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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/19/2026 has been entered.
Status of the Claims
Claims 7-17 remain withdrawn as being drawn to a non-elected group and claims 1-4 and 6 are examined herein. Claim 1 has been amended by the applicant.
Status of the Rejection
The drawing objection has been overcome by the applicant's amendments.
All 35 U.S.C. § 112(b) rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
The 35 U.S.C. § 103 rejections of Claims 1-4 and 6 are withdrawn, however new grounds of rejection have been added in view of the teachings of Bae.
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 Bae et al. (US 20230123843 A1) in view of Young et al. (KR 20140011752 A, Machine Translation). 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, Bae discloses a cathode for all-solid-state batteries (cathode composite for an all-solid-state battery [abstract; Para. 0012; claims 16-17]), comprising:
A cathode active material (the cathode composite comprises a crystalline phosphate-based solid electrolyte and a phosphate-based cathode active material [Paras. 0041, 0153-0160]);
A solid electrolyte (the cathode composite comprises a crystalline phosphate-based solid electrolyte and a phosphate-based cathode active material [Paras. 0041, 0153-0160]);
Wherein the cathode does not further comprise a conductive material (the composite was used without using a conductive material [Para. 0041]).
Bae further teaches wherein the composite may further include an additive that can include binders, filler, dispersants, or ionic conduction auxiliary agents [0065-0066].
Bae fails to teach, however, the additive with the specific structure of Formula 1 and thus also fails to teach the various physical properties recited in instant claim 1.
Young discloses a cathode for all-solid-state batteries (positive electrode for an all-solid-state battery using a solid electrolyte [Para. 0015]) wherein the cathode is mixed with 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 further teaches that Li-LLT helps provide a movement path for ions and electrons of the battery system through an electronic conductivity control material, thereby improving ionic conductivity and electronic conductivity [Paras. 0047, 0052, 0058].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cathode disclosed by Bae to have incorporated the additive taught by Young because Bae teaches that ionic conduction auxiliary agents can be included in the cathode material [Bae, Para. 0065-0066] and Young teaches that the LLT additive helps provide a movement path for ions and electrons of the battery system, thereby improving the ionic conductivity and electronic conductivity [Paras. 0047, 0052, 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)).
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 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].
Furthermore, the limitation “wherein the additive emits lithium ions during initial charging and discharging of the all-solid-state battery so as to compensate for an irreversible capacity of lithium ions generated in an anode" is a functional recitation. Apparatus claims cover what a device is, not what a device does or is used for [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, Bae in view of Young discloses substantially the same additive within the cathode material of an all-solid-state battery and thus absent any clear and convincing argument to the contrary the Office holds the position that the additive would inherently perform the functional limitations of the claim. 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].
Regarding claim 2, Bae as modified by Young further teaches wherein the additive has a perovskite crystal structure (the LLT forms a perovskite structure [Young, 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 Bae as modified 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 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 Bae in view of 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. 6-10, filed 08/19/2026, with respect to the 35 U.S.C. § 103 rejection have been fully considered but are moot in view of the new grounds of rejection over Bae in view of Tomoyuki. Applicant’s arguments that are still pertinent to the current grounds of rejection are addressed below.
Applicant’s Argument #1
Applicant argues that Young does not describe the newly recited sacrificial operation stating that Young does not describe LiLLT as emitting lithium ions during initial charging and discharging, does not identify irreversible lithium ion capacity generated in an anode, and does not connect the amount, potential, or timing of any lithium release to compensation of that capacity.
Examiner’s Response #1
Examiner respectfully disagrees. Applicant appears to concede that the additive of Young is the same as the instant material, stating on Pg. 9 of the response that “Young deliberately inserts lithium into LLT before electrode formation and attributes the increased electronic conductivity to reduction of Ti4+ to Ti3+. The claimed cathode requires the same Formula 1 additive to perform a different and coordinated role during initial battery cycling by emitting lithium in an amount and at a time that compensates irreversible anode capacity, while the cathode also lacks a further conductive material”. As outlined in the rejection above, the limitation “wherein the additive emits lithium ions during initial charging and discharging of the all-solid-state battery so as to compensate for an irreversible capacity of lithium ions generated in an anode" is a functional recitation. Apparatus claims cover what a device is, not what a device does or is used for [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, Bae in view of Young discloses substantially the same additive within the cathode material of an all-solid-state battery and thus absent any clear and convincing argument to the contrary the Office holds the position that the additive would inherently perform the functional limitations of the claim. 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].
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA L ALLEN/Supervisory Patent Examiner, Art Unit 1713
Prosecution Insights