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 claims 1-8, and species Mn for M1 and Mg for M2 recited in the formula (1) in the reply filed on Oct. 16, 2025 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)).
Claims 9-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 Oct. 16, 2025.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The term “Equation 1” in claim 1 as well as in specification should read “Inequation 1”.
The data shown in the Tables of the specification should have data deviations/errors presented. For example, in Table 1, 104.8±?, 102.1±?
Claim Interpretations
The term “efficiency constants” recited in claim 1 is interpreted according to the description in paragraph [0074] of the instant specification.
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.
Claims 1-8 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 recites “a silicon-carbon composite” is not only a silicon-based active material but also a carbon-based active material. Thus, it is unclear whether or not the claimed “a carbon-based active material” includes the said silicon-carbon composite, rendering the claims indefinite. For purposes of examination, the “a carbon-based active material” as claimed is interpreted as not including the said silicon-carbon composite, since it does appear to be Applicant’s intent.
Claim 6 recites the limitation "the positive electrode active material". There is insufficient antecedent basis for this limitation in the claim. See the rejection below for how the limitation is interpreted.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al. (US 20210384497 A1, hereafter Nakano).
Regarding claims 1-2 and 4, Nakano teaches a lithium secondary battery (See, Figs. 1-2) comprising:
a positive electrode and a negative electrode and a negative electrode (e.g., [0021]-[0026]),
wherein the positive electrode comprises a lithium composite transition metal compound comprising nickel and cobalt represented by the formula LiaNibMncCodMxO2, which reads on the formula as recited in claim 4 when M is Mg. The molar fraction range of each element in the claimed formula as well as the range of x+y as claimed overlap those of Kuroda, respectively. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Nakano teaches the negative electrode comprises a carbon-based active material (e.g., graphite, [0047]) and a silicon-based active material (e.g., silicon oxide, [0043]) (See [0037]-[0049]).
As to the limitation associated with the inequation 1, the “a” and “b” represent characteristic or property of the silicon-based active material and the carbon-based active material, respectively. Since Nakano teaches the same materials as claimed, the characteristics or properties are expected to be necessarily present. Products of identical chemical composition cannot have mutually exclusive properties (See MPEP § 2112.01). As for “a*”, Nakano further teaches that the ratio of the silicon-based active material based on 100 parts by weight of the total amount of the silicon-based active material and the carbon-based active material in the negative electrode is adjustable ([0049]). Therefore, one of ordinary skill in the art would have readily arrived at the claimed inequation 1 by adjusting the said ratio through routine experimentations.
Note also that the conditional limitation (i.e., in the last paragraph, “when …”) does not set forth a positive limitation because “when” supports the notion that the limitation is optional and is not necessarily present.
Regarding claim 3, Nakano teaches the lithium secondary battery of claim 1, wherein the lithium composite transition metal compound comprises nickel in a molar ratio of 0 to 1. The claimed ratio range of 0.8 or more overlaps or lies inside the range of 0 to 1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 6, Nakano teaches the lithium secondary battery of claim 1, and further teaches only the lithium composite transition metal compound can be used as the positive electrode active material ([0071]), meaning the positive electrode comprises 100 parts by weight of the lithium composite transition metal compound based on 100 parts by weight of the positive electrode active material.
Regarding claim 7, Nakano teaches the lithium secondary battery of claim 1, wherein a positive electrode active material of the positive electrode consists of the lithium composite transition metal compound comprising nickel and cobalt. See the rejection of claim 6.
Regarding claim 8, Nakano teaches the lithium secondary battery of claim 1, wherein a negative electrode active material of the negative electrode consists of the silicon-based active material and the carbon-based active material (See, “other than”, “may be further …”, etc., [0049]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nakano, as applied to claim 1 above, and further in view of Choi et al. (US 20180342757 A1, hereafter Choi).
Regarding claim 5, Nakano teaches the lithium secondary battery of claim 1, but is silent as to the instantly claimed silicon-carbon composite. However, the use of a Si-C composite as a negative electrode active material is well known in the art. For example, Choi discloses a Si-C physically or chemically combined with a carbon-based material can be used as a negative electrode active material (at least [0034]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have used a Si-C physically or chemically combined with a carbon-based material as an alternative to the negative electrode active material of Nakano, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07.
Further, since Nakano in view of Choi teaches the same silicon-carbon composite, the characteristic or property of having a discharge efficiency of from 85% to 95% is reasonably expected to be present. Products of identical chemical composition cannot have mutually exclusive properties (See MPEP § 2112.01).
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18377088 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations as instantly claimed in claims 1-8 are taught by those recited in claims 1-6 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727