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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/21/2026 has been entered.
Claim Interpretation
Applicant has request that in claim 1 the language “consisting substantially of: Li; M; Al: O; and X” to be interpreted within the full range of the disclose as opposed to being 95% or greater as required by claim 1. The instant specification notes that “substantially” is 90% or more [page 2 line 33- page 3 line 3].
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 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2, 4, 5 and 11 of Takeuchi (U.S. Patent No. 12640393B2) in view of Washida (WO 2019035418 A1; English equivalent US 20210135199 A1).
Regarding claim 1 of the instant application, Takeuchi (claim 5) discloses A solid electrolyte material consisting of: Li; M1; M2; O; and X, wherein M1 is at least Ta, M2 is at least Zr, X is at least Cl, a molar ratio of a total amount of Li, M1, M2, O, and X to a total amount of all elements constituting the solid electrolyte material is 95% or more, and a molar ratio of M2 to a total amount of M1 and M2 is more than 0% and 60% or less (dependent claim 4 claims 10%-50%).
Takeuchi (claim 2) claims the solid electrolyte material includes a crystalline phase having a peak within a range of a diffraction angle 2θ from 11.08° to 14.12° in an X-ray diffraction pattern obtained by X-ray diffraction measurement using a Cu-Kα ray.
Takeuchi is silent to 1) the use of Al instead of Zr. 2) a ratio of an amount of substance of the Ta to an amount of substance of the Li is 60% or more and 90% or less. 3) The ionic conductivity of the solid electrolyte material.
In regards to 1) Washida discloses a solid electrolyte with a lithium containing composite oxide (LiAO) [0015, Washida]. Where A is one or more of (Ti, Zr, Ta, Nb, Zn, W, and Al) [0015, Washida], and a halogen is present on the surface of the lithium containing composite oxide [0015, Washida]. Washida notes that “Nb and Ti, Zr, Ta, Zn, W, and Al are common in that they are valve metals, and it can be considered that the same effect can be obtained.” [0159, Washida].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Nishio such that: Zr is substituted with Al as a matter of art recognized equivalent, see MPEP 2144.06.
Washida provides a list of valve metals that are recognized in the art as equivalents as they serve the same purpose and function with a reasonable expectation of similar results.
The examiner notes that as presently modified Takeuchi has a ratio of an amount of substance of the Al (“M2”) to a sum of amounts of substances of the Ta (“M1”) and the Al (“M2”) that overlaps with the applicant’s claimed range of “a ratio of an amount of substance of the Al to a sum of amounts of substance of the Ta and the Al is 10% or more and 40% 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 (see MPEP 2144.05).
In regards to 2) Takeuchi produces examples in which the solid electrolyte material is produced using “ Li2O2 , TaCl5 [“M1”], and ZrCl4 [“M2”] were prepared as raw material powders at a molar ratio of Li2O2 :TaCl5 :ZrCl4 =1:1.8:0.2.” [col 11 lines 27-29, Takeuchi]. Along with examples in which the solid electrolyte material is produced using “ Li2O2 , TaCl5 [“M1”], and ZrCl4 [“M2”] were prepared as raw material powders at a molar ratio of Li2O2 :TaCl5 :ZrCl4 =1:1:.” [col 12 lines 65-67, Takeuchi]. The examiner notes that as presently modified “M2” would be an aluminum source (e.g. “AlCl3”). However, in Takeuchi’s embodiment the ratio of Ta to an amount of substance of Li would be 1.8:2 = 90% and 1:2 = 50%.
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 (see MPEP 2144.05).
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Takeuchi such that a ratio of an amount of substance of the Ta to an amount of substance of the Li is 60% or more and 90% or less. This is a known ratio of Ta to Li that is able to produce solid electrolyte materials [col 11 lines 27-29, col 12 lines 65-67, Table 1 Takeuchi].
In regards to 3) as discussed in greater detail below in the rejection of claim 1. A solid electrolyte material consisting substantially of Li, Ta, Al, O, and Cl. Where the ratio of Al to Ta and Al is 10% and the ratio of Ta to Li is 90% an ionic conductivity of 4.2 mS/cm and greater is observed [Table 1, page 13 lines 15-16, page 15 lines 9-10, instant spec].
This would read on the applicant’s claimed range of an ionic conductivity of 3.2 mS/cm or more.
The examiner notes that Takeuchi discloses a solid electrolyte material that uses “ Li2O2 , TaCl5 [“M1”], and ZrCl4 [“M2”] were prepared as raw material powders at a molar ratio of Li2O2 :TaCl5 :ZrCl4 =1:1.8:0.2.” [col 11 lines 27-29, Takeuchi]. As noted above, Takeuchi as presently modified uses Al in place of Zr.
As such, this would produce a solid electrolyte material that has the constituent elements Li-O-Ta-Al-Cl with a molar ratio of Al/(M+Al) of 0.2/(1.8+0.2) = 10%, and a ratio of Ta/Li of 1.8/2 = 90%. These materials are shown to inherently have an ionic conductivity of 4.2 mS/cm or greater [page 13 line 15-17, table 1, instant spec]. As well as a diffraction peak where 2θ is between 11.08 o to 12.50o [page 13 line 15-17, table 1, instant spec]
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.
Claim(s) 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Nishio (WO 2020070958 A1; English equivalent US 20210098824 A1) and in view of Washida (WO 2019035418 A1; English equivalent US 20210135199 A1) and as evidenced by Electronegativity Cl vs O.
Regarding claim 1, Nishio discloses a solid electrolyte material [0004, Nishio] consisting substantially of: Li, M, Zr, and X [0004, Nishio Li6−(4+a)b(Zr1−aMa)bX6, M= Ta and/or Nb, X = a halogen element,: 0<a<1 and 0<b<1.5.], wherein the M is at least one selected from the group consisting of Ta and Nb [0004, Nishio], the X is at least one halogen element (e.g. Cl) [0004, 0016, table 1 Nishio’s disclosure reads on at least one of F and Cl], and a ratio of a sum of amounts of substance of the Li, the M, the Zr, and the X to a total of amounts of substance of all elements constituting the solid electrolyte material is 95% or more [0004, Table 1 (1-27), Nishio discloses only using the elements Li, (Ta, Nb), Zr, and Cl. As such, the ratio of a sum of amounts would be 100%], and a ratio of an amount of substance of the M to an amount of substance of the Li is 60% or more and 90% or less [0004, Nishio].
Nishio discloses a general formula of Li6−(4+a)b(Zr1−aMa)bX6, M= Ta and/or Nb, X = a halogen element,: 0<a<1 and 0<b<1.5. This overlaps with the applicants claimed range when b = 1 and 0.75≤a≤0.9; when a = 0.75 and b = 1 the ratio of M/Li = 0.75/1.25 = 0.6, when a = 0.9 and b = 1 the ratio of M/Li = 0.81.
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 (see MPEP 2144.05).
Nishio is silent to 1) The use of aluminum in place of zirconium. 2) The presence of oxygen. 3) A ratio of an amount of substance of the Al to a sum of amounts of substance of the M and the Al is 10% or more and 40% or less. 4) the XRD of the crystalline phase. 5) The ionic conductivity of the solid electrolyte material.
In regard to 1) and 2), Washida discloses a solid electrolyte with a lithium containing composite oxide (LiAO) [0015, Washida]. Where A is one or more of (Ti, Zr, Ta, Nb, Zn, W, and Al) [0015, Washida], and a halogen is present on the surface of the lithium containing composite oxide [0015, Washida]. Washida notes that “Nb and Ti, Zr, Ta, Zn, W, and Al are common in that they are valve metals, and it can be considered that the same effect can be obtained.” [0159, Washida].
The works of Nishio and Washida are analogous as both are a lithium composite solid electrolyte material. The material is comprised of lithium, one or more valve metals (i.e. Zr, Nb, Ta, Al, etc.), and an electronegative ion-conducting element (i.e. halide, oxide).
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Nishio such that:
A) Zr is substituted with Al as a matter of art recognized equivalent, see MPEP 2144.06. Washida provides a list of valve metals that are recognized in the art as equivalents as they serve the same purpose and function with a reasonable expectation of similar results.
B) Have both oxygen and a halide be present in the composite. For clarity of the record, the modified solid electrolyte material would have the following general formula Li, Al, (Nb, Ta), X; where X = a halogen element (e.g. Cl) and oxygen]. As both halide [0025-0030, Nishio]and oxide [0007-0009, Washida] composites have been reported to have high lithium-ion conductivity. One of ordinary skill in the art would appreciate that substituting a less electronegative element with a more electronegative element (Cl, e.n. = 3.16 vs O, e.n. = 3.44, see Electronegativity Cl vs O) will predictably lead to a solid electrolyte material with high lithium-ion conductivity barring evidence to the contrary.
In regards to 3) by substituting Zr with the equivalent valve metal Al the new general formula of modified Nishio is concerning the elements Li, Al, and M where M = Ta and/or Nb is as follows Li6−(4+a)b(Al1−aMa)b, 0<a<1 and 0<b<1.5 (for simplicity the examiner is not considering the presence of the halide and oxygen elements in the general formula) . 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 (see MPEP 2144.05). For example, and being consistent with the exemplified values of a and b used previously in the rejection of claim 1. When b = 1 and 0.75≤a≤0.9 then a ratio of Al/(M+Al) is as follows:
when a = 0.75 then (1-0.75)/(0.75+(1-0.75)) = 0.25/(0.75+0.25) = 25%
when a = 0.9 then (1-0.9)/(0.9+(1-0.9)) = 0.1/(0.9+0.1) = 10%.
Therefore, the ratio of Al to the sum of Al and M in modified Nishio reads on the applicant’s claimed range.
In regards to 4) Nishio as presently modified above discloses that the solid material may be either crystalline or amorphous [0032, Nishio]. However, they are explicitly silent to the X-ray diffraction peaks. One of ordinary skill in the art would appreciate that the location and presence of these peaks is dependent on the elements present and crystallinity of the material; because modified Nishio teaches the instant claimed elements (a solid electrolyte material consisting substantially of Li, Ta, Al, O, and Cl. Where the ratio of Al to Ta and Al is 10-40 mol% and the ratio of Ta to Li is 60-90%. ) and it would have been obvious to one of ordinary skill in the art to use a crystalline phase selecting from the finite (two) options taught as viable by Nishio ([0032]) the peaks claimed (2θ from 11.08o to 12.50o) are met. Notably, when the ratio of Al to Ta and Al is 10% and the ratio of Ta to Li is 90% and a first peak range of 2θ from 11.13o to 12.50o is observed [Table 1, page 13 lines 15-16, page 15 lines 9-10, instant spec]. The examiner notes that the final products of Nishio overlap with the applicant’s claimed range.
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 (see MPEP 2144.05).
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003), see MPEP 2112.II.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999), see MPEP 2112.I.
In regards to 5) the examiner notes that the final product of Nishio as presently modified is the same as that of the instant invention and as such inherently overlaps with the applicant’s claimed ionic conductivity. Specifically, a solid electrolyte material consisting substantially of Li, Ta, Al, O, and Cl. Where the ratio of Al to Ta and Al is 10-40 mol% and the ratio of Ta to Li is 60-90%. As noted by the applicant in the instant specification [Table 1, instant spec]. When solid electrolyte materials possess these features above an ionic conductivity of greater than 9.2 * 10-1 mS/cm is observed [Table 1, instant spec]. Notably, when the ratio of Al to Ta and Al is 10% and the ratio of Ta to Li is 90% an ionic conductivity of 4.2 mS/cm and greater is observed [Table 1, page 13 lines 15-16, page 15 lines 9-10, instant spec]. The examiner notes that this is greater than the claimed range of 3.2 mS/cm or greater as such, the final products of Nishio overlap with the applicant’s claimed range.
Because of this one of ordinary skill within the arts would appreciate that two materials possessing the same composition will produce the same results. In this case the same results are an Ionic conductivity greater than 3.2 mS/cm.
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 (see MPEP 2144.05).
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003), see MPEP 2112.II.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999), see MPEP 2112.I.
Regarding claim 8, Nishio as modified above discloses a battery comprising: a positive electrode [0005, Nishio]; a negative electrode [0005, Nishio]; and an electrolyte layer disposed between the positive electrode and the negative electrode [0005, Nishio], wherein at least one selected from the group consisting of the positive electrode, the negative electrode, and the electrolyte layer includes the solid electrolyte material [0005, Nishio].
Regarding claim 9 and as discussed above in the rejection of claim 1, modified Nishio discloses that the solid material may be either crystalline or amorphous [0032, Nishio]. However, they are explicitly silent to the X-ray diffraction peaks. One of ordinary skill in the art would appreciate that the location and presence of these peaks is dependent on the elements present and crystallinity of the material; because modified Nishio teaches the instant claimed elements (a solid electrolyte material consisting substantially of Li, Ta, Al, O, and Cl. Where the ratio of Al to Ta and Al is 10-40 mol% and the ratio of Ta to Li is 60-90%. ) and it would have been obvious to one of ordinary skill in the art to use a crystalline phase selecting from the finite (two) options taught as viable by Nishio ([0032]) the peaks claimed (2θ from 11.08o to 12.50o) are met. Notably, when Al to Ta and Al is 10% and Ta to Li is 90% and a first peak range of 2θ from 11.13o to 12.50o is observed [Table 1, page 13 lines 15-16, page 15 lines 9-10, instant spec]. The examiner notes that the final products of Nishio overlap with the applicant’s claimed range.
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 (see MPEP 2144.05).
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003), see MPEP 2112.II.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999), see MPEP 2112.I.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Nishio as applied to claim 1 above, and further in view of Sakaida (US20220384843A1; priority extending to 02/14/2020).
Regarding claim 10, modified Nishio discloses that the solid electrolyte material may contain at least one halogen element and discloses explicit examples where the halogen (X) is Cl or Cl/Br [0016, table 1, Nishio].
However, modified Nishio is explicitly silent to wherein the X is CI and F.
Sakaida however, discloses of a solid electrolyte material that includes Li, Zr, Al, and F [abstract, Sakaida]. Including a general formula of Li6-(4-x)b (Zr1-x Alx)bF6, where mathematical relations 0<x<1 and 0<b≤1.5 are satisfied [0023, Sakaida].
Sakaida further teaches that incorporating fluorine into the solid electrolyte material one can obtain an electrolyte with high(er) oxidation resistance as a result of fluorines high oxidation-reduction potential [0016, Sakaida].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Nishio such that the halide (X) within the solid electrolyte material contained both Cl and F. Having both would allow for a material with high(er) lithium ion conductivity [0030, Nishio], in addition to improvements towards oxidation resistance [0016, Sakaida].
In regards to the diffraction angles and ionic conductivity limitations within claim 1. As discussed above in the rejection of claim 1, the examiner notes that a solid electrolyte material consisting substantially of Li, Ta, Al, O, and Cl and with the ratio of Al to Ta and Al is 10% and the ratio of Ta to Li is 90% an ionic conductivity of 4.2 mS/cm and greater is observed [Table 1, page 13 lines 15-16, page 15 lines 9-10, instant spec].
One of ordinary skill within the arts would appreciate that:
1) Because fluorine and lithium form strong bonds materials containing these two elements usually have low lithium ion conductivity [0016, Sakaida]. However, one is able to increase the ionic conductivity of the solid electrolyte material by incorporating anions of than fluorine, such as Cl, Br, I, O, S, and Se [0017, Sakaida].
2) One may increase the lithium ion conductivity of a solid electrolyte material by having a high atomic percentage of the halide being Cl [0030, Nishio]. Such as, 80 atomic % or more of the halide (X) being Cl [0030, Nishio]. Further improvements to lithium ion conductivity may be observed when all of the halide is Cl [0030, Nishio].
As such, one of ordinary skill within the arts prior to the effective filing date would understand that the ratio of chlorine to fluorine within the solid electrolyte material is a result-effective variable, see MPEP 2144.05.II. It is known that different halides (i.e. F and Cl) perform different functions within a solid electrolyte material. A higher concentration of chlorine is known to improve the lithium ion conductivity in the solid electrolyte material. However, one is able to improve the oxidation resistance of the solid electrolyte materials by incorporating fluorine into them. With the caveat being that fluorine is known to form strong interactions with lithium that hinders ion conductivity of lithium through the material.
For these reasons, one of ordinary skill within the arts would appreciate that the halide (X) of the solid electrolyte material containing Cl and F would contain minor amounts of F such that it does not sacrifice too much of the lithium ion conductivity of the material. The examiner notes Nishio teaches of at least 80 atomic % or more of the halide (X) being Cl [0030, Nishio]. However, one would appreciate that an atomic % of Cl being at least 95 atomic % would result in greater lithium ion conductivity [0030, Nishio].
As such, one of ordinary skill within the arts would find it obvious to further modify Nishio such that the halide (X) of the solid electrolyte material containing Cl and F contained Cl in an atomic % of at least 95% and an atomic % of F being 5% or less. Doing so would allow for one to have greater lithium ion conductivity [0030, Nishio] in the material while still providing improvements to the oxidation-reduction potential of the material [0016, Sakaida].
The examiner notes that for solid electrolyte materials consisting substantially of Li, Ta, Al, O, and Cl and with a ratio of Al to Ta and Al is 10% and a ratio of Ta to Li is 90% an ionic conductivity of 4.2 mS/cm and greater is observed along with diffraction peaks between 11.08 o to 12.50o [Table 1, page 13 lines 15-16, page 15 lines 9-10, instant spec].
Furthermore, a solid electrolyte materials consisting substantially of Li, Ta, Al, O, and Cl/F, with a ratio of Al to Ta and Al is 10%, a ratio of Ta to Li is 90%, and a ratio of F/X (where X = Cl + F) of 5% or less additionally results in an ionic conductivity of 3.2 mS/cm or more and diffraction peaks between 11.08 o to 12.50o [Table 1, page 13 lines 15-16, page 15 lines 9-10 and lines 22-23, instant spec].
As such, the solid electrolyte material consisting substantially of Li, Ta, Al, O, and Cl/F, with a ratio of Al to Ta and Al is 10%, a ratio of Ta to Li is 90%, and a ratio of F/X (where X = Cl + F) of 5% or less will inherently have an ionic conductivity of at least 3.2 mS/cm and a diffraction angle within the range of 11.08 o to 12.50o.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003), see MPEP 2112.II.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999), see MPEP 2112.I.
Response to Arguments
Applicant's arguments filed 08/21/2026 have been fully considered but they are not persuasive. See below for details.
Applicant argues that the examiners rejection is improper as it relies on an alleged impermissible assumption that merely selecting certain elements and broad compositional ratios would necessarily produce that claimed ionic conductivity. The examiner does not find this to be persuasive as they are not merely selecting certain elements and broad compositional ratios but rather they have demonstrated how the prior art reads on the limitations of the claimed invention. The prior art presented by the examiner shows how one of ordinary skill within the arts could arrive at the instant invention. The examiner further notes that the “broad compositional ratios” are not “broad compositional ratios” but rather the claimed ratios of the instant invention. Presently the examiner maintains that they have provided a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art, see MPEP2112.IV. The applicant has not demonstrated how the examiners reasoning would not yield a product with the inherent characteristics that necessarily flows from the teachings of the art.
Applicant then argues the differences in ionic conductivity of Nishio and the claimed invention. However, in doing so applicant attacks the references individually and does not consider modified Nishio as presented in the rejection of claim 1.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Additionally, the examiner, Nishio, and the applicant all appear to be in agreement that ionic conductivity is a result that varies with composition.
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Applicants Remarks filed 08/21/26
As such, comparing the ionic conductivities of Nishio is not persuasive in arguing the ionic conductivities of modified Nishio as they are different compositions.
Applicant’s arguments regarding claim 8 are not persuasive as claim 1 is still rejected and the applicants arguments for claim 8 reciting subject matter not shown in the cited references is not persuasive. The rejection of claim 8 points to where the limitations may be found in the cited art. The examiner maintains their rejection as the applicant does not point to how the examiner is wrong.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
The examiner maintains their rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hayashi (US12658472B2) teaches of solid electrolyte material is represented by the following composition formula (1), LiaAlbOcXd.
Tanaka (US12068453B2 and US12080846B2) teaches of a solid electrolyte material according to the present disclosure consists essentially of Li, M, O, and X. M is at least one element selected from the group consisting of Nb and Ta, and X is at least one element selected from the group consisting of Cl, Br, and I.
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724
/STEWART A FRASER/Primary Examiner, Art Unit 1724
