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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/631,999 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of application 18/631,999 and/or obvious variant of one another with slight optimization of ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1, 4-8, 11-12, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2024/0047731).
Regarding claims 1, 4-5, 8, and 12, Park discloses a rechargeable lithium-ion battery comprising at least one lithium-ion battery cell, each lithium ion battery cell including a positive electrode active material for lithium-ion batteries, comprising a compound of LiaNibCocMndMeO2, wherein M can be Co or not present (c=0), and 1<a, 0≤b≤0.5, 0≤c≤0.1, 0.5≤d<1.0, and 0≤e≤0.2. Park additionally discloses a negative electrode comprising a negative active material and an electrolyte as claimed (Abstract, [0011]).
Although the reference does not disclose the claimed formula (1) compound with sufficient specificity to anticipate the instant claims, the examiner submits that the skilled artisan would have found the claimed lithium-rich oxide an obvious selection in view of the preferred Marksuh elements and overlapping stoichiometry as set forth above. Bayer Schering Pharma AG v. Barr Laboratories, 575 F.3d 1341 (Fed. Cir. 2009). The reference is directed to the same field of endeavor (i.e. flow battery), and the skilled artisan would have an expectation of success in selecting the elements in order to form a Li rich oxide. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claims 6-7, 11, and 17, please see Abstract and [0011].
Regarding claim 15-16, Park discloses that plurality of battery cells to form a battery pack is nominal features in the battery art [0005]. One of ordinary skill in the art would immediately envisage that the battery cells are formed in a battery pack in order to increase the energy storage.
Regarding claim 18, Park’s battery cell is expected to satisfy the claimed specific capacity range of greater than 200 mAh/g because Park teaches a rechargeable lithium battery comprising a compound which substantially corresponds to the instant application.
It is well settled that when a claimed structure appears to be substantially the same as a structure disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art structure does not necessarily possess characteristics attributed to the claimed structure. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Claims 2-3, 9-10, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2024/0047731) in view of Ohzuku et al. (US 2003/0087154).
Park discloses a compound comprising Ni and Mn as set forth above, however, Park is silent to an average oxidation state of Ni is 2.0 and an average oxidation state of Mn is between 3.8 and 4.0 as presently claimed.
Ohzuku teaches a positive electrode active material comprising at least lithium, nickel, manganese, and oxygen. Ohzuku further teaches that nickel has an oxidation state of 2.0-2.5 abd manganese has an average oxidation state of 3.5-4, which overlaps the claimed range and can be manipulated as desired using conventional techniques, so as to have a high storage capacity, long storage life, and excellent cycle life (Abstract, [0034-0036]).
It would have been obvious for one of ordinary skill in the art to take the positive electrode active material of Park and, in view of routine experimentation of an established range in order to exhibit excellent quick charging performance, lifespan characteristics, and energy density, to result in a composition as claimed. Further, it would have been obvious to modify the oxidation states of the composition as desired in view of routine experimentation in order to have a high storage capacity, long storage life, and excellent cycle life of the resulting composition, such as an oxidation state of Ni of 2.0 and Mn of 3.8-4.0, see MPEP 2144.05.
Claims 2, 9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2024/0047731) in view of Lee et al. (US 2017/0141393).
Park discloses a compound comprising Mn as set forth above, however, Park is silent to the average oxidation state of Mn is between 3.8 and 4.0 as presently claimed.
However, in the same field of endeavor a positive active material for a rechargeable lithium battery, Lee discloses using Mn having an oxidation number of +3 and an oxidation number of +4 wherein the amount of oxidation number of +3 may up to 37 wt. % for the benefit of efficiently suppressing voltage decreasing after repeated charges and discharges [0043]-[0046]. Accordingly, providing the rechargeable lithium ion battery of Park with an average oxidation state of Mn between 3.8 to 4.0 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since Lee et al. provides ample motivation to use Mn having an oxidation number of +3 and an oxidation number of +4 wherein the oxidation number +3 may be up to 37% to obtain the known and predictable benefits of suppressing voltage decreasing across charge and discharge cycles thereby improving cycle-life characteristics of the rechargeable lithium battery.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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, 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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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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