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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 11, and thus respective dependent claims 2-10 and 12-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
“…a cathode comprising cathode active material having the following composition: LixM1yM2zOp wherein M1 and M2 are different from each other and each selected from Mn, Fe and V; 6 ≤ x ≤ 64; 1 ≤ y ≤ 35; 1 ≤ z ≤ 35; and 16 ≤ p ≤ 100.”
The instant specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
:The instant disclosure does not provide adequate enablement for the claiming of most lithium rich cathode ternary active materials of Mn, Fe, and V, with a lithium molar quantity from 6 to 64.
The evidence of record does not show that a skilled artisan can practice the full scope of the claims which encompass a cathode comprising cathode active material having the following composition: LixM1yM2zOp wherein M1 and M2 are different from each other and each selected from Mn, Fe and V; 6 ≤ x ≤ 64; 1 ≤ y ≤ 35; 1 ≤ z ≤ 35; and 16 ≤ p ≤ 100
One of ordinary skill in the art would have to engage in undue experimentation in order to make and use applicants claimed invention. See, In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Circ. 1988); see also, MPEP § 2164.01. MPEP 2164.01(a) sets forth the following factors, summarized from In re Wands, which should be considered when determining whether the claimed invention would require undue experimentation. The factors are as follows:
(A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; (H) and the quality of experimentation needed to make and use the invention based on the content of the disclose.
The factors are addressed in order.
Regarding factor A), the claims broadly recite “…cathode active material having the following composition: LixM1yM2zOp wherein M1 and M2 are different from each other and each selected from Mn, Fe and V; 6 ≤ x ≤ 64; 1 ≤ y ≤ 35; 1 ≤ z ≤ 35; and 16 ≤ p ≤ 100.” The formula includes many permutations, and it is unclear how the entire scope of the claims are able to be chemically synthesized.
Regarding factor B), In the field of chemistry generally, there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement put forward as enabling support for a claim.
As such, the instant scenario in which Applicant claims “…a cathode comprising cathode active material having the following composition: LixM1yM2zOp wherein M1 and M2 are different from each other and each selected from Mn, Fe and V; 6 ≤ x ≤ 64; 1 ≤ y ≤ 35; 1 ≤ z ≤ 35; and 16 ≤ p ≤ 100.” It would require undue experimentation to achieve in terms of selection and/or creation of a given chemical composition that achieves the results. Thus, the broad claim in view of highly unpredictable fields of material science and electrochemistry militates against a finding of enablement.
Regarding factor C), the state of the prior art, the field of search of prior art pertaining to lithium positive electrode active materials is an extremely vast collection of patent-related documents, non-patent literature (journal articles, encyclopedias, etc.). Selecting from these broad ranges of lithium positive electrode active materials to achieve specified results without specific guidance from the disclosure militates against finding of enablement.
Regarding factor D), the level of ordinary skill in the art would be a person holding a bachelor's degree in chemical engineering, material science, or chemistry. This factor does not weigh for or against a finding of enablement.
Regarding factor E) and H), the nature of the invention’s stereochemistry being unpredictable as stated above by In re Marzocchi, 439 F.2d 220, 223- 24, 169 USPQ 367, 369-70 (CCPA 1971), and because of the unpredictability of the material science field, one of ordinary skill in the art would have to perform experimentation on “…a cathode comprising cathode active material having the following composition: LixM1yM2zOp wherein M1 and M2 are different from each other and each selected from Mn, Fe and V; 6 ≤ x ≤ 64; 1 ≤ y ≤ 35; 1 ≤ z ≤ 35; and 16 ≤ p ≤ 100.”
determining which of the lithium molar quantities combined with various amounts of Fe, Mn, and V, to achieve said results. Such a degree of testing is undue experimentation. This factor militates against a finding of enablement.
Regarding factor F) and G), Applicants disclosure provides no examples of how the active material is formed, no fabrication step, or crystalline structure.
In applications directed to inventions in arts where the results are unpredictable, the disclosure of a single species usually does not provide an adequate basis to support generic, In re Soll, 97 F.2d 623, 624, 38 USPQ 189, 191 (CCPA 1938). This is because it is not reasonably predictable from the disclosure of one species, what other species will work. In cases involving unpredictable factors, such as most chemical reactions and physiological activity, more may be required. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (contrasting mechanical and electrical elements with chemical reactions and physiological activity).
Additionally, as noted in MPEP § 2164.03:
The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). The "amount of guidance or direction" refers to that information in the application, as originally filed, that teaches exactly how to make or use the invention. The more that is known in the prior art about the nature of the invention, how to make, and how to use the invention, and the more predictable the art is, the less information needs to be explicitly stated in the specification. In contrast, if little is known in the prior art about the nature of the invention and the art is unpredictable, the specification would need more detail as to how to make and use the invention in order to be enabling. See, e.g., Chiron Corp. V. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d 1321, 1326 (Fed. Cir. 2004) (MPEP 2164.03).
It is thus concluded that the broad claim directed to achieving specified results of composition for which there are no examples, and in a field that is unpredictable militates against a finding of enablement. A person skilled in the art could not use the genus as a whole without undue experimentation.
Appropriate action is required.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11, 14 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wickham et al. (US3479132A).
Regarding claim 14, The phrase, “cathode active material for a lithium battery” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitation are able to stand alone. See In re Hirao, 535 F2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v Robie, F.2d 15, 152, 88 USPQ 478, 481 (CCPA 1951). For the purpose of examination the claimed composition will be applied.
a cathode active material for a lithium battery cell, comprising: cathode active material having the following composition: LixM1yM2zOp wherein M1 and M2 are different from each other and each selected from Mn, Fe and V; 6 ≤ x ≤ 64; 1 ≤ y ≤ 35; 1 ≤ z ≤ 35; and 16 ≤ p ≤ 100. Wickham discloses the composition of Li11Fe6V7O32 [C1L40-42].
Regarding 14, the rejection of claim 11 is incorporated, Wickham discloses the composition of M1 and M2 are V and Fe, respectively. [C1L40-42].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BART A HORNSBY whose telephone number is (313)446-6637. The examiner can normally be reached 9:00-6:00 EST.
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BART HORNSBY
Examiner
Art Unit 1728
/MATTHEW T MARTIN/ Supervisory Patent Examiner, Art Unit 1728
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