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
Claims 5-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/03/2026. Applicant’s election without traverse of Group 1, Claims 1-4, in the reply filed on 04/03/2026 is acknowledged.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statements filed 06/19/2023 and 08/23/2024 fail to comply with 37 CFR 1.98(a)(3)(i) because they do not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. Specifically, the document “KIPO, A Copy of PCT Search Report & Written Opinion of PCT/KR2021018976 dated March 16, 2022” in the IDS filed 06/19/2023 and the document “JPO, Office Action in the corresponding Japanese Patent Application No. 2023-537412, dated June 25, 2024” in the IDS filed 08/23/2024 are not in the English language, and no concise explanation of their relevance was found in the file. They have been placed in the application file, but the information referred to therein has not been considered.
Specification
The disclosure is objected to because of the following informalities:
The instant specification indicates that the sulfur compound is represented by Chemical Formula 1 as Li7-xPS6-xCl1-yBry, and that the solid electrolyte is represented by Chemical Formula 2 as Li7-xPS6-xBzCl1-yBryO3/2z (Pg. 4). The instant specification further provides specific examples wherein the sulfur compound is Li5.5PS4.75Cl and the solid electrolyte has different amounts of boron and oxygen (Pgs. 13-15). In these examples, the Examiner notes that the content of lithium and the content of sulfur do not satisfy the relationship Li7-x and S6-x as previously indicated. Specifically, the content of Li requires that x=1.5, wherein the content of sulfur requires that x=1.25.
Additionally, although the examples use B2O3 as the B-containing compound (Pgs. 13-15), the instant specification does not list B2O3 as a suitable material for forming the sulfur compound (Pg. 5, lines 15-21).
The Examiner requests a careful review of the foreign priority documents to see if any translational issues have occurred. Appropriate correction is required.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities:
Claims 1 and 2 each contain a period in the middle of the claim, and do not contain a period at the end of the claims. The period should be at the end of the claim. See MPEP 608.01(m).
Claims 1 and 2 each contain parenthesis around the molar ratio of the elements. The parenthesis should be removed to clarify that the subject matter within the parenthesis is intended to limit the claimed chemical formulas. See MPEP 2173.05(d).
Appropriate correction is required.
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.
Claim 2 is 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.
Claim 2 recites, “the solid electrolyte is represented by Chemical Formula 2… Li7-xPS6-xBzCl1-yBryO3/2z”. Here, the relationship between Chemical Formula 2 and Chemical Formula 1 is unclear. It could be interpreted that Chemical Formula 1 (i.e. the sulfur compound) is first formed, and then added to other materials to form Chemical Formula 2 (i.e. the solid electrolyte). Under this interpretation, Chemical Formula 1 (i.e. the sulfur compound) is an intermediate in forming the solid electrolyte. Alternatively, it could be interpreted that Chemical Formula 1 exits within Chemical Formula 2. Under this interpretation, the process of forming the solid electrolyte represented by Chemical Formula 2 inherently results in the formation of the sulfur compound represented by Chemical Formula 1. As such, Claim 2 is rejected as being indefinite.
The instant specification appears to support that the sulfur compound is inherently formed during the synthesis of the solid electrolyte (Pg. 4, lines 1-13; Pg. 13, lines 11-22), since the instant specification does not indicate any additional processing/synthesis steps between forming the sulfur compound and the solid electrolyte (Pgs. 13-16). For instance, exemplary embodiment 1 specifies milling the raw materials together and forming pellets which are heat treated in an inert atmosphere in order “to prepare an argyrodite type Li5.5PS4.75Cl solid electrolyte containing 13,000 ppm B. The composition of the prepared solid electrolyte was Li5.5PS4.75B0.05ClO0.075.” (Pg. 13, lines 11-22).
Therefore, for the sake of compact prosecution, the second interpretation will be applied to the claims, and it will be interpreted that process of forming the solid electrolyte inherently results in the formation of the sulfur compound. Stated another way, it will be interpreted that Chemical Formula 2 (i.e. the chemical formula of the solid electrolyte) is Chemical Formula 1 (i.e. the chemical formula of the sulfur compound) with boron and oxygen added.
Additionally, Claim 2 indicates that the solid electrolyte contains boron at a molar ratio of “z” and oxygen at a molar ration of “3/2z” (see Chemical Formula 2). In other words, Chemical Formula 2 relates the content of boron to the content of oxygen. Here, it is unclear whether an oxygen-containing boron starting material is required in order to achieve the claimed relationship between boron and oxygen, or whether oxygen is inherently incorporated in the process of forming the solid electrolyte at a content which is proportional to the content of boron.
The instant specification does not clarify which interpretation should be applied to the claims. For instance, the instant specification uses B2O3 as a starting material to form the solid electrolyte of the examples (Pg. 13, lines 11-21), thereby suggesting that an oxygen-containing starting material is required. However, the Examiner notes that B2O3 is not indicated as a suitable starting material in the instant specification (Pg. 5, lines 15-21), and that several of the materials listed as suitable starting materials do not require oxygen (e.g. BBr3, BCl3; see Pg. 5, lines 15-21). On the other hand, the instant specification also indicates that the synthesis of the solid electrolyte is at least partially performed in an inert atmosphere (i.e. the heat treatment step is performed in an Ar atmosphere; Pg. 13, lines 17-19). As such, Claim 2 is rejected as indefinite. For the sake of compact prosecution, it will be interpreted that oxygen is inherently added into the material in an earlier processing step (i.e. before the heat treatment step), as best supported by the instant specification (Pg. 13, lines 11-21). Accordingly, it will be interpreted that if the molar ratio of boron is correct, the molar ratio of oxygen is inherently correct.
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Utsuno et al. (US-20180069262-A1).
Regarding Claims 1-4, Utsuno discloses a solid electrolyte (sulfide solid electrolyte) as required by Claim 1 [0023]. The claimed “sulfur compound” is broadly and reasonably interpreted as a component of the claimed “solid electrolyte” (see 112(b) rejection of Claim 2, above). Accordingly, it is interpreted that the solid electrolyte contains a sulfur compound [0024, 0035-0036, 0040-0042]. The solid electrolyte comprises an argyrodite type crystal structure as required by Claim 4 [0024, 0035-0036, 0040].
Utsuno discloses that the solid electrolyte can be represented by formula 4: Lia(P1-zMz)SbXc [0042]. In the formula 4 (i.e. the chemical formula of the solid electrolyte), Utsuno discloses that M can be chosen from a list of elements which include boron (i.e. B), and X can be chosen from the halogens F, Cl, Br, and I [0043, 0058-0059].
Therefore, although not disclosed in a specific example, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected M to be boron and to have selected X to be Cl with a reasonable expectation that such a selection would result in a successful solid electrolyte.
Accordingly, Utsuno renders obvious formula 4 as Lia(P1-zBz)SbClc [0042-0043]. Utsuno discloses that 0≤z≤0.3 and 5.05≤a<7.3 and 0.705≤a-b<1.0 and 7.0<a+c≤7.3 and wherein b>0 and c>0 [0023, 0042-0043].
Therefore, although not disclosed in a specific example, Utsuno renders obvious that the sulfur compound (i.e. the chemical composition of the solid electrolyte when boron and oxygen are not considered, see 112(b) rejection of Claim 2 above) can have a chemical formula such as Li6.01PS5Cl.
The chemical formula Li6.01PS5Cl is so close to the chemical formula Li5.99PS4.99Cl (which is within the scope of the claimed Chemical Formula 1 as recited in Claim 1) that, absent showings of criticality, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have expected the same properties between a solid electrolyte containing a sulfur compound such as Li6.01PS5Cl and a solid electrolyte containing a sulfur compound such as Li5.99PS4.99Cl, thus rendering obvious the claimed Chemical Formula 1 (MPEP 2144.05, I). The Examiner notes that such an interpretation appears reasonable since the instant specification evidences that the relationship between the molar ratios can be rounded (i.e. the instant specification indicates that “x” in Chemical Formulas 1 and 2 can be rounded by 0.25; see instant specification: exemplary embodiment 1; Pg. 13).
Additionally, although Utsuno does not specifically teach that the solid electrolyte contains B in an amount of 10 ppm to 100,000 ppm as required by Claim 1, or in an amount of 1,000 ppm to 100,000 ppm as required by Claim 3, Utsuno renders obvious that the solid electrolyte comprises boron (see above; [0043]), and Utsuno discloses that the molar ratio of boron can be 0≤z≤0.3 (i.e. Utsuno renders obvious that very small amounts of boron can be added). Therefore, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have included 1,000 ppm to 100,000 ppm of boron in the solid electrolyte with a reasonable expectation that such a content of boron would result in a successful solid electrolyte (MPEP 2144.05, I). Such a content is within the range recited in Claim 1 and corresponds to the range recited in Claim 3.
Although Utsuno discloses that boron replaces a portion of phosphorus in formula 4 [0042], the content of phosphorous is so close to the claimed content of phosphorous that, absent showings of criticality, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have expected the same properties between a solid electrolyte containing phosphorous at a molar ratio of 1 and a solid electrolyte containing 1,000 to 100,000 ppm less of phosphorous (MPEP 2144.05, I). The Examiner notes that such an interpretation appears reasonable since the instant specification evidences that the relationship between molar ratios can be rounded (see instant specification: exemplary embodiment 1; Pg. 13).
Utsuno discloses that the solid electrolyte can further include oxygen [0041]. As laid out above, Utsuno discloses a content of boron which is within the claimed content of boron. Therefore, although Utsuno does not explicitly teach that the solid electrolyte is represented by Chemical Formula 2 as required by Claim 2, it is interpreted (see 112(b) rejection of Claim 2, above), that Utsuno inherently discloses a content of oxygen which is within the claimed range. The Examiner notes such an interpretation appears reasonable since Utsuno discloses a substantially similar method of forming the solid electrolyte [0050, 0052-0054, 0058, 0059]. Therefore, as discussed in detail in the 112(b) rejection of Claim 2 (see above), it is interpreted that an appropriate content of oxygen is inherently mixed into the solid electrolyte during synthesis of the solid electrolyte, and that the content of oxygen is proportional to the content of boron. Since Utsuno renders obvious a content of boron within the claimed contents of Claim 1 and 3, it is understood that the content of boron and oxygen inherently read on the contents recited in Chemical Formula 2. Therefore, it is interpreted that the solid electrolyte rendered obvious by Utsuno reads on Chemical Formula 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DREW C NEWMAN whose telephone number is (571)272-9873. The examiner can normally be reached M - F: 10:00 AM - 6:00 PM.
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/D.C.N./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 5/2/2026
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