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 Arguments
Applicant’s arguments with respect to claim(s) 1-3 and 6-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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(s) 1-3, 6 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dahn et al. (US 2004/0179993). Dahn et al. teaches in the abstract, a positive active material heated sufficiently to obtain a composition of Li1.1>y>1.3[Nix=0.5Mnx=0.5]O2 sufficiently dense for use in the lithium ion battery cathode. Since Dahn et al. teaches the same lithium-rich manganese-based transition metal oxide having the same formula as Chemical Formula 1 as claimed in instant claim 6, then inherently wherein a denseness (P) derived by Equation 1:
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83
189
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ranging from 42 to 50, 43 to 49 or 44 to 48, where d400 is a 1st rolling density at 400 kgf ranging from 2.00 to 2.40 g/cm3 and
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41
319
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where “a” ranges from 2.85 to 2.88 A and “c” ranges from 14.23 to 14.29 A must also be obtained.
In addition, the presently claimed property of denseness (P) derived by Equation 1:
PNG
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83
189
media_image1.png
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ranging from 42 to 50, 43 to 49 or 44 to 48, where d400 is a rolling density at 400 kgf ranging from 2.00 to 2.40 g/cm3 and
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media_image2.png
41
319
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Greyscale
where a ranges from 2.85 to 2.88 A and c ranges from 14.23 to 14.29 A would have obviously been present once the Dahn et al. product is provided. See MPEP 2122.01, I.
Discovery of a new and unobvious property and use does not overcome the statutory restraint of Section 102 when the claimed composition is known. In re Spada, CAFC, No. 90-1109 (1990).
Furthermore, “products of identical chemical composition can not have mutually exclusive properties”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the event any differences can be shown for the product of the product by process claims 1-3, as opposed to the product taught by Dahn et al., such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results. In re Thrope 227 USPQ 964; (Fed. Cir. 1985).
With respect to the product by process claim 1-3, the determination of patentability is based upon the product itself not upon the method of its production. In re Thrope 227 USPQ 964; In re Brown 173 USPQ 685; In re Bridgeford 149 USPQ 55; In re Wertheim 191 USPQ 90. Any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the Examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to the Applicants to establish that their product is patentably distinct. In re Brown 173 USPQ 685 and In re Fessmann 180 USPQ 324.
Claim(s) 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Dahn et al. (US 2004/0179993) in view of Lee et al. (US 2018/0006294). Dahn et al. teaches in the abstract, a positive active material heated sufficiently to obtain a composition of Li1.1>y>1.3[Nix=0.5Mnx=0.5]O2 sufficiently dense for use in the lithium ion battery cathode. Dahn et al. discloses the claimed invention as explained above teaching a positive electrode comprising a lithium-rich manganese-based transition metal oxide active material but does not teach that that the positive electrode is used in a battery comprising a silicon-based negative active material. Lee et al. teaches in [0092], a battery comprising an improved anode comprising micron sized silicon (µSi) and in [0121], the positive electrode comprises a positive active material comprising a lithium-rich manganese-based transition metal oxide comprising Li1.35Ni0.32Mn0.68O2. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the positive active material as taught by Dahn et al. in a battery comprising a positive electrode comprising the positive active material with a negative electrode comprising micron sized silicon (µSi) negative active material because Lee et al. teaches that it is known.
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 1-3, 6-7 and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-7 and 9-10 of copending Application No. 19/141,487(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application No. 19/141,487 claims in claims 1-3, a positive electrode comprising the exact same positive active material of the claimed invention claims 1-3 and 8. Application No. 19/141,487 claims in claim 6 the exact same lithium-rich manganese-based transition metal oxide represented by chemical formula 1, as claimed in instant claim 6. Application No. 19/141,487, claims in claim 7, the exact same 2nd rolling density as claimed in the instant claim 7. Application No. 19/141,487 claims in claims 9-10, the same lithium secondary battery as instant claims 9-10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura Weiner whose telephone number is (571)272-1294. The examiner can normally be reached 9 am-5 pm EST M, Th and F.
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, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723
Prosecution Insights