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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/22/2026 has been entered.
Claim Interpretation
Claim 1 recites the language “consisting substantially of: Li; M; Al: O; and X” . The examiner is interpreting the language “substantially” to be 95% or greater as required by the applicant in the final limitation of claim 1.
Examiner note
After additional search and consideration the examiner has found additional art that reads on the applicant’s claim language. In an effort to expedite prosecution a second rejection is presented.
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) 1-3 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 selected from the group consisting of F, Cl, and Br [0004, Table 1 (1-27), Nishio], 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, Br). 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, and 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.
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 (Cl and/or Br) 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.
Regarding claim 2, Nishio as modified above discloses that the solid material may be either crystalline or amorphous [0032, Nishio]. However, they are is 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; because modified Nishio teaches the instant claimed elements 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 are met.
Regarding claim 3, Nishio as modified above discloses the solid electrolyte material, wherein the X is at least one selected from the group consisting of Cl and Br [Table 1 (1-27), Nishio].
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].
Claim(s) 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Chu (US 20120009483 A1)
Regarding claim 1, Chu discloses a solid electrolyte material consisting substantially of: Li, Ta, Al, O, and X [0009-0015, Chu]. Chu discloses the following formula for a solid electrolyte:
PNG
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363
691
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Greyscale
The limitations of claim 1 are met when X = Ta, Y = F and O, Z = Al. Furthermore, there exist a plurality of overlapping ranges from the general formula above that satisfy the following claim limitations such as the Al to a sum of amounts of substance of the Ta and the Al is 10% or more and 40% or less, and 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.
Li
Ta
Al
Ta/Li
Al/(Ta+Al)
1.1
0.9
0.1
0.82
0.10
1.2
1
0.2
0.83
0.17
1.3
1.1
0.3
0.85
0.21
1.4
1.2
0.4
0.86
0.25
1.5
1.3
0.5
0.87
0.28
1.6
1.4
0.6
0.88
0.30
1.7
1.5
0.7
0.88
0.32
1.8
1.6
0.8
0.89
0.33
1.9
1.7
0.9
0.89
0.35
2
1.8
1
0.90
0.36
1.25
0.75
0.25
0.60
0.25
1.35
0.85
0.35
0.63
0.29
1.45
0.95
0.45
0.66
0.32
1.55
1.05
0.55
0.68
0.34
1.65
1.15
0.65
0.70
0.36
1.75
1.25
0.75
0.71
0.38
1.85
1.35
0.85
0.73
0.39
1.95
1.45
0.95
0.74
0.40
The examiner would like to note that if each row is doubled or tripled then the ratios stay the same, the limitations are still met, and are within the ranges noted by Chu.
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).
When the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (see MPEP 2131.02)
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive. See below for details.
Applicant argues that the use of Ta is superior ionic conductivity to Nb and that these results are unexpected.
However, the examiner notes that both Nb and Ta (along with Ti, Zr, Al, and Hf) are valve metals allows current to flow in only one direction. As such, if one wanted to optimize their material they would explore all of the valve metals and select the one that worked best for their intended purposes. While the use of Ta may display preferential properties to the other valve metals tested it doesn’t necessarily mean that the results are unexpected, but rather they optimized for their preference. Additionally, the examiner notes that while 11 experiments are presented only five constituent elements are explored. Of the five that are explored only three of them are within the original claim set (filed 10/24/2022). The examiner is not persuaded that these results are unexpected given the breadth of the claim.
Applicant then argues that Nishio’s use of Ta does not always show higher ionic conductivity than those including Nb and that the differences of ionic conductivity between the cases of Ta and Nb are not clear.
However, this argument is not persuasive as applicant is comparing two different results one with the constituent elements of the applicant Li-O-Ta-Al-X; where X = Cl and/or F and the primary reference are Li-Zr-Ta-X; where X = Cl and/or Br. Applicant’s mere allegation without supportive comparable data is not persuasive. Applicant has not provided data commensurate in scope of the claimed range nor to the closest prior art of record. Additionally, the applicant’s arguments attack the references individually and doesn’t consider the modification presented in claim 1.
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).
Next applicant argues the equivalence of Ti, Zr, Ta, Nb, Zn, W, and Al to each other and argues that Washida does not disclose that these elements are equivalent to each other in any compounds. The examiner is uncertain what the applicant means by “in any compounds”. However, Washida clearly discloses “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]. As such, Washida does clearly disclose the equivalent nature of these elements.
Finally applicant argues that the LiAO of Washida is not a solid electrolyte. The examiner notes that a reasonable definition of a solid electrolyte is solid materials that conduct ions while insulating electrons.
Washida discloses that “The positive electrode active material according to an example of the embodiments of the present invention is a positive electrode active material for an all-solid-state lithium secondary battery (referred to as “present positive electrode active material”), which is a positive electrode active material to be used for an all-solid-state lithium secondary battery using a solid electrolyte, in which a compound (referred to as “LiAO compound”) containing Li, A (A represents one or two or more elements selected from the group consisting of Ti, Zr, Ta, Nb, Zn, W, and Al), and O; and a halogen are present on the surface of a lithium-containing composite oxide.” [0015].
Wherein the positive active material is “The lithium-containing composite oxide in the present core particles, which is used as a positive electrode active material for a lithium secondary battery, can be suitably used. For example, the lithium-containing composite oxide may be any one or a combination of two or more of a lithium-containing composite oxide having a layered rock salt structure represented by a general formula: LiMO2 (M represents a metal element), a lithium-containing composite oxide having a spinel structure represented by a general formula: LiM2 O4 , and a lithium-containing composite oxide having an olivine structure represented by a general formula: LiMPO4 (M represents a metal element) or LiMSiO4 (M represents a metal element). However, the lithium-containing composite oxide described in the present invention is not limited to these.” [0017]
“Examples of the lithium-containing composite oxide having a layered rock salt structure may include a lithium-containing composite oxide represented by a general formula: LiMO2 (M represents a metal element), such as LiCoO2 , LiNiO2 , LiCo1/3 Ni1/3 Mn1/3 O2 , LiCo0.5 Ni0.5 O2 , or LiNi0.7 Co0.2 Mn0.1 O2” [0019].
Washida then notes that “By coating the surface of the present core particles with the LiAO compound, lithium ion conductivity can be improved” [0030] and that “the LiAO compound is present as a buffer layer between the positive electrode active material and the solid electrolyte, and the interfacial resistance can be reduced accordingly.” [0037]
The examiner notes that a reduction in interfacial resistance includes a reduction in charge (electrons).
While Washida does disclose a sulfide electrolyte, the inclusion of a coating of LiAO2 additionally reads on a solid electrolyte.
The examiner maintains their rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUINTIN DALE ELLIOTT whose telephone number is (703)756-5423. The examiner can normally be reached M-F 8:30-6pm (MST).
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724