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
Applicant’s amendment filed 12/19/2025 has been entered. Claims 1-6 are currently pending. Claims 7-9 are canceled. Claim 1 is amended. Support for the amended claims is found in the claims as originally filed.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakai et al. (US 20210098823 A1).
Regarding claim 1, Sakai discloses a solid electrolyte comprising a compound represented by the following Chemical Formula 1: Li6-a(M11-b M2b)X6 wherein M1 is aluminum (Al), zirconium (Zr), or Titanium (Ti); M2 is Tin (Sn); X comprises chlorine (Cl), bromine (Br), or Iodine (I); 0≤b≤1; and a is a number satisfying the following Mathematical Formula 1: a=(oxidation number of M1×(1-b))+(oxidation number of M2×b) (paragraphs 0012-0016, 0038, Li6-4aMaX6, wherein M may be at least one of Zr, Hf, or Ti, specifically discloses Li2ZrCl6, meeting the claimed formula when M1=Zr, b=0, X=Cl, and a=((4×1)+(0×0))=1).
Regarding claim 5, Sakai discloses the limitations of claim 1. Sakai further discloses that the solid electrolyte comprises a compound represented by the following Chemical Formula 3: Li2(Zr1-bSnb)C16 wherein 0≤b≤1 (paragraphs 0012-0016, 0038, Li6-4aMaX6, wherein M may be at least one of Zr, Hf, or Ti, specifically discloses Li2ZrCl6, meeting the claimed formula when b=0).
Claims 2-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakai et al. (US 20210098823 A1) as evidenced by Dronkowski (Dronskowski, Richard. Computational Chemistry of Solid State Materials. Weinheim, Germany: WILEY-VCH Verlag GmbH & Co. KGaA, 2005. pp 13-16).
Regarding claim 2, Sakai discloses the limitations of claim 1. Sakai further discloses that an ion size ratio of the compound satisfies the following Condition 1:
r
(
M
1
1
-
b
M
2
b
)
a
+
/
r
X
-
<
0.47
wherein
r
(
M
1
1
-
b
M
2
b
)
a
+
is an ion size of (M11-bM2b)a+; and
r
X
-
is an ion size of X- (paragraphs 0012-0016, 0038, Li6-4aMaX6, wherein M may be at least one of Zr, Hf, or Ti, specifically discloses Li2ZrCl6), meeting the claimed condition as follows: Dronkowski teaches the following ionic sizes: Zr4+=0.72Å, Cl- =1.81Å, resulting in 0.72Å/1.81Å=0.398 < 0.47 (Dronkowski pages 13-16 Table 1.1).
Regarding claim 3, Sakai discloses the limitations of claim 1. Sakai does not explicitly disclose that the solid electrolyte has a crystal structure belonging to the space group c2/m.
However, it is deemed that the crystal structure belonging to the space group c2/m is an inherent characteristic and/or property of the specifically disclosed positive active material. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, Sakai discloses a solid electrolyte of substantially identical composition to the claimed configuration (see claim 1 rejection). Furthermore, the claimed invention results in the claimed crystal structure by providing an ion size ratio satisfying Condition 1 (see instant application specification paragraph 0041). The solid electrolyte material disclosed by Sakai, as evidenced by Dronkowski, satisfies the claimed ion size ratio (see claim 2 rejection). Therefore, as Sakai teaches a solid electrolyte with a substantially identical composition and ion size ratio to the claimed invention, the claimed crystal structure belonging to a space group of C2/m must necessarily be present in the solid electrolyte material disclosed by Sakai.
Claim Rejections - 35 USC § 103
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.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al. (US 20210098823 A1).
Regarding claim 4, Sakai discloses the limitations of claim 1. Sakai does not explicitly disclose that the solid electrolyte comprises a compound represented by the following Chemical Formula 2: Li6-a(Al1-bSnb)Cl6 wherein 0≤b≤1; and 3≤a≤4. However, Sakai discloses a solid electrolyte material which may have the formula of Li(Al, Ga, In)X6, wherein X is one of F, Cl, Br, and I (paragraph 0055, meeting the claimed formula when Al and Cl are chosen from the finite selection of elements). The reference teaches that this electrolyte is included to increase ionic conductivity (paragraphs 0065-0066). The courts have held that a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because "one skilled in [the] art would... envisage each member" of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis in original). See also MPEP 2144.08. Furthermore, “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). It would have been obvious to select the claimed electrolyte material for the purpose of increasing ionic conductivity.
Regarding claim 5. Sakai discloses the limitations of claim 1. Sakai does not explicitly disclose that the solid electrolyte comprises a compound represented by the following Chemical Formula 4: Li2(Ti1-bSnb)C16 wherein 0≤b≤1. Sakai further discloses that the solid electrolyte material has a formula of Li6-4aMaX6, wherein M may be at least one of Zr, Hf, or Ti, X is a halogen, and 0<a<1.5 (paragraphs 0012-0016, overlapping the claimed formula when for example, a=1, M=Ti, X=Cl, equivalent to the claimed formula when b=0). Sakai discloses that the halogen X is preferred to be Cl or I to increase lithium ion conductivity and lists Ti, Zr, and Hf as functional equivalents in a small selection if the metal element in the electrolyte material (paragraphs 0014, 0026). The courts have held that a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because "one skilled in [the] art would... envisage each member" of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis in original). See also MPEP 2144.08. Furthermore, “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Response to Arguments
Applicant’s arguments with respect to claims 1-6 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/B.T.L./Examiner, Art Unit 1727
/Maria Laios/Primary Examiner, Art Unit 1727