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 .
Amended claims 1, 3-5, 7-13 and 16-19 are pending.
Claim Rejections - 35 USC § 112
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.
Previously presented rejection of claims 1, 3-5, 7-13 and 16-19 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, is maintained for reasons of record:
Amendments address part of the previously raised issues.
The structural identity of the starting materials and product are unclear.
With open-ended comprising language (and negative limitations), it is unclear if the solid electrolyte of lines 1, 3, 9-11 relate to starting materials or end product.. For example, it is unclear whether the ‘raw material’ which could be interpreted as the starting materials is the same are different from the end product of the claimed method. Consider for example, claim 16 which recites precursor. Is this ‘precursor electrolyte’ different from ‘the raw material electrolyte’?
Further it is unclear if the word ‘atom’ in line 10, with broadest interpretation, means the recited elements, because for example it is unclear whether Li is present in its elemental metallic state, Bromine is present in its elemental liquid state, etc..
The complexing agent is also present in ambiguous manner. First of all it is unclear what the heteroatoms are, even though one of skill in the art knows what heterocyclic compounds are. The structural identity of these compounds are unclear. Dependent claims do not solve all the problems of the base claims. As such claims 3-5, 7-13 and 16-19 are rejected as well.
Applicants arguments focus on ‘reading claims in the context of disclosure’ and ‘breadth is not-indefiniteness’.
Applicants arguments are not persuasive. Clarity with regards to what is mixed/reacted with what, in what (solvent) to provide what is absent in the claims.
Consider for example the heterocyclic compound as defined in base claim. Given that heteroatoms are not limited to the N and O as found in the working examples, would all isomeric dioxalane(s) would work to make the intended product. Given the complexing ability (of N) as in the exemplified heterocyclic compounds, vague definition for the heterocyclic compound raises, not breadth issue but situation akin to ‘impossible substitution’ problem. If a substituent is impossible, the claim can properly be rejected under 35 USC 112 paragraph 1 or 2. A compound with an impossible substituent clearly cannot be made, and hence a paragraph 1 rejection is proper. Alternatively, if it is impossible, then it is not correct.
As noted in previous action at page 5, penultimate paragraph, although claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also see, In re Zletz, 13 USPQ2d 1320, 1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Suggestion:
Roll into the base claim,
for heterocyclic compounds, roll in the limitation from claims 7-10
for the (intended) product, enter the Figures from the disclosure, instead of incomplete and negative limitations such as those in claims 11-13
for starting materials, enter specific ones disclosed in working example with complete chemical structure or art recognized nomenclature, instead of vague language in claims 16, 17
for solvent, enter specific ones disclosed in working examples with chemical structure or art recognized nomenclature, instead of vague, umbrella terms as in claims 18 and 19.
See interview summary filed 10/24/2025 and in the context of compact prosecution, consider options in MPEP 1204 Notice of Appeal [R-01.2024].
The following is from office action filed 07/30/2025.
The scope of the individual components that are mixed to make the solid electrolyte (or in the ‘raw material’) is unclear. As per the claim the solid electrolyte contains
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It is unclear if the method entails
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elemental lithium, sulfur and phosphorous and halogen and
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The complexing agent itself is recited as a heterocyclic compound. One of skill in the art would understand that the phrase ‘heterocyclic compound’ is an umbrella term that encompasses endless possibilities, as such the metes and bounds of this limitation is unclear. By definition, in the organic chemistry world, heterocyclic compound is a cyclic molecule where at least one atom in the ring is a different element (a heteroatom) than carbon, most commonly nitrogen, oxygen, or sulfur. These compounds are incredibly diverse and found in many natural products and synthetic molecules, playing vital roles in biology, medicine, and various industries.
Applicant is encouraged to place on record that the following statement as ‘conclusionary’:
In the inorganic chemistry world, P2S5 itself is a cyclic compound (having adamantane like structure.
As to the phrase ‘solid electrolyte raw material’ it is unclear if the ‘solid electrolyte’ is a single (inorganic) compound/molecule consisting of Li, S, P and halogen atoms or a mixture of compound(s) of Li plus compound(s) of S compound(s) plus compound(s) of P plus compound(s) of halogen(s).
Claim interpretation of what is mixed with what to make what product is difficult because of lack of clarity with regards to structural make-up of these. As such a comprehensive patent search cannot be made.
Clearly the method is drawn to chemical compounds; the structural identities of these can be recited/pictured unambiguously by art recognized nomenclature and/or chemical formulae.
The elected species
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is also confusing. Is ‘solid electrolyte raw material’, a combination of LiS, P2S5, LiI and LiBr? If yes, what is amount of each of these? This is not a breadth issue rather clarity issue further because, as elected two lithium halide compounds are mixed with two sulfide compounds, by the claimed electrolyte contains one each of Li, P, S and halogen atoms, while the claim recites there are one atom of each in the electrolyte.
Some examples of what the ‘solid electrolyte raw material’ and complexing agent heterocyclic compound are found in the disclosure. Examples are not explicit definitions.
Dependent claims do not solve all the problems of the base claim. As such claims 2-19 are rejected as well.
Further it is also unclear if compounds such as Li3P5O14 , Li10+δ[SnySi1–y]1+δP2−δS12 with a Li10GeP2S12-type structure in the Li3PS4–Li4SnS4–Li4SiS4 commonly used in electrolyte art are excluded solid electrolyte raw materials. See in this regard, Sun, Chem. Mater. 29, 5858–5864 (2017) and Sun, J. Power Sources 324, 798–803 (2016).
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also see, In re Zletz, 13 USPQ2d 1320, 1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
A process should at least recite a positive, active step and any process parameters necessitated by the specification so that the claim will "clearly set out and circumscribe a particular area with a reasonable degree of precision and particularity” In re Moore, 169 USPQ 236, and make it clear what subject matter the claim encompasses, as well as make clear the subject matter from others would be precluded.
THIS ACTION IS MADE FINAL. 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 NIZAL S CHANDRAKUMAR whose telephone number is (571)272-6202. The examiner can normally be reached M-F 8-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIZAL S CHANDRAKUMAR/Primary Examiner, Art Unit 1625
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