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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 02/18/2026 is acknowledged. The traversal is on the ground(s) that it is not possible to obtain a deprotonated layer with a pore former. This is not found persuasive because the process steps of Invention I require the porous layer to be formed by deprotonation, the product of Invention II only requires a deprotonated porous layer so a materially different process that would result in the same product may follow the process steps of providing a protonated body, using pore former burnout to form a porous layer on the body and then deprotonating with electrochemical relithiation by depositing the lithium metal to the pore formers porous layer. Thus, the requirement is still deemed proper and is therefore made FINAL. However, applicants right to file a divisional application for non-elected claims is acknowledged.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/31/2023 and 05/20/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding claims 1 and 4, the phrase "preferably" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Regarding claim 6, the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Regarding claims 2-3, 5, and 7-9 they are rejected under 112 (b) as being dependent upon independent claim 1, which is rejected under 112(b). See MPEP § 2173.05(d).
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 (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 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 1-2, 5-6 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (Garnet Electrolyte with an Ultralow Interfacial Resistance for Li-Metal Batteries, J. Am. Chem. Soc. 2018, 140, 6448−6455), hereinafter "Li".
In regard to Claims 1-2, 5-6 and 9, 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 (corrugated layer) and 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 below the surface, i.e the metal element infiltrates the porous layer (Li, Abstract, 6453). 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).
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 3 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (Garnet Electrolyte with an Ultralow Interfacial Resistance for Li-Metal Batteries, J. Am. Chem. Soc. 2018, 140, 6448−6455), hereinafter "Li" as applied to claim 1 above 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". Li and Grissa 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 Claim 3, Li et al. discloses the production method according to claim 1. While Li discloses providing a protonated LLZO it does so by aging the body in an atmosphere that contains water (Li, pg 6450), it is silent as to immersing the body to achieve the results.
Grissa et al. discloses an LLZO body which is protonated using immersion in water, ethanol, acetone or other protic solvents (Grissa, pg. 14703) and its widely adopted use in LLZO treatment (Grissa, pgs. 14700-14701). 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 body protonated with another widely used protic solvent as taught in Grissa et al. as the protonated body in Li et al. would give the skilled artisan the reasonable expectation of achieving predictable results and as doing so would amount to nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
In regard to Claims 7-8, Li et al. discloses the production method according to claim 1. While Li discloses the interfacial resistance of the cathode and LLZO being lowered after deprotonating the body (Li, 6453-6454), it is silent as to removing a part of the protonated layer by polishing the protonated layer.
Grissa et al. 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). 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 achieving the benefits taught in Grissa 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (Garnet Electrolyte with an Ultralow Interfacial Resistance for Li-Metal Batteries, J. Am. Chem. Soc. 2018, 140, 6448−6455), hereinafter "Li" as applied to claim 1 above. Li et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely manufacturing of solid electrolytes.
In regard to Claim 4, Li et al. discloses the production method according to claim 1. Li et al. also discloses 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 (corrugated layer) and also discloses higher temperatures such as 750°C and 850°C to create porosity (Li, pgs 6449-6450).
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 as does the independent claim 1 of the current application, 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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/K.M.O./Examiner, Art Unit 1725
/JONATHAN CREPEAU/Primary Examiner, Art Unit 1725
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