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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6-26-2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of a battery comprising: A) a negative electrode comprising a carbon electrode material and an alkali-ion conductive solid electrolyte comprising a NASICON comprising Na3Zr2Si2PO12 and further comprising a conductive agent AND B) a solid electrolyte layer comprising Na3Zr2Si2PO12 in the replies filed on 8-7-2025 and 10-3-2025 are acknowledged.
Claims 3, 6 and 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8-7-2025 and 10-3-2025 are acknowledged. Claims 3 and 9 have now been withdrawn because the materials claimed are oxides and not NASICON type materials. NASICON is not a simple oxide as claimed in claim 9. NASICON is a mixed-anion compound because it contains both oxygen and phosphorus (or sometimes silicon) in its structure. The general formula shows that the oxygen content is fixed in the stoichiometry, but the other anions (P and/or Si) vary depending on the composition. This makes NASICON a mixed-anion ceramic. oxide. Claim 6 is withdrawn because the claim claims that the carbon electrode material has a core shell structure which is not the elected species. Claim 8 is withdrawn because the solid material claimed is in a different distinct class of material from a NASICON solid electrolyte material. Note: Claim 7 has now been examined because the species chosen was a NASICON comprising Na3Zr2Si2PO12.
Claims 17-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8-7-2025. 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 1-2, 10 and 12-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an alkali-ion conductive electrolyte comprising NASICON crystals [the elected species] having the formula Na1+xZr2P3-xSixO12 where 0 < x < 3, Na3Zr1.6Tio.4Si2PO12 , Na3Zr1.88Y0.12Si2PO12, Na3Hf2Si2PO12, Na3.4Zro.9Hf1.4Alo.6Si1.2P1.8012, Na3Zr1.7Nbo.24Si2PO12, Na3.12Zr1.88Yo.12Si2PO12, Na3.6Zr0.13Yb1.67Sio.11P2.9012 and Na3.12Zr1.88Y0.12Si2PO12, does not reasonably provide enablement for any alkali-ion conductive solid electrolyte as claimed in claim 1 or has sodium-ion conductivity claimed in claim 2. The specification does 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.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
The breadth of the claims [any alkali-ion conductive solid electrolyte];
The nature of the invention [an alkali-ion conductive solid electrolyte material in a mixture including a carbon electrode material];
The state of the prior art;
The level of one of ordinary skill;
The level of predictability in the art;
The amount of direction provided by the inventor [alkali-ion conductive electrolyte comprising NASICON crystals having the formula Na1+xZr2P3-xSixO12 where 0 < x < 3, Na3Zr1.6Tio.4Si2PO12 , Na3Zr1.88Y0.12Si2PO12, Na3Hf2Si2PO12, Na3.4Zro.9Hf1.4Alo.6Si1.2P1.8012, Na3Zr1.7Nbo.24Si2PO12, Na3.12Zr1.88Yo.12Si2PO12, Na3.6Zr0.13Yb1.67Sio.11P2.9012 and Na3.12Zr1.88Y0.12Si2PO12];
The existence of working examples [using specific alkali-ion conductive solid electrolyte material]; and
The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claim(s) encompasses any alkali-ion conductive solid electrolyte. The specification discloses sufficient information for one of ordinary skill in the art to use the elected NASICON species crystals [the elected species] having the formula Na1+xZr2P3-xSixO12 where 0 < x < 3, Na3Zr1.6Tio.4Si2PO12 , Na3Zr1.88Y0.12Si2PO12, Na3Hf2Si2PO12, Na3.4Zro.9Hf1.4Alo.6Si1.2P1.8012, Na3Zr1.7Nbo.24Si2PO12, Na3.12Zr1.88Yo.12Si2PO12, Na3.6Zr0.13Yb1.67Sio.11P2.9012 and Na3.12Zr1.88Y0.12Si2PO12. Thus, the disclosed claimed language does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of the claim(s).
Claims 1-2, 7, 10 and 12-16 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.
Claim 1 is rejected because it is unclear because of the use of “are mixed such that” because it is unclear if the claim is now a product-by-process claim. Claim is rejected because it is unclear because of the use of “formed of particles” because it is unclear if the claim is now a product-by-process claim. Claim 1 is rejected because it is unclear what the lower range is for the mixture phase forming particles having an average particle diameter of 10 um or less. Claim 7 is rejected because the claim should cite “contains at least one compound selected from the group consisting of a first compound…AND a second compound. They way the claim is written, both the first compound and the second compound needs to be present. Claim 7 is rejected because it is unclear what is meant by “a second compound in which part of Zr in the first compound …and group III elements”. Claim 7 is rejected because it is unclear how much of the elements claimed in claim 7 are allowed to substitute away from the Zr. The amounts allowed are claimed in [0070] of the specification.
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.
Claim(s) 1, 10 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ogasa (US 2011/0177397). Ogasa teaches an all solid battery comprising a negative electrode layer and a solid electrolyte layer having lithium-ion conductivity where at least one layer of the negative electrode or the solid electrolyte includes lithium ion conductive crystals and AxByOz which is a sintering additive where A is Li and B is P or N. Ogasa teaches in [0033], a negative electrode comprising graphite powder having an average particle diameter of 3 um, a mixture of a solid electrolyte comprising lithium ion conductive glass ceramics and sintering additives comprising Li3PO4+LiNO3. Ogasa teaches in claim 5 where the lithium ion conductive crystals include Li1+x+zMx (Ge1-yTiy)2-xSizP3-zO12. Ogasa teaches the claimed invention as explained above teaching a sintered negative body electrode comprising graphite powder having an average particle size of the is 3 um but does not specifically teach that the mixture has particles having an average particle diameter of 10 um or less. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a mixture of the graphite material and the alkali-ion conductive solid electrolyte forming particles having an average particle diameter of 10 um or less, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
When Ogasa teaches the same sintered body electrode containing a carbon active material comprising graphite and an alkali ion conductive solid electrolyte, then inherently the mixture phase mixed such that the boundaries between the carbon electrode material and the alkali-ion conductive solid electrolyte cannot be recognized, the sintered body electrode being capable of absorbing and releasing alkali ions at 30°C after being thermally treated and an inert atmosphere at 500°C and being capable of being reversibly charged and discharged with a charge/discharge efficiency of 90% or more during charge and discharge at a cutoff voltage of 9V to 0.001 V must also be obtained.
In addition, the presently claimed property of the mixture phase mixed such that the boundaries between the carbon electrode material and the alkali-ion conductive solid electrolyte cannot be recognized, the sintered body electrode being capable of absorbing and releasing alkali ions at 30°C after being thermally treated and an inert atmosphere at 500°C and being capable of being reversibly charged and discharged with a charge/discharge efficiency of 90% or more during charge and discharge at a cutoff voltage of 9V to 0.001 V would have obviously been present once the Ogasa product is provided. See MPEP 2112.01,I.
Claim(s) 1, 10 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nakashima et al. (US 2020/0014071). Nakashima et al. teaches in [0283-0284], a battery comprising an anode comprising graphite powder and a solid electrolyte comprising an oxide glass comprising Li2O:SiO2:B2O3 and in [0279-0280], a solid electrolyte layer comprising an oxide glass comprising Li2O:SiO2:B2O3. Nakashima et al. teaches in Table 1, that the thickness of the solid electrolyte layer ranges from 0.5-20 um [0.005-1000 um] and the grain size of the active material is 3 um. Nakashima et al. teaches the claimed invention as explained above teaching a sintered negative body electrode comprising graphite powder having an averageparticle size of the is 3 um but does not specifically teach that the mixture has particles having an average particle diameter of 10 um or less. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a mixture of the graphite material and the alkali-ion conductive solid electrolyte forming particles having an average particle diameter of 10 um or less, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
When Nakashima et al. teaches the same sintered body electrode containing a carbon active material comprising graphite and an alkali ion conductive solid electrolyte, then inherently the mixture phase mixed such that the boundaries between the carbon electrode material and the alkali-ion conductive solid electrolyte cannot be recognized, the sintered body electrode being capable of absorbing and releasing alkali ions at 30°C after being thermally treated and an inert atmosphere at 500°C and being capable of being reversibly charged and discharged with a charge/discharge efficiency of 90% or more during charge and discharge at a cutoff voltage of 9V to 0.001 V must also be obtained.
In addition, the presently claimed property of the mixture phase mixed such that the boundaries between the carbon electrode material and the alkali-ion conductive solid electrolyte cannot be recognized, the sintered body electrode being capable of absorbing and releasing alkali ions at 30°C after being thermally treated and an inert atmosphere at 500°C and being capable of being reversibly charged and discharged with a charge/discharge efficiency of 90% or more during charge and discharge at a cutoff voltage of 9V to 0.001 V would have obviously been present once the Nakashima et al. product is provided. See MPEP 2112.01,I.
Allowable Subject Matter
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ahn et al. (WO 2019/226020) teaches in Figure 2, a negative electrode (100) comprising composite particles (110) comprising a graphite particle (113), a solid electrolyte (112) and a conductive material (111) that has been spherically shaped having a diameter 10 um or less or 7 um or more. Ahn et al. teaches Example 1, a negative electrode comprising a mixture of graphite particles having an average particle diameter of D50 = 9 um; solid electrolyte comprising Li7La3Zr2O12 and carbon black. The particle diameter of the obtained composite particle was about 15 um. Ahn et al. teaches Example 5, a negative electrode comprising a mixture of graphite particles having an average particle diameter of D50 = 9 um; solid electrolyte and carbon black. The particle diameter of the obtained composite particle was about 11 um. Ahn et al. teaches an all-solid-state battery comprising a positive electrode, the negative electrode and a solid electrolyte membrane. The solid electrolyte membrane comprises a polymer material and/or inorganic material exhibiting ion conducting properties. Ahn et al. teaches that the solid electrolyte membrane is 70 um (0.07 mm). Junichi et al. (WO 2018/131627) teaches an electrode mix for a sodium ion secondary battery comprising a sintered electrode body. Junichi et al. teaches in claim 1, a battery comprising a secondary battery comprising a sintered body comprising a mixture containing an active material powder and a sodium ion conductive solid electrolyte powder. Junichi et al. teaches in claim 4, wherein the solid electrolyte powder contains at least one selected from beta-alumina, beta”-alumina and NASICON type crystals. Junichi et al. teaches in claim 5, with the active material and the solid electrolyte powder has an average particle size of 0.1-15 µm. As seen from the figure,
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that “the mixture phase mixed such that the boundaries between the materials cannot be recognized.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723
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