DETAILED ACTION
Claims 1 and 3 are pending as amended on 23 April 2026, claims 8-12 are withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s amendment overcomes the objection to claims 1 and 3. The objection has been withdrawn.
Applicant’s amendment overcomes the rejection of claims 1 and 3 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. The rejection has been withdrawn.
Applicant’s amendment overcomes the rejection of claims 1 and 3 under 35 U.S.C. 102(a)(1)/(a)(2) over US2019/0140313A1 (Terai). However, a new ground of rejection under 35 U.S.C. 103 has been made over Terai in view of the amendment.
Applicant’s arguments in light of the amendment has been fully considered but are not persuasive.
Applicant argues that Terai does not disclose a sulfide based electrolyte with low electronic conductivity. The examiner disagrees. Terai expressly discloses that all the sulfide solid electrolytes have electron conductivity less than 10-6S/cm ([0209], thus Terai recognize low electronic conductivity.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., requiring the presence of iodine) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Terai fails to teach the combination of multiple compositional parameters. The examiner disagrees. Terai expressly discloses the specific combination of the claimed compositional parameters and the respective resulting conductivities in Tables 2, 5 and 7.
Applicant argues that the claimed X/S ratio as amended is critical , however, Applicant fails to provide evidence to support such criticality. It is further noted that Terai exemplifies a X/S ratio of 0.25 to 0.298 (Ex. 31 and 33), which encompasses the claimed range. Applicant must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In the instant case, Applicant is required to compare the claimed range , with that of Terai to provide effective evidence to rebut the rejections.
Applicant further argues that the rejection was based on hindsight reconstruction. The examiner noted that the rejection dated on 23 January 2026 was based on a specific examples of Terai, i.e., ex. 31 and 33 of Terai Table 5 on the ground of 35 U.S.C. 102(a)(1)/(a)(2). No reconstruction was made from Terai’s disclosure.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Terai.
Terai teaches a sulfide solid electrolyte comprises lithium (Li), phosphorus (P), sulfur (S) and two or more halogen elements and has argyrodite type crystal structure ([0017] and [0042]), wherein the raw material is exemplified as Li2S, P2S5, LiCl and LiBr ([0087] and [0187]), which meets the claimed Li2S-P2S5-MCl-MX’ type of solid electrolyte wherein X’ is Br, M is Li.
Terai exemplifies the elemental ratio of the sulfide solid electrolyte as (Table 5, Example 31): Li/P is 5.8, which meets the claimed Li/P ratio; S/P is 4.8, Cl/P is 1.1 and Br/P is 0.1, thus the sum of S/P and (Cl+Br)/P is 6 (i.e., 4.8+1.1+0.1) , which meets the claimed sum of molar ratio (S/P) and (X/P); the Cl/(Cl+Br) is 0.92 thus Cl/P to (Cl+Br)/P is 0.92, which meets the claimed range; the molar ratio Cl/P is 1.1, Br/P is 0.1, thus the molar ratio of (Cl+Br)/P is 1.2, i.e., the sum of Cl/P and Br/P, which meets the claimed X/P range; and (Cl +Br) /S is 0.25 (i.e.(1.1+0.1)/4.8) , which abuts the claimed X/S ratio of 0.265.
It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 Titanium Metals Corp of Am v Banner, 778 F2d 775, 783, 227 USPQ 773, 779 (Fed Cir 1985).
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Terai further discloses that all the sulfide solid electrolytes have electron conductivity less than 10-6S/cm ([0209]), which encompasses the claimed range and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
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 AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 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, Randy Gulakowski can be reached at 571-2721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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