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
Applicant’s election of Group I, species 2, claims 1-8, 10 and 17-20, a positive electrode comprising an active material comprising: LimAxMn1-yByP1-zCzO4-nFn where B is one element with a shell coating comprising a first coating layer covering the core comprising crystalline pyrophosphate LiaMP2O7 where a=0; a second layer comprising XPO4 and a third layer comprising carbon which is a mixture of SP2 carbon and SP3 carbon in the reply filed on 8-3-2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8-3-2026.
Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7-30-2026.
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 1-8, 10 and 17-20 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. Claim 1 is rejected because there is no support for when the 1st cladding layer comprises crystalline pyrophosphates LiaMP2O7 and Mb(P2O7)b. There is support for the 1st cladding layer to comprise LiaMP2O7 or Mb(P2O7)b.
Claim 1-5, 7-8, 10 and 17-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the 1st cladding layer comprising crystalline pyrophosphates LiaMP2O7 or Mb(P2O7)b in an amount of greater than 0 and less than or equal to 6 wt %, based on the total weight of the core; for the 2nd cladding layer comprising crystalline phosphate XPO4 in an amount of greater than 0 and less than or equal to 6 wt %, based on the total weight of the core; and for the 3rd cladding layer comprising carbon in an amount of greater than 0 and less than or equal to 6 wt %, based on the total weight of the core; does not reasonably provide enablement for any amount present of the 1st, 2nd and 3rd cladding layers. The 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 use the invention commensurate in scope with these claims. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
The breadth of the claims [any amount present of the 1st, 2nd and 3rd cladding layers];
The nature of the invention;
The state of the prior art;
The level of one of ordinary skill;
The level of predictability in the art;
The amount of direction provided by the inventor [each cladding layer comprising greater than 0 and less than or equal to 6 wt %, based on the total weight of the core] ;
The existence of working examples; [each cladding layer comprising greater than 0 and less than or equal to 6 wt %, based on the total weight of the core] and
The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claim(s)1-5, 7-8, 10 and 17-20 encompasses enablement for any amount of the materials present in the 1st, 2nd and 3rd cladding layers. Thus, the disclosed example do not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of the claim(s).
Claims 1-8, 10 and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 is rejected because the language for defining A, B, C, D, M and X should be “selected from the group consisting of” because of the use of “and”. Claim 1 is rejected because “A” seems to be a dopant of the Li site, but there is no clear relation between the corresponding subscripts “m” and “x”. Claim 1 is rejected because of the use of “B” as a variable because B stands for (boron) not a variable. Claim 1 is rejected because of the use of “C” as a variable because C stands for (carbon) not a variable. Claim 1 is rejected because it is unclear what the phrase “and the core is electrically neutral” because when the chemical formula is balanced, the core would be considered neutral. Claim 1 is rejected because it is unclear if M has to be the same when the first cladding layer comprises LiaMP2O7 and Mb(P2O7)b. Claim 1 is rejected because it is unclear what the word “cladding” in cladding layer adds to the claim. Claim 6 is rejected because it is unclear what is meant by “cladding layer has a cladding amount of” in all 3 times this phrase is cited in claim 6. Claim 8 is rejected because it is unclear what is meant by “to phsphorous is in the range from 0.90 o 1.25”. Claim 8 is rejected because the total weight of manganese present cannot be 10-35 wt% because claim 8 depends from claim 1 in which the amount of Mn has to be 0.5-0.999. This makes the claim indefinite. Claim 8 is rejected because the total weight of phosphorus present cannot be 12-25 wt% because claim 8 depends from claim 1 in which the amount of P has to be 0.9-0.999. This makes the claim indefinite. Claim 10 is rejected because it is unclear what is the lower range of the lattice change rate. Claim 10 is rejected because it is unclear what is the lower range of the Li/Mn antisite defect concentration. Claim 10 is rejected because it is unclear what is the upper range for the compacted density of the positive electrode active material. Claim 10 is rejected because it is unclear what is the lower range of the surface oxygen valence of the positive active material. Claim 20 is rejected because the claim should cite “An electrochemical device comprising the secondary battery according to claim 19”. Claim Objections
Claim 17 is objected to because of the following informalities: Claim 17 should cite “active material” and not “active materialn” Appropriate correction is required.
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 1-4, 6, 8, 10 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 16-18 of copending Application No. 18/674,940. Application No. 18/674,940 claims the exact same positive electrode active material with the exact same core comprising the chemical formula of instant application with a first layer comprising pyrophosphate MP2O7 and phosphate XPO4 and a second layer comprising carbon. Application No. 18/674,940 claims in claim 2, the same as instant claim 2. Application No. 18/674,940 claims in claim 5, the same as instant claim 3. Application No. 18/674,940 claims in claim 6, where (1-y):y is from 1 to 4. Application No. 18/674,940 claims in claim 7, wherein the 1st layer and the coating amount of greater than 0 and less than or equal to 7 wt % and the second layer comprises a coating amount of greater than o and less than 6 wt%. Application No. 18/674,940 claims in claim 9, the same as instant claim 10. Application No. 18/674,940 claims in claims 16-18, the same as instant claims 17-20.
This is a provisional nonstatutory double patenting rejection. Allowable Subject Matter
Claims 5 and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fang et al. (US 2015/0311522) teaches in Example 1, an active material comprising Li1.09Mn0.4(Ni0.1Co0.5)PO4. Fang et al. teaches in Example 2, an active material comprising Li1.10Mn1/3(Ni1/3Co1/3)PO4. Fang et al. teaches a positive active material comprising LiaMbN’1-bPO4-gBc where 0.9 < a <1.1; 0.6 < b < 1.0; 0 < g < 0.5 and 0 < c < 0.25 where M is at least one of Mn, Fe and Co and B is at least one of S, F, Cl, etc. Ohira et al. (US 9,005,810) teaches a cathode active material having a composition represented by formula (1): LiMn1-xMxP1-ySiyO4where M = Zr, Sn, Y or Al where 0 < x < 0.5 and 0 < y < 0.5. Ohira et al. teaches specifically cathode active material in Table 1, comprising: Li(Mn0.9Sn0.1)(P0.8Si0,2)O4, Li(Mn0.95Zr0.05)(P0.9Si0,1)O4, or Li(Mn0.95Sn0.05)(P0.9Si0,1)O4. Guan Wu (JP 6157563 B2, machine translation) teaches a lithium ion battery positive electrode material comprising the formula LiMnxFe1-xP1-aSibMcO4-dFd where M can be B, Cl or S).
Natsui et al. (US 2023/0402594) teaches in Example 1, a lithium transition metal composite oxide comprising Li1.67Sb0.001Mn0.55Ni0.275P0.065O1.92F0.08. Ma et al. (US 2023/0335723) claims in claim 1, a positive electrode active material comprising Li1+xMn1-yAyP1-zRzO4 which is the exact same material of the instant positive electrode material. Ma et al. (US 2023/0343938) claims in claim 1, a positive electrode active material comprising LiaAxMn1-yByP1-zCzO4-nDn which is the exact same material of the instant positive electrode material. Jiang et al. (US 2023/0361296) claims in claim 1, a positive electrode active material comprising LiaAxMn1-yByP1-zCzO4-nDn which is the exact same material of the instant positive electrode material. Wu (US 2016/0190584) teaches in claim 1, a Li-ion battery positive electrode material comprising LiMnxFe1-xP1-aSibMcO4-dFd where M is B or S and teaches in claim 3 that the positive active material contains a carbon coating layer. Ohira et al. (US 2013/0209886) teaches a cathode comprising a cathode material comprising LiMn1-xMxP1-ySiyO4.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723
Prosecution Insights