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 .
Response to Amendment
The Amendment filed on 7/7/2026 has been entered. Claim 4 is cancelled. Claims 12-21 are withdrawn. Claims 1-3 and 5-21 remain pending in the application. Applicant’s amendments to the claims have overcome each and every 112(a) and 112(b) rejection previously set forth in the Non-Final Office Action mailed 4/7/2026.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Aresta et al. (US 2021/0262079, hereinafter "Aresta") in view of Nakashima et al. (US 2020/0014071, hereinafter "Nakashima").
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”]. 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.
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 5, modified Aresta teaches the lithium ion conductor of claim 1, as described in the rejection of instant claim 1.
As described in the rejection of claim 1 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.
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].
Claims 6, 7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Aresta (US 2021/0262079) in view of Nakashima (US 2020/0014071) as applied to claim 1 above, and further in view of Furukawa et al. (US 2017/0229734, hereinafter "Furukawa").
Regarding claim 6, modified 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 modified 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, modified 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 modified 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, modified 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 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.
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.
Response to Arguments
Applicant's arguments filed 7/7/2026 have been fully considered but they are not persuasive.
As described above, instant claim 1 is rejected under 35 U.S.C. 103 as obvious over Aresta (US 2021/0262079) in view of Nakashima (US 2020/0014071). Applicant’s first argument is that the porosity of Nakashima’s solid electrolyte layer is not necessarily equivalent to the porosity of the claimed lithium ion conductor material itself because “other factors, such as interfaces, voids, and structural features arising during manufacturing of the battery” may have an effect on the porosity of the solid electrolyte layer [Remarks, pg. 8].
In response to this argument, it is noted that instant claim 1 recites a lithium ion conductor comprising an oxide including lithium, silicon, and boron. The term “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps [see MPEP 2111.03(I)]. Claim 1 does not exclude additional elements apart from an oxide including lithium, silicon, and boron from being included in the “lithium ion conductor”. The solid electrolyte layer taught by Nakashima must be able to conduct lithium ions, therefore Nakashima’s solid electrolyte layer is itself “a lithium ion conductor”. Additionally, claim 1 does not recite that the lithium ion conductor must be in an un-sintered or otherwise un-processed state. Thus, this argument is not commensurate in scope with the claims, and the rejection is maintained.
Applicant’s second argument is that it has not been established that a person having ordinary skill in the art would have had a reasonable expectation of success in the modification of Aresta’s lithium borosilicate electrolyte with Nakashima’s porosity teaching because Aresta “does not identify porosity as a parameter affecting the performance of its amorphous lithium borosilicate thin films” [Remarks, pg. 9].
In response to this argument it is noted that arguments presented by applicant cannot take the place of evidence in the record [see MPEP 2145(I)]. See also In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.") [MPEP 2145(I)]. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) [see MPEP2143.02(II)]. However, no evidence has been presented by the applicant supporting the allegation that a person having ordinary skill in the art would have no reasonable expectation of success.
Furthermore, "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396 [see MPEP 2141.03(I)]. In this case, a person having ordinary skill in the art would want to prevent short circuiting, which is a known issue in lithium based batteries [Aresta, 0006, “The electrolyte physically separates the anode and cathode, so it must have extremely low electrical conductivity to prevent short circuiting of the battery”, 0008, “In the case of the oxides (LLTO, thio-LISICON and NASICON-type) the transition metals within the electrolyte are prone to reduction which causes the material to exhibit electronic conductivity and thus short circuit the battery”]. Therefore, a person having ordinary skill in the art would be able to apply the teachings of Nakashima to the lithium borosilicate of Aresta in a battery, or, in other words, fit the teachings of Aresta and Nakashima together like pieces of a puzzle. Finally, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references (emphasis added). Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Thus, this argument is not considered persuasive, and the rejection is maintained.
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.
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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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