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
The amendment filed on 07/15/2026 has been entered. Claims 1, 4, 6 and 9 are amended, Claim 3 is canceled, Claims 1-2 and 4-16 are pending and Claims 10-16 are withdrawn from consideration.
Claim Rejections - 35 USC § 112
The 35 U.S.C. 112(b) rejection of Claims 1-9 is withdrawn in view of the amendment filed 07/15/2026.
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.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Grissa et al. (Impact of Protonation on the Electrochemical Performance of Li7La3Zr2O12 Garnets, ACS Appl. Mater. Interfaces 2021, 13, 14700−14709), hereinafter "Grissa" in view of Li et al. (Garnet Electrolyte with an Ultralow Interfacial Resistance for Li-Metal Batteries, J. Am. Chem. Soc. 2018, 140, 6448−6455), hereinafter "Li". Grissa and Li et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely manufacturing of solid electrolytes.
In regard to Claims 1-2 and 5-6, and 9, Grissa et al. discloses a method for producing a solid-state battery with a solid electrolyte, wherein the method comprises the following successive steps: - a step of protonating a body containing a protonatable ceramic material (LLZO), which forms a protonated layer on the body wherein in the protonation step, the body is immersed in a protic solvent selected from water, acetone and ethanol (Grissa, pgs 14701-14703) as LLZO immersed in ethanol. Grissa et al. also discloses subsequently a step of deprotonating the protonated layer which results in a porous layer (Grissa, pgs 14704-14706) and a step of depositing a metal element forming an anode on the deprotonated layer on a first side of the body (Grissa, pgs 14706-14707).
While Grissa describes deprotonating the protonated layer which produces a porous layer it is silent as to that layer specifically being provided with mini-cavities and of infiltrating the mini-cavities of the porous layer by the metal element. However, Grissa points to Li et al. as describing the porosity after deprotonating a protonated layer (Grissa, 14707) and Li et al. discloses a method for producing a solid-state battery with a solid electrolyte, wherein the method comprises the following successive steps: a step of providing an LLZO with a protonated layer formed on the body as the H+/Li+ exchange between garnet and moisture is understood to protonate as protons in moist air replace a part of the Li+ ions in garnet (Li, pgs. 6448, 6450) and a step of deprotonating the protonated layer by reacting the garnet with carbon at 700 °C so as to obtain a layer provided with mini-cavities as Li discloses a corrugated layer (Li, 6452-6453).
Li also discloses a next step of depositing a molten (melted) lithium metal element forming an anode on the deprotonated layer on a first side of the body wherein the penetration reaches at least a few hundred nanometers below the surface (Li, 6453), as well as the metal element infiltrates the porous layer to at least 0.7Ωm and that “The black point on the LLZT-C surface is from residual metallic lithium in a hole of rough LLZT-C surface” (Li, Abstract, 6451-6453, Figure 5 and caption). Li et al. also discloses a step of assembling a LiFePO4 cathode on a second side of the body, preferably opposite the first side of the anode (6453-6454). Li further discloses the benefit of the deprotonating step and resulting porosity is that the surface of the garnet is free of Li2CO3, it significantly reduces the interfacial resistances and is then wet by a metallic lithium anode, an organic electrolyte, and a solid composite cathode (Li, Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a LifePo4 cathode and the carbon assisted deprotonation step to aid in lithium metal penetration and lithium transport across the garnet/electrode interface as taught in Li to the protonated body disclosed in Grissa as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Li and as doing so would amount to nothing more than the use of a known technique to improve similar devices (methods, or products) in the same way.
In regard to Claim 4, Grissa in view of Li et al. discloses the production method according to claim 1. Grissa et al. also discloses the body is heated to a predefined temperature in a range of 300-900°C, to separate the protons from the protonated layer (Grissa, pg 14401), which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. 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). See MPEP § 2144.05.
In regard to Claims 7-8, Grissa in view of Li et al. discloses the production method according to claim 1. Grissa et al. also discloses that polishing is commonly used in the art to prepare LLZO surfaces for contacting with anodes and cathodes (Grissa, 14701) and that interfacial resistances are successfully suppressed by polishing and rinsing in ethanol (Grissa, 14702). Li et al. discloses contacting a cathode on a surface of the LLZO (Li, Abstract). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide an LLZO with a polished unprotonated part of the body as taught in Grissa et al. as the LLZO part of the body to attach the cathode as disclosed in Li et al. as doing so would give the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than applying a known technique to a similar device (method, or product) ready for improvement to yield predictable results.
Response to Arguments
Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive. In regard to applicants’ arguments against claim 1 and the 102(a)(1) rejection requiring anticipation, the argument is moot as the ground of rejection is now a 35 U.S.C. 103 rejection based on the claim amendment. Further, in regard to applicants arguments against Li for not disclosing a porous layer after deprotonation which is infiltrated with lithium metal, as described in the 35 U.S.C. 103 rejection above, Li discloses a step of depositing a molten (melted) lithium metal element forming an anode on the deprotonated layer on a first side of the body wherein the penetration reaches at least a few hundred nanometers below the surface (Li, 6453), as well as the metal element infiltrates the porous layer to at least 0.7Ωm and that “The black point on the LLZT-C surface is from residual metallic lithium in a hole of rough LLZT-C surface” (Li, Abstract, 6451-6453, Figure 5 and caption) which reasonably discloses a porous layer with mini cavities infiltrated with metal anode material.
In regard to applicants’ arguments that Li in view of Grissa is improper due to impermissible hindsight and Li’s temperature ranges, this argument has been fully considered but is moot as the ground of rejection relies on Grissa as a primary reference and Li as a secondary reference and the reasoning and motivation to combine is disclosed in the 35 U.S.C 103 rejection above.
Lastly, applicants request to hold the double patenting rejection of record in abeyance is acknowledged however, the double patenting rejection will only be withdrawn if and when all the requirements are met.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-10 of copending Application No. 18/187432 (reference application) in view of Grissa et al. (Impact of Protonation on the Electrochemical Performance of Li7La3Zr2O12 Garnets, ACS Appl. Mater. Interfaces 2021, 13, 14700−14709), hereinafter "Grissa".
Although the claims at issue are not identical, they are not patentably distinct from each other because while the independent claim 1 of the reference application does not require a deprotonation step or immersing the body in a protic or acidic solvent, including water, acetone, mineral oil or ethanol as the independent claim 1 of the current application does, Claim 3 of the reference application requires wherein in the protonation step, the body is immersed in a protic or acidic solvent, including water, acetone, mineral oil or ethanol and Claim 4 of the reference application requires a heating step applied to the body before applying the melted metal anode material and although not named as a deprotonation step, as evidenced by Grissa, heating the protonated solid electrolyte to this temperature range in fact results in deprotonation (Grissa, pg. 14704) and thus the invention of the reference application is nothing more than an obvious variant where the temperature of deprotonation is performed at a lower range than the current application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ohta et al. (US 20200152977 A1), hereinafter “Ohta” discloses a garnet solid electrolyte which is protonated via solvent, deprotonated under heat treatment which forms a porous layer with mini cavities (Ohta, Abstract, Mehtod of Producing a Composite Structure, Production of Garnet Oxide).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at (571) 270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
