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REMARKS 



Reconsideration of the Application is requested in view of the modifications 
above and remarks below. Claims 12-41 are pending in the Application. Applicants 
have amended Claims 12 and 21 to include subject matter similar to that of 
cancelled Claim 16. 

Objections 

The Office Action objected to the abstract of the disclosure because the 
disclosure does not commence on a separate sheet of paper. An ABSTRACT OF 
THE DISCLOSURE is being submitted on a separate sheet of paper. 
Reconsideration is requested. 

The Office Action objected to Claim 18 indicating the element Sc is wrongly 
grouped with rare earth metals. Sc is a rare earth metal (see 
http://www.britannica.com/ebc/article7euM01799 . a copy is submitted herewith for 
convenience). Reconsideration is requested. 

Rejections under 35 USC 102 

1 . Rejection of Claims 12-17.21. 23 and 24 under 35 USC 1 02(b) as 
anticipated by US Pat. No. 5.518704 (Kelkar et a\X 

The Office Action rejected Claims 12-17, 21, 23 and 24 under 35 USC 102(b) 
as anticipated by Kelkar et al. This rejection should be withdrawn in view of the 
amendments above and remarks below. 

It is well settled that in order for a prior art reference to anticipate claim, the 
reference must disclose each and every element of claim with sufficient clarity to 
prove its existence in prior art. The disclosure requirement under 35 USC 1 02 
presupposes knowledge of one skilled in art of claimed invention, but such 
presumed knowledge does not grant license to read into prior art reference 



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teachings that are not there. See Motorola Inc. v. Interdigital Technology Corp. 43 
USPQ2d 1481 (1997 CAFC). It is also well-settled that a 35 USC 102 rejection must 
rest upon the literal teachings of the reference and that the teachings must disclose 
every element of the claimed invention in as complete detail as is contained in the 
claim (See. Jamesbury Corp v. Litton Industrial Products, inc. 225 USPQ, 253, 256 
(CAFC 1985); Kalman v. Kimberly-Clark Corp 218 USPQ 781, 789 (Fed. Cir. 1983)). 

In view of the amendments above, the remarks below are directed to the 
amended claims. Claims 12 and 21 have been amended. Claim 12 is directed to a 
nickel mixed hydroxide with Ni as the main element and having a layer structure. 
Claim 21 is directed to a process for preparing the nickel mixed hydroxide with Ni as 
the main element and haivng a layer structure. Claim 12 and 21 have been 
amended to include: a) at least one element M a from the group comprising Fe, 
Cr, Co, Ti, Zr and Cu which is present in two different oxidation states which differ by 
one electron in terms of the number of outer electrons , wherein the degree of 
oxidation a of the element M*. defined according to the following formula (I), is from 
0.25 to 0.75 



M a +(X+1) 



wherein M a +<x * 11 means the molar guantitv of the element M a in the higher 

oxidation state, and IVU +(x) the molar Quantity of the element IvU in the 
lower oxidation state, and x is a number between 1 and 3 : 

b) at least one element M b from the group comprising B, Al, Ga, In and 
rare earth metals present in the trivalent oxidation state; 

c) optionally at least one element M c from the group comprising Mg, Ca, 
Sr, Ba and Zn present in the divalent oxidation state; 

d) apart from the hydroxide, at least one additional anion selected from 
the group consisting of halides, carbonate, sulfate, acetate, oxalate, 
borate and phosphate in a quantity sufficient to preserve the 
electroneutrality of the mixed hydroxide; and 



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e) water of hydration in a quantity which stabilizes the relevant structure 
of the mixed hydroxide. 

Support for this amendment is found in the Specification at page 5, lines 25-26 and, 
this amendment includes subject matter similar to cancelled Claim 16. 

Kelkar et al. does not anticipate Applicants' invention. Kelkar et al. discloses 
synthesis of hydrotalcite materials (col. 2, lines 58-59), but does not disclose the 
degree of oxidation a of the element M a , defined according to the following formula 
(I), is from 0.25 to 0.75 

M a +(x+1 > 

«= (I). 

M a +(x+1) + M a +X 

wherein M a +(x+1) means the molar quantity of the element M a in the higher oxidation 
state, and M a +(x) the molar quantity of the element M a in the lower oxidation state, 
and x is a number between 1 and 3. Reconsideration is requested. 
Inherency 

Regarding Zeng et al., the Office Action's allegation that Zeng et al. discloses 
inherent features of Applicants' invention is not supported by the facts. The Office 
Action indicates that when metals such as Ni are partially substituted in the mixed- 
oxides and mixed-hydroxides with multivalent metals such as cobalt, cobalt would 
exhibit oxidation states in the lattice such as 2 + and 3 + by virtue of charge 
compensation in the multivalent system as shown by Zheng et al, the minimum 
higher oxidation level of 1% required by the limitation of a in Claim 16 would 
inherently be met (Office Action, page 4, para. 3, line 10 to page 5, line 1). 

If an invention is anticipated under inherency, the invention must flow as a 

necessary conclusion from the prior art, not just a possible one. The fact that the \ 

prior art may possibly have the same features as the claimed invention will not 

substantiate a finding of inherency (In re Oerfich, 212 USPQ 323, 326 (CCCPA 

1981)). And if a chemical compound is inherently disclosed in a reference, the 

USPTO must provide factual and technical grounds for establishing that the claimed 

invention inherently flows from the teachings of the prior art (Ex parte Levy 1 7 

USPQ2d 1461, 1464 (Bd. Pat. App. & Int 1990)). It cannot be overemphasized that 
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35 USC 1 02(b) only deals with the literal teachings of a reference, not theoretical 
maybes or unrealized possibilities. 

Zeng et al. discloses hydrotalcite-like compounds but does not teach or 
suggest the metal Ni partially substituted in the mixed-oxides and mixed-hydroxides. 
The mere possibility that Zeng et al. may have similar features of Applicants' 
invention is not sufficient to establish inherency. Thus, the "Ni mixed hydroxide with 
Ni as the main element and with a layer structure including a minimum higher 
oxidation level" of Applicants' invention cannot be inherently met. Neither, the Office 
Action, Kelkar et al. nor Zeng et al. have the facts necessary to support that Kelkar 
et al. or Zeng et al., either alone or in combination, inherently discloses features of 
Applicants' invention. Reconsideration is requested. 

Claims 13-17 and 23-24 depend from Claims 12 and 21, respectively. 
Accordingly, Claims 13-17 and 23-24 are also believed to be allowable. 

2. Rejection of Claims 12 -20 under 35 USC 102(b) as anticipated bv US 
Pat. No. 6.156.454 (Bernard et al.). 

Bernard et al. discloses a hydroxide containing mainly nickel with a layer 
based on nickel and yttrium (Abstract). Bernard et al does not disclose "the degree 
of oxidation a of the element M a , defined according to the following formula (I), is 
from 0.25 to 0.75 

. M a + < x+1) 

«= ('). 

M a +(X+1) + M a + * 

wherein M a +(x+1) means the molar quantity of the element M a in the higher oxidation 

state, and M a +<x) the molar quantity of the element M a in the lower oxidation state, 

and x is a number between 1 and 3" of Claims 12 and 21 of Applicatns' invention. 

The Office Action indicates that "the mixed oxidation states of elements 

such as Co in the Ni-mixed hydroxide and ratio of the highest oxidation to total 

element Co would be inherent" for the reasons given in reference to Kelkar et al. As 

discussed above with reference to Kelkar et al., the Office Action and Zeng et al. 

also do not have the facts necessary to support that features of Applicants' invention 
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are inherently disclosed. Reconsideration is requested. 

Claims 13-20 depend from Claim 12. Accordingly, Claims 13-20 are also 
believed to be allowable. 

3. Rejection of Claims 12 -24 under 35 USC 102(b) as anticipated bv EP 
793285 (Matsuda et al.). 

Matsuda et al. discloses a high performance composite hydroxide active 
material or a composite hydroxide containing Ni, Al and Co in a metallic ion molar 
ration of 8:1:1 (page 6, example 15). However, Matsuda et al. does not disclose the 
oxidation state of the Co ions present. Further, the reaction described in example 
15 will not result in a mixed hydroxide including an element M a that is present in two 
different oxidation states of as least 25%. In fact, Matsuda does not disclose a 
degree of oxidation from 0.25 to 0.75 of Applicants' invention of Claims 12 and 21 . 

As with the other references cited in the Office Action, Matsuda et al. does 
not disclose each and every element of claim with sufficient clarity to prove its 
existence in prior art. The literal teachings of Matsuda et al. do not disclose every 
element of the claimed invention in as complete detail as is contained in amended 
Claims 12 and 21. 

Further, the Office Action indicates that "the minimum a-value be inherent" for 
the reasons given in reference to Kelkar et al. As discussed above with reference to 
Kelkar et al., the Office Action and Zeng et al. do not have the facts necessary to 
support that features of Applicants' invention are inherently disclosed. 

Claims 13-15, 17-20 and 22-24 depend from Claims 12 and 21, respectively. 
Accordingly, Claims 13-15, 17-20 and 22-24 are also believed to be allowable. 
Reconsideration is requested. 

Rejections under 35 USC 103 

The Office Action rejected Claims 12 -17, 21, 23 and 24 under 35 USC 103(a) 
as obvious over US Pat. No. 5,518,704 (Kelkar et al.), Claims 12-24 under 35 USC 
103(a) as obvious over EP 793285 (Matsuda et al.), and Claims 12-20 under 35 
USC 103(a) as obvious over US Pat. No. 6,156,454 (Bernard et al.). These 
rejections should be withdrawn in view of the amendments above and remarks 
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below. 

It is well settled that to establish a prima facie case of obviousness, the 
USPTO must satisfy all of the following requirements. First, the prior art relied upon, 
coupled with the knowledge generally available in the art at the time of the invention, 
must contain some suggestion or incentive that would have motivated the skilled 
artisan to modify a reference or to combine references. In re Fine, 5 USPQ2d 1596, 
1598 (Fed. Cir. 1988). Second, the proposed modification must have had a 
reasonable expectation of success, as determined from the vantage point of one of 
ordinary skill in the art at the time the invention was made. Amgen v. Chugai 
Pharmaceutical Co. 18 USPQ 2d 1016, 1023 (Fed Cir, 1991), cert, denied 502 U.S. 
856 (1991). Third, the prior art reference or combination of references must teach 
or suggest all of the limitations of the claims. In re Wilson, 1 65 USPQ 494, 496, 
(CCPA 1970). 

In view of the amendments above, the remarks below are directed to the 
Claims as amended. Applicants' invention is directed to a nickel mixed hydroxide 
having a good cycle stability as well as an improved electrochemical utilization of the 
nickel ions. The Applicants determined that the crystal lattice of a nickel mixed 
metal hydroxide including an element M a exhibits defects if the element M a is 
present in two different oxidation states and the degree of oxidation is in a range 
ensuring that there is a substantial amount of the element M a in each oxidation state 
present. The present invention provides a system with the degree of oxidation of an 
element M a from about 25% to about 75%, and having such defects of the crystal 
lattice exhibits very good cycle stability in half-cell tests and a very high electronic 
utilization of the nickel ions of up to 1 .5 electrons per nickel ion. 

Matusuda et al. discloses facilitating charging at high temperature (Abstract); 
Kelkar et al. discloses the synthesis of novel sheet hydrotalcite materials (col. 2, II. 
58-59); and Bernard et al. discloses covering a hydroxide containing nickel with a 
layer based on nickel and yttrium (Abstract). Neither Matsuda et al., Kelkar et al. nor 
Bernard et al, alone or in combination, teach or suggest the importance of the 
degree of oxidation of an element M a with regard to cycle stability and electronic 
utilization of the nickel ions or the systems including an element M a in two different 
oxidation states wherein the degree of oxidation is from 25% to 75% would allow an 
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electronic utilization of up to 1 .5 electrons per nickel ion. Further, there is no 
motivation for one skilled in the art to modify the teachings of Matsuda et al., Kelkar 
et al. or Benard et al. to arrive at Applicants' invention. 

Accordingly, Claims 12-16 and 17-24 are believed to be allowable. 
Reconsideration is requested. 

In view of the foregoing amendments and remarks, allowance of the pending 
claims is earnestly requested. 



Bayer Chemicals Corporation 
100 Bayer Road 

Pittsburgh, Pennsylvania 15205-9741 
(412) 777-3069 

FACSIMILE PHONE NUMBER: 
(412) 777-2612 

F:\SHARED\JD\DVE\DE0031 .doc 



Respectfully submitted, 




By y 

Diderico van Eyl /P 
Attorney for Applicants 
Reg. No. 38,641 



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Any of a large class of chemical eleme nts including scandium (ate 
number 21), yttrium (39), and the 15 elements from 57 (lanthanu 
to 71 (see lanthanid es). 

The rare earths themselves are pure or mixed oxide s of these me 
originally thought to be quite scarce; however, c erium , the most 
plentiful, is three times as abundant as lead in the Earth's crust. " 
metals never occur free, and the pure oxides never occur in mine 
These metals are similar chemically because their atomic structu 
are generally similar; all form compounds in which they have yali 
3, including stable oxides, c arbide s, and borides. 



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03 Dec, 2003 ^jttpi/^y^w^ntanni^ 

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