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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/09/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 and 6-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Strauss (Strauss, F., Lin, J., Janek, J. et al. Influence of synthesis parameters on crystallization behavior and ionic conductivity of the Li4PS4I solid electrolyte. Sci Rep 11, 14073 (2021), https://doi.org/10.1038/s41598-021-93539-4) is applied as the new primary reference. Hoshi and Harada are applied as secondary references modifying Strauss.
Strauss provides a method for producing Li4PS4I which includes pulverizing precursors and calcining, and provides a lithium ion conductivity of 1.1 × 10−3 S cm−1 (see e.g., Strauss; pgs. 4, 6) which falls within the claimed range of 1 – 1.68 mS/cm. Regarding claims 1 and 2, Strauss does not provide a pulverization step at 300-500 rpm for 10 minutes to 2 hours after the calcination step. Thus, Hoshi and Harada modify Strauss to provide the post calcining pulverization step.
Therefore, applicant’s arguments regarding the combination of Hoshi and Harada not providing a pulverization process which leads to a lithium ion conductivity of 1.0-1.68 mS/cm as claimed is moot because Strauss provides this element.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 and 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Strauss (Strauss, F., Lin, J., Janek, J. et al. Influence of synthesis parameters on crystallization behavior and ionic conductivity of the Li4PS4I solid electrolyte. Sci Rep 11, 14073 (2021), https://doi.org/10.1038/s41598-021-93539-4), and in further view of Hoshi (WO-2021085239-A1) (see US2022416292A1 for referencing) and Harada (US-20140193717-A1).
Regarding claim 1, Strauss provides a method of preparing a sulfide solid electrolyte (see e.g., Strauss; pgs. 6-7 regarding Materials/Methods, pg. 2 regarding Results including synthesis methods), comprising: calcining a solid electrolyte precursor (see e.g., Strauss; pgs. 2, 6, regarding annealing process) to prepare a crystalline solid electrolyte represented by Formula 1: Li4+xPS4I1+x (-0.1≤x≤0.1) (see e.g., Strauss; abstract, page 2, regarding Li4PS4I which corresponds with the claimed formula), wherein the particulate solid electrolyte has a lithium ion conductivity of 1.1 x 10-3 S cm-1 at room temperature which is 1.1 mS/cm (see e.g., Strauss; pgs. 4, 6), which falls within the claimed range of about 1.0 mS/cm to 1.68 mS/cm. “About” is interpreted according to the instant specifications as within 10% of the stated value, which is the broadest reasonable interpretation given that the instant specification suggests that "About" can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value.
Strauss provides pulverization processes before the annealing step (see e.g., Strauss; pgs. 2, 6-7, regarding ball milling and mortar and pestle processes). Strauss does not explicitly disclose pulverization after the annealing process. However, Hoshi discloses a method for preparing a sulfide solid electrolyte (see e.g., Hoshi; [0030]) which also includes a calcining process (see e.g., Hoshi; [0030], regarding calcining) followed by pulverizing the calcined solid electrolyte (see e.g., Hoshi; [0031]). In the pulverization step following the calcination step, Hoshi discloses that it is necessary to achieve a desired particle size (see e.g., Hoshi; [0031]), and that the pulverization may be formed by a dry method such as using a ball mill or a bead mill (see e.g., Hoshi; [0032]). Hoshi is further analogous art because Hoshi discloses that the solid electrolyte particle is of formula Lia PSb Xc wherein X is at least one elemental halogen (see e.g., Hoshi; [0007], [0019]), which overlaps with the solid electrolyte particle formula as claimed and with the particle formula as disclosed by Strauss. Furthermore, Strauss already provides that the formed Li4PS4I particle XRD patterns is similar to that of the XRD patterns provided in the instant specifications and claimed in claim 10, and these XRD patterns are similar to the XRD patterns as disclosed by Hoshi (see e.g., Hoshi; [0010]). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the pulverization and calcining processes as disclosed by Strauss to provide the pulverization process to the crystalline solid electrolyte after the calcination process. One of ordinary skill in the art would have been motivated to make this modification in order to achieve the desired particle size (see e.g., Hoshi; [0031]).
Strauss provides pulverization process which may be at 250 rpm for 1 hour and then 450 rpm for 15 h (see e.g., Strauss; pg. 7). Modified Strauss does not explicitly disclose wherein the crystalline solid electrolyte is converted to a particulate solid electrolyte through pulverization at about 300 rpm to 500 rpm for about 10 minutes to 2 hours to reduce the degree of crystallinity. However, Harada discloses that pulverization of a solid electrolyte may occur at about 300 rpm for 1 hour (see e.g., Harada; [0082]-[0083]), which falls within the claimed range of 300-500 rpm for 10 minutes to 2 hours. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the method of modified Strauss by providing a pulverization process at an rpm of 300 for 1 hour as disclosed by Harada in order to produce a solid electrolyte powder (see e.g., Harada; [0082]-[0083]) and to achieve a desired particle size (see e.g., Hoshi; [0031]).
Regarding claim 2, Strauss provides a method of preparing a sulfide solid electrolyte (see e.g., Strauss; pgs. 6-7 regarding Materials/Methods, pg. 2 regarding Results including synthesis methods), comprising: pulverizing a solid electrolyte precursor (see e.g., Strauss; pg. 6, regarding ball milling precursor); calcining a solid electrolyte precursor (see e.g., Strauss; pgs. 2, 6, regarding annealing process) to prepare a crystalline solid electrolyte represented by Formula 1: Li4+xPS4I1+x (-0.1≤x≤0.1) (see e.g., Strauss; abstract, page 2, regarding Li4PS4I which corresponds with the claimed formula), wherein the particulate solid electrolyte has a lithium ion conductivity of 1.1 x 10-3 S cm-1 at room temperature which is 1.1 mS/cm (see e.g., Strauss; pgs. 4, 6), which falls within the claimed range of about 1.0 mS/cm to 1.68 mS/cm. “About” is interpreted according to the instant specifications as within 10% of the stated value, which is the broadest reasonable interpretation given that the instant specification suggests that "About" can be understood as within 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, 0.5%, 0.1%, 0.05%, or 0.01% of the stated value.
Strauss provides pulverization processes before the annealing step (see e.g., Strauss; pgs. 2, 6-7, regarding ball milling and mortar and pestle processes) which may be at 250 rpm for 1 hour and then 450 rpm for 15 h (see e.g., Strauss; pg. 7). Strauss does not explicitly disclose pulverization after the annealing process; pulverizing the crystalline solid electrolyte to obtain a particulate solid electrolyte, wherein the crystalline solid electrolyte is converted to a particulate solid electrolyte through pulverization at about 300 rpm to 500 rpm for about 10 minutes to 2 hours to reduce the degree of crystallinity. However, Hoshi discloses a method for preparing a sulfide solid electrolyte (see e.g., Hoshi; [0030]) which also includes a calcining process (see e.g., Hoshi; [0030], regarding calcining) followed by pulverizing the calcined solid electrolyte (see e.g., Hoshi; [0031]). Harada discloses that pulverization of a solid electrolyte may occur at about 300 rpm for 1 hour (see e.g., Harada; [0082]-[0083]), which falls within the claimed range of 300-500 rpm for 10 minutes to 2 hours. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method disclosed by Strauss by providing a pulverization process after the calcining process as disclosed by Hoshi at an rpm of 300 for 1 hour as disclosed by Harada in order to produce a solid electrolyte powder (see e.g., Harada; [0082]-[0083]) and to achieve a desired particle size (see e.g., Hoshi; [0031]).
Regarding claim 3, modified Strauss teaches the method according to claim 2, wherein the solid electrolyte precursor comprises Li2S, P2S5, and LiI (see e.g., Strauss; pg. 7), which corresponds with the claimed group of lithium (Li), Phosphorus (P), sulfur (S), and Iodine (I) elements.
Regarding claim 4, modified Strauss teaches the method according to claim 2, wherein the pulverized solid electrolyte precursor is calcined at a temperature of 175, 200, or 250 °C (see e.g., Strauss; pg. 7), which corresponds with the claimed range of 200-500 °C.
Regarding claim 6, modified Strauss teaches the method according to claim 1. Modified Strauss discloses the same process of producing the particulate solid electrolyte as in the instant claims and specifications as described above. That is, as described in claim 1, modified Strauss provides the method of preparing the sulfide electrolyte which has precursors of Li2S and P2S5, a pulverization process of the precursors, a calcination process of the precursors in a temperature range that overlaps with the instant specifications (see e.g., Strauss; pg. 7), and a conductivity of the Li4PS4I within the claimed range of 1-1.68 mS/cm. Therefore, it is the examiner’s position that the resulting particle would have the same inherent properties, including: when measured by Raman spectroscopy, a position of a center of a maximum peak of the particulate solid electrolyte is shifted by about -0.5 cm-1 or greater from a position of a center of a maximum peak of the crystalline solid electrolyte.
MPEP 2112 I. states "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.'
Regarding claim 7, modified Strauss teaches the method according to claim 2. Modified Strauss discloses the same process of producing the particulate solid electrolyte as in the instant claims and specifications as described above. That is, as described in claim 1, modified Strauss provides the method of preparing the sulfide electrolyte which has precursors of Li2S and P2S5, a pulverization process of the precursors, a calcination process of the precursors in a temperature range that overlaps with the instant specifications (see e.g., Strauss; pg. 7), and a conductivity of the Li4PS4I within the claimed range of 1-1.68 mS/cm. Therefore, it is the examiner’s position that the resulting particle would have the same inherent properties, including: when measured by Raman spectroscopy, a position of a center of a maximum peak of the particulate solid electrolyte is shifted by about -0.5 cm-1 or greater from a position of a center of a maximum peak of the crystalline solid electrolyte.
MPEP 2112 I. states "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.'
Regarding claim 8, modified Strauss teaches the method according to claim 1. Modified Strauss discloses the same process of producing the particulate solid electrolyte as in the instant claims and specifications as described above. That is, as described in claim 1, modified Strauss provides the method of preparing the sulfide electrolyte which has precursors of Li2S and P2S5, a pulverization process of the precursors, a calcination process of the precursors in a temperature range that overlaps with the instant specifications (see e.g., Strauss; pg. 7), and a conductivity of the Li4PS4I within the claimed range of 1-1.68 mS/cm. Therefore, it is the examiner’s position that the resulting particle would have the same inherent properties, including: when measured by Raman spectroscopy, a full width at half maximum (FWHM) of the maximum peak of the particulate solid electrolyte increases by about 20% or greater compared to a full width at half maximum (FWHM) of the maximum peak of the crystalline solid electrolyte.
MPEP 2112 I. states "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.'
Regarding claim 9, modified Strauss teaches the method according to claim 1. Modified Strauss discloses the same process of producing the particulate solid electrolyte as in the instant claims and specifications as described above. That is, as described in claim 1, modified Strauss provides the method of preparing the sulfide electrolyte which has precursors of Li2S and P2S5, a pulverization process of the precursors, a calcination process of the precursors in a temperature range that overlaps with the instant specifications (see e.g., Strauss; pg. 7), and a conductivity of the Li4PS4I within the claimed range of 1-1.68 mS/cm. Therefore, it is the examiner’s position that the resulting particle would have the same inherent properties, including: when measured by Raman spectroscopy, the particulate solid electrolyte has a maximum peak at 425.9 + 0.50 cm-¹ and a full width at half maximum (FWHM) of the maximum peak of 6.9 + 0.50 cm-¹.
MPEP 2112 I. states "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.'
Regarding claim 10, modified Strauss teaches the method according to claim 1, wherein the particulate solid electrolyte has peaks at 20 = 14.9°± 0.50°, 18.3°± 0.50°, 21.1°± 0.50°, 28.0°± 0.50°, 32.0°± 0.50°, 33.5 ± 1.00°, 36.8°± 1.00°, and 38.6°± 1.00° when measuring an X-ray diffraction (XRD) pattern using CuKα rays (see e.g., Strauss; fig. 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SONG whose telephone number is (571)270-7337. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Martin can be reached at (571) 270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN SONG/Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728
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