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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/22/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
The amendments filed on 12/13/2022 and 08/25/2025 have been entered. Claims 4-7, 10 and 13 are amended, Claims 7-13 are withdrawn and Claims 1-13 are pending.
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.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (WO-2019181240-A1 - Machine Translation), hereinafter “Suzuki”. Suzuki et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely doping of solid electrolytes.
In regard to Claim 1, Suzuki et al. discloses an electrolyte, comprising a compound selected from a preferred list of compounds to include methyl methacrylate (Suzuki, [505]). The skilled artisan of Suzuki, when selecting a compound would reasonably consider the listed compounds and thus, providing methyl methacrylate as the compound in the electrolyte would be obvious to try and would amount to nothing more than a simple substitution of one known element for another to obtain predictable results.
In regard to Claims 2-3, Suzuki et al. discloses the electrolyte according to claim 1. Suzuki et al. also discloses specific examples wherein the mass content of the compound based on a mass of the electrolyte is 0.5% (Suzuki, Examples 4, 9-19), 1% (Suzuki, Example 5) and 3% (Suzuki, Example 6), which anticipates the claimed ranges.
In regard to Claim 6, Suzuki et al. discloses the electrolyte according to claim 1. Suzuki et al. also discloses a mass content of generated HF is present in a range of 5 ppm to 200 ppm based on a mass of the electrolyte after formation (Suzuki, Paragraph [684]), which anticipates the claimed range.
Regarding the method limitations recited in claim 6 (electrolyte being chemically formed in an environment with a temperature of 45°C and a hot-pressing pressure of 0.1 MPa to generate the HF) the Office notes that even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F. 2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process). See MPEP § 2113.
Terminal Disclaimer
The terminal disclaimer filed on 12/28/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 17/988,770 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection is changed from a 35 U.S.C. 102 (a)(1) rejection to a 35 U.S.C. 103 rejection and as pointed out in the 35 U.S.C. 103 rejection above, all of the claim limitations of amended claim 1 are taught by Suzuki et al. While Suzuki et al. does not provide methyl methacrylate in any of the examples or comparative examples, Suzuki et al. discloses a preferred list including compounds other than fluoroacrylic acid silyl esters to include methyl methacrylate (Suzuki, [505]), and the skilled artisan when selecting a compound would reasonably consider the listed compounds and thus, providing methyl methacrylate would amount to nothing more than a simple substitution of one known element for another to obtain predictable results.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at (571) 270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725