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 .
Priority
This application claims priority to JP 2024-088994 (filed 05/31/24).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claims 1-5 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-4) in the Reply filed 08/27/26 is acknowledged.
Drawings
The Drawings filed 03/04/25 are approved by the examiner.
Information Disclosure Statement
The IDS statement filed 03/04/25 has been considered. An initialed copy accompanies this action.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892 or by applicant on form PTO-1449, they have not 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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/218,766 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of ‘766 application are drawn to cathode active material (positive) compositions comprising rocksalt Li metal oxide structure possessing a specific primary/secondary particle geometry. The copending application specifies the claimed arrangement index (less than 45°) (copending claim 2), overlapping values for “dL/dS” (copending claim 4), and overlapping values for “dL/D” (copending claim 5 inverted from D/dl). In the case where the claimed ranges "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. Cir. 1990).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/218,769 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of ‘769 application are drawn to cathode active material (positive) compositions comprising rocksalt Li metal oxide structure possessing a specific primary/secondary particle geometry. The copending application specifies the claimed arrangement index (less than 45°) (copending claim 2), overlapping values for “dL/dS” (copending claim 4), and overlapping values for “dL/D” (copending claim 5 inverted from D/dl). In the case where the claimed ranges "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. Cir. 1990).
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.
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.
Claim Construction
Note that the examiner construes the instant claim terminology “crystallites” as equivalent to the art term “primary particles” (see para 0017 and 0049 of instant PGPUB). Also, applicant’s definition/discussion of the claim terminology “Feret diameter” at para 0052 is noted.
Claim(s) 1, 2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sun US 2023/0065977 A1.
Sun US 2023/0065977 A1 discloses positive electrode active material comprising secondary particles (rocksalt structure) consisting of a group of primary particles, the primary particles having a long and short axis, and being oriented in the secondary particles (Abstract; Fig 1-2; para 0263). The reference specifies an aspect ratio of the primary particle (i.e. the claimed crystallites) of 2.5-14 (para 0154)(corresponding to the claimed dL/dS), a secondary particle diameter of 5-20 microns (para 0129)(corresponding to the claimed Feret diameter), and further teaches alignment of the long axis of the primary particles (orientation value) of 20°C or less (corresponding to the claimed “Ɵ≤45°”). Also, while the reference does not specify values for the claimed “dL/D”, the examiner submits that such can be determined as Sun states that the secondary particle has a D value of 5-20microns, and a primary particle long axis value greater than 1 micron (para 0162)(corresponds to the claimed “dL”; i.e. calculated “dL/D” value of 0.05-0.20). Such would result in overlapping values for each of the claimed “dL/dS” and “dL/D”. In the case where the claimed ranges "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. Cir. 1990).
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Allowable Subject Matter
Claim 3 is allowable over the prior art of record. The above reference does not fairly suggest or possess with inherent certainty the claimed “voidage of 10% or less” (instant PGPUB para 0054).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
September 18, 2026
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