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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/20/2025 has been entered.
Response to Amendment
The amendment filed on 10/27/2025 does not place the application in condition for allowance.
The rejection of claims 1-10 under 35 U.S.C. 103 is maintained.
Response to Arguments
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive. Applicant argues the transitional phrase "consisting essentially of" excludes the addition of A2O, AX, and EO2 species on the grounds they would materially change the characteristics of the claimed invention, however applicant does not provide any support for this claim or describe what characteristics are materially changed. If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989) MPEP §2111.03.III.
Furthermore, the addition of ZrO2, CaO and/or Li2O, as cited in the rejection of claim 1, only contain elements within the scope of the claim meeting the transitional phrase requirement of consisting essentially of these elements. Regarding the examiners understanding of paragraphs [0080] and [0081] of Suzuki, paragraph [0080[ describes the electrolyte containing the above compound (A2+aE1−b+aGbXd ) AND the additional elements (A2O, AX, EO2, EX4 and GOn ) while paragraph 81 mentions the improved function between the particles due to the inclusion of the additional elements but does not define the additives as separate particles. To that point, in examples 84-88 these elements are thoroughly mixed into the solid electrolyte as additives (see mixed as additives…thereby solid electrolytes were manufactured, ¶[0154]). The claim requires a solid electrolyte material consisting essentially of particles that contain each of Li, Ca, Y, Sm, X, O, and H and does not require all the elements be present within a single molecule but rather a solid electrolyte material.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et. al. (US20220255125A1).
Regarding claims 1, 7, and 10, Suzuki discloses a solid electrolyte material consisting of the general formula A2+aE1−b+aGbXd e where A may be Li, G may be Ca, Y, and Sm and X may be F, Cl, Br and I (¶[0019]-[0020]).
Suzuki also discloses a method of heating the materials in an “inert” atmosphere (¶[0090]) and the inert atmosphere may have a dew point of -70 °C (¶[00162]). The dew point is a convenient way to measure the quantity of water in an atmosphere and indicates the temperature at which the atmosphere reaches 100% humidity/saturation of water, where a higher values equal more water present. The solid electrolyte material of Suzuki therefore contains hydrogen at greater than 0 which was formed when residual water in the atmosphere (as indicated by the dew point being present to indicate water yet lower than that of the instant application) is incorporated onto the material during the heating and cooling process as indicated by the similar conditions and effect presented in instant specification where the residual water in the atmosphere is the source of the measures OH on the surface of the disclosed solid electrolyte material (¶[0157]).
Suzuki also teaches the solid electrolyte may further comprise 0.05 to 1.0% mass of an additional oxygen containing material (¶[0036]-[0040], claim 15) including the specific examples Li2O, ZrO2, or CaO (see mixed as additives…thereby solid electrolytes were manufactured, ¶[0154], Table 10) which when added to the solid electrolyte would lead to a molar ratio of O to the sum of Y and Sm greater than 0 and less than 0.32.
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). (see MPEP § 2123.I)
Applicant is reminded in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” (in this case the molar ratio of O to the sum of Y and Sm ) a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP §2144.05.
Regarding claim 2, Suzuki discloses a solid electrolyte material according to claim 1, and wherein
X is Cl and Br (¶[0020] see X may be Cl and Br, Table 4 see example 75 LiCl and LiBr).
Regarding claim 3, Suzuki discloses a solid electrolyte material according to claim 1 further comprising: at least one selected from the group consisting of Sr, Ba, Al, Sc, Bi, La, Zr, Hf, Ta, and Nb (¶[0020]) and additionally discloses Zr as an additive in the solid electrolyte (¶[0154]).
Regarding claim 4, Suzuki discloses a solid electrolyte material according to claim 1, wherein
O binding to H is present in a surface region of the solid electrolyte material residual water in the atmosphere is incorporated onto the surface of the material during the heating and cooling process as indicated by the similar conditions and effect presented in instant specification (¶[0157]).
Regarding claim 5, Suzuki discloses a solid electrolyte material according to claim 1,
wherein the substantially similar raw materials LiCl (Table 1 of Suzuki. ¶[0154]), YCl3(Table 2 of Suzuki), LiBr(table 4 of Suzuki. Examples 66-, 77, 80, and 82), SmCl3(Table 2 of Suzuki, example 44) and CaCl2 (Table 1 of Suzuki, example 20)(¶[0114]) and substantially similar method (see rejection of claim 1) described in the instant specification would result in an X-ray diffraction pattern obtained by X-ray diffraction measurement using Cu-Kα rays includes peaks in diffraction angle 2θ ranges of 14.9° or more and 16.0° or less, 16.3° or more and 17.3° or less, 22.3° or more and 23.4° or less, 28.1° or more and 29.2° or less, 30.0° or more and 31.1° or less, 32.2° or more and 33.3° or less, 39.2° or more and 40.3° or less, 46.9° or more and 48.1° or less, and 51.5° or more and 52.6° or less.
Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.).
Regarding claim 6, Suzuki discloses a solid electrolyte material according to claim 1, wherein the compound represented by the following formula (1).A2+aE1−b+aGbXd (1)
where a is −2b in a case where G is a hexavalent element, a is −b in a case where G is a pentavalent element, a is zero in a case where G is a tetravalent element or G is not contained, a is b in a case where G is a trivalent element, a is 2b in a case where G is a divalent element and a is 3b in a case where G is a monovalent element. 0≤b≤0.5, −0.3≤α≤0.3 and 5.0<d<6.0.) and these ratios are exemplified in Tables 1-10 of Suzuki
wherein following four mathematical expressions are satisfied:
2.7≤x≤3.4;0.09≤y≤0.11;1.6≤z≤2.2; and3.4≤w≤4.5,
wherein
x represents a molar ratio of Li to the sum of Y and Sm;
y represents a molar ratio of Ca to the sum of Y and Sm;
z represents a molar ratio of Br to the sum of Y and Sm; and
w represents a molar ratio of Cl to the sum of Y and Sm.
One of ordinary skill in the art would recognize variation in the proportions of the A, E, G and X within formula 1 would lead to optimization of the ionic conductivity and discharge capacity of the material (¶[0013]-[0014]), therefore it would have been obvious to have varied the molar ratios within the above ranges to optimize ionic conductivity. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding claim 8, Suzuki discloses A battery comprising:
a positive electrode;
a negative electrode; and
an electrolyte layer disposed between the positive electrode and the negative electrode, wherein at least one selected from the group consisting of the positive electrode, the negative electrode, and the electrolyte layer contains the solid electrolyte material according to claim 1 (¶[0042]).
Regarding claim 9, Suzuki discloses a solid electrode material according to claim 7 which inherently has an ion conduction of in the range of from 7.9x10-4 S/cm to 1.8x10-5 S/cm. Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.).
Conclusion
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/RYAN S CANNON/Primary Examiner, Art Unit 1726
/K.J.A./Examiner, Art Unit 1726