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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2023-031327, filed on March 1, 2023.
Claim Interpretation
The specification of the instant application recites “a phosphoric acid compound is a compound containing P and O.” In light of this, the phosphoric acid compound of claim 1 is interpreted to include any compound containing both phosphorous and oxygen.
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,941,513 in view of Onizuka (U.S. Patent Publication No. (2015/0207173).
Claim 1 of U.S. Patent No. 9,941,513 teaches all of instant Claims 1-3, except for the recitation that the coating layer comprises C (Claim 1) and the recitation that the coating layer comprises a C-F bond (Claim 3).
To solve the same problem of providing a positive electrode material for a nonaqueous secondary battery, wherein the positive electrode material comprises a coating, Onizuka teaches that the positive electrode material of his own invention may suitably include polyvinylidene fluoride as a binder ([0054]). Therefore, absent of a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant application was filed to have modified the positive electrode active material of Claim 1 of U.S. Patent No. 9,941,513 to include a polyvinylidene fluoride binder, as in Onizuka, because Onizuka teaches that this is a suitable and conventional binder for such a material.
Modifying the positive electrode material of Claim 1 of U.S. Patent No. 9,941,513 to include a polyvinylidene fluoride binder, as in Onizuka, teaches the limitations of instant Claim 1, wherein the elements constituting the coating layer comprise C and F.
Modifying the positive electrode material of Claim 1 of U.S. Patent No. 9,941,513 to include a polyvinylidene fluoride binder, as in Onizuka, teaches the limitations of instant Claim 3, wherein the coating layer comprises a C-F bond.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Onizuka (U.S. Patent Publication No. 2015/0207173).
Regarding claim 1, Onizuka teaches an active material composite comprising an active material particle and a coating layer, wherein the coating layer covers at least a portion of a surface of the active material particle ([0067]-[0071] teaches the formation of a film on the surface of the positive electrode active material during the first charging step), the coating layer comprises a phosphoric acid compound ([0067]-[0071] teaches the surface film as being derived from a fluorophosphate compound), and elements constituting the coating layer comprise C and F ([0054] describes the use of polyvinylidene fluoride as a binder in the positive electrode, which coats the active material).
Regarding claim 2, Onizuka teaches the phosphoric acid compound comprises one or both of Li and B ([0067] teaches the preferred usage of lithium difluorophosphate for the fluorophosphate).
Regarding claim 3, Onizuka teaches the coating layer comprises a C-F bond ([0054] describes the use of polyvinylidene fluoride as a binder in the positive electrode, containing C-F bonds).
Regarding claim 4, Onizuka teaches the coating layer comprises NaF ([0040] teaches the inclusion of a sodium ingredient as an incidental impurity, [0067] along with the fluorine of the fluorophosphate).
Regarding claim 5, Onizuka teaches a secondary battery comprising: a positive electrode active material layer, an electrolyte layer and a negative electrode active material layer, wherein the positive electrode active material layer comprises the active material composite according to claim 1 ([0010] teaches a secondary battery with a positive electrode active material layer, a negative electrode active material layer, and an electrolyte layer).
Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as Toyota Jidosha Kabushiki Kaisha not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, although reference Onizuka has been excepted as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim (US 20240113335) teaches a phosphoric acid-based additive for a secondary battery.
Kim (CN 105895879) teaches an electrode active material with a fluorine and carbon containing coating.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN G. DIAMOND whose telephone number is (571)270-5888. The examiner can normally be reached Monday - Friday 8:30 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Xiao Zhao can be reached at (571) 270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/B.G.D./Examiner, Art Unit 1744
/SADIE WHITE/Primary Examiner, Art Unit 1721
Prosecution Insights