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 without traverse of Group I, claims 1-4, 6-8, 10-14, 16, 18, 19, 25, 26, 29 and 51-57 in the reply filed on 2/20/26 is acknowledged. Claims 30 and 45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim.
Priority
Priority to U.S. Provisional Application No. 63/348,603 is not granted for claims 1-4, 6-8, 10-14, 16, 18, 19, 25, 26, 29 and 51-57 because of the lack of support for “Li3-z[B+Q]1[S+G]3, wherein G is a second dopant being a substitute for S in the composition and being one or more elements each aliovalent with respect to S … only the second dopant … or both the first dopant and the second dopant”.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/22/24 was filed on 5/22/24. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed on 6/2/23 are accepted by the examiner.
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.
Claims 1-4, 6, 7, 13, 16, 18, 19, 25, 26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Nickel et al (US 2022/0340425).
Regarding claims 1-4, 6, 7, 13, 16, 18, 19, 25, 26, and 29, Nickel et al discloses an electrochemical cell comprising: a solid electrolyte (solid state electrolyte) comprising: a solid electrolyte precursor having the formula Li(2a-n)Yn+Sa, wherein 3≤b≤5, 3≤a≤6, wherein the precursor is preferably selected from … Li3BS3 (lithium thioborate) (z=0); wherein the precursor may further comprise at least one dopant (Q / first dopant); wherein suitable dopants include Mn, Ge, Sn, …, Si, …, wherein the dopant is present in an amount of 0.10-5.0 wt% with reference to the total weight of the precursor; wherein the dopant selected is particularly beneficial for increasing the ionic conductivity or enabling mixed electronic and ionic conduction ([0001],[0011],[0020],[0026]).
However, Nickel et al does not expressly teach z that is number greater than 0 and less than or equal to 0.40 (claims 1, 25, 29).
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Nickel solid electrolyte precursor to include z that is number greater than 0 and less than or equal to 0.40 because even if the range of prior art and the claimed range do not overlap, obviousness may still exist if the ranges are close enough that one of ordinary skill in the art would not expect a difference in properties (In re Woodruff 16 USPQ 2d 1934 (Fed. Cir. 1990)). There is no evidence of criticality of the claimed molar ratio of Li.
However, Nickel et al does not expressly teach Q that is one or more Group 14 elements and/or one or more metal elements (claim 6); wherein Q is Si and/or Ge (claim 7).
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Nickel solid electrolyte precursor to include Si and/or Ge because one of ordinary skill in the art would have been able to choose from a finite number of identified, predictable solutions with a reasonable expectation of success. The selection of a suitable dopant from the list of materials taught by Nickel et al would necessarily result in the benefit of increasing ionic conductivity or enabling mixed electronic and ionic conduction.
Regarding claims 2, 3, 16, 18, and 19, the limitations “material having a greater ionic conductivity than that of an undoped stoichiometric Li3BS3 material by a factor of at least 10 at 25°C wherein the undoped stoichiometric Li3BS3 material is free of Q and G”, “material being characterized by an ionic conductivity greater than 9x10-6 S/cm at 25°C”, “material being characterized by an ionic conductivity greater than or equal to 1x10-3 S/cm at 25°C”, “material being characterized by an electronic conductivity less than 4-10-10 S/cm at 25°C”, “material being characterized by an activation energy (Ea) for an ionic conductivity of less than 400 meV when its temperature-dependent ionic conductivity is fit to equation EQ1” are inherent characteristics of the Nickel solid electrolyte because Nickel teaches the same lithium thioborate composition characterized by formula FX1 as the present invention and also teaches increasing ionic conductivity and enabling mixed electronic and ionic conduction.
Regarding claims 4 and 13, Nickel et al also discloses a molar ratio of Ge (x) in Li3[B1-xGex]S3 based upon 0.10-5.0 wt% of dopant (Q) is 0.0018≤x≤0.088 calculated from the molecular weight of Li-3BS3 of 127.822 g/mol; and a molar ratio of Si (x) in Li3[B1-xSix]S3 based upon 0.10-5.0 wt% of dopant (Q) is 0.004≤x≤0.228; wherein the ratio of Q/(B+Q) is 0.0018 to 0.08 for Ge and 0.004 to 0.186 for Si.
However, Nickel et al does not expressly teach x that is greater than 0.025 and less than or equal to 0.05 (claim 13).
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Nickel precursor to include x that is greater than 0.025 and less than or equal to 0.05 because it has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454. 456, 105 USPQ 233, 235 (CCPA 1955)). There is no evidence of criticality of the claimed molar ratio “x” of Q.
Claims 1-3, 8, 10-12, 16, 18, 19, 25, 26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Nickel et al (US 2022/0340425) in view of Kaup et al. ("Fast Li-lon Conductivity in Superadamantanoid Lithium Thioborate Halides," Angew. Chem. Int. Ed. 60, 6975-6980, Mar. 2021, cited in IDS).
Regarding claims 1-3, 8, 10-12, 16, 18, 19, 25, 26, and 29, Nickel et al discloses an electrochemical cell comprising: a solid electrolyte (solid state electrolyte) comprising: a solid electrolyte precursor having the formula Li(2a-n)Yn+Sa, wherein 3≤b≤5, 3≤a≤6, wherein the precursor is preferably selected from … Li3BS3 (lithium thioborate) (z=0); wherein the precursor may further comprise at least one dopant (Q / first dopant); wherein suitable dopants include Mn, Ge, Sn, …, Si, …, wherein the dopant is present in an amount of 0.10-5.0 wt% with reference to the total weight of the precursor; wherein the dopant selected is particularly beneficial for increasing the ionic conductivity or enabling mixed electronic and ionic conduction ([0001],[0011],[0020], [0026]).
However, Nickel et al does not expressly teach z that is number greater than 0 and less than or equal to 0.40 (claims 1, 25, 29).
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Nickel precursor to include z that is number greater than 0 and less than or equal to 0.40 because even if the range of prior art and the claimed range do not overlap, obviousness may still exist if the ranges are close enough that one of ordinary skill in the art would not expect a difference in properties (In re Woodruff 16 USPQ 2d 1934 (Fed. Cir. 1990)). There is no evidence of criticality of the claimed molar ratio of Li.
However, Nickel et al does not expressly teach G that is a second dopant being a substitute for S in the composition, wherein the composition comprises only the second dopant, or both the first dopant or the second dopant (claims 1, 25, and 29); a material having a greater ionic conductivity than that of an undoped stoichiometric Li3BS3 material by a factor of at least 10 at 25°C, wherein the undoped stoichiometric Li3BS3 material is free of Q and G (claim 2); a material being characterized by an ionic conductivity greater than 9.10-6 S/cm at 25°C (claim 3); a composition that is characterized by the ratio G/(S+G) being greater than 0.001 and less than 0.20; wherein G is one or more Group 17 (halogen) elements (claim 10); wherein G is Cl and/or Br (claim 11); a composition that is characterized by formula FX2, FX3, or FX4: Li3-x-yB1-x[Q]xS3-y[G]y (FX2); Li3-xB1-x[Q]xS3 (FX3); Li3-yB1S3-y[G]y (FX4) (claim 12); a material being characterized by an ionic conductivity greater than or equal to 1x10-3 S/cm at 25°C (claim 16); a material being characterized by an electronic conductivity less than 4x10-10 S/cm at 25°C (claim 18); a material being characterized by an activation energy (Ea) for an ionic conductivity of less than 400 meV when its temperature-dependent ionic conductivity is fit to equation EQ1 (claim 19).
Kaup et al teaches the concept of substituting S2- with monovalent X- (Cl-, Br-, and I-) to form Li7.5[B10S18]X1.5 that exhibits high room temperature (25°C) lithium-ion conductivities (0.5, 0.9, and 1.4 mS/cm, respectively) (0.5x10-3, 0.9x10-3, 1.4x10-3 S/cm); wherein a ratio of G/(S+G) = 1.5/(18+1.5) = 0.077 (pg. 6975, col. 2, para. 3).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Nickel solid electrolyte precursor to include G that is a second dopant being a substitute for S in the composition, wherein the composition comprises only the second dopant, or both the first dopant or the second dopant; a material having a greater ionic conductivity than that of an undoped stoichiometric Li3BS3 material by a factor of at least 10 at 25°C, wherein the undoped stoichiometric Li3BS3 material is free of Q and G; a material being characterized by an ionic conductivity greater than 9x10-6 S/cm at 25°C; a composition that is characterized by the ratio G/(S+G) being greater than 0.001 and less than 0.20; wherein G is one or more Group 17 (halogen) elements; wherein G is Cl and/or Br; a composition that is characterized by formula FX2 or FX4: Li3-x-yB1-x[Q]xS3-y[G]y (FX2); Li3-yB1S3-y[G]y (FX4); a material being characterized by an ionic conductivity greater than or equal to 1x10-3 S/cm at 25°C; a material being characterized by an electronic conductivity less than 4x10-10 S/cm at 25°C; a material being characterized by an activation energy (Ea) for an ionic conductivity of less than 400 meV when its temperature-dependent ionic conductivity is fit to equation EQ1 in order to provide high room-temperature lithium-ion conductivities that is tuned by the polarizability of the anion in the channel (pg. 6975, col. 2, para. 3). In addition, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Nickel precursor to include x that is selected from the range of 0.005 to 0.20 and y that is selected from the range of 0.005 to 0.20 because it has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454. 456, 105 USPQ 233, 235 (CCPA 1955)). There is no evidence of criticality of the claimed ratios “x” and “y”.
Examiner’s note: the Office takes the position that “a material having a greater ionic conductivity than that of an undoped stoichiometric Li3BS3 material by a factor of at least 10 at 25°C, wherein the undoped stoichiometric Li3BS3 material is free of Q and G”; “a material being characterized by an electronic conductivity less than 4x10-10 S/cm at 25°C”; “a material being characterized by an activation energy (Ea) for an ionic conductivity of less than 400 meV when its temperature-dependent ionic conductivity is fit to equation EQ1” are inherent characteristics of the Nickel/Kaup precursor because Nickel et al as modified by Kaup et al teaches the same lithium thioborate composition characterized by formula FX1 as the present invention.
Claims 14 and 51-57 are rejected under 35 U.S.C. 103 as being unpatentable over Nickel et al (US 2022/0340425) in view of Aihara et al (US 2015/0093652). The Nickel reference is applied to claim 1 for reasons stated above.
However, Nickel et al does not expressly teach material having a total crystallinity less than or equal to 20 wt.% (claim 14); a material that is part of a glass electrolyte (claim 51); a material being amorphous (claim 52); a material having a total crystallinity less than or equal to 50 wt.% (claim 53); a material having a total crystallinity less than or equal to 10 wt.% (claim 54); a material having a total crystallinity less than or equal to 5 wt.% (claim 55); a material that has been amorphized to increase its ionic conductivity (claim 56); wherein the amorphized material has an increased amorphous content of the lithium thioborate composition, a decreased total crystallinity of the lithium thioborate composition, and/or an increased concentration of defects in the lithium thioborate composition compared to an equivalent material not having been amorphized (claim 57).
Aihara et al discloses an inorganic compound that may have a crystalline, amorphous, glass phase, or a glass ceramic structure ([0110]); and a sulfide solid electrolyte having a crystalline structure that is amorphized to obtain amorphous sulfide material where the amorphous phase gives higher ionic conductivity; wherein the amorphized sulfide solid electrolyte has an increased amorphous content and a decreased total crystallinity compared to an equivalent material not having been amorphized which corresponds to a total crystallinity of 0 ([0078] and Table 1, Examples 3 and 4).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Nickel solid electrolyte precursor to include a material that is part of a glass electrolyte; a material being amorphous; a material having a total crystallinity of 0; a material that has been amorphized to increase its ionic conductivity; wherein the amorphized material has an increased amorphous content of the lithium thioborate composition and a decreased total crystallinity of the lithium thioborate composition, compared to an equivalent material not having been amorphized in order to provide sulfide solid electrolytes that can be produced on a large scale with low manufacturing costs and have high ion conductivity ([0011]).
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 1-4, 6, 8, 10, 12-14, 16, 18, 19, 25, 26, and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 18/680,196 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 1-4, 6, 8, 10, 12-14, 16, 18, 19, 25, 26, and 29 of the present application is fully anticipated by claims 1-24 of copending Application No. 18/680,196.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/T.S.C/Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 3/23/2026