DETAILED ACTION
Response to Amendment
Amendments, filed on July 13, 2023, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Analysis
The present application contains three active independent claim(s) (claims 1, 11 and 15) and fourteen active dependent claims (claims 2 -10, 12 – 14, 16 and 17). No claims are withdrawn.
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/851,106 (U.S. Patent App. No. 2025/0253333 A1), especially claims 1, 3 and 5. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim LiSP-halogen solid electrolytes with a compound that is overlapping/encompassing, including the claimed BET value and FT-IR peak range. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 10 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 pre-AIA the applicant regards as the invention.
The claim is indefinite because it is further limiting compound (3), but includes recitations to X22 and X23, which are in formula (2). It appears that these recitations should have been to X32 and X33, which is how the claim has been interpreted when evaluating the prior art. However, the Examiner notes that none of claims 7 – 10 require that the epoxy compound is selected from the one further limited (e.g. an epoxy of formula (1) or (2) reads on claim 10 because claim 10 does not require the epoxy compound is selected from formula (3), then further limits the compound of formula (3). A similar example applies to claims 7, 8 and 9, with regard to the other formulas).
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 3, 5, 6 and 11 -17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Burdynska et al. (U.S. Patent No. 11,572,459 B2) in view of Shibata et al. (U.S. Patent No. 11,658,337 B2), the above evidenced by Khabashesku et al. (U.S. Patent App. No. 2006/0166003 A1).
Regarding claim 1, Burdynska et al. disclose a modified sulfide solid electrolyte (Title; Abstract; column 1; col. 5, lines 45 – 47; and examples, Tables 4 and 5) comprising: a sulfide solid electrolyte (ibid) having a BET specific surface area (inherent in that solid particles will have some value of surface area, though the magnitude is not reported) and containing a lithium atom, a sulfur atom, a phosphorus atom, and a halogen atom (see citations above); and an epoxy compound (columns 1 – 4; functionalized polymers listed, etc.).
Burdynska et al. fail to disclose the BET specific surface area of 10 m²/g or more, nor wherein the modified sulfide solid electrolyte has a peak at 2800 to 3000 cm⁻¹ in an infrared absorption spectrum obtained by FT-IR spectroscopy (ATR method).
However, Shibata et al. teaches an equivalent sulfide solid electrolyte wherein the BET surface area is taught to be 20 m2/g or more for improved lithium ion transfer/performance of the solid electrolyte (at least claim 1; columns 29 – 40; and examples).
Regarding the FT-IR peak at 2800 – 3000 cm-1, the Examiner notes that there is sound basis that this is an intrinsic range for C-H stretching in epoxies, which are known in the art as evidenced by Khabashesku et al. (Figures 6, 7, 11 and relevant disclosures thereto, and at least Paragraph 0085). While the Examiner acknowledges that the non-epoxy embodiments disclosed in Burdynska et al. would not necessarily possess this FT-IR peak, Burdynska et al. clearly disclose embodiments possessing epoxy compounds as cited above.
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, epoxy compounds meeting the claimed FT-IR limitations and non-epoxy compounds are functional equivalents in the field of suitable functionalized polymer components in a solid electrolyte compound, as taught by Burdynska et al. above. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Burdynska et al. to use a sulfide solid electrolyte compound meeting the claimed limitations as taught by Burdynska et al. and Shibata et al. above, and as evidenced by Khabashesku et al. above, as such a solid electrolyte composition provides excellent ionic conductivity in thin, dense films.
Regarding claim 2, this limitation is met by the evidentiary art relied upon above.
Regarding claim 3, there is sound basis that, like the FT-IR peak in the claimed range, the relied upon epoxy teachings would intrinsically possess the claimed 1H-NMR spectrum peak.
Regarding claim 5, Burdynska et al. disclose encompassing epoxy contents (col. 28, lines 39 -67). Furthermore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amount of the epoxy compound through routine experimentation, especially given the teaching in Burdynska et al. above. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, Burdynska et al. disclose epoxy components that have molecular weights in their disclosed formulas exceeding 60 (which would be met by 5 carbon atoms; e.g. 5x12 = 60) (see epoxy containing components in columns 1 - 4). Furthermore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the molecular weight of the epoxy compound through routine experimentation, especially given the teaching in Burdynska et al. above. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 11 and 12, Burdynska et al. disclose slurry coating the components in an organic solvent, then drying per the claimed limitations (at least Table 1; col. 14, lines 16 – 22; col. 21, lines 49 – 50; and col. 29, line 25 bridging col. 30, line 67). The additional limitations are met for the reasons set forth above with regard to claim 1.
Regarding claims 13 and 14, Burdynska et al. disclose lithium ion batteries meeting the claimed limitations (at least col. 29, line 25 bridging col. 30, line 67).
Regarding claims 15 - 17, these limitations are met for the reasons set forth above with regard to claim 1.
Claims 4 and 7 – 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Burdynska et al. in view of Shibata et al. (as evidenced by Khabashesku et al.) as applied above, and further in view of IDS reference JP 2012-226854 A (reference D3 in the EPO written opinion). See English Abstract and discussion in the Written Opinion regarding this document.
Burdynska et al., Shibata et al., and the evidentiary art, are relied upon as described above.
None of the above disclose the specific epoxy compounds of formula’s (1), (2) or (3).
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, JP ‘854 A disclose similar epoxy compounds to those disclosed as functionalized polymer components in Burdynska et al. above (see entire disclosure of JP ‘854 A, as well as teaching in English Abstract). These are disclosed in a nearly identical use as Burdynska et al. -namely a solid electrolyte including this component and an active material, etc. (English Abstract). The epoxy components disclosed by JP ‘854 A read on at least formulas (1) and (2) and, as such, read on all of claims 4 and 7 -101. JP ‘854 A teaches that these compounds provide a lithium ion battery with excellent charging/discharging characteristics and are functional equivalents in the field of suitable epoxy components for use in solid electrolytes. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Applicants have several different examples using different epoxy compounds and potentially have evidence supporting non-obviousness or unexpected results. While the claims must be reasonably commensurate in scope to the showing of non-obviousness or unexpected results, the Examiner does not rule out additional breath being supported by specific embodiments where the prior art fails to recognize specificity for those specific embodiments. This may be based on molecular weight, formula (1), (2), or (3), the FT-IR or 1H-NMR spectrum (if not intrinsic), etc.
Applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
In addition, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by applicant(s) regarding the alleged unexpected results should be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Examiner particularly calls out US 2020/0067137 A1, which is reference D1 in a Written Opinion. A similar rejection pathway as set forth above could also be made using this reference, for example, as the base reference. It would be modified by Shibata et al. and the evidentiary art in an identical manner … much like set forth in the Written Opinion. However, the Examiner deems that any arguments or amendments that would distinguish over the applied art above would likewise overcome any rejection predicated on US ‘137 A1. As such, the Examiner has not officially made this rejection, but since it would mirror the rejection(s) set forth in the Written Opinion(s), the Examiner was compelled to address it.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
January 27, 2026
1 As noted previously, claims 7 – 10 do not positively recite that the epoxy compound is selected from the formula further limited; therefore the entire Markush group of claim 4 still controls and, as such, any selection from formula (1) will read on all of claims 4 and 7 – 10, for example.