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 .
Claim Status
Claims 1, 5, 10-11 are amended.
Claims 2-4 are cancelled.
Claim 12 is new.
Claims 1, 5-12 are considered on the merits.
Response to Arguments
Applicant's arguments filed 04/09/2026 have been fully considered but they are not persuasive. Applicant argues that the instant application has specific differences from the cited references as follows:
The cited art fails to disclose or suggest the claimed features as amended.
Nishio provides no working Examples or any other direction or suggestion where an aluminum compound is employed as the compound containing Group 13 elements.
The claimed invention exhibits advantageous properties based on working Examples 5, 6, 8, 10, 12-15.
In regard to argument a, Nishio is relied upon for the teaching of a boron or aluminum containing additive. Nishio teaches wherein the additive is the boron compound ([0016]) and teaches where the additive is added at 0.1-15wt% which can be converted to mol/kg depending on the additive selected ([0055]-[0056]; [0059]). Nishio teaches multiple working examples using a boron containing additive and the number of moles of the boron compound relative to 1 kg of the electrolyte varies depending on the molecular weight of the boron containing additive ([0100]; [0105]). Nishio teaches a working example where a boron containing additive is present at 0.38 mol/kg ([0100]; [0105]1).
In regard to argument b, Claim 1 requires “wherein the additive is at least one of a boron compound or an aluminum compound”. Nishio is relied upon to teach a Group 13 containing compound and provides specific working examples of a boron containing compound. Due to the use of the phrase “at least one of”, an aluminum containing compound is not required for Claim 1.
In regard to argument c, the arguments are not commensurate in scope with the claims. Claim 1 requires a when the additive is the boron compound “a number of moles of the boron compound relative to 1 kg of the electrolyte is 0.1 to 0.55 mol/kg” while Examples 5, 8, 10, 12-15 are directed towards a specifically trimethyl borate at a concentration of 0.13mol/kg – 0.52mol/kg. Further, Claim 1 requires when the additive is the aluminum compound “a number of moles of the aluminum compound relative to 1 kg of the electrolyte is 0.005 to 0.04 mol/kg” however working Example 6 contains specifically aluminum isopropoxide at a concentration of 0.013 mol/kg.
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.
Claim(s) 1, 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto et al. (JP2003157719A) in view of Kim et al. (US 20190288333 A1), in further view of Nishio (JP 2006252878 A), all cited on the IDS filed 9/15/2023. Reference is made to the enclosed machine translation of Morimoto and Nishio.
Regarding claim 1, Morimoto teaches an electrolyte comprising an ionic liquid, an inorganic oxide, and a binder ([0006]-[0008]; [0011]; molten salt is considered equivalent to ionic liquid, the insulating ceramic is considered equivalent to an inorganic oxide, and the polymer is considered equivalent to a binder). Morimoto teaches wherein the electrolyte comprising an ionic liquid, an inorganic oxide, and a binder is a solid electrolyte ([0006]-[0008]; [0014]). Morimoto contemplates the inclusion of additional components if properties of the electrolyte are not impaired ([0016]).
Morimoto does not teach wherein the binder is formed from raw materials that are a polycarbonate polyol and a polyisocyanate, wherein the binder includes, at an end, at least one functional group selected from the group consisting of a trialkoxysilyl group having 1 to 4 carbon atoms, an epoxy group, and an oxetanyl group.
However, Kim teaches a solid polymer electrolyte composition wherein the polymer compound is synthesized using polycarbonate diol and an isocyanate silane ([0026]; [0011]; [0036]-[0039]; [0110]-[0114]; Structural formula 1-2). Kim teaches that the solid polymer electrolyte disclosed exhibits superior mechanical properties and ionic conductivity ([0042]; [0070]; [0060]).
Morimoto teaches a solid electrolyte comprising an ionic liquid, an inorganic oxide, and a polymer binder ([0006]-[0008]; [0011]) while Kim teaches a solid polymer electrolyte composition wherein the polymer compound is synthesized using polycarbonate diol and an isocyanate silane ([0026]; [0011]; [0036]-[0039]; [0110]-[0114]; Structural formula 1-2). Therefore, it would have been obvious to one of ordinary skill in the art to substitute the polymer taught by Morimoto with the polymer taught by Kim.
One of ordinary skill in the art would be motivated to substitute the polymer taught by Morimoto with the polymer taught by Kim to improve mechanical properties and ionic conductivity of the solid electrolyte ([0042]; [0070]; [0060]). Further, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP §2144.07).
Modified Morimoto does not teach wherein the electrolyte further comprises: an additive different from the inorganic oxide, wherein the additive is at least one of a boron compound or an aluminum compound, wherein when the additive is the boron compound, a number of moles of the boron compound relative to 1 kg of the electrolyte is 0.1 to 0.55 mol/kg, and wherein when the additive is the aluminum compound, a number of moles of the aluminum compound relative to 1 kg of the electrolyte is 0.005 to 0.04 mol/kg.
However, Nishio teaches a polymer solid electrolyte composition comprising an ion-conductive composition and an alkali metal salt ([0017]-[0019]) wherein the ion-conductive composition contains an ion-conductive polymer, a metal oxide filler, and a group 13 element such as boron-containing or aluminum-containing compounds ([0012]; [0016]; [0055]); [0057]). Nishio teaches that the group 13 element has an anion capturing function which improves the cation transport number of the ion-conductive composition ([0021]; [0026]; [0057]). Nishio further teaches wherein the additive is the boron compound ([0016]) and teaches where the additive is added at 0.1-15wt% which can be converted to mol/kg depending on the additive selected ([0055]-[0056]; [0059]2). Nishio teaches multiple working examples using a boron containing additive and the number of moles of the boron compound relative to 1 kg of the electrolyte varies depending on the molecular weight of the boron containing additive ([0100]; [0105]). Nishio teaches a working example where a boron containing additive is present at 0.38 mol/kg ([0100]; [0105]3).
It would have been obvious to one of ordinary skill in the art to have further modified the electrolyte taught by modified Morimoto by including a boron or aluminum containing compound as taught by Nishio. Further, it would have been obvious to one of ordinary skill in the art to utilize, for example, the boron containing compound taught by Nishio in the amount taught by Nishio.
One of ordinary skill in the art would be motivated to modify the electrolyte taught by modified Morimoto by including a boron or aluminum containing compound as taught by Nishio in the amount taught by Nishio to improve cation transport ([0021]; [0026]).
Regarding claims 5 and 6, modified Morimoto teaches the electrolyte according to claim 1. Nishio teaches the use of trialkyl borates as specific boron-containing compounds ([0059]). Nishio further teaches a working example where a boron containing additive is trimethyl borate ([0100] “10 parts of trimethyl borate”).
Regarding claim 7, modified Morimoto teaches the electrolyte according to claim 1. Morimoto further teaches wherein the electrolyte comprises, as the inorganic oxide, at least one of silicon oxide or aluminum oxide ([0011]; [0027]-[0028]).
Regarding claim 8, modified Morimoto teaches the electrolyte according to claim 1. Modified Morimoto further teaches wherein a polymer binder has a weight-average molecular weight of 2,000 to 200,000 (Kim [0018]-[0069]). 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) (see MPEP §2144.05).
Regarding claim 9, modified Morimoto teaches the electrolyte according to claim 1. Morimoto further teaches a storage device ([0017]).
Regarding claims 10-11, modified Morimoto teaches the electrolyte according to claims 5-6. Morimoto further teaches a storage device ([0017]).
Regarding claim 12, modified Morimoto teaches the electrolyte according to claim 1. Modified Morimoto further teaches wherein when the additive is the boron compound, the content of the boron compound relative to the electrolyte composition is 0.38 mol/kg (Nishio Example 2; [0100]; [0105]4) which falls within the claimed range.
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.
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/F.B.A./Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728
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2 The boron containing compound is added at 0.1-15 wt% based on the electrolyte composition. In the case where the boron containing compound is selected as trimethyl borate or trimethoxyboroxine, for example, wt% can be converted to mol/kg.
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