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 .
Response to Amendment
The preliminary amendment filed on 12/11/2024 is entered and acknowledged by the Examiner. Claims 1-13 have been canceled. New claims 14-26 have been added and are currently pending in the instant application.
Priority
This application is a 371 of PCT/EP2023/065604 (filed on 06/12/2023). Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in EPO on 06/13/2022.
Information Disclosure Statement
The information disclosure statements (IDS) filed on 12/11/2024 and 05/05/2026 are in compliance with the provisions of 37 CFR 1.97 and have been considered by the examiner. An initialed copy accompanies this Office Action.
Drawings
The drawings filed on 12/11/2024 have been considered.
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 14-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-25 of copending Application No. 18/873,530 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending Application discloses a positive electrode active material comprises the content of Ni, Mn, Co, and M within the claimed proportions with a ratio I(003)/I(104) of 1.550 to 3.000 (See claims 16-18). The copending Application anticipates the claimed positive electrode active material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 17 is 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 17 recites the limitation "the first positive electrode active material…" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 14-26 are rejected under 35 U.S.C. 103 as being unpatentable over CN 112349885 A (hereinafter Wu) in view of CN 113439073 A (hereinafter Kaneda).
Wu disclose a modified lithium ion battery positive electrode (cathode) material and a method of making the positive electrode material having a formula LixNiaCobMncMdO2 wherein 0.95≤x≤1.10, 0.60≤a≤0.90, 0.03≤b≤0.40, 0.03≤c≤0.4, and 0.0≤d≤0.10 and M including Zr (See Abstract and [0014]). In one embodiment, Wu discloses the positive electrode material having a formula Li1.04Ni0.8Co0.1Mn0.095Zr0.005O2 with a ratio of peak intensities in X-ray powder diffraction of I(003)/I(104) = 1.96 (See [0048]). The mol% of zirconium (Zr) of Wu is Zr = 0.005 and fulfills the claimed A element other than Li, Ni, Mn, Co, and O, in a content a (0.005). The mol% of Ni, Mn, and Co in the positive electrode of Wu is 0.8:0.095:0.10, respectively, and fulfill the claimed contents of x, y, and z.
Wu failed to disclose the (003) peak is located at 2Ɵ from 17.0° to 20.0° and (104) peak is located at 2Ɵ from 43.0° to 46.0°.
In the same field of endeavor, Kaneda discloses a positive electrode active material for lithium ion secondary battery comprising particles of lithium composite oxide containing Li:Ni:Mn:Zr:M = a:b:c:d:e wherein 0.95≤a≤1.20, 0.70≤b≤0.98, 0.01≤c≤0.20, 0.0003≤d≤0.01, and 0.01≤e≤0.20 and M including Co (See Abstract and top of unlabeled page 3). In one embodiment, Kaneda discloses that the positive electrode active material is Li1.015Ni0.8468Mn0.0987Zr0.0050Co0.0495O2 (See bottom of unlabeled page 21). Kaneda further discloses that the positive electrode active material having XRD pattern of 2Ɵ = 18° near the (003) surface peak intensity and 2Ɵ = 44° near the (104) surface peak intensity to calculate intensity ratio I(003)/I(104) of more than 1.70 (See Abstract and middle of unlabeled page 16).
The positive electrode active material of Kaneda having the same or substantially same positive electrode active material of Wu. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to calculate the intensity ratio I(003)/I(104) of Wu with (003) peak located at 2Ɵ from 18.0° and (104) peak located at 2Ɵ from 44.0° as suggested by Kaneda because Kaneda discloses that the calculation of the intensity ratio I(003)/I(104) is done at (003) peak and (104) peak.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
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