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 .
Status of the Claims
This is a final office action in response to the applicant’s arguments and remarks filed on 11/20/2025. Claims 1-4 and 6-17 are pending in the current office action. Claim 5 has been cancelled and incorporated into amended claim 1. Claims 7-17 remain withdrawn and claims 1-4 and 6 are examined herein.
Status of the Rejection
The drawing objection is maintained as outlined below.
New grounds of rejection under 35 U.S.C. § 102(b) are necessitated by the amendments.
All 35 U.S.C. § 103 rejections from the previous office action are substantially maintained and modified only in response to the amendments to the claims.
Drawings
The drawings are objected to because the axis label in Figure 3 is illegible. Although the molecular formulas have been removed from the previous drawing/objection, the new Fig. 3 has illegible axis and axis labels. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 6 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 has been amended to recite “wherein the cathode does not comprise a conductive material”. This limitation is confusing and contradictory with the other limitations of the claim. For instance, claim 1 recites where the cathode comprises a cathode active material, a solid electrolyte, and an additive, all of which are “a conductive material”. The additive is further clarified to have an electronic conductivity with the claimed range. The plain language interpretation of the limitation “wherein the cathode does not comprise a conductive material” implies that the cathode does not comprise any materials that are conductive, which is a contradiction to the other limitations in the claim. Examiner suggests amending claim 1 to recite wherein the cathode does not further comprise a conductive additive as this appears to be the applicants intent. Claims 2-4 and 6 are further rejected by virtue of their dependence upon claim 1 and because they fail to cure the deficiencies of indefinite claim 1.
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.
Claim 1-4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Young et al. (KR 20140011752 A, Machine Translation) in view of Tomoyuki et al. (US 20210066758 A1). Evidentiary support provided by Inaguma et al. (Y. Inaguma et al, High Ionic Conductivity in Lithium Lanthanum Titanate, Solid State Communications, Vol. 86, No. 10, 689-693, 1993; cited in IDS)
Regarding claims 1 and 4, Young discloses a cathode for all-solid-state batteries (positive electrode for an all-solid-state battery using a solid electrolyte [Para. 0015], the cathode comprising:
a cathode active material (the Li-LLT powder is mixed with the positive electrode wherein the positive electrode inherently comprises an active material in order to function as a positive electrode, Young further discloses the positive electrode being composed of sulfur and carbon [Paras. 0051, 0058]); and
an additive represented by Formula 1 (La2/3-xLi3x□1/3-2x)TiO3 wherein □ indicates a vacant site for achieving charge neutrality depending on a doping amount of lithium, and 0.04 ≤ x ≤ 1/6 (Li-LLT is mixed into the positive electrode where Li-LLT is characterized by comprising Li2/3-xLi3x□1/3-2x)TiO3 wherein x is a value in a range of 0.04 to 0.15 [Paras. 0015, 0058, 0062]).
Young is silent on the composition of the “positive electrode” that the Li-LLT is mixed with and thus fails to expressly teach wherein the cathode material further comprises a solid electrolyte.
Tomoyuki discloses an all solid state battery including a lithium secondary battery [abstract; Para. 0047] wherein the cathode material contains an active material and a solid electrolyte material [Para. 0045].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cathode material of Young that comprises the cathode active material and additive to further include a solid electrolyte material as taught by Tomoyuki because it is known in the art to include cathode active materials, solid electrolyte materials, and other additives in the cathode electrode of all-solid-state batteries [Para. 0058]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143(A)).
Regarding the limitation “wherein the cathode does not comprise a conductive material”, Young teaches wherein the sulfur and carbon are considered the “positive material” and thus read on the “cathode active material” [Para. 0051] with no reference to the further addition of a conductive additive/material. Tomoyuki teaches that conductive additives may be added but does not disclose that such additives are required or even desirable [Para. 0058], teaching instead that the cathode active material layer contains a cathode active material and a solid electrolyte [Para. 0045]. Thus, it would have been obvious to one having ordinary skill in the art to formulate a cathode material with or without an additional conductive additive/material present. It has been held that even if a specific embodiment is not taught as preferred makes it no less obvious and that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985). Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See MPEP § 2143(E).
As to the specific electronic conductivity of the additive, of instant claim 1, and the specific lithium ion conductivity of the additive, of instant claim 4, these physical properties are found to be an inherent characteristic of the material itself. Since Young discloses substantially the same material/additive as that of the instant claims, the Office holds the position that the material of Young would inherently possess the same physical properties. The courts have held that “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present [See MPEP 2112]. Therefore, the claimed property (i.e. the lithium ion conductivity and electronic conductivity), is necessarily present in the prior art material. Examiner further notes that the physical properties of LLT that lie within the claimed range are further known as evidenced by Inaguma [abstract; Pgs. 691-692, 3.3. Electronic and lithium ion conductivity]. Young also teaches wherein the electronic conductivity is known within the claimed range [Para. 0010].
Regarding claim 2, Young further teaches wherein the additive has a perovskite crystal structure (the LLT forms a perovskite structure [Paras. 0007-0044]. Inaguma also teaches wherein lithium lanthanum titanate has a perovskite structure [introduction]).
Regarding claim 3, the limitation “wherein a lithium atom is inserted into the vacant site □ of the additive” is a functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, the structure disclosed by Young is configured to and capable of inserting lithium atoms into the vacant site and thus meets the functional recitations of claim 3. Examiner notes that Young also expressly teaches that lithium enters the vacant space □ [Para. 0013] and thus even if interpreted as a structural limitation the limitations are taught by Young.
Regarding claim 6, The Applicant is advised that the limitation “wherein the additive is formed in a pellet type” is a product-by-process limitation. There is no apparent difference between the apparatus as claimed and the prior art as taught by Young [see MPEP 2113]. Examiner further notes that Young expressly teaches wherein the Li-LLT material is formed as a pellet [Paras. 0045].
Response to Arguments
Applicant’s arguments, see Remarks Pgs. 6-9, filed 11/20/2025, with respect to the 35 U.S.C. § 103 rejection have been fully considered and are not persuasive.
Applicant’s Argument #1
Applicant argues that Young and Tomoyuki both teach a conductive material and that one skilled in the art would not be motivated to form the material without a conductive material as required by claim 1.
Examiner’s Response #1
Examiner respectfully disagrees. As outlined in the amended rejection above, Young teaches wherein the sulfur and carbon are considered the “positive material” and thus read on the “cathode active material” [Para. 0051] with no reference to the further addition of a conductive additive/material. Tomoyuki teaches that conductive additives may be added but does not disclose that such additives are required or even desirable [Para. 0058], teaching instead that the cathode active material layer contains a cathode active material and a solid electrolyte [Para. 0045]. Thus, it would have been obvious to one having ordinary skill in the art to formulate a cathode material with or without an additional conductive additive/material present. It has been held that even if a specific embodiment is not taught as preferred makes it no less obvious and that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985). Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See MPEP § 2143(E).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bae et al. (US 20230123843 A1) disclose a method of forming a cathode material where the cathode comprises only a cathode active material and solid electrolyte without using a conductive material. This reference could have been used to replace the teaching reference Tomoyuki however was not deemed necessary as Tomoyuki teaches the cathode material with or without the conductive additives.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA ALLEN whose telephone number is (571)270-3176. The examiner can normally be reached 7:30am-4:30pm ET Mon-Thurs, 7:30am-11:30pm Fri.
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/JOSHUA L ALLEN/Supervisory Patent Examiner, Art Unit 1713