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 .
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 10, 11 and 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Regarding claims 10, the term “low humidity” in claim 10 is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While the specification gives examples as to suitable humidity environments there is explicit or implicit definition of what “low” actually encompasses.
Regarding claim 11, while this claim seeks to provide some humidity quantification to the exposing step, the annealing humidity introduces the same ambiguity relating to “low”.
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 non-obviousness.
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, 4-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ritter et al. (US 2016/0293946).
Regarding claim 1 and 5, Ritter discloses a composition for a battery which includes the claimed inorganic sulfide lithium argyrodites ([0010], [0025]), lithium salts such as LiPF6 or LiTFSI ([0055]), and a polymeric binder ([0049]). Ritter additionally discloses that the composition, useable as an electrode material, can also be used as an electrolyte material ([0109]). While Ritter discloses a list of choices for lithium argyrodites, some of which don’t include sulfide ([0025]) and discloses that the composition is developed for the purposes of electrode use (abstract), the explicit disclosure of the claimed sulfide-based lithium argyrodite choices along with the use of the final composition as an electrolyte, would have been readily apparent as Ritter discloses them as suitable choices/uses in forming the dry cell batteries ([0107]).
Ritter fails to explicitly recite the claimed properties; however, the examiner notes the present claims seek to define the physical properties by unique and specific testing requirements. It is highly unlikely that a prior art document is going to utilize such a specific test with such specific units, temperatures and time periods to define the physical properties; however, the uniqueness of the test does not mean that such properties are necessarily novel. The examiner further notes that the defined features, energy storage, specific capacity and polarization voltage merely refer to some of the expected/measured properties of a quality battery. Ritter explicitly discloses that the dry battery has excellent ion conductivity, low resistivity, good energy density and long service life ([0013]). Moreover, as disclosed above and below, Ritter generally discloses the claimed battery material choices. Given the nature of the claimed materials being generally identical to those of Ritter, the fact that it would have been apparent to an ordinary skilled artisan to provide a high-quality battery, the lack of unexpected results provided, and the explicit disclosure of Ritter producing the dry battery with excellent ion conductivity, low resistivity, good energy density and long service life, the foregoing physical properties would have been almost certainly been inherently present or highly obvious. The courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Regarding claim 4, Ritter discloses the claimed fluorinated, vinyl and ethylene polymer binder classes ([0051]).
Regarding claims 6 and 9, Ritter discloses the battery is a dry solid state lithium metal battery ([0106], [0107]) and further highlights that the batteries contains anodes and cathodes ([0103]-[0105], [0109], [0110]). The examiner notes that implicitly batteries contain anodes and cathodes, but for the sake of expedition prosecution the particular recitation in the prior art was provided. The examiner notes that batteries are, by nature, electrochemical energy storage devices.
Claim(s) 10, 11 and 13-15 are is rejected under 35 U.S.C. 103 as being unpatentable over Ritter et al. (US 2016/0293946) in view of Fengchao (CN 109,830,744).
Regarding claim 10, as noted above, Ritter discloses the claimed sulfide composite electrolyte; however, Ritter fails to teach the claimed method of synthesizing such a compound.
Fengchao, drawn also to sulfide composite electrolyte compositions (abstract, claim 6), discloses that it was known to form such compositions by mixing an inorganic sulfide lithium, a polymer and lithium salt in a solvent to form a mixed solution (abstract, claim 1, claim 6, [0055]), casting the solution on a surface (abstract, claim 1), and evaporating the solvent by at least one of drying the solution above 22oC (abstract, claim 1, [0025], [0027], [0039]) or by exposing the solution to a low humidity / oxygen-less environment ([0028], [0040]).
It would have been obvious, in view of Fengchao, to have utilized such a formation method of mixing in a solvent, casting and evaporating under controlled environmental conditions as such was a known/suitable method for forming a sulfide composite electrolyte. The courts have held that it is not patentably distinguishing to combine prior art elements according to known methods to yield predictable results. (MPEP 2143).
Regarding claim 11, as disclosed above Fengchao discloses the claimed exposing environment, but Fengchao also discloses the claimed annealing environment ([0027]-[0028], [0039]-[0040]. The examiner notes that vacuum environments read on the present claims.
Regarding claim 13, Ritter discloses that it was known to use binders such as PVdF.
Regarding claim 14, Ritter fails to teach the claimed binder, but Fengchao discloses the claimed PVDF-HFP (abstract, claim 1, [0048]). It would have been obvious, in view of Fengchao, to have used such a known alternative binder for the predictable outcome of promoting binding. The courts have held that it is not patentably distinguishing to combine prior art elements according to known methods to yield predictable results. (MPEP 2143).
Regarding claim 15, Ritter discloses the claimed lithium salts such as LiPF6 or LiTFSI ([0055]).
Response to Arguments
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive.
The arguments relating to the prior 112 rejections were generally persuasive and most of the corresponding rejections were withdrawn. The low humidity recitation in claim 10 an the low humidity recitation referring to the annealing step remain ambiguous and subject to 112 rejections.
The arguments relating to Wang were found persuasive, particularly in view of the claim amendments. Those rejections are hereby withdrawn.
The arguments relating to Ritter have been fully considered, but are not found to be persuasive. While the examiner appreciates the explanation of the benefits, the composition of claim 1 remains essentially identical to that of Ritter. Ritter uses the same lithium salt, same polymers and same choices for the lithium argyrodite. As such, the properties are expected to be the same. As MPEP 2145 (II) denotes, Prima Facie Obviousness Is Not Rebutted by Merely Recognizing Additional Advantages or Latent Properties Present But Not Recognized in the Prior Art.
The affidavit was fully considered, but it is not found to be persuasive as it relates to Ritter as Ritter generally discloses the claimed invention as noted above. The affidavit appears to provide conclusory statements of unexpected results in the absence of direct factual support. The MPEP further notes that “In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion.” (MPEP 706.01).
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 MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746