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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-6 & 8-11 are pending in the application and are presently examined. Claims 1-11 were rejected in the 12/19/2025 office action. Applicant cancelled claim 7.
Response to Amendment / Arguments
The 4/19/2026 amendment, in response to the 12/19/2025 office action, has been entered.
Claim 1 was rejected under 35 U.S.C. 112(b) because it states “an adsorption rate… is 50% or less”, but the normal definition of “rate” is amount / time. Also, even if use of percent is correct, it is unclear what the denominator is for calculation of this percent.
Applicant argued that the definition of the adsorption rate is in the specification, paragraph 207, which presents the following equation: “Adsorption rate (%) = [(WB - WA)/WB] × 100”. This 35 U.S.C. 112(b) rejection may be overcome by amending claim 1 to include this definition of adsorption rate, along with clear definitions of WB & WA.
Applicant’s claim amendments overcame the 35 U.S.C. 103 rejections; nevertheless, the claims remain rejected under 35 U.S.C. 103 due to additional prior art.
Claim Interpretation
Claim 1 refers to a hydrocarbon group. The present specification fails to state that the hydrocarbon group can include atoms other than carbon and hydrogen. For present examination, a “hydrocarbon group” consists only of hydrogen and carbon, according to the standard definition1,2.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim 1 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding Formula 1, claim 1 states:
“R2 represents a group consisting of a -CO-O- group or a -CO-N(RN)- group and a hydrocarbon group having 4 or more carbon atoms, wherein RN represents a hydrogen atom, an alkyl group having 1 to 6 carbon atoms, or an aryl group having 6 to 10 carbon atoms”
The present specification defines R2 as a hydrocarbon group with 4 or more carbon atoms bonded to a linking group which is bonded to another hydrocarbon group (paragraphs 83-84). The linking group can be -CO-O- or -CO-N(RN)-. The hydrocarbon group with 4 or more carbon atoms is bonded to the same carbon as R1 is bonded to.
The present specification thus fails to teach that R2 consists of the linking group (-CO-O- or -CO-N(RN)-) and a hydrocarbon group having 4 or more carbon atoms.
Claims 2-6 & 8-11 are rejected due to their dependence on claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor(s) regard as the invention.
Claim 1 states: “an adsorption rate… is 50% or less”. The normal definition of “rate” is amount / time. Also, even if use of percent is correct, it is unclear what the denominator is for calculation of this percent.
Claim 1 also states:
“R2 represents a group consisting of a -CO-O- group or a -CO-N(RN)- group and a hydrocarbon group having 4 or more carbon atoms, wherein RN represents a hydrogen atom, an alkyl group having 1 to 6 carbon atoms, or an aryl group having 6 to 10 carbon atoms”
It is unclear whether the “hydrocarbon group having 4 or more carbon atoms” is only bonded to the -CO-N(RN)- group, or is bonded to either the -CO-O- group or the -CO-N(RN)- group.
It is unclear whether the “hydrocarbon group having 4 or more carbon atoms” or the -CO-N(RN)- and -CO-O- groups are innermost (i.e. closest to the carbon atom that R1 is bonded to).
Claims 2-6 & 8-11 are rejected due to their dependence on claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 1-5 & 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over US20180277892A1 (Mimura) in view of US20190372160A1 (Makino).
Mimura teaches the following claim 1 limitations:
An inorganic solid electrolyte-containing composition for an all-solid state secondary battery (title), comprising:
an inorganic solid electrolyte having an ion conductivity of a metal belonging to Group 1 or Group 2 in the periodic table (abstract; paragraph 68);
a polymer binder (abstract), wherein a polymer that forms the polymer binder is a (meth)acrylic polymer containing… a constitutional component having a functional group selected from the following group (a) of functional groups… <Group (a) of functional groups>… a urethane bond (paragraph 132: urethane group —NHCOO—)… and
a dispersion medium (abstract)
Although Mimura teaches a urethane bond / group (—NHCOO—), Mimura fails to teach 0.01 mol% to 50 mol% urethane. Makino teaches this claim limitation.
Makino is directed to a solid electrolyte with improved adhesiveness and toughness (paragraphs 5-6). Makino teaches 2 to 50 mol% urethane (i.e. polyurethane) in the binder (Table 1, paragraph 402: examples B-1 through B-24). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Mimura’s binder to have 2 to 50 mol% urethane, as taught by Makino, as part of a solid electrolyte with improved adhesiveness and toughness.
Claim 1 also requires the polymer binder to include Formula 1-1. This limitation was rejected under 35 U.S.C. 112(a) & 35 U.S.C. 112(b). It is not possible to analyze this limitation until the 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejections are resolved; therefore, this claim limitation is presently disregarded for prior art analysis.
Claim 1 also recites:
wherein an adsorption rate of the polymer binder to the inorganic solid electrolyte, measured with the inorganic solid electrolyte present in the dispersion medium, is 50% or less, and
the inorganic solid electrolyte and the polymer binder satisfy a relationship defined by Expression (1) in terms of surface energy,
(Xse - Xba)2 + (Yse - Yba)2 ≤ R2 Expression (1)
in the expression, Xse represents a dispersion element of surface energy of the inorganic solid electrolyte, and Yse represents a polarity element of the surface energy of the inorganic solid electrolyte, Xba represents a dispersion element of surface energy of the polymer binder, and Yba represents a polarity element of the surface energy of the polymer binder, and R is 20
Mimura fails to explicitly teach these properties. Modified Mimura, however, teaches the claimed structural components (inorganic solid electrolyte, polymer binder, & dispersion medium); therefore, presumably Mimura’s composition has the claimed properties. MPEP 2112(I) provides guidance for this issue:
“‘[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). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
The patent office does not have the ability to test, or to obtain data for, every possible property. Measurement of a property does not make an old substance patentable.
With regard to claim 2, modified Mimura teaches the limitations of claim 1 as noted above. Claim 2 recites:
the adsorption rate is 5% or more and less than 30%
As discussed under claim 1, although Mimura fails to explicitly teach an adsorption rate; however, Mimura’s composition is presumed to have this property, because Mimura teaches all components of the claimed composition.
With regard to claim 3, modified Mimura teaches the limitations of claim 1 as noted above. Mimura also teaches the following claim 3 limitation:
an active material (paragraphs 69-75: lithium sulfide)
Claim 3 also recites:
wherein the active material and the polymer binder satisfy a relationship defined by Expression (2) in terms of surface energy,
(Xam - Xba)2 + (Yam - Yba)2 ≤ r2 Expression (2)
in the expression, Xam represents a dispersion element of surface energy of the active material, and Yam represents a polarity element of the surface energy of the active material,
Xba represents the dispersion element of the surface energy of the polymer binder, and Yba represents the polarity element of the surface energy of the polymer binder, and
r is 30
Mimura fails to explicitly teach these properties. Mimura, however, teaches the claimed structural components (inorganic solid electrolyte, polymer binder, dispersion medium, & active material); therefore, presumably Mimura’s composition has the claimed properties.
With regard to claim 4, modified Mimura teaches the limitations of claims 1 & 3 as noted above. Claim 4 also recites:
the inorganic solid electrolyte, the polymer binder, and the active material satisfy a relationship defined by Expression (3) in terms of surface energy,
RSE + RAM ≤ 30 Expression (3)
in the expression, RSE2 represents a left side of Expression (1), and RAM2 represents a left side of Expression (2)
Mimura fails to explicitly teach these properties. Mimura, however, teaches the claimed structural components (inorganic solid electrolyte, polymer binder, & active material); therefore, presumably Mimura’s composition has the claimed properties.
With regard to claim 5, modified Mimura teaches the limitations of claims 1 & 3 as noted above. Mimura teaches the following claim 5 limitations:
the dispersion medium contains at least one selected from an aromatic compound or an aliphatic compound (paragraph 21: the dispersion medium is an aromatic compound), and the polymer binder has a molecular weight of 70,000 to 1,000,000 (paragraph 111: polymer molecular weight is 30,000 to 1,000,000)
Mimura’s 30,000 to 1,000,000 range overlaps the claimed 70,000 to 1,000,000 range. MPEP 2144.05 (II)(A) provides the law for this issue:
“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)”
Given that Mimura’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the polymer molecular weight range in claim 5 is an obvious variant of Mimura’s range.
With regard to claim 8, modified Mimura teaches the limitations of claim 1 as discussed above. Mimura also teaches the following claim 8 limitation:
A sheet for an all-solid state secondary battery, comprising a layer formed of the inorganic solid electrolyte-containing composition according to claim 1. (paragraph 45: the solid electrolyte layer 3 includes the inorganic solid electrolyte)
With regard to claim 9, modified Mimura teaches the limitations of claim 1 as discussed above. Mimura also teaches the following claim 8 limitation:
An all-solid state secondary battery comprising, in the following order:
a positive electrode active material layer (paragraph 46; figure 1: positive electrode active material layer 4);
a solid electrolyte layer (paragraph 45; figure 1: solid electrolyte layer 3); and
a negative electrode active material layer (paragraph 46; figure 1: negative electrode active material layer 2),
wherein at least one of the positive electrode active material layer, the negative electrode active material layer, or the solid electrolyte layer has a layer formed of the inorganic solid electrolyte-containing composition according to claim 1. (paragraph 45: the solid electrolyte layer 3 includes the inorganic solid electrolyte)
With regard to claims 10-11, modified Mimura teaches the limitations of claim 1 as discussed above. Mimura also teaches the following limitations of claims 10-11 (paragraphs 20-28 & 298-306):
Claim 10
A manufacturing method for a sheet for an all-solid state secondary battery, the manufacturing method comprising forming a film of the inorganic solid electrolyte-containing composition according to claim 1.
Claim 11
A manufacturing method for an all-solid state secondary battery, the manufacturing method comprising incorporating a sheet for an all-solid state secondary battery, which is obtained by the manufacturing method according to claim 10, into an all-solid state secondary battery.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US20180277892A1 (Mimura) in view of US20190372160A1 (Makino), as applied to claim 1, and further in view of US20200235425A1 (Mochizuki). Mimura fails to teach the following claim 6 limitation, which is taught by Mochizuki:
a difference between an SP value of the dispersion medium and an SP value of the polymer binder is 3 or less (paragraph 173: difference in SP value between the dispersant and the polymer is 0.5 to 4)
Mochizuki is directed to a solid electrolyte composition with an inorganic solid electrolyte, a binder with a polymer, and a dispersant (abstract). The dispersant and the polymer are selected for dispersion stability, low resistance, strong binding properties, and excellent battery performance. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Mimura’s composition to have 0.5 to 4 difference between SP values of the dispersant and the polymer binder, as taught by Mochizuki, for dispersion stability, low resistance, strong binding properties, and excellent battery performance.
Mochizuki’s 0.5 to 4 range overlaps the claimed ≤ 3 range. MPEP 2144.05 (II)(A) provides the law for this issue:
“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)”
Given that Mochizuki’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the SP difference range in claim 6 is an obvious variant of Mimura’s range.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
1 https://en.wikipedia.org/wiki/Hydrocarbon
2 https://www.britannica.com/science/hydrocarbon
Prosecution Insights