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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11 in the reply filed on 3/5/2026 is acknowledged.
Information Disclosure Statement
The IDS’ filed 5/25/2023 and 8/9/2023 have been considered by examiner.
Claim Rejections - 35 USC § 112
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.
Claim 9 is 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.
Claim 9 recites the limitation “wherein the lithium ion conductor further comprises an additional oxide including P (phosphorus) and Ge (germanium)” in lines 2-4. This limitation seemingly requires a singular oxide comprising both of the elements P and Ge. However, paragraph [21] of the filed specification recites “[t]he lithium ion conductor may further include additional oxides including P (phosphorus) and Ge (germanium)” (emphasis added), and Example 3, Comparative Example 4, and Comparative Example 5 in Tables 1 and 2 of the filed specification include two different oxides, one containing P (P2O5) and another containing Ge (GeO2). None of the examples for the lithium ion conductor in the specification comprise an oxide containing both P and Ge.
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.
Claim 9 is 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.
Claim 9 recites the limitation “wherein the lithium ion conductor further comprises an additional oxide including P (phosphorus) and Ge (germanium)” in lines 2-4. This limitation seemingly requires a singular oxide comprising both of the elements P and Ge. However, the filed specification states in paragraph [142] that two separate oxides, phosphorus oxide (P2O5) and germanium oxide (GeO2), may be added as additional oxides. Therefore, it unclear whether the “additional oxide” recited in claim 9 is meant to be included as a singular compound, or as two different compounds.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aresta et al. (US 2021/0262079, hereinafter "Aresta").
Regarding claim 1, Aresta teaches an amorphous lithium borosilicate having ionic conductivity (“lithium ion conductor”) [0053, “an amorphous lithium borosilicate or doped lithium borosilicate compound using lower temperatures, whilst still providing an acceptable level of ionic conductivity”]. Aresta teaches that the lithium borosilicate includes an oxide comprising lithium, silicon, and boron [0063, “the lithium borosilicate consists essentially of a system of lithium oxide in combination with silicon oxide and/or boron oxide”]. The lithium borosilicate disclosed by Aresta is amorphous; in other words, its crystallinity is 0%. Aresta further discloses that the amorphous lithium borosilicate may be used in an all solid-state battery [0145, “The method comprises depositing an electrolyte of the battery as a layer of an amorphous lithium borosilicate compound, 0146, “The thin film battery may be produced by sequentially forming films of constituents in all-solid state”].
Further regarding claim 2, Aresta does not recite a method of calculating the crystallinity of the lithium borosilicate. However, since the lithium borosilicate taught by Aresta is amorphous, meaning it is non-crystalline, the crystallinity of the lithium borosilicate is 0%, regardless of the method used to calculate the crystallinity. The limitation reciting how the crystallinity is calculated is a product-by-process limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) [see MPEP 2113(I)]. Therefore, since the amorphous lithium borosilicate taught by Aresta has the same structure as the claimed lithium ion conductor, Aresta anticipates the lithium ion conductor of instant claim 2.
Further regarding claim 3, as described in the rejection of claim 1, Aresta teaches that the lithium borosilicate is amorphous, meaning that its crystallinity is 0% [0053, “an amorphous lithium borosilicate”].
Further regarding claim 8, Aresta teaches that lithium borosilicate may further comprise small amounts of other atoms which may preferably substitute for B or Si [0070]. Since the lithium borosilicate comprises B and Si in the lithium borosilicate in the form of oxides [0063, “the lithium borosilicate consists essentially of a system of lithium oxide in combination with silicon oxide and/or boron oxide”], when B and Si are substituted by other atoms, said other atoms form a different oxide. Aresta teaches that the atoms which may substitute for B and Si include Al, Ti, Ge, P, V, W, and S, which are recited in instant claim 8 [0071].
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 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Aresta (US 2021/0262079) as applied to claim 1 above, and further in view of Nakashima et al. (US 2020/0014071, hereinafter "Nakashima").
Regarding claim 4, Aresta teaches the lithium ion conductor of claim 1, as described in the rejection of instant claim 1. Aresta is silent regarding a porosity of the lithium ion conductor.
Nakashima teaches analogous art of an all-solid-state battery comprising a solid electrolyte layer [Abstract]. Nakashima teaches that the solid electrolyte layer may comprise oxide glass as a lithium ion conductive glass [0072], and that the oxide glass may comprise silicon oxide, boron oxide, and lithium oxide [0080]. Nakashima further teaches that the porosity of the solid electrolyte layer is particularly preferably 1% or less, which is the range recited in instant claim 4 [0112, “The porosity of the solid electrolyte layer 23 is 10% or less, preferably 7% or less, more preferably 5% or less, still more preferably 3% or less, and particularly preferably 1% or less”].
Nakashima teaches that when the porosity of the solid electrolyte layer is within this range, it is possible to suppress the short circuits between a cathode layer and anode layer included in the all-solid state battery via dendrites growing in the void of the solid electrolyte layer [0112].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the lithium ion conductor taught by Aresta to have a porosity of 1% or less as taught by Nakashima, in order to suppress short circuits occurring in an all-solid-state battery comprising the lithium ion conductor.
Regarding claim 5, modified Aresta teaches the lithium ion conductor of claim 4, as described in the rejection of instant claim 4.
As described in the rejection of claim 4 above, Nakashima teaches that the porosity of the solid electrolyte layer is particularly preferably 1% or less, which overlaps the range recited in instant claim 5 [0112, “The porosity of the solid electrolyte layer 23 is 10% or less, preferably 7% or less, more preferably 5% or less, still more preferably 3% or less, and particularly preferably 1% or less”]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) [see MPEP 2144.05(I)].
Nakashima teaches that when the porosity of the solid electrolyte layer is within this range, it is possible to suppress the short circuits between a cathode layer and anode layer included in the all-solid state battery via dendrites growing in the void of the solid electrolyte layer [0112].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the lithium ion conductor taught by modified Aresta to have a porosity within the range taught by Nakashima, in order to suppress short circuits occurring in an all-solid-state battery comprising the lithium ion conductor.
Claims 6, 7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Aresta (US 2021/0262079) as applied to claim 1 above, and further in view of Furukawa et al. (US 2017/0229734, hereinafter "Furukawa").
Regarding claim 6, Aresta teaches lithium ion conductor of claim 1, as described in the rejection of instant claim 1. Aresta does not specifically teach the mol % of lithium oxide, silicon oxide, and boron oxide recited in instant claim 6.
Furukawa teaches analogous art of a lithium ion conductor including an oxide containing lithium, silicon, and boron [0011, “A fourth aspect of the present technology is directed to a lithium ion conductor including an oxide containing lithium (Li), silicon (Si), and boron (B)”]. Furukawa teaches that the content of Li2O, is preferably 40 mol % to 73 mol %, based on a total amount of Li2O, SiO2, and B2O3, the content of SiO2 is preferably 8 mol % to 40 mol % based on a total amount of Li2O, SiO2, and B2O3, and that the content of B2O3 is preferably 10 mol % to 50 mol % based on a total amount of Li2O, SiO2, and B2O3, all which overlap the ranges recited in instant claim 6 [0072]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) [see MPEP 2144.05(I)].
Furukawa discloses that the materials of the disclosure have a high ionic conductivity [0016, “As described above, the present technology makes it possible to provide glass-ceramics having high ionic conductivity”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the lithium ion conductor taught by Aresta to include Li2O, SiO2, and B2O3 in amounts within the ranges taught by Furukawa, in order to provide a lithium ion conductor having a high ionic conductivity.
Regarding claim 7, modified Aresta teaches lithium ion conductor of claim 6, as described in the rejection of instant claim 6.
As described in the rejection of claim 6 above, Furukawa teaches that the content of Li2O, is preferably 40 mol % to 73 mol %, based on a total amount of Li2O, SiO2, and B2O3, which overlaps the recited range [0072]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) [see MPEP 2144.05(I)].
Furukawa discloses that the materials of the disclosure have a high ionic conductivity [0016, “As described above, the present technology makes it possible to provide glass-ceramics having high ionic conductivity”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the lithium ion conductor taught by modified Aresta to include Li2O in an amount within the range taught by Furukawa, in order to provide a lithium ion conductor having a high ionic conductivity.
Regarding claim 9, Aresta teaches lithium ion conductor of claim 1, as described in the rejection of instant claim 1. Aresta teaches that lithium borosilicate may further comprise small amounts of other atoms which may preferably substitute for B or Si [0070]. Since the lithium borosilicate comprises B and Si in the lithium borosilicate in the form of oxides [0063, “the lithium borosilicate consists essentially of a system of lithium oxide in combination with silicon oxide and/or boron oxide”], when B and Si are substituted by other atoms, said other atoms form a different oxide. Aresta teaches that the atoms which may substitute for B and Si include Ge and P [0071]. However, Aresta does not specifically teach whether the lithium borosilicate may comprise more than one of the other atoms.
Furukawa teaches analogous art of a lithium ion conductor including an oxide containing lithium, silicon, and boron [0011, “A fourth aspect of the present technology is directed to a lithium ion conductor including an oxide containing lithium (Li), silicon (Si), and boron (B)”]. Furukawa teaches that the lithium ion conductor may further include an intermediate oxide of at least one, meaning that more than one may be included, selected from the group of elements including P and Ge [0071].
Furukawa, like Aresta, teaches a lithium ion conductor containing Li, Si, and B for use in an all-solid-state battery [0060].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the lithium ion conductor taught by Aresta to include an intermediate oxide including P and an intermediate oxide including Ge as taught by Furukawa to yield the predictable results of a lithium ion conductor for use in an all-solid state battery [see MPEP 2143(I)(A)].
Regarding claim 10, Aresta teaches lithium ion conductor of claim 8, as described in the rejection of instant claim 8. Aresta is silent regarding an amount of the oxide comprising other atoms.
Furukawa teaches analogous art of a lithium ion conductor including an oxide containing lithium, silicon, and boron [0011, “A fourth aspect of the present technology is directed to a lithium ion conductor including an oxide containing lithium (Li), silicon (Si), and boron (B)”]. Furukawa teaches that the lithium ion conductor may further include an intermediate oxide of at least one selected from the group of elements including Al, Ti, Ge, P, V, W, and S, among several others [0071]. Furukawa further teaches that the content of the intermediate oxide is preferably 10 mol % or less based on a total amount of all of the oxides, which overlaps the range recited in instant claim 10 [0073]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) [see MPEP 2144.05(I)].
Furukawa discloses that the materials of the disclosure have a high ionic conductivity [0016, “As described above, the present technology makes it possible to provide glass-ceramics having high ionic conductivity”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the lithium ion conductor taught by Aresta to include an intermediate oxide within the range taught by Furukawa, in order to provide a lithium ion conductor having a high ionic conductivity.
Regarding claim 11, modified Aresta teaches lithium ion conductor of claim 10, as described in the rejection of instant claim 10.
As described in the rejection of instant claim 10, Furukawa teaches that the content of the intermediate oxide is preferably 10 mol % or less based on a total amount of all of the oxides, which overlaps the range recited in instant claim 11 [0073]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) [see MPEP 2144.05(I)].
Furukawa discloses that the materials of the disclosure have a high ionic conductivity [0016, “As described above, the present technology makes it possible to provide glass-ceramics having high ionic conductivity”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the lithium ion conductor taught by modified Aresta to include an intermediate oxide within the range taught by Furukawa, in order to provide a lithium ion conductor having a high ionic conductivity.
Conclusion
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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729