuji requires Al which applicant argues is excluded from the instant claims (remarks pp.13-15, point 2). This is not persuasive as the instant claims recite the open-language transitional phrase “comprising” and therefore this does not preclude the presence of other materials. See MPEP 2111.03.
Applicant argues that Kamitsuji controls impurities macroscopically rather than where the instant invention controls them microscopically (remarks pp. 15-17, point 3). This is not persuasive as no particular degree of impurity or amount of impurities are recited within the instant claims and therefore this is not commensurate with that which is claimed. See MPEP 2145 (VI).
Applicant argues that Hajduk does not render obvious the claimed substance by removing the recitation of Al (remarks p.17, 4th paragraph). This is not persuasive as the instant claims recite the open-language transitional phrase “comprising” and therefore this does not preclude the presence of other materials and Hajduk teaches where the alloy may contain Cr, Mo, Cu, and Ti in an amount of 0.5-40% (Paragraphs 19-20). See MPEP 2111.03 and MPEP 2144.05.
Applicant argues that Hajduk recognizes a different problem of calcined materials rather than cathode active materials and impurities associated thereof (pp.17-18, point 1). This is not persuasive as no particular degree of impurity or amount of impurities are recited within the instant claims and therefore this is not commensurate with that which is claimed. See MPEP 2145 (VI). Further, the instant claims are directed to a kiln and not a method of operating a kiln.
Applicant argues that Hajduk only teaches a singular example without quantitative data and therefore one could only select elements based on impermissible hindsight (remarks pp.18-19, point 2). This is not persuasive as, “When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability.” See MPEP 2121(I) and In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). As of the writing of this Office action, no objective evidence has been submitted to rebut the operability of Hajduk. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Hajduk was published on 06 January 2022 and filed in the US on 02 July 2021 with a foreign priority date of 03 July 2020 which establishes the reference as valid under 35 USC 102(a)(1) and 35 USC 102(a)(2) and the teachings of Hajduk are therefore not considered improper hindsight.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Takahashi et al. (US 2016/0141599) teaches a rotary tubular furnace with optional Ni-alloy components similar to that which is claimed.
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 SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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