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 1-11 are pending in the application and are presently examined.
Claim Rejections - 35 USC § 112
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 recites:
An inorganic solid electrolyte-containing composition… comprising:
an inorganic solid electrolyte…
a polymer binder; and
a dispersion medium,
wherein an adsorption rate of the polymer binder with respect to the inorganic solid electrolyte in the dispersion medium is 50% or less…
Claim 1 initially presents the inorganic solid electrolyte and the dispersion medium as separate components – not as one inside the other. Claim 1 then refers to “the inorganic solid electrolyte in the dispersion medium”. If the inorganic solid electrolyte is in the dispersion medium, then it should be introduced as such.
It is unclear whether the inorganic solid electrolyte must be in the dispersion medium for the composition, or whether only the measurement is performed with the inorganic solid electrolyte in the dispersion medium.
A rate is amount / time. It is unclear how the adsorption rate can be a percentage.
A percentage is a portion of something. This adsorption rate is 50% of what?
Claims 2-11 are rejected due to their dependence on claim 1.
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.
(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.
The claims are in bold font, the prior art is in parentheses.
Claims 1-4 & 7-11 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US20180277892A1 (Mimura).
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); and
a dispersion medium (abstract)
Claim 1 also recites:
wherein an adsorption rate of the polymer binder with respect to the inorganic solid electrolyte 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. 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, 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; Mimura’s composition is presumed to have this property, because Mimura teaches all components of the claimed composition.
With regard to claim 3, 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, 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 7, Mimura teaches the limitations of claim 1 as discussed above. Mimura also teaches the following claim 7 limitation:
a polymer that forms the polymer binder contains a constitutional component having a functional group selected from… a hydroxy group, an amino group, a carboxy group, a sulfo group, a phosphate group, a phosphonate group, a sulfanyl group, an ether bond, an imino group, an ester bond, an amide bond, a urethane bond, a urea bond, a heterocyclic group, an aryl group, a carboxylic acid anhydride group, and a fluoroalkyl group (paragraph 142: a hydroxy group)
With regard to claim 8, 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, 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 claim 10, 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 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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US20180277892A1 (Mimura). 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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US20180277892A1 (Mimura), as applied to claim 1, 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
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721