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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 10, 2025, has been entered.
Response to Arguments
Applicant's arguments filed December 10, 2025, have been fully considered but they are not persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant contends that there is no motivation to arrive at the claimed composition (pp. 8-9). However, the examples of the instant specification are limited to a single modified Li3MX6 electrolyte with varying levels of oxygen exposure. There is no evidence or even allegation of the significance of any of the modifications, all of which are known in the art.
Applicant contends that Asano teaches against the incorporation of oxygen, that inherency arguments in the rejection are improperly applied, and that the prior art does not suggest any reason or benefit to incorporate oxygen (pp. 10-11). The teachings of Asano are entirely consistent with the examples of instant specification, which clearly demonstrate decreasing conductivity with increasing oxygen content. As the material is hygroscopic, failure to protect it from exposure to water will necessarily result in the incorporation of that water into the structure. Optimization here means only minimizing the unavoidable incorporation of water.
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.
Claim(s) 1, 4, 5, and 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano et al. (“Solid Halide Electrolytes with High Lithium-Ion Conductivity for Application in 4 V Class Bulk-Type All-Solid-State Batteries”, Advanced Materials 20(44), 1803075, September 2018) in view of Wang et al. (“Lithium Chlorides and Bromides as Promising Solid-State Chemistries for Fast Ion Conductors with Good Electrochemical Stability”, Angewandte Chemie International Edition 58(24), pp. 8039-8043, June 2019), Schlaikjer et al. (“Ionic Conduction in Calcium Doped Polycrystalline Lithium Iodide”, Journal of the Electrochemical Society 118(9), pp. 1447-1450, September 1971), and Tomita et al. (“Substitution Effect on the Structure and the Lithium Ion Conductivity of Lithium Indium Bromide”, Solid State Ionics: The Science and Technology of Ions in Motion, pp. 985-990, ISBN: 978-981-4482-21-9, May 2004).
Regarding claim 1, Asano teaches a solid electrolyte material comprising Li, Y, and X (Cl or Br) (Asano, Abstract).
Asano does not teach that the material comprises O or H. Asano teaches that the material is hygroscopic (Asano, Experimental Section: Material Synthesis). The material will therefore necessarily adsorb any water in its environment and will comprise O and H.
Asano does not teach that the material comprises Ca. Schlaikjer teaches that adding calcium to a lithium halide introduces structural defects that improve ionic conductivity (Schlaikjer, Discussion, first paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Ca to the material of Asano in order to improve ionic conductivity.
Asano does not teach that the material comprises Gd. Wang teaches that Y and Gd are both suitable cations in an Li3MX6 structure (Wang, p. 8041, first incomplete paragraph). Y and Gd are therefore art-recognized equivalents for the same purpose, and combining equivalents known for the same purpose is prima facie obvious (MPEP 2144.06 I).
Modified Asano does not teach that the material comprises both Cl and Br. Tomita teaches that a combination of Cl and Br in a Li3MX6 electrolyte can improve ionic conductivity at lower temperatures (Tomita, Fig. 6), with the lowest temperature transition to high conductivity at 2.5 Br and 3.5 Cl, each of which falls within the ranges of the instant claim. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use both Cl and Br in an appropriate ratio to improve ionic conductivity.
Modified Asano teaches a Li:Y+Gd of approximately 3 (Asano, Abstract), which falls within the range of the instant claim.
Modified Asano does not teach the claimed Ca:Y+Gd ratio. Modified Asano teaches that conductivity is a function of calcium concentration (Schlaikjer, Fig. 1), with values on the order of 0-3 mol% Ca vs. Li (i.e,, approximately a 0-0.09 Ca:Y+Gd ratio). "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Modified Asano does not teach any particular proportion of oxygen in the material. Asano teaches that the material is hygroscopic and must be protected from water (Asano, Experimental Section: Material Synthesis). It will therefore have a non-zero oxygen content, but it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to keep that oxygen content as low as possible, including values within the range of the instant claim.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to incorporate any amount of water into the electrolyte, since the omission of an element or limitation (protecting the material from water) with a corresponding loss of function (preventing the incorporation of water and corresponding decreased performance) has been held to be an obvious variation. See In re Kuhle, 188 USPQ 7, 9 (CCPA 1975); Ex parte Wu, 10 USPQ 2031 (BPAI 1989); MPEP 2144.04 II. A.
Regarding claim 4, modified Asano does not teach that the material comprises O binding to H on its surface. Modified Asano teaches that the material is hygroscopic (Asano, Experimental Section: Material Synthesis). The material will therefore necessarily adsorb any water in its environment and will comprise O bound to H on its surface.
Regarding claim 5, modified Asano does not teach the claimed XRD peaks. However, applicant has indicated that producing the electrolyte material with the claimed composition in the same manner used by modified Asano (dry milling and annealing at an elevated temperature) (Asano, Experimental Section: Material Synthesis) will result in the claimed spectrum (Examples and Table 2 of the instant specification). The material of modified Asano is therefore assumed to have the same spectrum.
Regarding claim 7, modified Asano does not teach any particular proportion of oxygen in the material. Modified Asano teaches that the material is hygroscopic and must be protected from water (Asano, Experimental Section: Material Synthesis). It will therefore have a non-zero oxygen content, but it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to keep that oxygen content as low as possible, including values within the range of the instant claim.
Regarding claim 8, modified Asano teaches a battery comprising a positive electrode, a negative electrode, and an electrolyte layer between them, with the positive electrode and electrolyte layer comprising the electrolyte material (Asano, Experimental Section: ASSB Cell Fabrication and Battery Performance Measurement).
Regarding claim 9, Asano teaches a solid electrolyte material comprising Li, Y, and X (Cl or Br) (Asano, Abstract).
Asano does not teach that the material comprises O or H. Asano teaches that the material is hygroscopic (Asano, Experimental Section: Material Synthesis). The material will therefore necessarily adsorb any water in its environment and will comprise O and H.
Asano does not teach that the material comprises Ca. Schlaikjer teaches that adding calcium to a lithium halide introduces structural defects that improve ionic conductivity (Schlaikjer, Discussion, first paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Ca to the material of Asano in order to improve ionic conductivity.
Asano does not teach that the material comprises Gd. Wang teaches that Y and Gd are both suitable cations in an Li3MX6 structure (Wang, p. 8041, first incomplete paragraph). Y and Gd are therefore art-recognized equivalents for the same purpose, and combining equivalents known for the same purpose is prima facie obvious (MPEP 2144.06 I).
Asano does not teach any particular proportion of oxygen in the material. Asano teaches that the material is hygroscopic and must be protected from water (Asano, Experimental Section: Material Synthesis). It will therefore have a non-zero oxygen content, but it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to keep that oxygen content as low as possible, including values within the range of the instant claim.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to incorporate any amount of water into the electrolyte, since the omission of an element or limitation (protecting the material from water) with a corresponding loss of function (preventing the incorporation of water and corresponding decreased performance) has been held to be an obvious variation. See In re Kuhle, 188 USPQ 7, 9 (CCPA 1975); Ex parte Wu, 10 USPQ 2031 (BPAI 1989); MPEP 2144.04 II. A.
Asano does not teach that the material comprises both Cl and Br. Tomita teaches that a combination of Cl and Br in a Li3MX6 electrolyte can improve ionic conductivity (Tomita, Fig. 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use both Cl and Br in an appropriate ratio to improve ionic conductivity.
Asano does not teach the claimed ion conductivity. Asano teaches ion conductivities of 5x10-4 to 1.7x10-3 S/cm (Asano Fig. 1d), which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" 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).
Regarding claims 10 and 11, modified Asano does not teach any particular proportion of oxygen in the material. Asano teaches that the material is hygroscopic and must be protected from water (Asano, Experimental Section: Material Synthesis). It will therefore have a non-zero oxygen content, but it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to keep that oxygen content as low as possible, including values within the range of the instant claim.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to incorporate any amount of water into the electrolyte, since the omission of an element or limitation (protecting the material from water) with a corresponding loss of function (preventing the incorporation of water and corresponding decreased performance) has been held to be an obvious variation. See In re Kuhle, 188 USPQ 7, 9 (CCPA 1975); Ex parte Wu, 10 USPQ 2031 (BPAI 1989); MPEP 2144.04 II. A.
Modified Asano does not teach the claimed XRD peaks. However, applicant has indicated that producing the electrolyte material with the claimed composition in the same manner used by modified Asano (dry milling and annealing at an elevated temperature) (Asano, Experimental Section: Material Synthesis) will result in the claimed spectrum (Examples and Table 2 of the instant specification). The material of modified Asano is therefore assumed to have the same spectrum.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asano in view of Wang, Schlaikjer, and Tomita as applied to claim 1 above, and further in view of Park et al. (“High-Voltage Superionic Halide Solid Electrolytes for All-Solid-State Li-Ion Batteries”, ACS Energy Letters 2020 (5), pp. 533-539, January 2020).
Regarding claim 3, modified Asano does not teach that the material includes an additional element. Park teaches that adding Zr to a Li3MX6 electrolyte improves ionic conduction (Park, Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Zr to the electrolyte of modified Asano in order to improve ionic conduction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A CORNO JR whose telephone number is (571)270-0745. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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/J.A.C/ Examiner, Art Unit 1722
/NIKI BAKHTIARI/ Supervisory Patent Examiner, Art Unit 1722