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 .
Applicant’s amendments have been received on 7/18/25. Claims 1, 2, 6-10, 14-19 have been amended. Claims 20-23 are new. Claims 5, 11, 12 is cancelled.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Election/Restrictions
Newly submitted amended claims 1, 2, 6, 7, 9, 17-22 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the newly submitted claims are now directed to a composition, however, the composition is much broader than the originally presented claims for a binder. There is no evidence that composition comprise adhesive components or adhesive properties for a binder, it may be for an electrolyte. Further evidence is provided in the amended claim 9 where the composition can be for a binder or for a battery that does not necessarily have to comprise adhesive properties.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 1, 2, 6, 7, 9, 17-22 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
The rejection under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (Fast Synthesis of Li2S-P2S5-LiI solid electrolyte precursors) in view of Kim et al. (US Publication 2007/0102039), on claims 10, 14-16 are maintained. The rejection is further clarified in view of the Applicant’s amendments
The rejection under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (Fast Synthesis of Li2S-P2S5-LiI solid electrolyte precursors) in view of Kim et al. (US Publication 2007/0102039), on claims 11- 12 because the Applicant cancelled the claim.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
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 claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 10-12, 14-16, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (Fast Synthesis of Li2S-P2S5-LiI solid electrolyte precursors) in view of Kim et al. (US Publication 2007/0102039).
Regarding claim 10, 14, the Nguyen et al. reference discloses a method of reacting a raw material compound comrpising PS4 and constituent lithium, and reacting with LiI compound (Li3PS4; Introduction, third paragraph). The Nguyen reference is silent in disclosing I2, however, the Kim et al. reference discloses that LiI and I2 can be used for the same purposes (P24, P26). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate I2 disclosed by the Kim et al. reference for LiI component disclosed by the Nguyen et al. reference, since the substitution of known equivalent structures involves only ordinary skill in the art. In re Fout 213 USPQ 532 (CCPA 1982); In re Susi 169 USPQ 423 (CCPA 1971); In re Siebentritt 152 USPQ 618 (CCPA 1967); In re Ruff 118 USPQ 343 (CCPA 1958). When a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR v. Teleflex
Regarding claim 15, the Nguyen et al. reference discloses wherein the raw material compound and the oxidizing agent are reacted by one or more selected from the group consisting of physical energy, thermal energy, and chemical energy (Introduction, third paragraph).
Regarding claim 16, the Nguyen et al. reference discloses wherein the raw material compound and the oxidizing agent are reacted in a liquid (Introduction, third paragraph).
Regarding claim 23, the Nguyen in view of Kim et al. reference (herein referred to as modified Nguyen) discloses the molar ratio of the lithium constituent element and a PS4 structure and the elemental halogen is a 1:1 ratio.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 10, 14, 15, 16, 23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 14, of U.S. Patent No. 12,119,442. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims do not preclude one another. The claims are to a method of reacting a lithium sulfide phosphorous compound and a halogen of I2 in 1:1 molar ratio.
Response to Arguments
Applicant's arguments filed 2/23/26 have been fully considered but they are not persuasive.
The arguments pertaining to an oxidizing agent has been considered but moot since the limitation does not comprise “oxidizing agent.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752