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(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 4, there is a lack of antecedent basis for ‘solid electrolyte (B) as a production intermediate’. As claim 1 is directed to a complete product and not to an intermediate product, a method of making, or a product-by-process, it is not clear what is being limited, especially as the amount claimed is 15.0% by mole or less (i.e can be zero) could be interpreted as optional.
Regarding claim 5, there is a lack of antecedent basis for ‘solid electrolyte (B) as a production intermediate’. As claim 1 is directed to a complete product and not to an intermediate product, a method of making, or a product-by-process, it is not clear what is being limited.
Regarding claim 8, the claim is indefinite for several reasons. Firstly, the step (B) recitation is unclear as to what is included in the treating step (i.e. each of solid electrolyte (A) and Li2S (additional) and a lithium halide; or the solid electrolyte (A) which comprises Li--2S (not additional, of step (A)) and a lithium halide). Secondly there is no recitation linking product obtained from claim 8 to the sulfide solid electrolyte product of claim 1. Rather, the method as claimed first produces a solid electrolyte (A) and uses that to then produce a solid electrolyte (B) with no recitation either i) linking solid electrolyte (B) to (as in it is) the claimed sulfide solid electrolyte or ii) a further step which forms the claimed sulfide solid electrolyte from the solid electrolyte (B). It is further rendered unclear as solid electrolyte (B) is elsewhere referred to as intermediate product and thus it is not clear how the recitation of claim 8 produces the claimed sulfide solid electrolyte glass ceramic of claim 1. Therefore the claim is rejected as being incomplete for omitting essential steps, such omission amounting to a gap between the steps (see MPEP § 2172.01). This includes claims 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 1-7 and 14 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 claim 4, Sato in view of Nakayama renders obvious the glass ceramic as set forth in claim 1 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 substantially similar process. 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 renders obvious the glass ceramic as set forth in claim 1 above. 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). 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 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]).
Claims 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 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 1-14 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.
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