DETAILED ACTION
Applicant’s reply, filed 25 June 2026 in response to the non-final Office action mailed 11 February 2026, has been fully considered. As per Applicant’s filed claim amendments claims 1-19 are pending, wherein: claims 4-5, 8, 11 and 13 have been amended, claims 1-3, 6-7, 9-10, 12 and 14 are as previously presented, and claims 15-19 are new.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 25 June 2026 was filed after the mailing date of the non-final Office action on 11 February 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 16 is objected to because of the following informalities: “and a halogen element” should instead be –and a halogen element (X)--. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8 and 15-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 8, the as-amended claim recites that the solid electrolyte (B) is subjected to “further processing” to obtain the sulfide solid electrolyte glass ceramic claims. However, the instant original specification does not provide support for the broad, ambiguous recitation of “further processing” and instead provides only specific teachings of heating and of pulverizing the solid electrolyte (B) ([0124]; examples). As such a general recitation of ‘further processing’ is not supported by the instant specification.
Regarding claim 15, the claim recitation of a molar ration of Li:P of 3.5 or less finds no support in the instant originally filed application. Clarity is lacking with regards to where support is to be found for the ratio of “3.5” and no support is found for the entirety of the range “or less” as currently recited.
Regarding claim 16, the recitation of Li:S:P:X molar ratios are recited in the original specification at paragraph [0119] where the molar ratios of the elements are presented only with respect to the “solid electrolyte (B)”. As such, the specification does not clearly provide support for the recited molar ratios with respect to the claimed sulfide solid electrolyte glass ceramic of claim 1, from which claim 16 depends.
Regarding claim 17, the recitation of Li:S:P:I molar ratios are recited in the original specification at paragraph [0119] where the molar ratios of the elements are presented only with respect to the “solid electrolyte (B)”. As such, the specification does not clearly provide support for the recited molar ratios with respect to the claimed sulfide solid electrolyte glass ceramic of claim 1, from which claim 17 depends.
Claim Rejections - 35 USC § 112(b)
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 4-5 and 8-13 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.
Regarding claim 8, the as-amended claim recitation of ‘further processing’ renders the claim indefinite as it is not clear what is meant by ‘further processing’ in order to convert the solid electrolyte (B), an intermediate product, to the claimed final product of the sulfide solid electrolyte glass ceramic. It is not made clear what processing will result in the final product being obtained. This includes claims 4-5 and 9-13 as they depend from claim 8.
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.
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, 6-7 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US PGPub 2017/0155170) in view of Nakayama et al. (JP 2020126760 A; using Clarivate Analytics machine translation for English language citations).
Regarding claim 1, Sato teaches sulfide glass ceramic, comprising the elements of lithium, phosphorus, sulfur and one or more halogen (abstract; [0016]), and preferably having X-ray diffractometry peaks, using a CuKɑ ray, at 2Θ =20.2º and 23.6º ([0024]-0025]). Sato further teaches glass ceramic product has an appropriate degree of crystallization ([0092]; [0096]; [0099]) and has a D50 of 0.1 to 50 µm ([0119]) (instant 30 nm or more).
Sato teaches appropriate crystallization and teaches the D-50 particle size of the granular product as noted but is silent as to the crystallite sizes thereof. However, Nakayama teaches similar sulfide solid electrolytes of similar D50 particle sizes (abstract; pg4) and teaches that the crystallite size of the solid electrolyte can be readily adjusted to a specific range of 30 nm or more, in order to suppress the generation of hydrogen sulfide from the solid product, and 160 nm or less, in order to obtain high ionic conductivity (pg4). Nakayama and Sato are analogous art and are combinable because they are concerned with the same field of endeavor, namely solid sulfide glass ceramic materials of similar size and utility. At the time of filing a person having ordinary skill in the art would have found it obvious to adjust crystallite sizes to the range of Nakayama in the product of Sato and would have been motivated to do so as Sato teaches obtaining an appropriate crystallization and further as Nakayama teaches a crystallite size range of 30 nm or more and 160 nm or less is advantageous with respect to suppression of hydrogen sulfide generation and obtaining high ionic conductivity.
Sato does not teach the glass ceramic as having a phosphorous proportion amount of P2S64- in the obtained product and as such meets the limitation of 4.5 mol% or less (zero/none meeting the or less limitation), absent a demonstration to the contrary. Furthermore, Sato teaches a sulfide glass ceramic comprised of the claimed components, present in the claimed amounts, and made by a substantially similar process. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). The reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process, as noted. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (instant original specification pages 7-8 and examples). Therefore, the claimed effects and physical properties, i.e. (a P2S64- content less than 4.5 mol%) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 2, Sato in view of Nakayama renders obvious the glass ceramic as set forth in claim 1 above. Sato does not specifically teach a single exothermic peak as measured by DTA, as claimed. However Sato teaches a sulfide glass ceramic comprised of the claimed components, present in the claimed amounts, and made by a substantially similar process. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). The reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process, as noted. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (instant original specification pages 8-9 and examples). Therefore, the claimed effects and physical properties, i.e. (an intermediate product having an exothermic peak as claimed) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 3, Sato in view of Nakayama renders obvious the glass ceramic as set forth in claim 1 above. Sato further teaches that, with respect to the starting materials, the proportion of Li2S to the total of Li2S and P2S5 is in the range of 68 to 82 mol% ([0041]) and that for a sulfide solid electrolyte of the Li2S—P2S5 series will have a preferred ortho composition including a molar ratio of Li2S:P2S5 of 75:25 ([0114]). While Sato does not specifically teach analysis via an ICP emission spectrophotometer, it is held that the ratio of 3 taught by Sat falls within the claimed ratio of 2.6 or more and 3.3 or less, absent evidence to the contrary.
Regarding claims 6-7, Sato in view of Nakayama renders obvious the glass ceramic as set forth in claim 1 above. As noted, Sato teaches the glass ceramic contains lithium, phosphorus, sulfur and at least one halogen (see above; [0016]), wherein halogen preferably is selected from an iodine, fluorine, chlorine or bromine element ([0037]-[0040]).
Regarding claim 14, Sato in view of Nakayama renders obvious the glass ceramic as set forth in claim 1 above. Sato further teaches inclusion of the glass ceramic into a plurality of applications, preferably batteries ([0120]).
Regarding claims 15-19, Sato in view of Nakayama renders obvious the glass ceramic as set forth in claim 1 above. Sato further teaches that it is preferred the molar amount of each element is as follows: 2.2≤(Li/P)≤6.5 ([0110]), 3.5≤(S/P)≤4.8 ([0111]), and 0.07≤(Y/P)≤1.9, where Y is the total molar amount of iodine and bromine ([0112]). Sato further teaches that the halogen is selected from iodine, fluorine, chlorine and bromine; teaches at least one of a iodine or bromine is preferred ([0036]-[0037]).
Claims 4-5 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US PGPub 2017/0155170) in view of Nakayama et al. (JP 2020126760 A; using Clarivate Analytics machine translation for English language citations) as set forth above and further in view of Kambara et al. (US PGPub 2014/0302382).
Regarding claims 8 and 11, Sato in view of Nakayama render obvious the glass ceramic as set forth in claim 1 above. Sato further teaches methods of preparation wherein the starting materials are combined, reacted while under mechanical force, and subjected to thermal treatment ([0066]-[0103]), including methods of mechanical milling, slurry methods, etc.
Sato does not specifically teach a step(A) and step(B) as recited. However, Kambara teaches such materials can be made/obtained by a plurality of easily modified production methods where the starting materials can be combined in a plurality of ways, reacted with mechanical milling, and then are subjected to a thermal treatment ([0137]-[0205]), including methods of mechanical milling, slurry methods, and formation of intermediate precursors. Kambara teaches a method of combining the starting materials of Li2S and P2S5-, without the halide compound being present, and obtaining a precursor material (instant solid electrolyte (A)) to which the halide compound is then added and combined (instant solid electrolyte (B)), followed by heating ([0197]-[0202]). Kambara also teaches it is desirable and known to combine the halide compound with Li2S ([0178]) and teaches multiple mixing methods, steps and combinations can be selected ([0179]). Kambara and Sato are analogous art and are combinable because they are concerned with the same field of endeavor, namely sulfide solid electrolytes obtained from the combination of Li2S, P2S5 and a halide compound starting materials. At the time of filing a person having ordinary skill in the art would have found it obvious to utilize the mixing methods of Kambara in the method of combining starting materials of Sato and would have been motivated to do so as Sato teaches the method is not limited and further as Kambara teaches that such mixing methods are well-known to one of ordinary skill in the art and are suitable to obtain such compounds.
Regarding claim 4, Sato in view of Nakayama and Kambara render obvious the method as set forth in claim 8 above. Sato does not teach the presence, at any point in the production, of P2S64- and thus is held to meet the limitation of 15.0 mol% or less
(zero/none meeting the or less limitation), absent a demonstration to the contrary.
Furthermore, Sato teaches a sulfide glass ceramic comprised of the claimed components, present in the claimed amounts, and made by a method rendered obvious as noted above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (instant original specification pages 7-8 and examples). Therefore, the claimed effects and physical properties, i.e. (an intermediate product having a P2S64- content less than 15.0 mol%) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 5, Sato in view of Nakayama and Kambara render obvious the method as set forth in claim 8 above. Sato teaches a sulfide glass ceramic comprised of the claimed components, present in the claimed amounts, and made by a method rendered obvious as noted above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the references teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (instant original specification pages 8-9 and examples). Therefore, the claimed effects and physical properties, i.e. (an intermediate product having an exothermic peak as claimed) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 9, Sato in view of Nakayama and Kambara render obvious the method as set forth in claim 8 above. Sato further teaches that the amount of crosslinked sulfur forming the structure S3P—S—PS3 not substantially present in the final product ([0117]), with an I402 intensity that is 70% or less of the I417 intensity-, due to the proportion of Li2S present in the starting materials not being low ([0118]). As noted above, Kambara renders obvious first forming an intermediate product from the starting materials of Li2S and P2S5, followed by forming a second product with the halide compound, and then thermal treatment to obtain the final product. Given the method rendered obvious by Sato and Kambara the first intermediate product will have the claimed proportion of P2S74-, absent evidence to the contrary. Sato and Kambara render obvious the claimed method, utilizing the claimed components present in the claimed amounts, and the claimed reaction conditions/steps. As noted above, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP § 2112.01).
Regarding claim 10, Sato in view of Nakayama and Kambara render obvious the method as set forth in claim 8 above. Sato further teaches the sulfide solid electrolyte has a crystal structure of/similar to the structure of an Li4-xGe1-xPxS4-type ([0024]-[0025]) and specifically teaches an ortho-structure where the anion structure is PS43- ([0115]).
Regarding claim 12, Sato in view of Nakayana and Kambara render obvious the method as set forth in claim 11 above. Sato further teaches the 1st thermal treatment step is from 100 ºC or more to lower than the Tc ([0096]), teaches the 2nd thermal treatment step is undertaken a (Tc)+15ºC or more to (Tc)+60ºC or less ([0101]), where Tc is a crystallization temperature occurring on the lowest temperature side in a DTA process at a heating rate of 10 ºC/min ([0097]).
Regarding claim 13, Sato in view of Nakayana and Kambara render obvious the method as set forth in claim 8 above. As noted above, Sato teaches a two step thermal treatment. Further as noted above, Kambara renders obvious forming a first precursor material and then a second precursor material and subjecting to a thermal treatment (see above; [00197]-[0202]) where the first precursor material is obtained (see first production method) via combining starting materials and heating ([0143]). As such, both Sato and Kambara teach multiple heating steps and Kamara teaches heating both the obtained precursor materials is known.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 and 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/851,103 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar sulfide solid electrolyte glass materials having substantially similar crystalline diameters, similar XRD peaks using the CuKɑ line, and having overlapping proportions of P2S64-, as well as substantially similar methods of making such materials and uses thereof.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments/Amendments
The 35 U.S.C. 112(b) rejections of claims 4-5 and 8-13 are withdrawn as a result of Applicant’s filed claim amendments. However, note the new 112 rejections as set forth above, necessitated by said claim amendments.
The 35 103 rejection of claims 1-7 and 14 as unpatentable over Sato (US PGPub 2017/0155170) in view of Nakayama (JP 2020126760 A) is maintained. Applicant’s arguments (Remarks, pages 7-8) have been fully considered but were not found persuasive.
Applicant argues that the Examiner relies upon Sato for teaching a particular crystal structure and Applicant appears to limit that reliance to thio-LISICON Region II-type crystal structures. The Examiner notes that Sato teaches a plurality of suitable crystal structures ([0024]) which may include thio-LISICON Region II-type or similar but is not limited thereto. Sato teaches the plurality of suitable crystal structures and teaches it is preferred they contain peaks at 2Θ =20.2º and 23.6º ([0024]-0025]).
Applicant appears to misunderstand the rejection as set forth. Sato teaches that the sulfide glass ceramic obtained is crystallized to obtain appropriate crystallization ([0092]; [0096]; [0099]), i.e. the material in the granules is crystalline in nature, wherein the granular product preferably has a D50 of 0.1 to 50 µm ([0119]), but is expressly not limited thereto. Nakayama teaches that in sulfide solid electrolyte ceramics it is easy to adjust the crystallite size of the material to a range of 30 nm or more by simple pulverization methods wherein the obtained powdered product is subjected to appropriate pulverization treatment (pg4-5), for the purpose of suppressing generation of hydrogen sulfide as well as obtaining high ionic conductivity (see pg4). One of ordinary skill in the art having been appraised of the teachings of Sato regarding sulfide glass ceramics having a desired size would have found it obvious to look to the teachings of Nakayama that crystallite size of powered sulfide solid electrolytes can be readily adjusted to the 30 nm or more range via simple pulverization, resulting in suppression of hydrogen sulfide as well as increased ionic conductivity.
Applicant argues that the secondary reference of Nakayama is limited to a stable phase argyrodite type crystal structure and that Sato is limited to a metastable phase thio-LISICON Region II type crystal structure and therefore the heating steps of Nakayama would collapse the crystal structures of Sato, should the be so exposed to such temperatures, thus render Sato inoperable. Firstly, the Examiner notes that Applicant failed to make the relied upon evidentiary reference of record (the reference not being included on the IDS filed with the response or found on any prior IDS submission) and as such the reference is given little weight. Secondly, Nakayama may prefer argyrodite type crystal structures but is not limited thereto. Further Sato teaching that one optional alternative suitable material is a thio-LISICON Region II type crystal structure is similarly not a limiting recitation to the remainder of Sato who does not limit to that crystal structure type. Thirdly, the basis of the rejection is not one of subjecting the materials of Sato to the heating temperatures of Nakayama but rather of adjusting crystallite size in the manner of Nakayama i.e. simple pulverization. As Sato is not limited to the specific crystal structure relied upon by Applicant, the argument that Sato is rendered inoperable for its intended purpose via a not-relied upon heating step of Nakayama is not persuasive.
Applicant’s argument to the manner by which claim 1 “can be prepared” is not persuasive as claim 1 is not a method claim, and the ceramic material of claim 1 is not limited to the method by which it theoretically can be obtained. The combination of Sato and Nakayama renders obvious claim 1 as set forth above.
The 35 U.S.C. 103 rejection of claims 8-13 as unpatentable over Sato (US PGPub 2017/0155170) in view of Nakayama (JP 2020126760 A) and further in view of Kambara (US PGPub 2014/0302382) is maintained. Applicant’s arguments (Remarks, pages 8-9) have been fully considered but were not found persuasive.
Applicant’s argument is substantially directed to the primary combination of Sato and Nakayama as set forth above. Applicant unpersuasively argues that Kambara does not overcome alleged ‘incompatibilities’ of Sato and Nakayama (responded to by the Examiner above: no incompatibilities).
The provisional nonstatutory double patenting rejection of the instant cited claims to those of copending Application No 18/851103 is maintained. Applicant’s acknowledgment (Remarks, page 9) of the rejection is noted. As the present application is not in condition for allowance, and the double patenting rejection is not the sole remaining rejection, it would be inappropriate to withdrawn the double patenting rejection at this time.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767
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