UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/735,819
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`12/12/2017
`
`Daizo Jito
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`P171319US00
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`9788
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`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
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`TYSONS, VA 22182
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`HENSHAW MARY G
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`1723
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`05/15/2020
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patentmai1@ whda.eom
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`PTOL-90A (Rev. 04/07)
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`

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`017/09 A0170” Summary
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`Application No.
`15/735,819
`Examiner
`MARY G HENSHAW
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`Applicant(s)
`Jito et al.
`Art Unit
`1723
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 12 December 2017.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) w is/are pending in the application.
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`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`
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`[:1 Claim(ss)
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`is/are allowed.
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`8)
`Claim(s 816Is/are rejected
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`D Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
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`10)|:l The specification is objected to by the Examiner.
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`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)|:] Some**
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`c)l:i None of the:
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`1.. Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3D Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) [3 Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 12 December 2017.
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200421
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`

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`Application/Control Number: 15/735,819
`Art Unit: 1723
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Drawings
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`Figures 1-2 should be designated by a legend such as --Prior Art-- because only that which is old
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`is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are
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`required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s)
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`should be labeled ”Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct
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`any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will
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`be notified and informed of any required corrective action in the next Office action. The objection to the
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`drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 112
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`The following is a quotation of 35 U.S.C. 112(d):
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`(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall
`contain a reference to a claim previously set forth and then specify a further limitation of the subject
`matter claimed. A claim in dependent form shall be construed to incorporate by reference all the
`limitations of the claim to which it refers.
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`The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
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`Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in
`dependent form shall contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate
`by reference all the limitations of the claim to which it refers.
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`Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of
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`improper dependent form for failing to further limit the subject matter of the claim upon which it
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`depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9
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`

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`Application/Control Number: 15/735,819
`Art Unit: 1723
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`Page 3
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`depends from Claim 8. Claim 8 requires that "the secondary particle of the rare earth compound is
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`attached to each of the primary particles forming the recess", which is functionally equivalent to the
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`requirement in Claim 9 that "the secondary particle of the rare earth compound is attached to both of
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`the adjacent primary particles forming the recess". Therefore, Claim 9 does not further limit Claim 8.
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`Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite
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`the claim in independent form, or present a sufficient showing that the dependent claim complies with
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`the statutory requirements.
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`Claims 10 and 11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph,
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`as being of improper dependent form for failing to further limit the subject matter of the claim upon
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`which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims
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`10 and 11 both depend from Claim 8. However, Claims 10 and 11 recite the identical ranges for the
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`concentration of magnesium dissolved in the lithium transition metal oxide and the claimed region,
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`where the region is a portion of the lithium transition metal oxide. This results in values that could meet
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`the ranges of Claims 10 and 11, but fail to limit Claim 8, which requires that the region have a larger
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`magnesium concentration than the remaining portion of the lithium transition metal oxide. Applicant
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`may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the
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`claims in independent form, or present a sufficient showing that the dependent claims comply with the
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`statutory requirements.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
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`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
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`

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`Application/Control Number: 15/735,819
`Art Unit: 1723
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`Page 4
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`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
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`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459 (1966),
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`that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
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`summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
`nonobviousness.
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`Claims 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Jito (US
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`2011/0165460 A1) in view of Sugaya (WO 2014049958 A1, using US 20150221942 A1 as an English
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`language equivalent) and Park (US 20140050993 A1), all cited on the IDS filed 12 December 2017 .
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`Regarding Claims 8 and 9, Jito teaches a nonaqueous electrolyte secondary battery comprising a
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`positive electrode, a negative electrode and a nonaqueous electrolyte (see [0011]), wherein the positive
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`electrode comprises a positive electrode active material that comprises: particles of a lithium transition
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`metal oxide and particles of a rare earth compound (see [0011]-[0012]); the lithium transition metal
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`oxide includes magnesium dissolved therein (see [0014] where M is Mg).
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`Jito does not explicitly teach that the particles of a lithium transition metal oxide and a rare
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`earth compound are secondary particles formed by an aggregation of primary particles. Additionally,
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`although Jito teaches that the rare earth compound is adhered to the surface of the lithium transition
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`metal oxide (see [0011]) and a mechanism for achieving this (see [0103], which indicates that erbium
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`diffuses into the lithium-transition metal oxide particle), Jito does not explicitly teach that the secondary
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`particle of the rare earth compound is attached to a recess formed between adjacent primary particles
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`of the lithium transition metal oxide in such a manner that the secondary particle of the rare earth
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`compound is attached to each of the primary particles forming the recess. However, Sugaya teaches a
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`positive electrode active material in which a rare earth compound which are the same as Jito and the
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`

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`Application/Control Number: 15/735,819
`Art Unit: 1723
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`Page 5
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`instant application (neodymium, erbium or samarium, see instant Claim 14, Jito [0100] and Sugaya
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`[0024]-[0025]) and is deposited on interfaces between primary particles of a lithium transition metal
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`oxide secondary particle (see Sugaya abstract and [0009] and [0009]-[0010] describing the benefit of
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`incorporating rare earth particles into oxide particles). It would be obvious to one of ordinary skill in the
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`art that the particles ofJito are agglomerated primary particles in order to improve the cycle
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`characteristics and reduce the decrease in power characteristics after repeated charge and discharge
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`under conditions involving high-current discharge (see Sugaya [0011]).
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`While Jito implies that in the formula LiaNiXCoyMZOZ, the element M, which is at least one
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`selected from the group consisting of Mn, Al, Zr, Mg, Ti and Mo (see [0014]), increases thermal stability
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`and reliability of the battery (see [0021]), Jito does not teach that the concentration dissolved in a region
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`that extends from the surface of the secondary particle of the lithium transition metal oxide to 20% of
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`the particle size of the particle (hereinafter referred to as the surface of the lithium transition metal
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`oxide secondary particle) is higher than the concentration of magnesium dissolved in the particle except
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`the region (hereinafter referred to as the core of the transition metal oxide secondary particle).
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`However, Park teaches secondary particles of lithium transition metal oxide containing magnesium
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`(Lix+1M1.kMek02, where M is one selected from Ni, Mn, Co, and a combination thereof, Me is one
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`selected from Al, Mg, Ti, Zr, B, Ni, Mn, see abstract and [0028]) in which the concentration of
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`magnesium is higher in the surface than the core (see abstract, specifically noting that the variable k
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`with respect to Me which can be magnesium is higher in the surface portion than an inner part of the
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`particle). It would be obvious to one of ordinary skill in the art as of the effective filing date of the
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`claimed invention to create the lithium transition metal oxide secondary particles ofJito with a higher
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`magnesium concentration in the surface than the core in order to achieve improved capacity and cycle-
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`life characteristics (see Park [0033]).
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`

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`Application/Control Number: 15/735,819
`Art Unit: 1723
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`Page 6
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`Regarding Claims 10 and 11, Jito further teaches that the lithium transition metal oxide is
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`LiaNiXCoyMZOZ and 0.70 S x S 0.90, 0.10 S y 0.25 and 0 < 2 S 0.10 where the placeholder element M can
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`be magnesium (see [0020]-[0022] and [0014]). Therefore, the concentration of placeholder element M
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`dissolved in the transition metal oxide is from 0 to 0.11 mol% with respect to the total molar amount of
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`metal elements except lithium depending on the exact values of x, y and z in the lithium transition metal
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`oxide. This encompasses the claimed range of 0.03 mol% to 0.5 mol%.
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`As in Claim 8, while Jito implies that in the formula LiaNiXCoyMZOZ, the element M, which is at
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`least one selected from the group consisting of Mn, Al, Zr, Mg, Ti and Mo (see [0014]), increases thermal
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`stability and reliability of the battery (see [0021]), Jito does not teach that the concentration of
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`magnesium dissolved in the surface is greater than the concentration of magnesium dissolved in the
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`core of the lithium transition metal oxide secondary particle. However, Park teaches secondary particles
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`of lithium transition metal oxide containing magnesium (Lix+1M1.kMek02, where M is one selected from
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`Ni, Mn, Co, and a combination thereof, Me is one selected from Al, Mg, Ti, Zr, B, Ni, Mn, see abstract
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`and [0028]) in which the concentration of magnesium is higher in the surface than the core (see
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`abstract, specifically noting that the variable k with respect to Me which can be magnesium is higher in
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`the surface portion than an inner part of the particle). It would be obvious to one of ordinary skill in the
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`art as of the effective filing date of the claimed invention to create the lithium transition metal oxide
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`secondary particles with a higher magnesium concentration in the surface than the core in order to
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`achieve improved capacity and cycle-life characteristics (see Park [0033]). Further, in this arrangement,
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`it would be expected that the concentration of magnesium dissolved in the surface (the claimed
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`”region”) would also meet the claimed range, which is identical to that of the entire lithium transition
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`metal oxide secondary particle.
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`

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`Application/Control Number: 15/735,819
`Art Unit: 1723
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`Page 7
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`Regarding Claims 12 and 13, Jito further teaches that the average particle size of the rare earth
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`compound is 10nm to 50nm (see [0027]). This is contained by the claimed range of 100nm to 400nm in
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`Claim 12 and 150nm to 300nm in Claim 13.
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`As in Claim 1, Jito does not explicitly teach that the rare earth particles are secondary particles
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`formed by an agglomeration of primary particles. However, Sugaya teaches a positive electrode active
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`material in which a rare earth compound which are the same as Jito and the instant application
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`(neodymium, erbium or samarium, see instant Claim 14, Jito [0100] and Sugaya [0024]-[0025]) and is
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`deposited on interfaces between primary particles of a lithium transition metal oxide secondary particle
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`(see Sugaya abstract and [0009] and [0009]-[0010] describing the benefit of incorporating rare earth
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`particles into oxide particles). It would be obvious to one of ordinary skill in the art that the particles of
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`Jito which meet the claimed average particle size are primary particles in order to improve the cycle
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`characteristics and reduce the decrease in power characteristics after repeated charge and discharge
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`under conditions involving high-current discharge (see Sugaya [0011]).
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`Regarding Claim 14, Jito further teaches that at least one rare earth element selected from
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`neodymium, samarium and erbium constitutes the rare earth compound (see [0100]).
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`Regarding Claim 15, Jito further teaches that the lithium transition metal oxide is LiaNiXCoyMZOZ
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`and 0.70 S x S 0.90, 0.10 S y 0.25 and 0 < 2 S 0.10 where the placeholder element M can be magnesium
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`(see [0020]-[0022] and [0014]). Therefore, the proportion of nickel in the transition metal oxide is from
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`67 to 90 mol% relative to the total molar amount of metal elements except lithium depending on the
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`exact values of x, y and z in the lithium transition metal oxide. This overlaps with the claimed range of
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`not less than 80 mol%, so a prima facie case of obviousness exists.
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`Regarding Claim 16, Jito further teaches that the lithium transition metal oxide is LiaNiXCoyMZOZ
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`and 0 S x, y, 2 S 1 and x + y + z = 1, where the placeholder element M can be magnesium (see [0014]).
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`Therefore, the proportion of cobalt in the transition metal oxide can be approximately 0 mol% relative
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`

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`Application/Control Number: 15/735,819
`Art Unit: 1723
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`Page 8
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`to the total molar amount of metal elements except lithium depending on the exact values of x, y and z
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`in the lithium transition metal oxide. This encompasses the claimed range of not more than 7 mol%, so a
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`prima facie case of obviousness exists.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to MARY G HENSHAW whose telephone number is (571)272-8518. The examiner can
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`normally be reached on Monday-Friday from 10am-5pm EST.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Milton I. Cano can be reached on (313)446-4937. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 15/735,819
`Art Unit: 1723
`
`/Mary 6 Henshaw/
`Examiner, Art Unit 1723
`
`/M|LTON | CANO/
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`Supervisory Patent Examiner, Art Unit 1723
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`Page 9
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