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 and Note Regarding Paragraph Numbers
The response and supplemental response filed 21 and 23 January 2026, respectively, have been entered. Claims 1–17 are pending. Note that the paragraph numbers cited in this Office Action in reference to the Instant Application are referring to the paragraph numbering of the PGPub of the Instant Application. See US 2023/0178794 A1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1–17 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchida et al. (US 2014/0287324 A1) in view of Sato et al. (US 2017/0155170A1) and Osada et al. (US 2019/0356017 A1), as evidenced by Cao et al. (Cao, C.; Li, Z.-B.; Wang, X.-L.; Zhao, X.-B.; Han, W.-Q. Recent advances in inorganic solid electrolytes for lithium batteries, Front. Energy Res. 2, article 25, published 27 June 2014) and Fukasawa et al. (US 2017/0092942 A1).
Regarding Claims 1, 2, 6–10, and 17, Tsuchida discloses an electrode composite material (see electrolyte-coated cathode active material particles 10, [0036], FIG. 1) comprising a sulfide solid electrolyte (see sulfide solid electrolyte layer 2, [0036], FIG. 1) and an electrode active material (see cathode active material particles 1 which include a lithium ion conductive oxide layer 3, [0036], FIG. 1).
Tsuchida does not explicitly disclose the electrode composite material having an electron conductivity parameter X represented by the following expression (1) satisfying 0.30 ≤ X ≤ 2.10:
X = Σ(C) / 10^[{LogΣ(A) − LogΣ(SE)}α + LogΣ(SE)] (1)
wherein
Σ(C): the electron conductivity of the electrode composite material,
Σ(A): the electron conductivity of the electrode active material,
Σ(SE): the electron conductivity of the sulfide solid electrolyte, and
α: the fraction of the electrode active material (Claim 1);
wherein the electrode composite material has a value A in a range of 0.55 < A < 5.0, assuming that in elemental analysis by energy dispersive X-ray spectroscopy of an electron micrograph, an overlap area ratio of a mapping of the elements constituting the sulfide solid electrolyte with respect to a mapping of the elements calculated by discriminant analysis method is shown by A×(1−α)/α (wherein α represents a fraction of the electrode active material) (Claim 2);
wherein the fraction α of the electrode active material is 0.6 or more and 0.99 or less (Claim 6);
wherein the electron conductivity Σ(C) of the electrode composite material is 1.0×10−6 S/cm or more (Claim 7);
wherein the electron conductivity Σ(A) of the electrode active material is 1.0×10−5 S/cm or more (Claim 8);
wherein the electron conductivity Σ(SE) of the sulfide solid electrolyte is 1.0×10−7 S/cm or less (Claim 9);
the electron conductivity parameter C is calculated assuming that the electron conductivity Σ(SE) of the sulfide solid electrolyte is 1.0 × 10−8 S/cm (Claim 10); and
wherein the sulfide solid electrolyte has a full width at half maximum peak including a background in 2θ = 10 to 40° in X-ray diffractometry using CuKα radiation of Δ2θ = 0.75° or less (Claim 17).
However, it is submitted that such limitations are simply measurements of, and thus descriptions of, inherent properties of the Instant electrode composite material.
Specifically, regarding Claim 1, Applicant discloses that the electron conductivity parameter X can be easily regulated to the range of 0.30 ≤ X ≤ 2.10 when:
the electron conductivity Σ(SE) of the sulfide solid electrolyte is within a range of 1.0×10−7 S/cm to 1.0×10−10 S/cm (Instant App [0074]);
the sulfide solid electrolyte has a good crystallinity such that it has a full width at half maximum peak including a background in 2θ = 10 to 40° in X-ray diffractometry using CuKα radiation of Δ2θ = 0.75° or less (Instant App [0107]);
the volume based average particle diameter of the sulfide solid electrolyte is 3 µm or more and the specific surface area (BET method) is 20 m2/g or more (Instant App [0097])
the electron conductivity Σ(A) of the electrode active material is within a range of 1.0×10−6 S/cm to 1.0×10−1 S/cm (Instant App [0078]);
the fraction α of the electrode active material with respect to the total amount of the sulfide solid electrolyte and the electrode active material contained in the electrode composite material is within a range of 0.4 to 0.995, and more preferably 0.6 to 0.99 (Instant App [0079]);
the electron conductivity Σ(C) of the electrode composite material is within a range of 1.0×10−6 S/cm to 1.0×10−1 S/cm (Instant App [0080]); and
the overlap ratio of the mapping of the elements constituting the sulfide solid electrolyte with respect to the mapping of the elements constituting the electrode active material is within a range of 0.060 to 0.80 (Instant App [0083]).
Applicant further discloses (Instant App [0089]) that regulation of the electron conductivity parameter X can be regulated by the kinds of the sulfide solid electrolyte and the electrode active material contained in the electrode composite material, i.e. the electron conductivities corresponding to the kinds thereof, and the configurations thereof, such as the mixing ratio.
Applicant also discloses for instance Example 1 (Instant App [0304]–[0334], Table 1) wherein the electron conductivity parameter X is equal to 1.18. It can be reasonably interpreted, given the above, that the electron conductivity parameter X of Example 1 lies within the claimed range of 0.30 ≤ X ≤ 2.10 because of the following:
the electron conductivity Σ(SE) of the sulfide solid electrolyte is 2.08×10−9 S/cm (Instant App Table 1);
the sulfide solid electrolyte is a crystalline sulfide solid electrolyte containing a thio-LISICON Region II-type crystal structure (Instant App [0321]), displays a full width half maximum peak including a background in 2θ = 10 to 40° in X-ray diffractometry using CuKα radiation of Δ2θ = 0.59 (Instant App [0324]), and contains a lithium element, a sulfur element, a phosphorus element, and halogen elements (Br and I) (Instant App [0319]);
the volume based average particle diameter of the sulfide solid electrolyte is 7.5 µm and the specific surface area (BET method) is 33 m2/g (Instant App [0324]);
the electron conductivity Σ(A) of the electrode active material is 2.45×10−2 S/cm (Instant App Table 1) and includes LiNi0.8Co0.15Al0.05O2 having formed thereon a coating layer of LTO (Li4Ti5O12) (Instant App [0300]–[0303]);
the fraction α of the electrode active material with respect to the total amount of the sulfide solid electrolyte and the electrode active material contained in the electrode composite material is 0.9 (Instant App Table 1);
the electron conductivity Σ(C) of the electrode composite material is 5.70×10−3 S/cm (Instant App Table 1); and
the overlap ratio of the mapping of the elements constituting the sulfide solid electrolyte with respect to the mapping of the elements constituting the electrode active material is 0.45 (Instant App Table 1).
In comparison, Tsuchida discloses:
wherein the sulfide solid electrolyte contains a lithium element, a sulfur element, a phosphorus element, and halogen elements (for lithium, sulfur, and phosphorus elements, see Tsuchida [0053]; for halogen elements, see Tsuchida [0057]); and
wherein the electrode active material contains an oxide-based positive electrode material LixMyOz (in which M represents a transition metal element, and preferably at least one of Ni or Co; x = 0.02 to 2.2; y = 1 to 2; and z = 1.4 to 4) (Tsuchida [0068]) having formed thereon a coating layer of a lithium ion conductive oxide such as Li4Ti5O12 (Tsuchida [0073]–[0074]).
Tsuchida does not disclose wherein the sulfide solid electrolyte is a crystalline sulfide solid electrolyte containing a thio-LISICON Region II-type crystal structure.
Sato teaches (Sato [0022]) a sulfide solid electrolyte containing a lithium element, a sulfur element, a phosphorus element, and one or more halogen elements. Sato further teaches (Sato [0020]–[0024]) that the sulfide solid electrolyte can be a crystalline sulfide solid electrolyte containing a thio-LISICON Region II-type crystal structure having peaks at 2θ = 20.1°, 23.9°, and 29.5° in X-ray diffractometry using a CuKα ray. It is well-known in the field of solid electrolytes that solid electrolytes with thio-LISICON crystal structures can achieve high ionic conductivity and have mechanical properties suited for all-solid-state batteries, as evidenced by Cao (p. 3 ¶ “Since the radius…” and “A series of…”).
Tsuchida and Sato are analogous to the claimed invention as they are in the same field of solid sulfide electrolytes. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrode composite material of Tsuchida such that the solid sulfide electrolyte is the solid sulfide electrolyte of Sato which contains a sulfur element, a phosphorus element, and one or more halogen elements, and further contains a thio-LISICON Region II-type crystal structure (thus the sulfide solid electrolyte can be considered to have good crystallinity) displaying peaks at 2θ = 20.1°, 23.9°, and 29.5° in X-ray diffractometry using a CuKα ray, as it is well-known in the field that solid electrolytes with thio-LISICON crystal structures and can achieve high ionic conductivity and have mechanical properties suited for all-solid-state batteries.
In light of the above modification, modified Tsuchida further discloses (Sato [0119]) wherein the volume based average particle diameter of the sulfide solid electrolyte is within a range of 0.1 µm to 50 µm. Note that this disclosed range overlaps with the desired range of 3 µm or more, and includes the value for the volume based average particle diameter of the sulfide solid electrolyte of Example 1 of the Instant Application of 7.5 µm.
Modified Tsuchida does not disclose the specific surface area of the sulfide solid electrolyte.
Osada teaches a sulfide solid electrolyte (see sulfide-based solid electrolyte, Osada [0019]) which can comprise a lithium element, a sulfur element, a phosphorus element, and halogen elements (Osada [0033]), and which can be utilized in an electrode layer (Osada [0022]). Osada further teaches (Osada [0077]) that the specific surface area (BET method) of the sulfide solid electrolyte should range from 10 m2/g to 35 m2/g in order to achieve a suitable balance of ion conductivity and heat generation. Note that this disclosed range overlaps with the desired range of 20 m2/g or more, and includes the value for the specific surface area of the solid electrolyte of Example 1 of the Instant Application of 33 m2/g.
Osada is analogous to the claimed invention as it is in the same field of sulfide solid electrolytes. A person of ordinary skill in the art prior to the effective filing date of the claimed invention would have thus found it obvious to select the overlapping portions of the ranges for the specific surface area of the sulfide solid electrolyte with a reasonable expectation that such selection would successfully result in an electrode composite material which achieves a suitable balance of ion conductivity and heat generation.
Modified Tsuchida does not explicitly disclose the fraction α of the electrode active material with respect to the total amount of the sulfide solid electrolyte and the electrode active material contained in the electrode composite material, but does disclose that the content of the cathode active material in the mixture for producing the electrode composite material (which could additionally contain at least one of a binder or conduction aid (Tsuchida [0157])) preferably ranges from 20% by mass to 99% by mass (Tsuchida [0159]), and the content of the sulfide solid electrolyte in the mixture for producing the electrode composite material preferably ranges from 1% by mass to 80% by mass (Tsuchida [0164]). Tsuchida further discloses (Tsuchida [0164]) that if the content of the sulfide solid electrolyte in the electrode composite material is too high in comparison to the content of electrode active material, the layer thickness of the sulfide solid electrolyte becomes too thick and/or there is a portion of the sulfide solid electrolyte not coating the electrode active material, resulting in less dense packing of the electrode active material and a decrease in discharge capacity; furthermore, Tsuchida discloses (Tsuchida [0164]) that if the content of sulfide solid electrolyte in the electrode composite material is too low in comparison to the content of electrode active material, the coating layer may not be sufficiently formed on the surface of the electrode active material, and the lithium ion conductivity may decrease.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the fraction α of the electrode active material with respect to the total amount of the sulfide solid electrolyte and the electrode active material contained in the electrode composite material is a variable that achieves the recognized result of affecting the density of the packing of the electrode active material and therefore the discharge capacity, and the extent that the coating layer is formed on the surface of the electrode active material and therefore the lithium ion conductivity, as disclosed by Tsuchida, thus making the fraction α a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrode composite material of modified Tsuchida such that the fraction α of the electrode active material with respect to the total amount of the sulfide solid electrolyte and the electrode active material contained in the electrode composite material is within a range of 0.6 to 0.99, and more specifically is 0.90, via routine experimentation, for the purpose of achieving a suitable discharge capacity as a result of the density of the packing of the electrode active material, and a suitable lithium ion conductivity as a result of the extent of coating layer formed on the surface of the electrode active material.
Finally, regarding the parameters Σ(C) and the overlap ratio, which as described above are disclosed by the Applicant to contribute to the regulation of the electron conductivity parameter X, Applicant discloses (Instant App [0072]) that expression (1) is a ratio of the actual measured value of Σ(C) to the theoretical value Σ(C), and deviates from 1 due to the fact that the actual measured value of Σ(C) is affected by the dispersion state of the sulfide solid electrolyte covering the surface of the electrode active material and the contact state of the sulfide solid electrolyte on the surface of the electrode active material. In turn, Applicant discloses that the dispersion state and/or the contact state are enhanced when:
the electron conductivity Σ(A) of the electrode active material falls within the same range as above, i.e. 1.0×10−6 S/cm to 1.0×10−1 S/cm (Instant App [0078]);
the value A, calculated from the equation: overlap area ratio = A×(1–α)/α, is within a range of 0.55 < A < 5.0 (Instant App [0087]) (note that α refers to the fraction α described above);
the volume based average particle diameter of the sulfide solid electrolyte is 3 µm or more and the specific surface area (BET method) is 20 m2/g or more (Instant App [0097]);
the sulfide solid electrolyte has a good crystallinity such that it has a full width at half maximum peak including a background in 2θ = 10 to 40° in X-ray diffractometry using CuKα radiation of Δ2θ = 0.75° or less (Instant App [0107]);
the sulfide solid electrolyte is mechanically treated (Instant App [0267]); and
the coverage of the coating layer on a basis of a surface area of the electrode active material is preferably 90% or more, and even more preferably the electrode active material is entirely coated with the sulfide solid electrolyte (Instant App [0124]).
Applicant goes on to disclose that the overlap ratio can be considered an index of the contact state of the electrode active material and the sulfide solid electrolyte (Instant App [0082]). One of ordinary skill in the art can therefore reasonably assume that the overlap ratio will fall within the desired range of 0.060 to 0.80 (Instant App [0083]) when the dispersion state and contact state are enhanced as described above.
The disclosure of (modified) Tsuchida regarding the electron conductivity Σ(A) of the electrode active material, the fraction α, the volume based average particle diameter and the specific surface area of the sulfide solid electrolyte, and the crystallinity of the sulfide solid electrolyte has already been addressed above.
Modified Tsuchida does not explicitly disclose a step of mechanically treating the sulfide solid electrolyte prior to mixing the sulfide solid electrolyte with the electrode active material to form the electrode composite material, though modified Tsuchida does disclose that the mixing step includes pulverization, i.e. mechanical treatment (see below). However, it is a well-known practice in the field of secondary batteries capable of cycling lithium to mechanically treat solid battery components in order to adjust properties such as particle size and specific surface area, as evidenced by Fukasawa (Fukasawa [0060] and [0070]).
It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrode composite material of modified Tsuchida such that the sulfide solid electrolyte is a mechanically treated material, for the purpose of adjusting properties such as particle size and specific surface area, as mechanically treating solid battery components to adjust properties such as particle size and specific surface area is a well-known practice in the field.
Tsuchida further discloses (Tsuchida [0059]) that the coverage of the sulfide solid electrolyte on a basis of a surface area of the electrode active material is preferably 70% or more, and particularly preferably the electrode active material is entirely coated with the sulfide solid electrolyte. Note that this disclosed range overlaps with the desired range of 90% or more. Note that Tsuchida discloses mixing of the sulfide solid electrolyte and the electrode active material to form the electrode composite material by pulverization, for example via ball milling (Tsuchida [0171]), which is likewise disclosed by Applicant as an appropriate method for mixing (Instant App [0289]).
In light of the above, one of ordinary skill in the art would reasonably expect that the dispersion state and contact state of the electrode composite material of modified Tsuchida is sufficiently enhanced such that the overlap ratio falls within the desired range of 0.060 to 0.80, and as such that the value A will fall within the desired range of 0.55 < A < 5.0.
MPEP § 2112.01.I states that 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.
It is submitted that the electrode composite material of modified Tsuchida is substantially identical to the electrode composite material of the Instant Application, and specifically the electrode composite material of Example 1 of the Instant Application, as set forth above, such that it would possess the same properties, exhibit the same results, and satisfy the claimed limitations, i.e. have an electron conductivity parameter X represented by the following expression (1) satisfying 0.30 ≤ X ≤ 2.10:
X = Σ(C) / 10^[{LogΣ(A) − LogΣ(SE)}α + LogΣ(SE)] (1)
wherein
Σ(C): the electron conductivity of the electrode composite material,
Σ(A): the electron conductivity of the electrode active material,
Σ(SE): the electron conductivity of the sulfide solid electrolyte, and
α: the fraction of the electrode active material (Claim 1).
Assuming, arguendo, that the property recited in the claimed limitation is not satisfied, as there is no evidence on the record that any differences between the instantly claimed electrode composite material and that of modified Tsuchida are critical, and as the conditions of the prior art significantly overlap the relevant conditions disclosed in the Instant Specification, it is submitted that prior to the effective filing date, one having ordinary skill in the art would have found the electrode composite material of modified Tsuchida and that of the Instant Application to be obvious variants of one another.
Specifically, regarding Claims 2, 6–10, and 17, it is further submitted that the electrode composite material of modified Tsuchida is substantially identical to the electrode composite material of the Instant Application, and specifically the electrode composite material of Example 1 of the Instant Application, as set forth above, such that it would possess the same properties, exhibit the same results, and satisfy the claimed limitations, i.e. wherein:
a value A in a range of 0.55 < A < 5.0, assuming that in elemental analysis by energy dispersive X-ray spectroscopy of an electron micrograph, an overlap area ratio of a mapping of the elements constituting the sulfide solid electrolyte with respect to a mapping of the elements calculated by discriminant analysis method is shown by A×(1−α)/α (wherein α represents a fraction of the electrode active material) (Claim 2);
the fraction α of the electrode active material is 0.6 or more and 0.99 or less (Claim 6);
the electron conductivity Σ(C) of the electrode composite material is 1.0×10−6 S/cm or more (Claim 7);
the electron conductivity Σ(A) of the electrode active material is 1.0×10−5 S/cm or more (Claim 8);
the electron conductivity Σ(SE) of the sulfide solid electrolyte is 1.0×10−7 S/cm or less (Claim 9);
the electron conductivity parameter C is calculated assuming that the electron conductivity Σ(SE) of the sulfide solid electrolyte is 1.0 × 10−8 S/cm (Claim 10); and
the sulfide solid electrolyte has a full width at half maximum peak including a background in 2θ = 10 to 40° in X-ray diffractometry using CuKα radiation of Δ2θ = 0.75° or less (Claim 17).
Assuming, arguendo, that the properties recited in the claimed limitation are not satisfied, as there is no evidence on the record that any differences between the instantly claimed electrode composite material and that of modified Tsuchida are critical, and as the conditions of the prior art significantly overlap the relevant conditions disclosed in the Instant Specification, it is submitted that prior to the effective filing date, one having ordinary skill in the art would have found the electrode composite material of modified Tsuchida and that of the Instant Application to be obvious variants of one another.
Regarding Claim 3, modified Tsuchida discloses the electrode composite material of Claim 1. As set forth in the rejection of Claim 1 above, modified Tsuchida further discloses wherein elements constituting the electrode active material include a transition metal (Tsuchida [0068], [0074]), and elements constituting the sulfide solid electrolyte include a phosphorus element (Sato [0022]).
Regarding Claim 4, modified Tsuchida discloses the electrode composite material of Claim 1. As set forth in the rejection of Claim 1 above, modified Tsuchida further discloses wherein elements constituting the electrode active material include a cobalt element, a nickel element, and a titanium element (Tsuchida [0068], [0074]).
Regarding Claim 5, modified Tsuchida discloses the electrode composite material of Claim 1. As set forth in the rejection of Claim 1 above, modified Tsuchida further discloses wherein the electrode active material is an oxide-based positive electrode material (Tsuchida [0068]).
Regarding Claims 11 and 12, modified Tsuchida discloses the electrode composite material of Claim 1. As set forth in the rejection of Claim 1 above, modified Tsuchida further discloses wherein the sulfide solid electrolyte contains a lithium element, a sulfur element, a phosphorus element, and a halogen element (Sato [0022]).
Regarding Claim 13, modified Tsuchida discloses the electrode composite material of Claim 1. As set forth in the rejection of Claim 1 above, modified Tsuchida further discloses wherein the sulfide solid electrolyte is a crystalline sulfide solid electrolyte (Sato [0020]–[0024]).
Regarding Claim 14, modified Tsuchida discloses the electrode composite material of Claim 1. As set forth in the rejection of Claim 1 above, modified Tsuchida further discloses wherein the sulfide solid electrolyte contains a thio-LISICON Region II-type crystal structure (Sato [0023]).
Regarding Claim 15, modified Tsuchida discloses the electrode composite material of Claim 1. As set forth in the rejection of Claim 1 above, modified Tsuchida further discloses wherein the sulfide solid electrolyte is a crystalline sulfide solid electrolyte having a volume based average particle diameter measured by a laser diffraction particle size distribution measuring method of 3 µm or more (Sato [0119]) and a specific surface area measured by a BET method of 20 m2/g or more (Osada [0077]).
Regarding Claim 16, modified Tsuchida discloses the electrode composite material of Claim 1. As set forth in the rejection of Claim 1 above, modified Tsuchida further discloses wherein the sulfide solid electrolyte is a mechanically treated material (Fukasawa [0060] and [0070]).
Response to Arguments
Applicant’s arguments in the Remarks filed 23 January 2026 regarding the 35 U.S.C. § 103 Rejection of Claims 1–17 in the non-final office action mailed 21 August 2025 have been fully considered but they are not persuasive.
Applicant states on p. 4–5 of Remarks that primary reference Tsuchida alone does not disclose a material that necessarily has a parameter X value as required in claim 1, but that as asserted by the examiners during the interview, the OA does not rely on any material of Tsuchida as having parameter X of claim 1 but instead relies on modified Tsuchida as having such a parameter. This is indeed the case.
Applicant argues on p. 5 of Remarks that the rejection of record does not identify a specific composite material suggested by the cited references that could be evaluated to determine whether the values of parameter X required in claim 1 are satisfied, nor an explanation of what the electron conductivity of an electrode composite material according to modified Tsuchida would be. This argument is not persuasive. As set forth in the rejection, Applicant discloses in the instant specification the conditions which can be satisfied in order to “easily regulate” the claimed parameter X to within the claimed range, as well as the factors which affect other claimed parameters (Σ(C), A, etc.). In response, the examiner has set forth in the rejection how the prior art, i.e. modified Tsuchida, discloses an electrode composite material which satisfies those conditions and thus, as set forth in the instant specification, would be expected to exhibit parameters within the claimed ranges.
Applicant goes on to argue on p. 5–7 of Remarks that modified Tsuchida does not identify a specific material, and thus that it is impossible to assess whether such a specific material does or does not have a parameter X of 0.30 to 2.10 or whether such a specific material is or is not suggested by the cited references, specifically arguing:
The rejection of record does not identify a specific electrode active material from Tsuchida, but rather a genus of materials as set forth in the rejection (p. 5), and there is no explanation as what the electron conductivity would be;
The rejection of record does not identify a specific solid electrolyte material from Sato (or an electron conductivity of such material) or the amount of sulfide solid electrolyte material that should be used in a composite material (p. 6);
The rejection of record does not specify a specific value of α for any particular combination of materials, and there is no explanation for why optimizing for e.g. density would result in a value of α in the range of 0.6 to 0.99.
This argument is not persuasive. Firstly, as set forth in the rejection, modified Tsuchida discloses an oxide-based electrode active material which can have the same composition as that of a disclosed example with suitable electron conductivity. As such, it can be understood that modified Tsuchida indeed discloses an electrode active material which would satisfy the necessary conditions. Secondly, as set forth in the rejection, modified Tsuchida discloses a solid electrolyte material which can have the same elemental composition and thio-LISICON Region II-type crystal structure as that of a disclosed example with suitable electron conductivity. As such, it can be understood that modified Tsuchida indeed discloses a solid electrolyte which would satisfy the necessary conditions. Thirdly, as set forth in the rejection, it can be understood from the disclosure of Tsuchida that α is a result-effective variable, and therefore that it would be obvious to optimize α to lie within a specified range via routine optimization. Thus, it is not necessary for the rejection of record to specify a specific value of α for the composite material of modified Tsuchida.
Applicant argues on p. 7 of Remarks that if some encompassed composite materials have the required parameter X and some do not, this is fatal to the assertion of inherency. This argument is not persuasive because as stated above, the rejection of record sets out how modified Tsuchida discloses a composite material that satisfies the conditions for “easily regulating” parameter X within the claimed range which are set forth in the instant specification, and therefore it can be understood that the parameter X of the composite material of modified Tsuchida lies within the claimed range.
Applicant argues on p. 7 of Remarks that close examination of Tsuchida undermines any assertion that Tsuchida (alone or in combination) would have rendered obvious the composite material of claim 1, specifically arguing:
Examples 1 and 2 of Tsuchida present composite materials wherein the electrolyte thickly exists around the active material, as in comparative example 2 of the present application, which exhibits a parameter X less than 0.30 and therefore outside the claimed range; and a skilled artisan would not have been led to adjust the mass ratio and particle size of the cathode active material and the sulfide solid electrolyte of Tsuchida in a manner that would result in a value of parameter X as required by claim 1, even in light of the secondary references;
Examples 1 and 2 of Tsuchida disclose that 12.03 mg, 5.03 mg, and 5.03 g of cathode active material, sulfide solid electrolyte, and conductive additive VGCF, respectively, are used, and therefore because nearly the entire content of the cathode composite materials of the example of Tsuchida is VGCF, the electronic conductivity of the composite material would be essentially that of VGCF and the parameter X would be well outside the claimed range.
This argument is not persuasive. Firstly, as set forth in the rejection, modified Tsuchida (Sato) discloses sulfide solid electrolyte with an average particle diameter of 1 µm to 50 µm which substantially overlaps with the claimed range of 3 µm or more; thus a skilled artisan would have considered it obvious to select a value in the overlapping portions of the ranges. As also set forth in the rejection, a skilled artisan would have found it obvious to adjust the mass ratio to within the specified range, as it can be understood from the disclosure of Tsuchida that α is a result-effective variable which is obvious to optimize via routine experimentation. Secondly, a person of ordinary skill in the art will understand that the masses listed for Examples 1 and 2 contain a typographical error, and that each of the listed masses should have the same units, e.g. should read 12.03 mg, 5.03 mg, and 5.03 mg, because (1) a person of ordinary skill in the art will understand that a composite active material containing 400+ times the amount of conductive additive compared to electrode active material would not be operational, and (2) because this would result in the composite material comprising: 0.24%, 0.10%, and 99.66% by mass of cathode active material, sulfide solid electrolyte, and VGCF, respectively, as calculated by the examiner, which would fall far outside the preferred mass% ranges disclosed by Tsuchida of 20 to 90 mass% of cathode active material ([0127], [0159]), 10% to 80 mass% of sulfide solid electrolyte ([0164]), and 0.1 to 20 mass% of conduction aid and binding material together ([0092]). In contrast, in the case that the composite were instead to include 12.03 mg, 5.03 mg, and 5.03 mg, of cathode active material, sulfide solid electrolyte, and VGCF, respectively, i.e. be corrected for the typo, the composite material would comprise: 54.46% cathode active material, 22.77% of sulfide solid electrolyte, and 22.77% of VGCF by mass as calculated by the examiner, which would fall well within the preferred mass% ranges of Tsuchida.
Applicant argues on p. 8–9 of Remarks that the examples and comparative examples of the instant specification demonstrate that composite materials having the combination of features in claim 1 provide unexpected, superior results, specifically referencing FIG. 9 of the instant specification and pointing to the fact that the comparative example 1 does not function as a battery after the fifth cycle, with examples 1 and 2 of the instant specification being clearly superior. This argument is not persuasive. Firstly, the instant specification does not describe the results as unexpected, and thus a showing of unexpected results must be in an affidavit or declaration. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the Examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961). In other words, the evidence of unexpected results must be compared with prior art. See MPEP § 716.02(e). Furthermore, as per the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP § 716.02(b). In the instant case, Applicant has not provided any analysis to show that the differences in performance between the examples and comparative example as shown in FIG. 9 are statistically unexpected and unobvious. Finally, to establish advantageous results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (see MPEP § 716.02(d).II). In the instant case, for example, Applicant has not provided any examples with parameter X values (using measured value) in the range of 0.3 ≤ X < 0.96 (see Table 1 of the instant specification), which represents almost one-third of the claimed range of 0.3 to 2.1.
Conclusion
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 JULIA MARIE FEHR, Ph.D. whose telephone number is (571)270-0860. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM 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, BASIA RIDLEY can be reached at (571)272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725
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