DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
3. Information disclosure statements (IDS), submitted April 18, 2023 and December 6, 2023, have been received and considered by the examiner.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
5. Claims 1-2 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jordy US PG Publication 2020/0227776.
Regarding Claims 1 and 6, Jordy disloses an all-solid state battery comprising a positive electrode layer, a negative electrode layer, and a solid electrolyte layer provided between the positive and negative electrode layers (Fig. 1, paras 0095-0101, meeting Claim 6) wherein at least one of the positive and negative electrode layers and the solid electrolyte layer comprises an ionic conductor comprising Li, P, S, BH4, and I, wherein a crystalline phase X having peaks at a position of 2θ = 29.1°±0.5° (labeled “A” below) and 30.4°±0.5° (labeled “B” below) in XRD measurement using a CuKα ray is included (see entire disclosure and especially paras 0039-0062 and 0106 and Fig. 3; see annotated Fig 3 below).
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Regarding Claim 2, the annotated Fig. 3 shows that when the intensity IA of the peak A at 29.1°±0.5° is set at a value of 100%, the intensity IB of the peak B at 30.4°±0.5° is greater than 35% (it appears to be above 40%).
Regarding Claim 7, Jordy discloses wherein negative electrode contains the ionic conductor (para. 0068, the compound can be used in mixture with a negative active material of the electrochemical cell, which the skilled artisan would understand would place this ionic conductor in the negative electrode).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
6. Claims 3 and 8 are rejected under 35 U.S.C. 103 as being obvious over Jordy US PG Publication 2020/0227776.
Regarding Claim 3, Jordy teaches the claimed all-state solid battery as described in the rejection of Claim 2, which is incorporated herein in its entirety. Jordy discloses wherein IB/IA is 35% or more as recited in Claim 2, but does not teach wherein this ratio is 60% or more. However, Jordy teaches in para 0056 that a range of z values in the formula of the composition can be optimized for ionic conductivity values, and so it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to optimize the amount of BH4 (using z as its molar amount) in order to improve conductivity. The skilled artisan would appreciate that the intensities of the XRD peaks would change in intensity with the change in quantities of starting materials and the degree of incorporation of BH4 into the intermediate mixture, and would predict that the IB/IA would be 60% or more during the normal course of experimentation using different molar quantities of the components.
Further, the skilled artisan would expect the composition as analyzed by XRD in Fig. 3 to have an IB/IA that is sufficiently close to 60% that the properties would be about the same, and 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claim 8, Jordy teaches the claimed all-state solid battery as described in the rejection of Claim 7, which is incorporated herein in its entirety. Jordy discloses that the negative electrode layer can contain the ionic conductor and can contain a Li metal or Li alloy but fails to specifically disclose an embodiment having both limitations. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the battery of Jordy such that the negative electrode layer contains the ionic conductor and also contains a Li metal or Li alloy because Jordy teaches the desirability of both and the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Allowable Subject Matter
7. Claims 4-5 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. Claim 4 recites:
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There is no prior art available to teach the claimed composition. The closest prior art includes Jordy (as explained in the rejection above) but Jordy does not teach the claimed formula and instead teaches variations of the following formula:
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The Office cannot find any prior art that the skilled artisan would find obvious to modify Jordy to arrive at the claimed invention.
Tatsumisago, et al. Journal of Power Sources 244 (2013) 707-701 teaches the following formula and while this formula is similar to that which is claimed, Tatsumisago discloses Li2S as part of the formula and does not disclose LiI as part of the formula. The Office cannot find any prior art that the skilled artisan would find obvious to modify Tatsumisago to arrive at the claimed invention.
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Muldoon US PG Publication 2020/0099046 discloses the following formula where B can include LiBH4 and/or LiI. The Office cannot find any prior art that the skilled artisan would find obvious to modify Muldoon to arrive at the claimed invention.
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Yu et al. Small Methods 2021, 5, 2100609 discloses the following formula and while this formula is very similar to that which is claimed, the XRD data for this composition does not have the claimed peaks. The Office cannot find any prior art that the skilled artisan would find obvious to modify Yu et al. to arrive at the claimed invention.
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López-Aranguren et al. Solid State Ionics 339 (2019) 114987 discloses a production method for ionic conductor Li6PS5I0.83(BH4)0.17 (this material also meeting Claim 1’s limitations) but does not teach the composition of Claim 4 and there is no prior art available to teach such a material.
8. Claims 9-11 are allowed. The closest prior art (Jordy and López-Aranguren) teach the same material as claimed in Claim 9, but these references very clearly teach against an annealing step unless additional ball milling is carried out (see sections 3.1-3.1.4 of López-Aranguren and paras 0114 and Fig 4 of Jordy) and, critically, the second short milled material does not have the claimed, defined XRD peaks required by Claim 9. The closest prior art simply does not teach any advantage to the annealing step in a way that would encourage the skilled artisan to modify the prior art to arrive at the claimed invention. Claims 10 and 11 are allowable based on their dependencies on Claim 9.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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/LISA S PARK/Primary Examiner, Art Unit 1729