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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 22313-1450
`
`17/159,245
`
`01/27/2021
`
`SHUHEI UCHIDA
`
`083710-3276
`
`9255
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr
`Suite 500
`McLean, VA 22102
`
`KRONE, TAYLOR HARRISON
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/07/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/159,245
`UCHIDAetal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`TAYLOR H KRONE
`1728
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s)filed on 20 February 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-10 and 12-26 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C) Claim(s)
`is/are allowed.
`Claim(s) 1-10 and 12-26is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`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).
`
`Priority under 35 U.S.C. § 119
`12)7) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.1.) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240425
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 2
`
`DETAILED ACTION
`
`Response to Amendment
`
`Applicant’s amendmentfiled on February 20, 2024, has been entered. Claims 1-10 and
`
`12-26 remain pendingin the application.
`
`Response to Arguments
`
`Applicant's arguments filed on February 20, 2024, have been fully considered.
`
`Applicantasserts that Choi ‘595 fails to teach that the lithium composite oxide contains at
`
`least one element selected form the group consisting of F, Cl, N, and S, and at least one element
`
`selected from the group consisting of Bi, Ga, Y, and Sn. However, applicant’s arguments are
`
`unpersuasive in view of additionally cited reference, US 2012023 1322 (Chu *322), because Chu
`
`‘322 suggests that it would have been obvious to a person of ordinary skill in the art to substitute
`
`one knownelement, suchas Laor Sr, for another known element, such as Ga, Y, or Sn, in the
`
`positive electrode active material, as taught by Choi ‘595, because La, Sr, Ga, Y, and Sn are all
`
`disclosed as interchangeable metals of the metal oxide for a positive active material.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 obviousbefore the effective
`filing date of the claimed invention to a person having ordinary skill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the manner in which the invention was made.
`
`The factual inquiries for establishing a backgroundfor determining obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contentsof thepriorart.
`
`2. Ascertaining the differences betweentheprior art and the claimsat issue.
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 3
`
`3. Resolving the level of ordinary skill in the pertinentart.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`This application currently namesjoint inventors. In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was commonly
`
`ownedas of the effective filing date of the claimed invention(s) absent any evidenceto the
`
`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
`
`effective filing dates of each claim that was not commonly owned asof the effective filing date
`
`of the later invention in order for the examinerto consider the applicability of 35 U.S.C.
`
`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) priorart against the later invention.
`
`Claims 1, 2, 3,9, 10, 12, 13, 14, 15, 16, 17, 22, 23, 24, and 25 are rejected under 35
`
`U.S.C. 103 as being unpatentable over US 20160336595 (Choi ‘595) in view of US
`
`20120231322 (Chu ‘322).
`
`Regarding claim 1, Choi “595 discloses a positive electrode active material (a positive
`
`active material; [(0011]) comprising: a lithium composite oxide (metal oxide composites are
`
`used as the positive active material; [0006], wherein the lithium composite oxide contains at
`
`least one element selected from the group consisting of F, Cl, N, and S, and at least one
`
`element selected from the group consisting of Bi, Ga, Y, and Sn (Li,Ni,Co-MngG.O2¢T¢
`
`(0.90<a<1.8, 0<b<0.9, 0<c<0.5, 0<d<0.5, 0.001 <e<0.1,0<f<0.05); Gis La or Ce andT is
`
`F; paragraph [0013]). The formula of Choi ‘595 is a lithium composite oxide, wherein the
`
`formula contains F and La or Ce. For example, when Gis La, Tis F, a=1.2, b=0.11, c=0.11,
`
`d=0.47, e=0.1, and f=0.05, the following formula can be understood:
`
`Liy.2Nio.11€00.11Mno,.47Lao,101.95Fo.05. The previously understood formula disclosed by Choi “595
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 4
`
`corresponds to the formulas disclosed in Table | of the presently filed specification on page 54,
`
`specifically example 4. Advantageously, the positive active material of Choi “595 fora
`
`rechargeable lithium battery has excellent life-span characteristic at high temperature and high-
`
`voltage conditions ({0010)).
`
`Claim | further requires that the following mathematical formula (1Dis satisfied:
`
`0.05 <integrated intensity ratio [(18°-20°/T(43°-46°) < 0.90 (D,
`
`wherethe integrated intensity ratio I(18°-20°/I(43°-46-) is a ratio of an integrated
`
`intensity I(13°-20°) to an integratedintensity I(43°-46>,
`
`the integrated intensity /I(43°-46°) is an integrated intensity of a first peak that is a
`
`maximum peakpresent in a rangeof angle of diffraction 20 greater than or equal 43° and
`
`less than or equal to 46° in an X-ray diffraction pattern of the lithium composite oxide, and
`
`the integrated intensity I(1s°-20°) is an integrated intensity of a second peakthatis a
`
`maximum peakpresent in a rangeof angle of diffraction 20 greater than or equal to 18°
`
`andless than or equal to 20° in the X-ray diffraction pattern of the lithium composite
`
`oxide.
`
`Regarding product and apparatus claims, when the structure recited in the reference is
`
`substantially identical to that of the claims, claimed properties or functions are presumed to be
`
`inherent. The Courts have held that it is well settled that where there is a reason to believe that a
`
`functional characteristic would be inherentin the priorart, the burden of proof then shifts to the
`
`applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44
`
`USPQ2dat 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114 1.). In the instant case,
`
`whenthe following formula: Li; 2Nip.11C00.11Mno47La0,101.95Fo.05 is selected based on the
`
`disclosure of Choi ‘595, which corresponds to the formulas disclosed in Table 1 of the presently
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 5
`
`filed specification on page 54, specifically example 4, itis the examiner’s position that the
`
`properties required by claim | and reproduced above, would be provided.
`
`Therefore, prior to the effective filing date of the claimed invention, it would have been
`
`obvious to a person of ordinary skill in the art to provide a lithium composite oxide having the
`
`following formula: Liy.2Nio.11C00.11Mno47Lao101.95Fo.05 as disclosed by Choi ‘595, in which the
`
`formula satisfies the mathematical formula required by claim 1 would exhibit the same
`
`properties required by claim 1 reproduced above, because the claimed properties are presumed to
`
`be inherent.
`
`However, in view of the amendmentto claim 1, Choi ‘595 does not disclose that one of
`
`the elements forthe lithium composite oxide is selected from a group consisting of Bi, Ga, Y,
`
`and Sn.
`
`Chu ‘322 discloses a positive active material for a rechargeable lithium battery, like the
`
`positive active material of Choi ‘595. Chu ‘322 further discloses that the positive active material
`
`including a secondaryparticle formedof a plurality of primary particles, the primary particles
`
`being madeof a metal compoundcapable of intercalating/deintercalating lithium; and a coating
`
`layer on a surface of the secondaryparticle in an island arrangement, the coating layer including
`
`a metal oxide ({0009]). The metal compound capable of intercalating/deintercalating lithium may
`
`includeat least one of Li,Ni,Co.-MngG.O2, wherein G is Ni, Al, Cr, Mn, Fe, Mg, La, Ce, Sr, V,
`
`or combinations thereof. A metal of the metal oxide may include Li, B, Na, Mg,Al, Si, P, Ca,
`
`Sc, Ti, V, Cr, Mn, Fe, Co, Ni, Cu, Zn, Ga, Ge, As, Sr, Y, Zr, Nb, Mo, Sn, Ba, Hf, La, ora
`
`mixture thereof.
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 6
`
`The simple substitution of one known elementfor anotheris likely to be obvious when
`
`predictable results are achieved. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82
`
`USPQ2d 1385, 1395-97 (2007) (see MPEP § 2143, B.).
`
`Therefore, prior to the effective filing date of the claimed invention, it would have been
`
`obvious to a person of ordinary skill in the art to substitute one known element, suchas LaorSr,
`
`for another known element, suchas Ga, Y, or Sn, in the positive electrode active material, as
`
`taught by Choi ‘595, because La, Sr, Ga, Y, and Sn are all disclosed as interchangeable metals of
`
`the metal oxide for a positive active material, as suggested by Chu ‘322.
`
`Regarding claims 2 and 3, modified Choi ‘595 teachesthe positive electrode active
`
`material according to claim 1, but does not explicitly teach that the integrated intensity ratio Tug:-
`
`20°VI(43°-46°) is greater than 0.11 andless than or equalto 0.85, or more narrowly, greater than or
`
`equalto 0.44 andless than or equal to 0.85.
`
`However,In the instant case, when the following formula:
`
`Li; 2Nio. 1{}C09.13Mno.47Lag, 101 95Fo.o5 is selected based on the disclosure of Choi ‘595, which
`
`correspondsto the formulas disclosed in Table | of the presently filed specification on page 54,
`
`specifically example4, it is the examiner’s position that the properties required by claim 2 and
`
`reproduced above would be provided. Regarding product and apparatus claims, whenthe
`
`structure recited in the reference is substantially identicalto that of the claims, claimed properties
`
`or functions are presumedto be inherent. The Courts have held thatit is well settled that where
`
`there is a reason to believe that a functional characteristic would be inherentin the priorart, the
`
`burden of proof then shifts to the applicant to provide objective evidence to the contrary. See Jn
`
`re Schreiber, 128 F.3dat 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see
`
`MPEP § 21141).
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 7
`
`Therefore, prior to the effective filing date of the claimed invention, it would have been
`
`obvious to a person of ordinary skill in the art to provide a lithium composite oxide having the
`
`formula disclosed above (Li;.2Nig,11C09,1;.Mno47La9,101.95Fo.05) in the rejection of claim 1 by Choi
`
`‘595, in which the formulaalsosatisfies the integrated intensity ratio Is°-20°VT(43°-46°) being
`
`greater than 0.11 andless than or equal to 0.85, or more narrowly, being greater than or equalto
`
`0.44 andless than or equal to 0.85.
`
`Regarding claim 9, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 1, wherein the lithium composite oxide contains F (Li,Ni,Co-MngG,O24T¢
`
`(0.90<a<1.8, 0<b<0.9, O<c<0.5,0<d<0.5, 0.001 <e<0.1,0<f<0.05); Gis La or Ce and T is
`
`F; paragraph [0013] of Choi ‘595).
`
`Regarding claim 10, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 1, wherein the lithium composite oxide containsat least one elementselected
`
`from the group consisting of Bi, La, and Ce (Li,NipCo-MngG.O2+T; (0.90 <a<1.8, 0<b<0.9,
`
`O<c<0.5, O<d<0.5, 0.001<e<0.1, 0<f<0.05); G is La or Ce and T is F; paragraph [0013] of
`
`Choi 595).
`
`Regarding claim 12, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 1, wherein the lithium composite oxide further contains Mn
`
`(Li,Ni,Co.MngG.O2sT¢ (0.90<a<1.8,0<b<0.9, 0<c<0.5, 0<d<0.5, 0.001<e<0.1, O<f<0.05);
`
`G is La or Ce andT is F; paragraph [0013] of Choi ‘595).
`
`Regarding claim 13, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 12, wherein the lithium composite oxide further contains Co and Ni
`
`(Li,Ni,Co.MngG.O2sT¢ (0.90<a<1.8,0<b<0.9, 0<c<0.5, 0<d<0.5, 0.001<e<0.1, O<f<0.05);
`
`G is La or Ce andT is F; paragraph [0013] of Choi ‘595).
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 8
`
`Regarding claim 14, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 1, wherein the lithium composite oxide has an average composition
`
`represented by a composition formula Li,(A,Me}-,)yO.Qs, where A denotesat least one element
`
`selected from the group consisting of Bi, La, Ce, Ga, Sr, Y, and Sn, Me denotes at least one
`
`element selected from the group consisting of Mn, Co, Ni, Fe, Cu, V, Nb, Mo, Ti, Cr, Zr, Zn, Na,
`
`K, Ca, Mg, Pt, Au, Ag, Ru, W, B, Si, P, and Al, Q denotes at least one elementselected from the
`
`group consisting of F, Cl, N, and S, and the following five mathematical formulasare satisfied:
`
`0.5<x<1.5, 0.5<y<1.0, 0<z<0.3, 1<a<2, and 0<B<1 (Li,Ni,Co.MngG.O24T; (0.90<a<1.8,
`
`0<b<0.9, O<c<0.5, 0<d<0.5, 0.001<e<0.1, 0<f<0.05); Gis La or Ce and Tis F; paragraph
`
`[0013] of Choi ‘595). For example, when G is La, T is F, a=1.2, b=0.11, c=0.11, d=0.47, e=0.1,
`
`and f=0.05, the following formula can be understood: Li;.2Nio.1;}C001;4Mno.47La9,101.95Fo.05. The
`
`claimedranges of the lithium composite oxide formula overlap with the understood formula of
`
`Choi ‘595 when x=1.2, Ais La, z=0.1, Meis Ni, Co, and Mn, y=1, o=1.95, Qis F, and B=0.05.
`
`Therefore, as set forth in MPEP 2144.05, in the case where the claimed ranges “overlaporlie
`
`inside ranges disclosed bythe priorart’, a prima facie case of obviousness exists (Jn re
`
`Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16
`
`USPQ2d 1934 (Fed. Cir. 1990)).
`
`Regarding claim 15, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 14, wherein the following four mathematical formulasaresatisfied:
`
`1.05<x<1.4, 0.6<y<0.95, 1.2<a<2, and 0<B<0.8. As set forth above in claim 14, the claimed
`
`ranges overlap with the ranges of the disclosed formula of Choi ‘595 in paragraph [0013] (for
`
`example: Li;.2Nig,1;C00,114Mno47La9,10; 95Fo.0s). Therefore, as set forth in MPEP 2144.05, in the
`
`case where the claimed ranges “overlap orlie inside ranges disclosed by the prior art’, a prima
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 9
`
`facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In
`
`re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
`
`Regarding claim 16, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 15, wherein the following four mathematical formulasare satisfied:
`
`1.33<a<2, and 0<B<0.67. Asset forth abovein claim 14, the claimed ranges overlap with the
`
`ranges of the disclosed formula of Choi ‘595 paragraph [0013] (for example,
`
`Liz 2Nio.113C00.11. Mno.47Lao. 101 95Fo.05). Therefore, as set forth in MPEP 2144.05, in the case where
`
`the claimed ranges “overlap orlie inside ranges disclosed by the prior art’, a prima facie case of
`
`obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff,
`
`919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
`
`Regarding claim 17, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 16, wherein the following four mathematical formulasaresatisfied:
`
`1.15<x<1.3, 0.7<y<0.85, 1.8<a0<1.95, and 0.05<B<0.2. As set forth above in claim 14, the
`
`claimed ranges overlap with the ranges of the disclosed formula of Choi “595 paragraph [0013]
`
`(Li. 2Nio.11Coo9,1;.Mino.47Lao9,101.95Fo.o5). Therefore, as set forth in MPEP 2144.05, in the case
`
`wherethe claimed ranges “overlaporlie inside ranges disclosed by the priorart”, a prima facie
`
`case of obviousness exists Un re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re
`
`Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
`
`Regarding claim 22, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 1, wherein the lithium composite oxide is contained as a main componentin
`
`the positive electrode active material (the formula disclosed in paragraph [0013] is a main
`
`componentof the positive active material for a rechargeable lithium battery; [001 1]).
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 10
`
`Regarding claim 23, modified Choi ‘595 teaches a battery (a rechargeable lithium
`
`battery; [(0052]) comprising:a positive electrode(a positive electrode including the positive
`
`active material; [0052]) containing the positive electrode active material according to claim 1
`
`(see the rejection above of claim 1); a negative electrode (a negative electrode; [0052]) and an
`
`electrolyte (an electrolyte; [0052]).
`
`Regarding claims 24 and 25, modified Choi ‘595 teaches the battery according to claim
`
`23, wherein the negative electrode contains at least one selected from the group consisting of (i)
`
`a negative-electrode active material that can adsorb and desorb lithium ions and (11) a material,
`
`wherein lithium metal in the material is dissolved in an electrolyte while discharging andis
`
`precipitated on the material while charging, andthe electrolyte is a non-aqueous electrolyte
`
`solution(the negative electrode includes a negative active material that is capable of reversibly
`
`intercalating and deintercalating lithium ions, for example, any carbon-based anodeactive
`
`material may be used as long asit is generally used as a carbon material in a lithium ion
`
`secondary battery; [0057] — [0059]).
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 20160336595
`
`(Choi ‘595) in view of US 20200083524 (Back 524).
`
`Regarding claim 4, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 1, but does not explicitly teach that the lithium composite oxide has a crystal
`
`structure belongingto at least one structure selected from the group consisting of a layered
`
`structure and a spinelstructure.
`
`Nevertheless, Back ‘524 discloses a spinel-structured lithium manganese-basedpositive
`
`electrode active material in which high-temperature storage characteristics and high-temperature
`
`life characteristics are excellent ([0002]). Like Choi ‘595, the formula for the positive electrode
`
`

`

`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 11
`
`material of Back *524is a lithium composite oxide that contains F and at least one element
`
`selected form the group consisting of Bi, La, or Ce ([0009] - [0011]). Therefore, prior to the
`
`effective filing date of the claimed invention, it would have been obviousto a person of ordinary
`
`skill in the art to modify the formulafor the positive electrode active material, as taught by
`
`modified Choi ‘595, to have a spinel structure, as suggested by Back ‘524, to provide a positive
`
`electrode active material with excellent high-temperature storage andlife characteristics.
`
`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 20160336595
`
`(Choi ‘595) in view of US 20200083524 (Back ‘524), and further in view of US 20150380737
`
`(Kawasato ‘737).
`
`Regarding claim 5, modified Choi “595 teaches the positive electrode active material
`
`according to claim 4, but does not explicitly disclose that a space group ofthe layered structure is
`
`at least one space group selected form the group consisting of a space group C2/m and a space
`
`group R-3m.
`
`Kawasato ‘737 discloses a lithtum-containing composite oxide that contains Li, Ni, Co,
`
`Mn,and optionally F, like Choi ‘595, exhibiting excellent battery performance ((0021] &
`
`[0022]). Further, the lithium composite oxide has a crystal structure of space group R-3m
`
`confirmed by X-ray diffraction and by detecting peaksattributable to R-3m ((0022] & [0023]).
`
`Therefore, prior to the effective filing date of the claimed invention, it would have been obvious
`
`to a person of ordinary skill in the art, to provide a lithium composite oxide for a positive
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`electrode active material, as taught by modified Choi ‘595, having a crystal structure of space
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`group R-3m to increase the battery performanceofa lithium battery comprising the same, as
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`suggested by Kawasato ‘737.
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`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 12
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`Claims 6,7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US
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`20160336595 (Choi ‘595) in view of US 20180006294 (Lee ‘294).
`
`Regarding claims 6,7, and 8, modified Choi ‘595 teaches the positive electrode active
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`material according to claim 1, but does not explicitly teach that the lithium composite oxide is a
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`multiphase mixture that hasa first phase with a crystal structure belonging to a space group Fm-
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`3m and a second phasewith a crystal structure belonging to a space group otherthan the s pace
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`group Fm-3m, such as Fd-3m.
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`Lee ‘294 discloses that Ni-rich nickel-manganese-cobalt (NMC) cathode materials with a
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`layered structure undergo structural degradation from the layered R-3m phaseto the spinel-like
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`Fd-3m phase andthe rock-salt Fm3m phase ((0011]). As Choi ‘595 discloses a modified Ni-rich
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`NMCpositive electrode active material having a formula thatsatisfies the mathematical formula
`
`required by claim 1, it would be obviousto a person of ordinary skill in the art, prior to the
`
`effective filing date of the claimed invention, for the modified Ni-rich NMCpositive electrode
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`active material of modified Choi ‘595 to exhibit a multiphase crystal structure with a first phase
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`belonging to Fm-3m and a second phase belonging to Fd-3m, as suggested by Lee ‘294.
`
`Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US
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`20160336595 (Choi ‘595) in view of US 20190267673 (Park ‘673).
`
`Regarding claim 11, modified Choi ‘595 teaches the positive electrode active material
`
`according to claim 10, but does not explicitly teach that the lithium composite oxide contains Bi
`
`Park ‘673 discloses a positive active material with improved high-voltage and high-
`
`temperature characteristics for a lithium secondary battery ([0038]). Like Choi ‘595, the formula
`
`for the positive electrode material of Park ‘673 is a lithium composite oxide that contains F and
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`Bi ({003 1] - [0032]). Therefore, prior to the effective filing date of the claimed invention,it
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`Application/Control Number: 17/159,245
`Art Unit: 1728
`
`Page 13
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`would have been obviousto a person of ordinary skill in the art to modify the formula for the
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`positive electrode active material, as taught by modified Choi ‘595, to include Bi, as suggested
`
`by Park ‘673, to provide a positive electrode active material with improved high-voltage and
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`high-temperature characteristics for a lithium secondary battery.
`
`The simple substitution of one known elementfor anotheris likely to be obvious when
`
`predictable results are achieved. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82
`
`USPQ2d 1385, 1395-97 (2007) (see MPEP § 2143, B.).
`
`Claims 18, 19, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over US 20180006294 (Lee ‘294) in view of US 20160336595 (Choi ‘595), and further in
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`view of US 20120231322 (Chu ‘322).
`
`Regarding claims 18 and 19, Lee ‘294 teaches a positive electrode active material
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`comprising: a lithium composite oxide,
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`wherein the lithium composite oxide has a crystal structure belonging to a space
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`group Fd-3m anda second phasewith a crystal structure belonging to a space group other
`
`than the space group Fm-3m (Lee ‘294 discloses that Ni-rich nickel-manganese-cobalt (NMC)
`
`cathode materials with a layered structure undergo structural degradation from the layered R-3m
`
`phaseto the spinel-like Fd-3m phase andthe rock-salt Fm3m phase ([0011])).
`
`Lee ‘294 does notdisclose that the lithium composite oxide contains at least one
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`element selected from the group consisting of Bi, La, Ce, Ga, Sr, Y, and Sn, and
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`0.05 <integrated intensity ratio [(18°-20°/T(43°-46°) < 0.90 (D,
`
`wherethe integrated intensity ratio I(13°-20°)/I(43°-46°) is a ratio of an integrated
`
`intensity I(1s°-20°) to an integrated intensity I(43°-46°),
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`Application/Control Number: 17/159,245
`Art Unit: 1728
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`Page 14
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`the integrated intensity /I(43°-46°) is an integrated intensity of a first peak that is a
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`maximum peakpresent in a range of angle of diffraction 20 greater than or equal 43° and
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`less than or equal to 46° in an X-ray diffraction pattern ofthe lithium composite oxide, and
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`the integrated intensity I(1s°-20°) is an integrated intensity of a second peakthatis a
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`maximum peakpresent in a rangeof angle of diffraction 20 greater than or equal to 18°
`
`andless than or equal to 20° in the X-ray diffraction pattern of the lithium composite
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`oxide.
`
`Choi ‘595 discloses a positive electrode active material (a positive active material;
`
`[0011]) comprising: a lithium composite oxide (metal oxide composites are used as the
`
`positive active material; [0006], wherein the lithium composite oxide containsat least one
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`element selected from the group consisting of Bi, La, Ce, Ga, Sr, Y, and Sn
`
`(Li,Nip,Co-MngG.O2sTy (0.90<a<1.8,0<b<0.9, 0<c<0.5, 0<d<0.5, 0.001<e<0.1, O<f<0.05);
`
`Gis La or Ce and Tis F; paragraph [0013]). The formula of Choi ‘5951s a lithium composite
`
`oxide, wherein the formula contains F and La or Ce. For example, when GisLa, T is F, a=1.2,
`
`b=0.11, c=0.11, d=0.47, e=0.1, and f=0.05, the following formula can be understood:
`
`Liy.2Nio.11€00,11Mno.47Lao,101.95Fo.05. The previously understood formula disclosed by Choi
`
`correspondsto the formulas disclosed in Table 1 of the presently filed specification on page 54,
`
`specifically example 4. Advantageously, the positive active material of Choi “595 fora
`
`rechargeable lithium battery has excellent life-span characteristic at high temperature and high-
`
`voltage conditions ({0010)).
`
`Regarding product and apparatus claims, when the structure recited in the reference is
`
`substantially identical to that of the claims, claimed properties or functions are presumed to be
`
`inherent. The Courts have held that it is well settled that where there is a reason to believe thata
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`Application/Control Number: 17/159,245
`Art Unit: 1728
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`Page 15
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`functional characteristic would be inherentin the priorart, the burden of proof then shifts to the
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`applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44
`
`USPQ2d at 1478, 44 USPQ2dat 1432 (Fed. Cir. 1997) (see MPEP § 2114 1.). In the instant case,
`
`whenthe following formula: Li; 2Nio.11C00.11Mno47La0.101.95Fo.05 is selected based on the
`
`disclosure of Choi ‘595, which corresponds to the formulas disclosed in Table 1 of the presently
`
`filed specification on page 54, specifically example 4, itis the examiner’s position that the
`
`properties required by claim 18 and reproduced above, would be provided.
`
`Therefore, prior to the effective filing date of the claimed invention, it would have been
`
`obvious to a person of ordinary skill in the art to modify the modified NMC cathode material of
`
`Lee ‘294, such that the modified NMC formula (Li,.2Nip 1;Coo1;4Mno.47La9. 101 95Fo.95), as
`
`disclosed by Choi ‘595, satisfies the mathematical formula required by claim 18 and exhibits the
`
`same properties required by claim 18, because the claimed properties are presumed to be
`
`inherent, such thatthe life-span characteristics of the battery comprising the modified NMC
`
`formula is improved.
`
`However,in view of the amendmentto claims 18 and 19, Choi ‘595 does not disclose
`
`that one of the elements forthe lithium composite oxide is selected from a group consisting of
`
`Bi, Ga, Y, and Sn.
`
`Chu ‘322 discloses a positive active material for a rechargeable lithium battery, like the
`
`positive active material of Choi ‘595. Chu ‘322 further discloses that the positive active material
`
`including a secondaryparticle formedof a plurality of primaryparticles, the primary particles
`
`being made of a metal compound capable ofintercalating/deintercalating lithium; and a coating
`
`layer on a surface of the secondaryparticle in an island arrangement, the coating lay er including
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`a metal oxide ({0009]). The metal compound capable of intercalating/deintercalating lithium may
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`Application/Control Number: 17/159,245
`Art Unit: 1728
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`Page 16
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`includeat least one of Li,Ni,Co.-MngG.O2, wherein G is Ni, Al, Cr, Mn, Fe, Mg, La, Ce, Sr, V,
`
`or combinations thereof. A metal of the metal oxide may include Li, B, Na, Mg, Al, Si, P, Ca,
`
`Sc, Ti, V, Cr, Mn, Fe, Co, Ni, Cu, Zn, Ga, Ge, As, Sr, Y, Zr, Nb, Mo, Sn, Ba, Hf, La, ora
`
`mixture thereof.
`
`The simple substitution of one known elementfor anotheris likely to be obvious when
`
`predictable results are achieved. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82
`
`USPQ2d 1385, 1395-97 (2007) (see MPEP § 2143, B.).
`
`Therefore, prior to the effecti