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 and Claim Status
The amendment filed 14 August 2026 has been entered. Applicant’s amendments to the claims have overcome each and every objection and 35 U.S.C. § 112 rejection set forth in the Office Action mailed 18 May 2026. Claim 10 has been canceled. Claims 1–9 and 11–20 are pending in the application. Claims 11 and 12 are withdrawn from consideration.
Terminal Disclaimer
The terminal disclaimer filed on 14 August 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 19/008,264 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claims 1, 6, 7, 13, 15, and 16 are objected to because of the following informalities:
Claims 1, 6, 7, and 13: all instances of “LiCoO2”, “LiMn2O4”, and “LiFePO4” should instead read “LiCoO2”, “LiMn2O4”, and “LiFePO4”, respectively, with numbers in subscripts; and
Claims 15 and 16: all instances of “SiOx” should instead read “SiOx” with the variable x in subscript.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5–7, 9, 13, and 17–20 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 107394124 A; see attached machine translation) in view of Park et al. (US 20210135187 A1).
Regarding Claims 1, 5–7, and 13, Wang discloses a secondary battery (see power lithium-ion battery, [0014]) comprising:
a positive electrode (see cathode sheet, [0007]) comprising a positive electrode active material (see cathode active material, [0007]) that comprises a lithium nickel-based active material (see ternary cathode material, [0007], [0011]) and LFP (LiFePO4) (see lithium iron phosphate, [0007]) in the form of secondary particles (see secondary granules, [0009]); and
wherein the lithium nickel-based active material contains 80 or 85 mol.% of nickel with respect to 100 mol.% of metals excluding lithium (see LiNixMnyCo1−x−yO2 (x = 0.8, y = 0.1) and LiNi0.85Mn0.10Al0.05O2, [0011]).
Wang further discloses ([0007]) wherein the positive electrode active material comprises the LFP (LiFePO4) in the form of secondary particles in an amount of from 0.1 to 15 parts by weight with respect to 100 parts by weight of the positive electrode active material, but does not explicitly disclose the claimed ranges of 0.1 to 5 (Claims 1 and 13) and 0.1 to 3 (Claim 7) parts by weight with respect to 100 parts by weight of the positive electrode active material.
However, Wang discloses ([0021]) that when the positive electrode active material comprises the disclosed amount of LFP (LiFePO4), the structural stability of the battery material system is improved and the risk of runaway of active materials when the battery is abused is reduced. Note that Wang is analogous to the claimed invention as it is in the same field of lithium secondary batteries.
When the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I), and thus it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portions of the ranges for the amount by weight of LFP (LiFePO4) in the form of secondary particles comprised in the positive electrode active material with a reasonable expectation that such selection would successfully result in a battery material system with improved structural stability and reduced risk of runaway of active materials when the battery is abused.
Wang does not explicitly disclose that the lithium nickel-based active material is in the form of single particles (Claim 1), nor wherein an average particle diameter (D50) of the lithium nickel-based active material in the form of single particles is from 3 µm to 10 µm (Claim 5).
Park teaches a secondary battery (see lithium secondary battery, [0075]) comprising: a positive electrode (see positive electrode, [0075]) comprising a positive electrode active material (see positive electrode active material, [0019]) that comprises a lithium nickel-based active material (see composite transition metal oxide, [0019]) in the form of single particles (see composed of a single particle, [0019]) having an average particle diameter (D50) of preferably 3 µm to 7 µm ([0026]); and wherein the lithium nickel-based active material in the form of single particles contains 65 mol.% or more of nickel with respect to 100 mol.% of metals excluding lithium ([0019]). Park teaches ([0026]) that when the lithium nickel-based active material is in the form of single particles having an average particle diameter within a preferred range of 3 µm to 7 µm, particle strength can be increased to suppress particle breakage during rolling and improve rolling density, and the amount of gas generated by electrolyte solution side reactions can be decreased due to a decrease in specific surface area and lithium by-product. Note that Park is analogous to the claimed invention as it is in the same field of lithium secondary batteries.
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the secondary battery of modified Wang such that the lithium nickel-based active material is in the form of single particles having an average particle diameter (D50) of 3 µm to 7 µm, as taught by Park, for the purpose of increasing particle strength to suppress particle breakage during rolling and improve rolling density, and decreasing the amount of gas generated by electrolyte side reactions due to decreased specific surface area and lithium by-product.
Regarding Claim 9, modified Wang discloses the secondary battery as set forth above. Wang further discloses wherein the lithium nickel-based active material contains 80 or 85 mol.% of nickel with respect to 100 mol.% of metals excluding lithium (see LiNixMnyCo1−x−yO2 (x = 0.8, y = 0.1) and LiNi0.85Mn0.10Al0.05O2, [0011]).
Regarding Claim 17, modified Wang discloses the secondary battery as set forth above. Wang further discloses ([0018]) the secondary battery comprising an electrolyte that is an organic liquid electrolyte.
Regarding Claims 18–20, modified Wang discloses the secondary battery as set forth above, but does not explicitly disclose a battery module comprising a secondary battery according to Claim 1 as a unit cell (Claim 18), a battery pack comprising the secondary battery according to Claim 1 (Claim 19), or a battery pack comprising the battery module according to Claim 18 (Claim 20).
Park teaches ([0098]–[0099]) utilizing the secondary battery as a unit cell in a battery module, and further utilizing the battery module in a battery pack for the purpose of supplying power to a power tool, electric car, or power storage system.
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate the secondary battery of modified Wang into a battery module as a unit cell, and further to incorporate such a battery module into a battery pack, as taught by Park, for the purpose of supplying power to a power tool, electric car, or power storage system.
Claims 2, 4, 8, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 107394124 A; see attached machine translation) in view of Park et al. (US 20210135187 A1) as applied to Claims 1, 5–7, 9, 13, and 17–20 above, further in view of Lee et al. (WO 20200180160 A1; US 20220029152 A1 used herein for translation and citation purposes), herein referred to as Lee ‘160.
Regarding Claim 2, modified Wang discloses the secondary battery as set forth above. Wang further discloses the secondary battery further comprising a negative electrode (see negative electrode sheet, [0014]), wherein the negative electrode comprises a negative electrode active material (see negative electrode active material, [0016]).
However, Wang does not disclose wherein the negative electrode active material comprises a silicon-based active material, and instead discloses wherein the negative electrode active material comprises a carbon-based active material (see artificial graphite and natural graphite, [0032]).
Lee ‘160 teaches a secondary battery (see lithium secondary battery, [0024]) comprising: a positive electrode (see positive electrode, [0024]), comprising a positive electrode active material (see positive electrode active material, [0024]) that comprises a lithium nickel-based active material (see lithium nickel cobalt manganese-based oxide, [0024]) in the form of single particles (see form of a single particle, [0043]); and wherein the lithium nickel-based active material in the form of single particles contains 50 mol.% or more of nickel with respect to 100 mol.% of metals excluding lithium ([0031], [0035]). Lee ‘160 further teaches the secondary battery further comprising a negative electrode (see negative electrode, [0024]), wherein the negative electrode comprises a negative electrode active material (see negative electrode active material, [0076]) that comprises a mixture of a carbon-based active material (see carbon-based negative electrode active material, [0077], [0082]) and a silicon-based active material (see silicon-based negative electrode active material ([0077], [0082]). Lee ‘160 teaches that better capacity characteristics can be obtained when the silicon-based active material is included. Note that Lee ‘160 is analogous to the claimed invention as it is in the same field of lithium secondary batteries.
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the secondary battery of modified Wang such that the negative electrode active material further comprises a silicon-based active material, as Lee ‘160 teaches that better capacity characteristics can be obtained when a silicon-based active material is included.
Regarding Claims 4 and 14, modified Wang discloses the secondary battery as set forth above, but does not disclose wherein the negative electrode active material comprises the silicon-based active material in an amount of from 1 to 15 parts by weight with respect to 100 parts by weight of the negative electrode active material (Claim 4), nor wherein the negative electrode active material further comprises a carbon-based active material in an amount of 60 parts by weight or more and 99 parts by weight or less with respect to 100 parts by weight of the negative electrode active material (Claim 14).
Lee ‘160 teaches that when the negative electrode active material composed of a mixture of silicon-based and carbon-based active materials comprises the silicon-based active material in an amount of from 1 to 30 parts by weight with respect to 100 parts by weight of the negative electrode active material (see a mixing ratio of the silicon-based negative electrode active material: the carbon-based negative electrode active material may be in a range of 1:99 to… 30:70, [0082]; note that such a range corresponds to the carbon-based active material being comprised in a balanced amount of from 70 to 99 parts by weight with respect to 100 parts by weight of the negative electrode active material), excellent cycle performance can be secured by suppressing volume expansion of the silicon-based active material and improving capacity characteristics ([0082]).
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the secondary battery of modified Wang such that the negative electrode active material comprises the silicon-based active material in an amount of from 1 to 30 parts by weight with respect to 100 parts by weight of the negative electrode active material, and correspondingly comprises the carbon-based active material in a balanced amount of from 70 to 99 parts by weight with respect to 100 parts by weight of the negative electrode active material, as taught by Lee ‘160, for the purpose of securing excellent cycle performance by suppressing volume expansion of the silicon-based active material and improving capacity characteristics.
When the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I), and thus it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portions of the ranges for the amount by weight of silicon-based active material and the carbon-based active material comprised in the negative electrode active material with a reasonable expectation that such selection would successfully result in a battery material system with excellent cycle performance due to suppressed volume expansion of the silicon-based active material and improved capacity characteristics.
Regarding Claim 8, modified Wang discloses the secondary battery as set forth above. Wang discloses wherein the lithium nickel-based active material in the form of single particles contains 80 mol.% of nickel with respect to 100 mol.% of metals excluding lithium (see LiNixMnyCo1−x−yO2 (x = 0.8, y = 0.1), [0011]), but does not explicitly disclose the claimed range of 55 mol.% or more and less than 80 mol.% of nickel with respect to 100 mol.% of metals excluding lithium.
Lee ‘160 teaches a secondary battery (see lithium secondary battery, [0024]) comprising: a positive electrode (see positive electrode, [0024]), comprising a positive electrode active material (see positive electrode active material, [0024]) that comprises a lithium nickel-based active material (see lithium nickel cobalt manganese-based oxide, [0024]) in the form of single particles (see form of a single particle, [0043]); and wherein the lithium nickel-based active material in the form of single particles contains 50 mol.% or more and 95 mol.% or less of nickel with respect to 100 mol.% of metals excluding lithium ([0031], [0035]). Lee ‘160 teaches ([0035]) that when the lithium nickel-based active material in the form of single particles contains a mol.% of nickel in the disclosed range, it is more advantageous for achieving high capacity. Note that Lee ‘160 is analogous to the claimed invention as it is in the same field of lithium secondary batteries.
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the secondary battery of modified Wang such that the lithium nickel-based active material in the form of single particles contains 50 mol.% or more and 95 mol.% or less of nickel with respect to 100 mol.% of metals excluding lithium, as taught by Lee ‘160, for the purpose of it being more advantageous for achieving high capacity.
When the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I), and thus it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portions of the ranges for the mol.% of nickel contained in the lithium nickel-based active material in the form of single particles with respect to 100 mol.% of metals excluding lithium with a reasonable expectation that such selection would successfully result in it being more advantageous for achieving high capacity.
Regarding Claim 15, modified Wang discloses the secondary battery as set forth above. Modified Wang further discloses wherein the silicon-based active material comprises SiOx (0<x<2) (see silicon oxide (SiOx, where 0<x<2), Lee ‘160 [0080]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 107394124 A; see attached machine translation) in view of Park et al. (US 20210135187 A1) as applied to Claims 1, 5–7, 9, 13, and 17–20 above, further in view of Li et al. (US 20210175511 A1).
Regarding Claim 3, modified Wang discloses the secondary battery as set forth above, but does not disclose wherein the positive electrode has a porosity of from 19% to 23%.
Li teaches a secondary battery (see lithium-ion battery, [0041]) comprising: a positive electrode (see positive electrode plate, [0041]) comprising a positive electrode active material (see positive active material, [0041]) that comprises a lithium nickel-based active material (see positive active substance I [which] is a layered lithium nickel transition metal oxide, [0041]) in the form of single particles (see single particle morphology, [0049]), and LFP (LiFePO4) (see positive active substance II [which] is an olivine-type li-containing phosphate, [0041], which can specifically be LiFePO4, [0067]) in the form of secondary particles (see the positive active substance II includes… secondary particles, [0062]); and wherein the lithium nickel-based active material in the form of single particles contains 55 mol.% or more of nickel with respect to 100 mol.% of metals excluding lithium (see all specific examples of the layered nickel transition metal oxide listed in [0065] except LiNi0.5Co0.2Mn0.3O2 and LiNi0.5Co0.25Mn0.25O2), and wherein the positive electrode active material comprises the LFP (LiFePO4) in the form of secondary particles in an amount of from 2 to 40 parts by weight with respect to 100 parts by weight of the positive electrode active material ([0056]). Li further teaches ([0057]) that when the positive electrode has a porosity of from 19% to 25%, a relatively high composition of positive electrode active material can be loaded in the positive electrode to improve the volume energy density of the secondary battery, and quick entrance of lithium ions into the positive electrode can be ensured to facilitate relatively good charge-discharge power of the secondary battery. Note that Li is analogous to the claimed invention as it is in the same field of lithium secondary batteries.
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the secondary battery of modified Wang such that the positive electrode has a porosity of from 19% to 25%, as taught by Li, for the purpose of loading a relatively high composition of positive electrode active material in the positive electrode to improve the volume energy density of the secondary battery, and ensuring quick entrance of lithium ions into the positive electrode to facilitate relatively good charge-discharge power of the secondary battery.
When the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I), and thus it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portions of the ranges for the porosity of the positive electrode with a reasonable expectation that such selection would successfully result in a relatively high composition of positive electrode active material can be loaded in the positive electrode to improve the volume energy density of the secondary battery, and quick entrance of lithium ions into the positive electrode can be ensured to facilitate relatively good charge-discharge power of the secondary battery.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 107394124 A; see attached machine translation) in view of Park et al. (US 20210135187 A1), further in view of Lee et al. (WO 20200180160 A1; US 20220029152 A1 used herein for translation and citation purposes), herein referred to as Lee ‘160, as applied to Claims 2, 4, 8, 14, and 15 above, further in view of Lee et al. (US 20200388833 A1), herein referred to as Lee ‘833.
Regarding Claim 16, modified Wang discloses the secondary battery as set forth above. Modified Wang further discloses wherein the silicon-based active material comprises SiOx (0<x<2) (see silicon oxide (SiOx, where 0<x<2), Lee ‘160 [0080]), but does not disclose wherein at least one of a Mg-containing compound or a Li-containing compound is present in the SiOx (0<x<2) or on a surface of SiOx (0<x<2).
Lee ‘833 teaches a secondary battery (see secondary battery, [0062]) comprising: a positive electrode (see positive electrode, [0062]) comprising a positive electrode active material (see positive electrode active material, [0063]) that comprises a lithium nickel-based active material (see lithium nickel oxide or Ni-site type lithium nickel oxide, [0065]); and wherein the lithium nickel-based active material contains 70 to 99 mol.% (see LiNi1−c2Mc2O2 wherein… 0.01≤c2≤0.3, [0065]) or 100 mol.% (see LiNiO2, [0065]) of nickel with respect to 100 mol.% of metals excluding lithium. Lee ‘833 further teaches wherein the secondary battery further comprises a negative electrode (see negative electrode, [0062]), wherein the negative electrode comprises a negative electrode active material (see negative electrode active material, [0019]) that comprises a silicon-based active material comprising SiOx (0≤x<2) ([0019]), and more specifically SiOx (0.5≤x≤1.5) ([0020]). Lee ‘833 further teaches a Li-containing compound (see lithium-containing compound, [0019]) present in the SiOx, and a Mg-containing compound (see magnesium silicate, [0019]) present on a surface of the SiOx. Lee ‘833 teaches ([0023]) that the Li-containing compound can improve the initial efficiency of the secondary battery and energy density of the negative electrode, while ([0029]) the Mg-containing compound improves the initial efficiency of the secondary battery and suppresses the volume expansion of the negative electrode active material and generation of cracks. Note that Lee ‘833 is analogous to the claimed invention as it is in the same field of lithium secondary batteries.
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the secondary battery of modified Wang such that a Li-containing compound is present in the SiOx, as taught by Lee ‘833, for the purpose of improving the initial efficiency of the secondary battery and energy density of the negative electrode, and further such that a Mg-containing compound is present on the surface of the SiOx, as also taught by Lee ‘833, for the purpose of improving the initial efficiency of the secondary battery and suppressing the volume expansion of the negative electrode active material and the generation of cracks.
Response to Arguments
Note that the below response includes reference to Rowden et al. (“A review of gas evolution in lithium ion batteries”).
Applicant’s arguments in the Remarks filed 14 August 2026 regarding the 35 U.S.C. § 103 rejection of Claim 1 has been fully considered but are not persuasive for the following reasons:
Applicant argues on p. 6–7 of Remarks that the claimed subject matter achieves improved capacity retention, and that Applicant’s data, specifically Example 1 and Comparative Example 4 of the instant specification, demonstrate that the claimed combination of lithium nickel-based active material in the form of single particles and one or more of LCO (LiCoO2), LMO (LiMn2O4), or LFP (LiFePO4) in the form of secondary particles is an important feature. Applicant notes that these examples are identical except that Comparative Example 4 utilizes a lithium nickel-based active material in the form of secondary particles instead of single particles as in Example 1, with the data showing that using a lithium nickel-based active materials in the form of secondary particles instead of single particles unfavorably results in declined battery performance, specifically lower capacity retention values and higher resistance increase values.
This argument is not persuasive. As set forth in the rejection, Wang in view of Park (i.e. modified Wang) renders obvious the combined limitations of Claim 1 exemplified in the instant case by Example 1, including using lithium nickel-based active materials in the form of single particles and using LFP in the form of secondary particles. Park teaches that using the lithium nickel-based active material in the form of single particles, in conjunction with selection of appropriate average particle diameter, increases particle strength to suppress particle breakage during rolling and improve rolling density, and decreases the amount of gas generated by electrolyte solution side reactions due to a decrease in specific surface area and lithium by-product. A person of ordinary skill in the art would reasonably expect that the above benefits taught by Park could be observed as improvements to battery performance metrics such as capacity retention and resistance, as evidenced by Rowden (p. 10–11 ¶ “Lithium ion batteries…”; note Rowden specifically evidences gas evolution in lithium-ion batteries can impact cell performance by reducing cell lifetime and increasing cell impedance). In other words, the difference in battery performance between Comparative Example 4 and Example 1 amounts to expected beneficial results based on the teachings of Park which a person of ordinary skill in the art would reasonably expect to observe in the secondary battery of modified Wang, and evidences the obviousness of the claimed invention (see MPEP § 716.02(c).II “Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967) (resultant decrease of dental enamel solubility accomplished by adding an acidic buffering agent to a fluoride containing dentifrice was expected based on the teaching of the prior art); Ex parte Blanc, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a process of sterilizing a polyolefinic composition which contains an antioxidant with high-energy radiation. Although evidence was presented in appellant’s specification showing that particular antioxidants are effective, the Board concluded that these beneficial results would have been expected because one of the references taught a claimed antioxidant is very efficient and provides better results compared with other prior art antioxidants)). Additionally, it is noted that Applicant’s argument appears to allege unexpected results. Aset forth in MPEP § 716.01(c).II, arguments presented by the Applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor at least one joint inventor. In the instant case, Applicant appears to be arguing unexpected results but is not supporting this assertion with an appropriate affidavit or declaration. Further, as set forth in MPEP § 716.02(b).I, evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). In the instant case, Applicant does not appear to have provided any statistical analysis that would establish these results as unexpected and unobvious. Further, as set forth in MPEP § 716.02(d).II, to establish advantageous results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In the instant case, for example, Applicant has claimed wherein the positive electrode active material comprises the one or more of LCO (LiCoO2), LMO (LiMn2O4), or LFP (LiFePO4) in the form of secondary particles in an amount from 0.1 to 5 parts by weight with respect to 100 parts by weight of the positive electrode active material, but does not appear to disclose any examples in e.g. the range of greater than 5 to less than 15 parts by weight, or the range of greater than 0 and less than 0.1 parts by weight.
Applicant argues on p. 7 of Remarks that the rejection of Claim 1 has missing elements, specifically that Wang does not disclose whether the ternary cathode material is in the form of a secondary particle or a single particle as required by Claim 1, and that Wang further does not specify that the LFP is in the form of secondary particles, but rather that the LFP may be in the form of secondary particles or primary particles. As such, Wang does not disclose the claimed combination of (i) lithium nickel-based active material in the form of single particles and (ii) one or more of LCO (LiCoO2), LMO (LiMn2O4), or LFP (LiFePO4) in the form of secondary particles, nor the resulting improvement in capacity retention achieved by this claimed combination.
This argument is not persuasive. Firstly, it is respectfully submitted that, as set forth in the rejection, Wang does indeed disclose ([0009]) that the LFP is in the form of secondary particles. While Wang may present the LFP in the form of secondary particles as one of two options, this disclosure of Wang is sufficiently specific that it can be understood by a person of ordinary skill in the art that Wang is indeed disclosing an embodiment wherein the LFP is in the form of secondary particles. Furthermore, it is noted that KSR Rationale E (MPEP § 2141) states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success”, and thus a person of ordinary skill in the art would have had no problem, when presented with the disclosure of Wang in which only two choices regarding the particle form of LFP are present, in selecting the solution of LFP in the form of secondary particles with a reasonable expectation of success. Secondly, Wang is not relied upon to disclose wherein the lithium nickel-based active material is in the form of single particles, and therefore it is not necessary nor asserted in the rejection that Wang discloses all of the aspects of the claimed combination alone. Instead, the reference Park is relied upon to teach the missing form of the lithium nickel-based active material, with Park teaching that using the lithium nickel-based active material in the form of single particles, in conjunction with selection of appropriate average particle diameter, increases particle strength to suppress particle breakage during rolling and improve rolling density, and decreases the amount of gas generated by electrolyte solution side reactions due to a decrease in specific surface area and lithium by-product, and thus it would have been obvious to modify the secondary battery of Wang such that the lithium nickel-based active material is in the form of single particles. Thus, together, the references Wang and Park teach the claimed combination of (i) lithium nickel-based active material in the form of single particles and (ii) one or more of LCO (LiCoO2), LMO (LiMn2O4), or LFP (LiFePO4) in the form of secondary particles. Thirdly, it is noted that it is not necessary that Wang disclose the resulting improvement in capacity retention achieved by this claimed combination, since, as already set forth, Wang alone is not relied upon to teach every aspect of the claimed combination, and further because it is noted that such a feature of improved capacity retention is not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues on p. 8–9 of Remarks that the office’s obviousness rejection relies on impermissible hindsight. Applicant specifically argues that the examiner’s rationale for combining Wang and Park is not gleaned from the cited references themselves, but instead from Applicant’s disclosure, noting that Park, in attributing increased particle strength, improved rolling density, and reduced gas generation to a positive electrode active material composed of single particles having the disclosed average particle diameter, does not distinguish among different positive electrode active materials, much less teach that these advantages should be realized only by converting the lithium nickel-based active material to single-particle form while maintaining the LFP active material in secondary-particle form, and that Park’s teachings would appear to provide motivation to convert both of Wang’s positive electrode active materials to single-particle form. The Applicant concludes that nothing in either Wang or Park identifies the claimed combination as a desirable or even contemplated configuration, and neither reference provides a reason to selectively convert Wang’s ternary cathode material to single-particle form while selecting LFP in the form of secondary particles as permitted by Wang, and thus that the examiner has used Applicant’s disclosure as a roadmap to reconstruct the claimed invention.
This argument is not persuasive. Firstly, in response to Applicant’s general argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Secondly, it is respectfully submitted that Park, relied upon to teach the obvious modification of the secondary battery of Wang to include the lithium nickel-based active material already present in Wang specifically in the form of single particles, does indeed distinguish among different positive electrode active materials, and is specifically concerned with and directs its teachings towards lithium nickel-based active materials (e.g. Park [0009]), as in Wang and the instant invention. Further, Park is not directed to LFP and provides no teachings regarding LFP, and therefore does not supply any motivation, as alleged by the Applicant, for the conversion of the LFP of Wang into a single-particle form. Thirdly, in summary and as set forth in the rejection, regarding the claimed combination, it can be understood that Wang discloses a positive electrode comprising a positive electrode active material that comprises a lithium nickel-based active material and LFP (LiFePO4) in the form of secondary particles (note that the argument that Wang does not disclose specifically the LFP in the form of secondary particles has already been addressed above). Wang thus only fails to disclose the form of the lithium nickel-based active material. Secondary reference Park teaches that using the lithium nickel-based active material in the form of single particles, in conjunction with selection of appropriate average particle diameter, increases particle strength to suppress particle breakage during rolling and improve rolling density, and decreases the amount of gas generated by electrolyte solution side reactions due to a decrease in specific surface area and lithium by-product, and thus renders obvious modification of the secondary battery of Wang such that the lithium nickel-based active material is in the form of single particles; it is not required, as alleged by Applicant, that either Wang or Park specifically identify the claimed combination as a desirable or even contemplated configuration, but rather that, as has been set forth, the modification of Wang with Park be based on a teaching or suggestion in the cited prior art, namely in this case the teachings of Park as set forth above. Thus, the office’s proposed modification does not rely on Applicant’s disclosure, is not based on impermissible hindsight, and is considered proper.
Applicant argues on p. 9–10 of Remarks that the particular combination of particle forms recited in Claim 1 produces a result that is not predictable from the cited prior art, specifically that Wang ascribes no particular significance to the particle form of either its ternary cathode material or LFP, that Park describes general benefits of using a positive electrode active material in single-particle form, and that such teachings would, if anything, have directed a skilled artisan towards using both the ternary cathode material and LFP in the form of single particles in Wang, and that neither Wang nor Park predict the improved capacity retention demonstrated by Applicant’s data or provide a reasoned basis for expecting that result from the claimed combination.
This argument is not persuasive. Firstly, it is respectfully submitted that it is not necessary for the current rejection to be considered proper for Wang to ascribe specific significance to the particle form of the active materials. It is sufficient that Wang does indeed disclose, as set forth in the rejection, a positive electrode comprising a positive electrode active material that comprises a lithium nickel-based active material and LFP (LiFePO4) in the form of secondary particles (note that the argument that Wang does not disclose specifically the LFP in the form of secondary particles has already been addressed above). While Wang does not specifically disclose the particle form of the lithium nickel-based active materials, as already addressed above, Park provides the required teachings and motivation for the modification of the secondary battery of Wang such that the lithium nickel-based active materials are in the form of single particles. Secondly, Applicant’s argument that the teachings of Park are to positive electrode active materials in general and would have directed a skilled artisan to use solely single particles has already been addressed in detail above; Park is specifically concerned with and directs teachings towards lithium nickel-based active materials (e.g. Park [0009]), is not directed to LFP and provides no teachings regarding LFP, and therefore does not supply any motivation for the conversion of the LFP of Wang into a single-particle form. Thirdly, it is noted that Applicant’s argument that neither reference predicts the improved capacity retention demonstrated by Applicant’s data or provides a reasoned basis for expecting that result from the claimed combination has also already been addressed in detail above; considering the teachings of Park and evidentiary reference Rowden, the improved capacity retention demonstrated by Applicant’s data appears to be an expected result and further evidences obviousness of the claimed combination. Finally, it is noted that this argument appears to be re-alleging unexpected results, which has also already been addressed in detail above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725
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