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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-8, drawn to a preparation method of a porous and spherical cobalt oxide particle.
Group II, claim(s) 9 and 11-17, drawn to a porous and spherical cobalt oxide particle.
Group III, claim(s) 10 and 18-20, drawn to a lithium cobalt oxide cathode material.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a porous and spherical cobalt oxide particle prepared by the method of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Xue, Inoue, and Jiang. Xue teaches a method of synthesis for porous hollow structure metal oxides (0015) that are spherical (0018, other metal oxides being prepared in the same manner, 0018), including cobalt tetroxide (0014), comprising the steps of: (1) Mixing a cobalt salt solution (MNO3, M = Co, 0016) and thiourea ("soluble sulfur sources (thiourea)," 0016) to obtain a mixed solution, (2) Heating the mixed solution to allow a reaction in an aerobic atmosphere (0017), (3) Conducting solid-liquid separation to obtain a solid product (centrifugation, 0017), and subjecting the solid product to calcination (0018) in an aerobic atmosphere (“oxygen-rich heating conditions,” 0016) to obtain a calcined material; and thus obtaining the porous and spherical oxide (0016).
Xue does not teach adding urea to the mixed solution, or (4) washing and drying the calcined material.
However, Inoue teaches an analogous method of forming lithium metal composite oxide particles (C8/L32) wherein unsubstituted or substituted urea is added to a mixed solution to form a cobalt oxide (C8/L50), and an aerobic atmosphere is taught for a calcination step (C8/L46). It would be obvious to one skilled in the art to modify the method of Xue by adding urea to the solution containing thiourea, as Inoue teaches; one would be motivated to do so in order to obtain a homogeneous deposit of a cobalt-containing compound in the subsequent step, as Inoue teaches (C8/L66).
Xue and Inoue do not teach washing and drying the calcined material to obtain the product. However, Jiang teaches a method for preparing nanoscale cobalt tetroxide catalysts (p. 2; Table 2), which is analogous to the invention of Xue and Inoue as well as the instant invention because the method seeks to form porous Co3O4 nanoparticles with a therefore large specific surface area (p. 2 column 1), wherein the method performs washing and drying on a calcination product in order to obtain a porous final product (p. 2, ‘2.1 Catalysts preparation’ pp. 2). It would be obvious to one skilled in the art to modify the method of Xue and Inoue with the washing and drying taught by Jiang; one would be motivated to do so because the washing and drying removes excess material (in the case of Jiang, a template) in order to form a porous structure, which advantageously increases the surface area of the final Co3O4 as Jiang teaches (p. 4 last paragraph), leading to improved activity of the catalyst (“it still has the best activity due to its large specific surface area,” p. 5 column 1). One skilled in the art would therefore arrive at the claimed invention prior to the effective filing date.
It is further noted that the invention of group II is not limited by the preparation method; the courts have held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Groups I and III lack unity of invention because even though the inventions of these groups require the technical feature of a porous and spherical cobalt oxide particle according to claim 9, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Xue. Xue teaches a porous and spherical cobalt oxide particle (0018). Xue modified by Inoue and Jiang further teaches a porous and spherical cobalt oxide particle produced by the method of claim 1. It is further noted that the invention of group III is not limited by the preparation method; the courts have held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Groups II and III lack unity of invention because even though the inventions of these groups require the technical feature of the porous and spherical cobalt oxide particle according to claim 9, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Xue. Xue teaches a porous and spherical cobalt oxide particle (0018). Xue modified by Inoue and Jiang further teaches a porous and spherical cobalt oxide particle produced by the method of claim 1. It is further noted that the inventions of groups II and III are not limited by the preparation method; the courts have held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
During a telephone conversation with Hong Lundvall on 6/15/2026, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claims 9 and 10 recite products that are limited by a process of preparation. The examiner notes that product-by-process claims are not limited to the manipulations of the recited steps, only by the structure implied by the steps; see MPEP 2113.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Xue et al. 2008 (CN 101274749 A) in view of Inoue et al. 2009 (US 7510805 B2, provided on the IDS filed 2/28/2024 as US 20040175618 A1) and non-patent literature Jiang et al. 2022 (A rod-like Co3O4 with high efficiency and large specific surface area for lean methane catalytic oxidation, Molecular Catalysis, Volume 522, Version of Record 25 March 2022, 112229), referred to herein as Xue, Inoue, and Jiang, respectively. A machine translation of Xue, as provided with this office action, is cited herein.
Regarding claim 1, Xue teaches a method of synthesis for porous hollow structure metal oxides (0015) that are spherical (0018, other metal oxides being prepared in the same manner, 0018), including cobalt tetroxide (0014), comprising the steps of:
(1) Mixing a cobalt salt solution (MNO3, M = Co, 0016) and thiourea ("soluble sulfur sources (thiourea)," 0016) to obtain a mixed solution,
(2) Heating the mixed solution to allow a reaction in an aerobic atmosphere (0017),
(3) Conducting solid-liquid separation to obtain a solid product (centrifugation, 0017), and subjecting the solid product to calcination (0018) in an aerobic atmosphere (“oxygen-rich heating conditions,” 0016) to obtain a calcined material; and thus obtaining the porous and spherical oxide (0016).
Xue does not teach the following limitations:
Adding urea to the mixed solution, or
(4) washing and drying the calcined material.
However, regarding limitation I, Inoue teaches an analogous method of forming lithium metal composite oxide particles (C8/L32) wherein unsubstituted or substituted urea is added to a mixed solution to form a cobalt oxide (C8/L50), and an aerobic atmosphere is taught for a calcination step (C8/L46).
It would be obvious to one skilled in the art to modify the method of Xue by adding urea to the solution containing thiourea, as Inoue teaches; one would be motivated to do so in order to obtain a homogeneous deposit of a cobalt-containing compound in the subsequent step, as Inoue teaches (C8/L66). The courts have held that the combination of known equivalents taught in the art is prima facie obvious; “[it] is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06(I).
Regarding limitation II, Xue and Inoue do not teach washing and drying the calcined material to obtain the product. However, Jiang teaches a method for preparing nanoscale cobalt tetroxide catalysts (p. 2; Table 2), which is analogous to the invention of Xue and Inoue as well as the instant invention because the method seeks to form porous Co3O4 nanoparticles with a therefore large specific surface area (p. 2 column 1), wherein the method performs washing and drying on a calcination product in order to obtain a porous final product (p. 2, ‘2.1 Catalysts preparation’ pp. 2). It would be obvious to one skilled in the art to modify the method of Xue and Inoue with the washing and drying taught by Jiang; one would be motivated to do so because the washing and drying removes excess material (in the case of Jiang, a template) in order to form a porous structure, which advantageously increases the surface area of the final Co3O4 as Jiang teaches (p. 4 last paragraph), leading to improved activity of the catalyst (“it still has the best activity due to its large specific surface area,” p. 5 column 1). One skilled in the art would therefore arrive at the claimed invention prior to the effective filing date.
Regarding claim 2, Xue, Inoue, and Jiang disclose the method as applied to claim 1 above. Xue also teaches that in step (1) the cobalt salt is a nitrate, 0016.
Regarding claim 3, Xue, Inoue, and Jiang disclose the method as applied to claim 1 above. Xue also teaches 5-20 mmol of the cobalt salt solution dissolved in 0.025 L, 0017; this equals 0.2-0.8 M, which falls within the claimed range of 0.05 mol/L to 1.0 mol/L.
Regarding claim 4, Xue, Inoue, and Jiang disclose the method as applied to claim 1 above. Xue also teaches 5-20 mmol of thiourea; 0017; this equals 0.2-0.8 M, which falls within the claimed range of 0.05 mol/L to 1.0 mol/L.
Regarding claim 5, Xue, Inoue, and Jiang disclose the method as applied to claim 1 above. Inoue teaches the addition of urea, and teaches an embodiment in which 10 weight parts of urea are dissolved in 300 weight parts of ion-exchanged water (C15/L58-60); this corresponds to an approximate molarity of 10/(60 g/mol urea) = 0.167 mol urea, and 300/(1000 ml/L water) = 0.3 L water, and 0.167 mol/0.3 L = 0.56 mol/L urea in the mixed solution, which falls within the claimed range of 0.2 mol/L to 2.5 mol/L. It would be obvious to one skilled in the art to modify the method of Xue by adding urea to the solution containing thiourea, with the concentration Inoue teaches; one would be motivated to do so in order to obtain a homogeneous deposit of a cobalt-containing compound in the subsequent step, as Inoue teaches (C8/L66). The courts have held that the combination of known equivalents taught in the art is prima facie obvious; “[it] is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06(I).
Regarding claim 6, Xue, Inoue, and Jiang disclose the method as applied to claim 1 above. Xue also teaches 80-180 ℃ over 5-48 h (0017); these ranges overlap with the claimed ranges of 160°C to 180°C and 8 h to 12 h, respectively. As set forth in MPEP 2144.05, in the case where the claimed range "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. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform a method for preparing Co3O4 as taught by Xue, Inoue, and Jiang where the temperature and duration of the heating of the mixed solution is in any workable or optimum range overlapping with 80-180 ℃ over 5-48 hours, as taught by Xue, including the claimed range, in order to obtain a temperature and duration of heating suitable for the reaction.
Regarding claim 7, Xue, Inoue, and Jiang teach the method as applied to claim 1 above. Xue, Inoue, and Jiang do not explicitly disclose the pressure of the atmosphere used in step (2). However, Xue discloses that the reaction is conducted in a high-pressure reactor (0017). One skilled in the art would therefore be led by the disclosure of Xue to use the reactor to conduct the reaction either at a standard ambient pressure or at a pressure higher than standard conditions, thus necessarily leading to an inherently disclosed range of about 0.101325 MPa (atmospheric pressure) or greater, which overlaps with the claimed range of 0.1 – 1.0 MPa. As set forth in MPEP 2144.05, in the case where the claimed range "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. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform a method for preparing Co3O4 as taught by Xue, Inoue, and Jiang where the pressure of the heating of the mixed solution is in any workable or optimum range overlapping with about 0.101325 MPa or greater, as taught by Xue, including the claimed range, in order to obtain a pressure of heating suitable for the reaction.
Regarding claim 8, Xue, Inoue, and Jiang teach the method as applied to claim 1 above. Xue also teaches calcination at 400–700 °C for 4 h, 0018. The disclosed duration of 4 hours falls within the claimed range of 2-6 hours. Regarding the range of temperatures, which overlaps with the claimed range of 500°C to 750°C, as set forth in MPEP 2144.05, in the case where the claimed range "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. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform a method for preparing Co3O4 as taught by Xue, Inoue, and Jiang where the temperature of the calcination step is in any workable or optimum range overlapping with 400-700 C, as taught by Xue, including the claimed range, in order to obtain a temperature suitable for the calcination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eileen Moudou whose telephone number is (571)272-1768. The examiner can normally be reached M-Th 8 AM - 4 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eileen Moudou/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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