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 .
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.
Claim(s) 1-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US 2020034580 A1) in view of Koga (US 20210184253 A1).
Regarding claim 1, Yushin teaches a secondary battery (Yushin, 0021) with a positive electrode, a porous separator filled with solid electrolyte, a negative electrode with a current collector, lithium which gets plated on the current collector by charging and is present between the anode current collector and the solid electrolyte, fig. 11 shows the lithium being plated into pores, 1108, which are present on the anode current collector, 1110, which means the plated lithium is between the anode current collector and the cathode, or first, solid electrolyte, 1113 (Yushin, fig. 11, 0196 further describes fig. 11 and the general structure of the secondary battery as well as the lithium being plated into pores), and a second solid electrolyte that can contain magnesium to form a magnesium mixture layer (Yushin, 0156, different electrolytes can be used for the anode and cathode portions; labelled 1115 and 1113 respectively in fig. 11, 0102 further says that a suitable solid electrolyte can be a complex hydride that contains lithium in addition to another metallic element such as magnesium which means that a magnesium mixture layer in the anode region, 1115, comprising magnesium and an electrolyte is obvious and would be present between the current collector, 1110, and the cathode, or first, solid electrolyte, 1113).
Yushin is silent to the young’s modulus values of specific electrolyte compositions but does give an overall range of 0.1 GPA and 100 GPA (Yushin, 0067). Koga teaches a secondary battery with a solid electrolyte that comprises separate compositions that each have a different Young’s modulus value where at least one of the compositions can be a complex hydride with a lower young’s modulus compared to another electrolyte composition (Koga, 0004, second composition has a lower Young’s modulus that the first, 0119, complex hydride as the second composition). Doing this allows the second electrolyte to deform under pressure and fill in gaps between the first electrolytes particles to improve ionic conductivity (Koga, 0029-0030).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to take the secondary battery of Yushin and apply the Young’s modulus of the second electrolyte, which can be a complex hydride electrolyte containing lithium and magnesium, be lower than a first electrolyte composition, which is taught in Koga and allowed by Yushin. Doing so allows the second electrolyte to deform under pressure and fill in gaps between the first electrolytes particles to improve ionic conductivity (Koga, 0029-0030).
Regarding claim 2, Yushin in view of Koga teaches the secondary battery of claim 1 as described regarding claim 1 and Yushin further teaches that the Young’s modulus of the electrolytes can be between 0.1 GPA and 100 GPA (Yushin, 0067) which fully encompasses the instant application and it would have been obvious to a person of ordinary skill in the art in view of routine experimentation and the optimization of ranges, see MPEP 2144.05. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 3, Yushin in view of Koga teaches the secondary battery of claim 1 as described regarding claim 1 and Yushin further teaches that known solid electrolytes include sulfide-based solid electrolytes which can be called the first solid electrolyte (Yushin, 0047).
Regarding claim 4, Yushin in view of Koga teaches the secondary battery of claim 1 as described regarding claim 1 as discussed which uses a complex hydride containing lithium and magnesium as a suitable solid electrolyte which can be called the second solid electrolyte.
Regarding claim 5, Yushin in view of Koga teaches the secondary battery of claim 1 as described regarding claim 1 and Yushin further teaches that there can be a protective layer present on the surface of the anode current collector that acts as a barrier between the current collector and the solid electrolyte to prevent undesirable interactions, labelled as 1111 in fig. 11 (Yushin, fig. 11, 0196). Further, it is explained that this protective layer can comprise a metal or metal oxide which can improve wettability, reduce resistance, or improve stability. Included in these metals is magnesium oxide and magnesium (Yushin, 0124).
Regarding claim 6, Yushin in view of Koga teaches the secondary battery of claim 1 as described regarding claim 1 and Yushin further teaches that lithium nickel oxide can be used as a cathode material (Yushin, 0025).
Regarding claim 7, Yushin in view of Koga teaches the secondary battery of claim 1 as described regarding claim 1 and Yushin further teaches that stainless-steel is known in the art to be used for current collector foils for lithium ion and lithium metal batteries and is therefore rendered obvious (Yushin, 0052).
Regarding claims 8-10, Yushin in view of Koga teaches the secondary battery of claim 1 as described above, and Yushin further teaches that the separator membrane (Yushin 0052, SSE separator membrane which is between the first electrolyte layer and the negative current collector and fits the criteria for a Mg mixture layer, fig. 11) comprises elongated particles such as nanowires, whiskers, nanofibers, nanotubes, flakes, etc. (Yushin 0168). The magnesium particles are ceramic particles and can be in the form of nanowires, nanofibers etc. (Yushin 0086). The elongated particles have an average smallest dimension (diameter) below around 500 nm which overlaps with the claimed range and therefore renders the range obvious to one of ordinary skill in view of overlapping ranges and routine experimentation in order to achieve high porosity and increased ionic conductivity, See MPEP 2144.05 (Yushin, 0168).
Regarding claim 12, Yushin in view of Koga teaches the secondary battery of claim 1 as described above. A filling ratio of the Mg mixture layer is described in the instant application as “volume of Mg mixture layer calculated from true density” divided by “volume of actual Mg mixture layer” times 100. In other words this is a ratio of the amount of space it should take up vs how much it actually takes up, which can also be described as the inverse of the porosity. Yushin teaches the porosity of the electrolyte layers is less than 5% which would put the filling ratio at 95% which is a value greater than 80% and therefore renders the claim obvious (Yushin 0176).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US 2020034580 A1) in view of Koga (US 20210184253 A1) and further in view of Caban-Acevedo et al. (US 20230411595 A1).
Regarding claim 11, Yushin in view of Koga teaches the secondary battery of claim 8 as described above but is silent to specifically the Mg particles having a mean particle diameter greater than the mean particle diameter of the second electrolyte particles. Caban-Acevedo teaches a solid electrolyte and that it is advantageous for the center of the SSE to comprise larger particles, such as larger elongated particles, larger nanofibers, larger nanowires etc., in order to provide enhanced mechanical stability and improved performance (Caban-Acevedo 0152). It would have been obvious for one of ordinary skill in the art to take the secondary battery of modified Yushin and have the magnesium particles, which are in the form of elongated particles, nanofibers, nanowires, etc. as taught by Yushin, be larger In order to provide enhanced mechanical stability and improved performance as taught in Caban-Acevedo.
Claim(s) 13-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US 2020034580 A1) in view of Koga (US 20210184253 A1) and further in view of Nishimura et al. (US 20200259214 A1).
Regarding claims 13-16, Yushin in view of Koga teaches the secondary battery of claim 1 as described above but is silent to the mixture layer comprising 40-60% by mass of magnesium or 40-60% by mass everything except magnesium. Nishimura teaches an electrolyte composition with magnesium oxide particles. The content of the oxide particles is between 5% by mass and 60% by mass which makes everything else except magnesium within the range of 40% to 95% (Nishimura 0088). These ranges overlap with the claimed ranges and therefore render them obvious in view of overlapping ranges and routine experimentation in order to change the charge and discharge properties, See MPEP 2144.05 (Nishimura 0119, changing the ratio the contents enables charging and discharging at high load factors).
Regarding claim 17, Yushin in view of Koga teaches the secondary battery of claim 1 as described above but is silent to an exact thickness of the magnesium mixture layer. Nishimura teaches an electrolyte composition with magnesium oxide particles. The electrolyte composition has a thickness of 5 microns to 200 microns for improving electrical conductivity and strength (Nishimura 0121). As this range is a smaller range encompassed by the instant application’s claimed range, it is rendered obvious, See MPEP 2144.05.
Response to Arguments
Applicant’s addition of new claims 8-17 filed 04/27/2026 have been acknowledged and will be evaluated on the merits.
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument that it would not be obvious to combine Yushin and Koga in order to form claim 1 as described above, this argument is unpersuasive.
Yushin as a primary reference establishes the existence of a first and second solid electrolyte including a solid electrolyte between the first solid electrolyte and the negative electrode current collector in which the second solid electrolyte later includes Mg. The primary reference is only silent with respect to the difference in Young’s modulus. As discussed in the rejection the difference in Young’s modulus between solid electrolytes is known, and given the discussion in Yushin of the use of different solid electrolytes for the two layers it would have been obvious to one of ordinary skill to utilize different Young’s modulus given the different materials. Also given the discussion in Koga that the softer modulus electrolyte allows for preventing and reducing defects at particle boundaries it is obvious to utilize a lower Young’s modulus material in the particle layer of Yushin.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference rather the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.
The basis of Applicant’s argument is that Yushin teaches that mixing solid electrolyte powders is expensive and complex as well as that the resulting structure of a liquid-infiltration technique includes a smooth electrolyte surface edge which is incompatible with the particle method of Koga. However, the smooth electrolyte surface edge is only an example of what may indicate the process with which the electrolyte is made, by liquid-infiltration, which is irrelevant to the final resulting product as claimed. Further, the smooth surface edge is only in reference to visible areas that expose the electrolyte in a cell and there is no reason as to why this would applicable to a boundary between two electrolytes in the center of a cell. Regarding the argument that mixing powders is expensive, just because there is one negative aspect to something does not detract from the fact that there is still a benefit that would make it obvious to combine, in this case improved ionic conductivity is exemplified. Further, regardless of if the solid electrolytes are made of particles, a gel, or some variation thereof, there is interaction at the interface between electrolytes where you would want to fill in gaps to improve ionic conductivity. In view of the unpersuasive arguments, the 103 rejection of claims 1-7 is being maintained.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN ROBERT BROWN whose telephone number is (571)272-0640. The examiner can normally be reached M-F, 9-5 ET.
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/SEAN R. BROWN/Examiner, Art Unit 1743 /GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
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