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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 9th, 2025 has been entered.
Claim Status
Applicant’s arguments submitted October 9th, 2025 and claim amendments submitted on September 16th, 2025 have been entered into the file. Currently claim 17 is amended and claim 21 is new, resulting in claims 1, 3-12, 14-15, 17-21 pending for examination.
Response to Amendment
The claim amendments filed on September 16th, 2025 have been entered.
Applicant’s amendment 17 has overcome the claim objection previously set forth in the Final Office Action mailed July 16th, 2025.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Case law holds that applicant' s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant' s invention. The test for undue experimentation as to whether or not contacting Li3+x+yM1-xNxO4 and LiQ is within the scope of the claims can be used to form a mixture comprising a compound of Formula I, Li3+x+yM1-xNxO4Qy wherein 0 < x ≤ 1; 0 ≤ y ≤ 1; M is an element having an oxidation number of +5; N is an element having an oxidation number of +4, and Q is a halogen having an oxidation number of -1, as claimed, and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claim 17 and dependent claims 18-21, it is believed that undue experimentation would be required because:
(A) Breadth of the claims
(B) Nature of the invention
(C) State of the prior art
(D) The level of one of ordinary skill
(E) The level of predictability in the art
(F) Amount of direction provided
(G) The existence of working examples
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
Breath of the Claim and Nature of the Invention (Wands Factors A-B, MPEP 2164.01)
Regarding claim 17, the claim requires a method for producing the composite, the method comprising contacting Li3+x+yM1-xNxO4 and LiQ to form a mixture comprising a compound of Formula I, Li3+x+yM1-xNxO4Qy wherein 0 < x ≤ 1; 0 ≤ y ≤ 1; M is an element having an oxidation number of +5; N is an element having an oxidation number of +4, and Q is a halogen having an oxidation number of -1.
While enabled is provided for when x=1, enablement is not provided for when 0 < x < 1. In the case that x is not equal to 1 (0 < x < 1) contacting Li3+x+yM1-xNxO4 and LiQ would not form a compound of Formula I as described above where 0 < x < 1. LiQ requires that the subscript of Q, represented by the variable x in instant Formula I, is equal to 1. Therefore, according to the conservation of mass, contacting Li3+x+yM1-xNxO4 and LiQ would not form a compound wherein the subscript of Q is less than 1 hence this aspect is not enabled. The complex of the instant claim is recited as neutral, therefore the entirety of the element Q (with the subscript of 1 as seen in the precursor material LiQ) appears in the compound represented by Formula I in the mixture.
State of the Prior Art (Wands Factor C, MPEP 2164.01)
It appears that it is known in the prior art to contact a lithium composite oxide and a lithium halide in order to improve conductivity and mechanical properties. For example, Dyer teaches a method of contacting precursor materials to form a mixture comprising a compound of Formula I (Page 11, Lines 23-30) involving precursor materials of the form AX and ADY (Page 11, 25-29), wherein the precursor comprising A, D, and Y is a lithium composite oxide (Page 13, Lines 1-5) and the precursor comprising A and X is a lithium halide (Page 13, Lines 5-10).
The Level of Predictability in the Art (Wands Factor E, MPEP 2164.01)
As described above, the prior art recognizes that contacting a lithium composite oxide and a lithium halide results in an uncharged material comprising a lithium composite, oxygen atoms, and halide atoms.
However, it does not appear that it is known in the art to contact a lithium composite oxide and a lithium halide whose halide atom’s subscript is one to form an uncharged composite composition whose halide atom’s subscript is less than one.
The Amount of Direction Provided by the Inventor and the Existence of Working Examples (Wands Factors F-G, MPEP 2164.01)
Further, the instant specification provides working examples for the contacting Li3+x+yM1-xNxO4 and LiQ to form a mixture comprising the compound of Formula I, where y=1. For example, the instant disclosure provides contacting Li3PO4 and LiI to form Li4PO4I (Pages 10-12), but does not provide working examples describing how Li3PO4 and LiI are contacted to form Li4PO4Ix where 0 < x < 1, as claimed in instant claim 17. Since the instant specification does not provide details regarding how contacting Li3+x+yM1-xNxO4 and LiQ to form a mixture comprising a neutral compound of Formula I (where 0 < x < 1) is performed and does not provide any working examples of this, and the prior art does not indicate how this contact is performed or if it is possible, the instant specification and the state of the prior art do not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claim 17. For the purposes of examination, the method of claim 17 is interpreted by the examiner (in the rejection of claims 17-20) as the enabled case where Li3+x+yM1-xNxO4 and LiQ are contacted to form a mixture comprising the compound of Formula I, wherein y=1.
Regarding claims 18-21, they are also rejected under 35 U.S.C. 112(a) due to their dependence on a previously rejected claim.
Claim Rejections - 35 USC § 103
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.
Claims 1, 2-8, 11, 14-15, 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dyer (WO 2021234416 A1).
Regarding claim 1, Dyer does not explicitly teach a compound of the instant Formula I: Li3+x+yM1-xNxO4Qy wherein:
0 < x ≤ 1
0 ≤ y ≤ 1
M is an element having an oxidation number of +5
N is an element having an oxidation number of +4, and
Q is a halogen having an oxidation number of -1.
However, Dyer teaches a solid crystalline material of Formula I: AzDY4Xx wherein:
each A is independently selected from Li, Na, K and Mg;
D is selected from Si, Al, P, B, Ga, Ge, S, Mo, W, V, Sn, Sb, Nb and Ta, or a mixture thereof;
each Y is independently selected from O, S, F, Cl, Br or a mixture thereof;
each X is independently selected from F, Cl, Br, I, S, O, BH4 or a mixture thereof;
z is from 2 to 8; and
x is from 1 to 3 (Page 2, Lines 18-27).
Dyer does not teach a specific embodiment of Formula I which meets all of the claimed limitations of instant Formula I in claim 1.
In the formula taught by Dyer, the variable A is a placeholder which may be substituted by at least one element selected from Li, Na, K, and Mg where A possesses the subscript z which may be between 2 and 8. The instant formula teaches that lithium is present in the formula and that subscript (3+x+y) is assigned to it, and 3 < (3+x+y) ≤ 5. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select lithium from the finite lists of possible combinations for A to arrive at the compound of the instant claim since the combination of components would have yielded predictable results as a compound in a battery electrolyte, absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E). The range of the subscript z of lithium of Dyer substantially overlaps the claimed ranges of the subscript (3+x+y) of lithium in the instant claim 1. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Dyer, because overlapping ranges have been held to establish prima facie obviousness.
In the formula taught by Dyer, the variable D is a placeholder which may be substituted by at least one element selected from Si, Al, P, B, Ga, Ge, S, Mo, W, V, Sn, Sb, Nb and Ta where D possesses the subscript 1. The instant formula teaches the variable N which is a placeholder that may be substituted by an element having an oxidation number of +4 where N possesses the subscript x which is greater than zero and less than or equal to one. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select the elements with a +4 oxidation number from the finite lists of possible combinations for D (Si, Ge, or Sn) of Dyer to arrive at the compound of the instant claim since the combination of components would have yielded predictable results as a compound in a battery electrolyte, absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E). The value of the subscript 1 of variable D of Dyer lies within the claimed ranges of the subscript x of variable N in the instant claim 1.
In the formula taught by Dyer, the variable Y is a placeholder which may be substituted by at least one element selected from O, S, F, Cl, Br where Y possesses the subscript 4. The instant formula teaches that oxygen is present in the formula and that subscript 4 is assigned to it. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select oxygen from the finite lists of possible combinations for Y to arrive at the compound of the instant claim since the combination of components would have yielded predictable results as a compound in a battery electrolyte, absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E). The subscript of Y=oxygen of Dyer is identical to the subscript of oxygen in the instant claim 1, meeting the claimed limitations.
In the formula taught by Dyer, the variable X is a placeholder which may be substituted by at least one element selected from F, Cl, Br, I, S, O, BH4 where X possesses the subscript x which may be between 1 and 3. The instant formula teaches the variable Q which is a placeholder that may be substituted by a halogen where Q possesses the subscript y which between 0 and 1. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any halogen (F, Cl, Br, or I) from the finite lists of possible combinations for X to arrive at the compound of the instant claim since the combination of components would have yielded predictable results as a compound in a battery electrolyte, absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E). The range of the subscript x of variable X of Dyer substantially overlaps the claimed ranges of the subscript y of the variable Q in the instant claim 1. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Dyer, because overlapping ranges have been held to establish prima facie obviousness.
Furthermore, one of ordinary skill in the art would have recognized that the selection of these elements (D=Si, Ge, or Sn and X=I, of Dyer) and subscripts (z=4 and x=1) in the formula of Dyer correspond to N=(elements having an oxidation number of +4, x=1, y=1), Q=I in the instant formula, resulting in four lithium atoms present in the compound. The selection of suitable elements and subscripts of elements of Formula I of Dyer is in accordance with the teachings that the overall charge of the molecule is neutral (Page 4, Lines 21-25). When the selections from the finite lists as discussed above are made, the resulting compound (Li4(Si or Ge or Sn)1O4I) reads on the instant Formula I disclosed in the instant claim 1. As claim 1 defines M but does not require that (1-x) is non-zero, the modified compound of Dyer present above meets the claimed limitations.
Dyer teaches each element claimed, with the only difference between the claimed invention and Dyer being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known element from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of components would have yielded predictable results of a solid crystalline material in a solid-state battery with high conductivity (Page 2, Lines 1-12), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
Regarding claim 3, Dyer teaches the compound as discussed previously with respect to claim 1.
Dyer does explicitly teach y=1.
As discussed above, in the formula taught by Dyer the variable X of Dyer was equated with the variable Q of the instant claim 1 having subscript y, as both may represent halogen atoms. X possesses the subscript x which may be between 1 and 3. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a quantity within the range of the provided, suitable subscripts quantities corresponding to x (y of the instant claim) to arrive at the claimed formula’s y=1, specifically x (of Dyer) =1.
Regarding claim 4, as claim 4 defines M but does not require that its subscript (1-x) is non-zero (when x=1), Dyer meets the claimed limitations.
Regarding claim 5, Dyer teaches the compound as discussed previously with respect to claim 1.
Dyer does explicitly teach Q=I.
As discussed above, in the formula taught by Dyer the variable X of Dyer was equated with the variable Q of the instant claim 1, as both may represent halogen atoms. X may be selected from: F, Cl, Br, I, S, O, and BH4 It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select iodine from the finite lists of possible combinations for X of Dyer to arrive at Q=I of the instant claim since the combination of components would have yielded predictable results as a compound in an electrolyte, absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
Regarding claim 6, as claim 4 defines M but does not require that its subscript (1-x) is non-zero (when x=1), Dyer meets the claimed limitations.
Regarding claim 7, Dyer teaches the compound as discussed previously with respect to claim 1, wherein N is selected from the group consisting of Si, Ge, and Sn.
As mentioned above, variable D of Dyer can be equated with either N of the instant claim. Dyer discloses that D may be selected from a group of elements (Page 2, Line 22-23) including the claimed silicon, germanium, and tin, elements having a +4 oxidation state, meeting the limitations of N in Formula I of the instant claim 7.
Regarding claim 8, Dyer teaches the compound as discussed previously with respect to claim 1, wherein at least a portion of the compound has a crystalline structure (Page 2, Lines 13-17).
Regarding claim 11, Dyer teaches a compound of Formula I.
Dyer does not explicitly teach a composite comprising the compound of Formula I.
However, Dyer teaches an embodiment of the invention which is a mixed solid crystalline material comprising the first solid material of Dyer’s Formula I and a second solid material (Page 8, Lines 22-24). This mixtures of solid materials may provide a solid conductive material which has advantageous properties compared to the first solid material alone, as recognized by Dyer (Page 8, Lines 25-27).
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have selected the embodiment taught by Dyer in which the solid crystalline material is a mixture comprising the first solid material of Dyer’s Formula I and a second solid material. The modification would have been a combination of prior art elements, that a person of ordinary skill in the art would perform with no inventive effort required. Furthermore, the resulting electrolyte would yield predictable results as a solid crystalline material. See MPEP 2143(I)(A).
Furthermore, the OED definition of a composite is “anything made up of different parts or elements, a compound.” Because the embodiment of Dyer teaches a mixed solid crystalline material made up of two components, the mixture taught by Dyer is by definition, considered a composite.
Therefore, Dyer teaches a composite comprising the compound of Formula I, meeting the limitations of the instant claim 11.
Regarding claim 14, Dyer teaches the compound as discussed previously with respect to claim 1, wherein an electronic device (solid state battery) comprises an electrolyte comprised of the compound of claim 1 (Page 10, Lines 29-35).
Regarding claim 15, Dyer teaches the electronic device as discussed previously with respect to claim 14, wherein the electronic device is an all-solid-state battery, an electrochemical sensor, or a flow-battery membrane (Page 10, Lines 29-35).
Regarding claim 17, Dyer teaches a method for producing a composite.
Dyer does not disclose a method for producing the composite which explicitly meets the limitations of the instant claim 17.
Dyer discloses the method further comprising contacting (admixing) precursor materials to form a mixture comprising a compound of Formula I (Page 11, Lines 23-30).
Dyer teaches a method for producing a compound of the first aspect Formula (I) in which includes a step of mixing precursor materials of the form AX and ADY (Page 11, 25-29). Dyer teaches that in embodiment wherein the solid crystalline material produced by the method comprises SiO4, the precursor comprising A, D, and Y is suitably AhSiO4, wherein h is from 2 to 4 and A is selected from Li, Na, K, or Mg (Page 13, Lines 1-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select lithium from the provided, suitable elements for component A and to have selected h=4 from the provided, suitable range of values for variable h to arrive at the instant formula of claim 17 (when x=1 and y=0). This would have yielded predictable results of a solid crystalline material in a solid-state battery with high conductivity (Page 2, Lines 1-12), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
When A is selected as lithium and h=4, Dyer teaches one of the precursors to the solid crystalline material produced by the method to be Li4SiO4. The claimed precursor of the instant claim 17 is of the form Li3+xM1-xNxO4. When x=1, the instant claimed precursor is expressed as Li4NO4. The precursor of Dyer includes silicon, which is an element having an oxidation number of +4, which can thus be equated with N of the instant claimed precursor. Thus, the first precursor of the instant claim, Li3+xM1-xNxO4, is taught by Dyer in the method of producing the mixed solid crystalline material.
The second precursor taught by Dyer is represented by AX, wherein step (b) of the method, the A,D, and Y-containing precursor is combined with a source of AX (Page 13, Lines 5-10). As discussed previously with respect to claims 1-3, the variables of Formula I of Dyer can be equated with the variables of the instant Formula I: A=Li and X=Q. Substituting these values into the second precursor compound taught by Dyer yields LiQ. Thus, Dyer also teaches the second precursor in the method of producing the composite outlined in the instant claim 17.
According to these teachings of Dyer, the compound resulting from contacting AhSiO4 (Li3+xM1-xNxO4) and AX (LiQ) will be a compound represented by Formula I of Dyer. As discussed above, the compound of Formula (I) of Dyer is considered to meet all of the limitations of the instant claim’s Formula I when x=1, y=0, N=Si, Ge, or Sn, and Q= Cl, Br, I, or F, for the same reasons as stated above.
Regarding claim 18, Dyer teaches the method as previously discussed with respect to claim 17, wherein the contacting of Li3+xM1-xNxO4 and LiQ comprises milling the Li3+xM1-xNxO4 and LiQ.
As discussed previously with respect to claim 17, Dyer teaches precursors to the solid crystalline material, a material containing A,D, and Y and another of the form AX, which may be equated with the instant precursors Li3+xM1-xNxO4 and LiQ, respectively. Dyer teaches a step (b) in which the precursor powder materials are ground together. The OED definition of milling is “the action of grinding something.” Therefore, because Dyer teaches the grinding of the precursor powders in the method of forming the final solid crystalline product, the step (b) may be considered a milling process and thus covers the limitations of claim 18.
Regarding claim 19, Dyer teaches the method as discussed previously with respect to claim 17
Dyer does not explicitly teach that dependent on the weight of the mixture, about 50 wt% to 60 wt% of Li3+xM1-xNxO4 is contacted with about 40 wt% to about 50 wt% of LiQ.
However, Dyer teaches that in step (b), the source of AX and the precursor obtained in step (a) containing A, D, and Y are mixed together in a ratio from 4:1 to 1:1, suitable from 3:1 to 1:1 (Page 13, Lines 17-18). Dyer teaches in an embodiment wherein the solid crystalline material produced by the method comprises SiO4, the source of AX and AhSiO4 are suitably mixed in a ratio of approximately 2:1 (Page 13, Lines 19-22).
As discussed above in the rejection of claim 17, when A is selected as lithium and h=4, Dyer teaches the AhSiO4 compound to be a precursor represented by Li4SiO4. Dyer teaches in some embodiments, the source of AX is LiCl (Page 13, Lines 13), which will be used for the purposes of calculation.
This ratio can be converted to weight percent. The examiner assumed that 2 moles of LiCl and 1 mole of Li4SiO4 were mixed, however any suitable ratio of 2:1 moles of LiCl:Li4SiO4 is acceptable. 2 moles of LiCl are converted to 84.8 grams of LiCl (2 moles LiCl * 42.4 g/mol LiCl) and 1 mole of Li4SiO4 is converted to 119.9 grams of Li4SiO4 (1 mole Li4SiO4 * 119.9 g/mol Li4SiO4). When LiCl and Li4SiO4 are mixed in a 2:1 ratio, the weight percentage of Li4SiO4 is found to be 58.6% (119.9 g Li4SiO4 / (119.9 g Li4SiO4 + 42.4 g LiCl)) and the weight percentage of LiCl is found to be 41.4% (100-58.6%).
The ratio of the quantities of precursor materials of Dyer substantially overlaps the claimed percentage ranges in the instant claim 19, evident upon conversion of the mixing ratios to weight percentages. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Dyer, because overlapping ranges have been held to establish prima facie obviousness.
Regarding claim 20, Dyer teaches the method as discussed previously with respect to claim 17, further comprising subjected the mixture to electrochemical cycling. Dyer teaches the use of the mixture comprising the compound of Formula I in a battery (Page 10, Lines 29-35), as discussed previously with respect to claims 14 and 15. Therefore, when the mixture comprising the compound of Formula I is used in the electrolyte of a solid-state battery as taught by Dyer, it is subjected to electrochemical cycling which is known in the art to occur when the battery is charged and discharged throughout its use.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Dyer (WO 2021234416 A1) as applied to claims 1, 3-8, 11, 14-15, 17-20 above, and further in view of Mei (Non Patent Literature “A Quantitative Correlation Between Macromolecular Crystallinity and Ionic Conductivity in Polymer-Ceramic Composite Solid Electrolytes”).
Regarding claim 9, Dyer teaches the compound as discussed previously with respect to claim 1. Dyer also teaches the compound’s use in a solid crystalline electrolyte of a solid-state battery (Page 10, Lines 29-35) having high electrical conductivity (Page 14, Lines 5-10).
Dyer does not teach that at least a portion of the compound has an amorphous structure.
Mei teaches an inversely linear relationship between ionic conductivity and crystallinity of polymer ceramic electrolytes in solid-state batteries (Page 3, Column 2, Paragraph 3). Mei outlines that macromolecular crystallinity is a quantitative descriptor of ionic conductivity in composite electrolytes, which may be useful to improve them (Abstract). Essentially, through manipulation of the crystallinity of the polymer, the overall ionic conductivity of the composite electrolyte can be adjusted (Page 4, Column 2, Paragraph 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the solid crystalline material used in the solid-state battery taught by Dyer to incorporate the teachings of Mei to modify the electrolyte of the solid-state battery to be semicrystalline, i.e., contain an amorphous region. Doing so would increase the ionic conductivity of the electrolyte thus improving its performance in a battery, as recognized by Mei.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Dyer as applied to claims 1, 3-8, 11, 14-15, 17-20 above, further in view of Ou (Non Patent Literature, “Experimental Analysis and Finite Element Simulation of the Co-Sintering of Bi-Material Components”).
Regarding claim 10, Dyer teaches the compound as discussed previously with respect to claim 1.
Dyer does not explicitly teach that the compound of claim 1 is in the form of a powder.
However, Dyer teaches a method of preparing the solid crystalline material of the taught Formula I, wherein the precursors of the Formula I product (AX and precursor obtained in step A) are powders (Page 13, Lines 14-16). Further, Dyer discloses that the two precursor powder materials are mixed and ground together before being heated.
Ou teaches sintering as a method of controlling the final structure of a product formed from metal powder mixtures (Paragraph 1). Ou describes sintering as using thermal energy to form compact solids, specifically how heating the formed product resulting from raw powder results in a structurally-ordered, sintered product (Figure 1).
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Figure 1 of Ou
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that grinding the powder precursor materials of Dyer results in a formed product and that heating the mixture results in a sintered product, as taught by Ou. Ou teaches that the application of heat to the product formed from the raw powder in the sintering process results in a homogenous structure (Paragraph 1). One of ordinary skill in the art would have recognized that the heating step (c) of Dyer serves to sinter the formed product, resulting in a sintered product which is structurally different from the formed product in that it is homogenous, as recognized by Ou. This is particularly useful when applied to Dyer, as Dyer teaches the product having an ordered, crystalline structure which is recognized in the art as a homogenous structure.
In this case, Formula I of Dyer can be equated with the formed product of Ou, as it is formed during the process of making but before the sintering step described by Dyer. One of ordinary skill in the art would have recognized this intermediate (formed) product to be a powder of Formula I. This is because the formed product is resultant from mixing two precursor powders (Page 13, Lines 14-16). Thus, Dyer teaches the compound of instant claim 1 is in the form of a powder, meeting the limitations of the instant claim 10.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Dyer (WO 2021234416 A1) as applied to claims 1, 3-8, 11, 14-15, 17-20 above, and further in view of Henderson (Non Patent Literature, “Ionic Conductivity in Crystalline-Amorphous Polymer Electrolytes”).
Regarding claim 12, Dyer teaches the composite as discussed previously with respect to claim 11.
Dyer does not teach the composite which explicitly has a conductivity of at least 0.15 mS/cm at room temperature. However, Dyer does teach that it is desirable for electrolytes to exhibit efficient ion conduction (Page 1, Lines 15-21). Dyer also teaches that the solid crystalline material disclosed has a high conductivity, at a level suitable for use in a solid-state electrolyte (Page 4, Lines 26-30).
Henderson teaches the structural features of crystalline amorphous polymer electrolytes which contribute to their desirable conductivities. Further, Henderson quantifies the range of high ionic conductivity of solid electrolytes as being greater than 10-3 S/cm (10 mS/cm) at room temperature (Page 1, Column 1, Paragraph 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the solid crystalline material of Dyer used in a solid-state battery electrolyte to include the teachings of conductivity of solid crystalline electrolytes as taught by Henderson. Doing so would quantify the high electrolyte conductivity desired in the art that Dyer describes with respect to the solid crystalline material disclosed.
Response to Arguments
Response – Comments Regarding Advisory Action
On pages 2-3 of the Remarks filed October 9th, 2025, applicant argues that the finite number of solutions with respect to an “obvious to try rationale” applies when the solutions are number which is “small or easily traversed.” Therefore, applicant arguments that the solutions presented by Dyer which are encompassed by Formula I of Dyer represent nearly 2,000 compounds as noted in applicant’s previous response are not small nor easily traversed. Applicant therefore argues Dyer does not establish a prima facie case of obviousness and thus the rejection of claim 1 and all dependent claims should be withdrawn.
Applicant's arguments filed October 9th, 2025 have been fully considered but they are not persuasive.
In response to applicant’s arguments, the Examiner submits a proper obviousness rejection was set forth in the Office action mailed July 16th, 2025 as the prior art renders obviousness and teaches each required component of the instant claims. Each specific component of claimed compounds is discussed and addressed in the rejection. Applicant sets forth a chemical formula which encompasses a large number of compounds where each variable is selected from many defined possibilities. Applicant does not claim merely a single species, but a large number of compounds according to Formula I. Similarly, Dyer sets forth a chemical structural formula with disclosed and defined variable groups is analogous art. Just as applicant sets forth that one of ordinary skill in the art could form compounds from a disclosed, broadly defined chemical formula including compounds not expressly set forth as example compounds, the Office submits one of the same skill in the art would know how to make compounds from a chemical structural formula teaching in Dyer.
Additionally, the Examiner presents that instant chemical Formula I of the disclosure actually encompasses a larger number of chemical compounds than the chemical compounds encompassed by Formula I of Dyer. As discussed above, Dyer teaches each variable represented by Formula I of the prior art may be represented by a group of 5-10 atoms, while the definitions of the variables of the instant claim’s Formula I are defined by oxidation numbers, which encompassed a larger group of atoms for instant M, N, and Q.
Further, the Examiner presents, “There is no absolute correlation between the size of the prior art genus and a conclusion of obviousness. See, e.g., Baird, 16 F.3d at 383, 29 USPQ2d at 1552.” Also, “The fact that many groups are disclosed would not have made any of them less obvious. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841 (CCPA 1964).”
Finally, in response to applicant’s arguments that the nearly 2,000 crystalline compounds represented by Dyer are not small nor easily traversed, the Examiner presents that applicant’s calculations (filed September 16th, 2025) referred to in this argument are incorrect. Applicant presents 1/1,960 as the fraction of compounds of Dyer which read on the instant claimed formula. However, in fact multiple of the nearly 2,000 compounds taught by Dyer overlap with the formula of the instant claim. For example, more than one of the elements represented by the placeholder D of Dyer (corresponding to instant placeholder N in instant Formula I) have a +4 oxidation state. Therefore, in determining the traversal of elements D of Dyer which meet the limitation of the placeholder N of the instant formula (elements with +4 oxidation state), one of ordinary skill in the art would find greater than 1 of the 14 elements suitable, which is incorrectly represented in applicant’s arguments as a 1/14 traversal. In other words, one of ordinary skill in the art may more easily traverse the group of compounds represented by Dyer than indicated by applicant, as more than 1 of the nearly 2000 compounds (as argued by applicant) meet the criteria of the Formula I of the instant claim. Thus, the ordinary artisan need not traverse all 2000 compounds in order to encounter a compound of Dyer which reads on the instant claimed limitations and establish a prima facie case of obviousness.
Conclusion
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/O.A.J./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789