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 .
Election/Restrictions
Newly submitted claims 57-60 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 57 is a materially different process than claim 1. Claim 57 requires “at least one precursor comprising Li2CO3, Li2SO4, or LiOH”, which is not required in the claim 1, and Claim 1 requires “wherein the carrier gas comprises H2S”, which is not required in claim 57.
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 Accordingly, claim 57-60 withdrawn from consideration as being directed to a non-elected invention.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 § 112
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 24-33 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 24-33 are new matter because the XRD patterns of the materials referenced in claim 24-33 are obtained by process that do not comprise H2S in the carrier gas.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 23, and 27-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 23, the phrase “visually appears substantially similar to the solid-state electrolyte in Fig. 2B” is indefinite as to scope. It is unclear if the claim requires that the claimed material appears similar to the material represented by Fig. 2B or merely an image of the material appears similar to the image shown in Fig. 2B. The claim does not require any particular material composition. Also, the materials are quite small so the appears would depend on the instrument evaluating the appearance of the material, which is not specified by the claims.
Each of claims 23-29, requires a solid-state electrolyte having a XRD or EDS spectrum as shown by a figure representing two different compounds. Each is unclear which compound is required in the claim.
Response to Arguments
Applicant's arguments filed 6/3/2026 have been fully considered but they are not persuasive. Applicant has overcome the indefiniteness rejections for claims 24, and 29-33. Applicant argues that the newly amended claims 23 and claims 25-28 are definite under the understanding of the person having ordinary skill in the art. However, claims 23 and claims 25-28 remain indefinite according to the reasons recited in the 112(b) rejections above.
Allowable Subject Matter
Claims 1-4, 8-10, 12-16, 18, 20-22, 24,34-37, and 56.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach or suggest the cumulative features of claims 1 and 56 with particular attentions given to the feature of “wherein the carrier gas comprises H2S” as argued by applicant in the response of 6/3/2026 (Pages 10-12).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kercher US 2021/0032117 teaches a process of making a solid-state electrolyte (Abstract). The process includes preparing a precursor by mixing (Paragraph [0013]). The precursors are them subject to plasma processing by exciting a plasma gas in the presence of an excitation source (Abstract).
Mohanty US 2010/0323118 teaches a process of making a solid-state electrolyte (Abstract). The process includes preparing a precursor by mixing (Paragraph [0063]). The precursors are them subject to plasma processing by exciting a plasma gas in the presence of an excitation source (Paragraph [0055]).
Conclusion
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 JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731
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