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 § 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, 2 and 4-13 are rejected under 35 U.S.C. 103 as being unpatentable over Asano et al. (US 20190088995) in view of Senga et al. (US 20100151335)
Regarding claims 1, 2 and 4, Asano discloses a solid electrolyte composition containing the claimed composition formula with a (1) Lithium, (2) a halogen such as F, Cl, Br, or I and (3) yttrium ([0021], [0037]).
Asano fails to teach that the composition contains a solvent and moreover that it contains one with the claimed Hansen solubilities. Asano also fails to explicitly teach a blend of varying halogen choices as X1.
Senga, drawn also to the art of solid electrolyte compositions for batteries (abstract), discloses an alternative way of producing the solid layer which includes blending with a solvent, doctor blading or spin coating and then drying to form the solid sheet, whereby the solvent used can be xylene or toluene ([0049] – [0051]). The examiner notes that xylene naturally has a Hansen solubility polar parameter of 0.5 while toluene naturally has a Hansen solubility polar parameter of 1.4.
It would have been obvious in view of Senga to have blended the composition of Asano with a solvent and film formed it for the predictable outcome of forming a solid electrolyte layer. The MPEP notes that (1) combining prior art elements according to known methods to yield predictable results and (2) use of known technique to improve similar devices (methods, or products) in the same way (see MPEP 2143). Additionally, Senga notes that the method of forming has excellent processibility and ion conductivity ([0008]).
Regarding blending multiple halogen choices (i.e. I, Br, Cl and/or F), it would have been obvious to an ordinary skilled artisan to have done so to create a blend of these suitable choices as each is taught as suitable for the same purpose. The MPEP notes that (1) combining prior art elements according to known methods to yield predictable results, and (2) simple substitution of one known element for another to obtain predictable results are both matters obviousness in the absence of unexpected results (MPEP 2143(I)).
Regarding claims 5-7, Asano discloses a binder in the solid electrolyte layer whereby the binder can be a styrene-butadiene rubber, which is an elastomeric resin with repeating styrenes by nature ([0235]).
Regarding claims 8 and 9, as noted above, Senga discloses the method of film forming which implicitly involves drying (i.e. removing the solvent) as an undried coating would be a coating and not a film, but nonetheless, Senga also explicitly discloses drying to film form ([0080]). Asano discloses the claimed arrangement of a solid electrolyte layer between a positive and negative electrode (figure 1).
Regarding claim 10, as disclosed above, the particulars of the electrolyte composition and the film-forming method forming a sheet are suggested by Asano in view Senga. Asano further teaches the thickness of the electrolyte layer can be 1-100 micrometers, which overlaps and thus renders obvious the claimed range of 1-20 micrometers ([0053]). The MPEP notes that where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). Asano fails to teach the claimed surface roughness; however, as noted above, Asano in view of Senga, generally discloses the same composition and film forming method as the present claims and thus is reasonably expected to have similar surface roughness. The examiner notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977). Additionally evidencing the surface roughness is the thinness of Asano. A roughness of greater than 37% (0.37 micrometers in relation to the 1-micrometer thickness) would be both unlikely and undesirable as it creates inconsistent properties across the thickness of the battery relating to the large regional thickness fluctuations. The desire to create uniform layers would have been apparent to an ordinary skilled artisan.
Regarding claim 11, as disclosed above in claims 9 and 10, the claimed battery layer stack and solid electrolyte layer are suggested by Asano in view of Senga.
Regarding claims 12 and 13, as noted above Asano discloses both Cl and Br as suitable choices. While Asano does not explicitly disclose blending the two choices, it would have been obvious to an ordinary skilled artisan to have done so to create a blend of both suitable choices as each is taught as suitable for the same purpose. The MPEP notes that (1) combining prior art elements according to known methods to yield predictable results, and (2) simple substitution of one known element for another to obtain predictable results are both matters obviousness in the absence of unexpected results (MPEP 2143(I)).
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Asano and Senga, as provided above, and further in view Fujiki et al. (US 20180351159).
Regarding claims 10 and 11, as noted above, the claims are believed to be rendered obvious over Asano and Senga; however, for the of expediting prosecution the examiner notes that the claimed surface roughness is explicitly disclosed by Fujiki for the purposes of creating even current flow ([0010]). As such, any questions as to whether the surface roughness would have been known, is further addressed via the prior art. It would have been known and obvious to have tailored the surface roughness so as to foster even current flow.
Allowable Subject Matter
Claims 14-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Asano generally discloses the nature of the present invention as it relates to the present solid electrolyte, the presence of solvent, the nature of halide-based electrolyte and the choices of compounds. Asano also discloses the use in battery environments. In addition, the previous rejections established that Mimura discloses a highly similar compound. Claims 14-17 include a specific solid electrolyte formula with a specified type of solvent, a blend of halogens and an M1 that includes both Yttrium and another metal. While individual features of the invention are known throughout the prior art, the prior art fails to teach or suggest the entirety of presently claimed amendments.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
The applicant’s arguments with respect to the 112b are found to be persuasive and those rejections are hereby withdrawn.
The applicant’s arguments relating to the rejection over Mimura are persuasive and the new claim amendments have overcome that rejection.
The applicant’s arguments relating to the rejection over Asano are fully considered, but the examiner respectfully disagrees. As provided above, Asano discloses that the use of Cl and Br were both known. Blending two known choices into a third would have been predictably successful as provided above. The examiner notes, however, that as provided in claims 14-17, the distinction of blending halogens in the context of the full invention and coupled further with a Yttrium/metal M1 blend appears to be a matter of distinction from the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alk can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746