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 .
Claim Status
This office action is in response to amendments/arguments filed 06/26/2026. Claim(s) 1-2 and 29 are currently amended. The amendments are supported by the specification and the original claims, and no new matter has been entered. Claim(s) 4, 6-7, 12, 14-15, and 21 are canceled. Claim(s) 3, 5, 8-11, 13, and 16-18 stand as originally or as previously presented. Claim(s) 19-20 and 22-28 remain withdrawn claim(s) 1-3, 5, 8-11, 13, 16-18, and 29 are examined in this office action.
Claim Rejections
The claim rejections of the prior office action have been withdrawn due to applicant’s amendments. Applicant’s amendments have necessitated new grounds of rejection as below set forth.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 5, 8-11, 13, 16-18, and 29 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over (US 20210098825 A1).
Claim(s) 1-3, 5, 8-11, 13, 16-18, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakaida (US 20210098825 A1).
Regarding claim 1, Sakaida discloses a solid electrolyte (title) comprising:
a compound that contains an alkali meta element, a tetravalent metal element, and a halogen element as main elements (as an example, table 1 discloses in example 8, Li2.1Zr0.8-Al0.1Cl6, wherein Li is the alkali metal, Zr is the tetravalent metal, and Cl is the halogen. These three elements make up the “main elements” of the compound, as Al is present in a comparatively smaller amount), the compound is represented by a composition formula Li2+aMbZr1+cCl6+d,
wherein in the composition formula -1.5 ≤ a ≤ 1.5 (in this case a is 0.1), 0 ≤ b ≤ 1.5 (in this case b is 0.1), -0.7 ≤ c ≤ 0.2 (in this case c is -0.2), -0.2 ≤ d ≤ 0.2 (in this case d is 0) is satisfied,
M is one or more elements selected from a group consisting of Al (see formula above),
at least a part of the tetravalent metal element is substitutable with at least one element selected from other tetravalent elements (Sakaida does not explicitly disclose that the tetravalent metal element (Zr) is substitutable with at least one other tetravalent element, however, the claimed limitation does not require substitution with the other tetravalent element, but merely that it is substitutable, or in other words, that substitution is possible. The claimed formula requires Zr to be used as the instantly claimed tetravalent metal element, which Sakaida also uses, and which is commonly known in the art to be substitutable with other tetravalent elements, such as, for example, Sn or Hf, and as a result a person of ordinary skill in the art before the effective filing date of the claimed invention would understand that at least part of the Zr would be substitutable with at least one element selected from other tetravalent elements).
Sakaida does not disclose any of the diffraction peak positions of the compound, or relative intensities for any of the diffraction peaks. However, based on information present in the instant specification, diffraction peak positions arise from the compound itself and its structure, which is confirmed by the diffraction results [0010]. Additionally, [0050] of the instant specification reveals that when the solid electrolyte, particularly the halogenated compound, is at least partially crystalline, diffraction peaks can be confirmed with X-ray diffraction measurements. [0042] of Sakaida discloses that the halide solid electrolyte material may be crystalline or amorphous.
As a result, a person of ordinary skill in the art before the effective filing date of the claimed invention would find that the electrolyte material of Sakaida would be expected to exhibit the claimed diffraction peak positions and diffraction intensity ratios. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. A dual 102/103 rejection can be made when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
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Sakaida does not explicitly disclose that the tetravalent metal element has an ionic radius smaller than an ionic radius of hexa-coordinated Y3+. However, based on information present in the instant specification, the ionic radius of hexa-coordinated Y3+ is 0.9A [0090], while the ionic radius of, for example, hexacoordinate Zr4+ is 0.72 A, which is smaller. [0090] discloses that Tetravalent ions have a smaller ionic radius than that of Y3+-. As a result of this, and based on the fact that Sakaida discloses a material that matches the instantly claimed formula and which contains Zr as the tetravalent metal element, a person of ordinary skill in the art before the effective filing date of the claimed invention would expect that the Zr in the compound of Sakaida would have an ionic radius smaller than an ionic radius of hexa-coordinated Y-3+, thus satisfying the claimed limitation. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP § 2112- 2112.02.
Regarding claim 2, Sakaida discloses a solid electrolyte (title) comprising:
a compound that contains an alkali meta element, a tetravalent metal element, and a halogen element as main elements (as an example, table 1 discloses in example 8, Li2.1Zr0.8-Al0.1Cl6, wherein Li is the alkali metal, Zr is the tetravalent metal, and Cl is the halogen. These three elements make up the “main elements” of the compound, as Al is present in a comparatively smaller amount), the compound is represented by a composition formula Li2+aMbZr1+cCl6+d,
wherein in the composition formula -1.5 ≤ a ≤ 1.5 (in this case a is 0.1), 0 ≤ b ≤ 1.5 (in this case b is 0.1), -0.7 ≤ c ≤ 0.2 (in this case c is -0.2), -0.2 ≤ d ≤ 0.2 (in this case d is 0) is satisfied,
M is one or more elements selected from a group consisting of Al (see formula above), at least a part of the tetravalent metal element is substitutable with at least one element selected from other tetravalent elements (Sakaida does not explicitly disclose that the tetravalent metal element (Zr) is substitutable with at least one other tetravalent element, however, the claimed limitation does not require substitution with the other tetravalent element, but merely that it is substitutable, or in other words, that substitution is possible. The claimed formula requires Zr to be used as the instantly claimed tetravalent metal element, which Sakaida also uses, and which is commonly known in the art to be substitutable with other tetravalent elements, such as, for example, Sn or Hf, and as a result a person of ordinary skill in the art before the effective filing date of the claimed invention would understand that at least part of the Zr would be substitutable with at least one element selected from other tetravalent elements).
Sakaida does not disclose any of the diffraction peak positions of the compound, or relative intensities for any of the diffraction peaks. However, based on information present in the instant specification, diffraction peak positions arise from the compound itself and its structure, which is confirmed by the diffraction results [0010]. Additionally, [0050] of the instant specification reveals that when the solid electrolyte, particularly the halogenated compound, is at least partially crystalline, diffraction peaks can be confirmed with X-ray diffraction measurements. [0042] of Sakaida discloses that the halide solid electrolyte material may be crystalline or amorphous.
As a result, a person of ordinary skill in the art before the effective filing date of the claimed invention would expect that the electrolyte material of Sakaida would exhibit the claimed diffraction peak positions and diffraction intensity ratios. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP § 2112- 2112.02. Additionally, a dual 102/103 rejection can be made when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Sakaida does not explicitly disclose that the tetravalent metal element has an ionic radius smaller than an ionic radius of hexa-coordinated Y3+. However, based on information present in the instant specification, the ionic radius of hexa-coordinated Y3+ is 0.9A [0090], while the ionic radius of, for example, hexacoordinate Zr4+ is 0.72 A, which is smaller. [0090] discloses that Tetravalent ions have a smaller ionic radius than that of Y3+-. As a result of this, and based on the fact that Sakaida discloses a material that matches the instantly claimed formula and which contains Zr as the tetravalent metal element, a person of ordinary skill in the art before the effective filing date of the claimed invention would expect that the Zr in the compound of Sakaida would possess an ionic radius smaller than an ionic radius of hexa-coordinated Y-3+, that satisfying the claimed limitation. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP § 2112- 2112.02.
Regarding claim 3, Sakaida discloses the solid electrolyte according to claim 1, but does not explicitly disclose the claimed diffraction peak positions. However, based on the disclosure of Sakaida and on information provided by the instant specification, a person of ordinary skill in the art before the effective filing date of the claimed invention would expect that the electrolyte material of Sakaida would exhibit the claimed diffraction peak positions and diffraction intensity ratios (see claim 1 rejection above). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP § 2112- 2112.02. Additionally, a Dual 102/103 rejection can be made when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Regarding claim 5, Sakaida discloses the solid electrolyte according to claim 1, but does not explicitly disclose the claimed diffraction peak positions. However, based on the disclosure of Sakaida and on information provided by the instant specification, a person of ordinary skill in the art before the effective filing date of the claimed invention would expect that the electrolyte material of Sakaida would exhibit the claimed diffraction peak positions and diffraction intensity ratios (see claim 1 rejection above). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP § 2112- 2112.02. Additionally, a Dual 102/103 rejection can be made when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Regarding claim 8, Sakaida discloses a solid electrolyte layer comprising the solid electrolyte according to claim 1 ([0005], see also [0054]-[0055]).
Regarding claim 9, Sakaida discloses a solid electrolyte battery (title) comprising:
a positive electrode, a negative electrode, and a solid electrolyte layer sandwiched between the positive electrode and the negative electrode [0005], wherein at least one of the positive electrode, the negative electrode, and the solid electrolyte layer contains the solid electrolyte according to claim 1 [0005].
Regarding claim 10, Sakaida discloses a solid electrolyte battery (title) comprising:
a positive electrode, a negative electrode, and a solid electrolyte layer sandwiched between the positive electrode and the negative electrode [0005], wherein the solid electrolyte layer contains the solid electrolyte according to claim 1 ([0005], see also [0057] and [0054].
Regarding claim 11, Sakaida discloses the solid electrolyte according to claim 2, but does not explicitly disclose the claimed diffraction peak positions. However, based on the disclosure of Sakaida and on information provided by the instant specification, a person of ordinary skill in the art before the effective filing date of the claimed invention would expect the electrolyte material of Sakaida would exhibit the claimed diffraction peak positions and diffraction intensity ratios (see claim 1 rejection above). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP § 2112- 2112.02. Additionally, a Dual 102/103 rejection can be made when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Regarding claim 13, Sakaida discloses the solid electrolyte according to claim 2, but does not explicitly disclose the claimed diffraction peak position(s). However, based on the disclosure of Sakaida and on information provided by the instant specification, a person of ordinary skill in the art before the effective filing date of the claimed invention would expect that the electrolyte material of Sakaida would exhibit the claimed diffraction peak positions and diffraction intensity ratios (see claim 1 rejection above). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP § 2112- 2112.02. Additionally, a Dual 102/103 rejection can be made when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Regarding claim 16, Sakaida discloses a solid electrolyte layer comprising the solid electrolyte according to claim 2 ([0005], see also [0057]).
Regarding claim 17, Sakaida discloses a solid electrolyte battery (title) comprising:
a positive electrode, a negative electrode, and a solid electrolyte layer sandwiched between the positive electrode and the negative electrode [0005], wherein at least one of the positive electrode, the negative electrode, and the solid electrolyte layer contains the solid electrolyte according to claim 2 [0005].
Regarding claim 18, Sakaida discloses a solid electrolyte battery (title) comprising:
a positive electrode, a negative electrode, and a solid electrolyte layer sandwiched between the positive electrode and the negative electrode [0005], wherein the solid electrolyte layer contains the solid electrolyte according to claim 2 ([0005], see also [0005] and [0057].
Regarding claim 29, Sakaida discloses the solid electrolyte according to claim 1, wherein in the composition formula Li2+aMbZr1+cCl6+d, at least part of Zr is substitutable with at least one element selected from other tetravalent elements (Sakaida does not explicitly disclose that the tetravalent metal element (Zr) is substitutable with at least one other tetravalent element, however, the claimed limitation does not require substitution with the other tetravalent element, but merely that it is substitutable, or in other words, that substitution is possible. The claimed formula requires Zr to be used as the instantly claimed tetravalent metal element, which Sakaida also uses, and which is commonly known in the art to be substitutable with other tetravalent elements, such as, for example, Sn or Hf, and as a result a person of ordinary skill in the art before the effective filing date of the claimed invention would understand that at least part of the Zr would be substitutable with at least one element selected from other tetravalent elements), and in the composition formula Li2+aMbZr1+cCl6+d, one condition is selected from a group consisting of the following: (iii) when M is substituted at a Zr site as a trivalent element, the composition formula satisfies a=b and 0 ≤ b ≤ 0.5, and M is Al (Sakaida discloses, for example, Li2.1Zr0.9-Al0.1Cl6 (table 1), which meets the claimed limitations).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Nishio (US 20210098824 A1), commonly owned with the Sakaida used to reject the instant claims, discloses a similar compound as Sakaida, but including Nb instead of Al (see table 1)
Sakai (US 20210098823 A1), commonly owned with the Sakaida used to reject the instant claims, discloses a similar compound as Sakaida, but within in some cases M being zero (not including either Al or Nb). Since the composition formula of the instant claim 1 allows M to be zero, Sakai is considered relevant to the instant application.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACKARY R COCHENOUR whose telephone number is (703)756-1480. The examiner can normally be reached 1-9:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Smith can be reached at (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACKARY RICHARD COCHENOUR/Examiner, Art Unit 1752
/Maria Laios/Primary Examiner, Art Unit 1727
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