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 Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “A solid electrolyte comprising an electrolyte solution… carbonate solvent”. The issue with the claim is that the claim is a “a solid electrolyte” not “a non-aqueous electrolyte, gel type electrolyte or a hybrid type electrolyte”. Therefore, the solid electrolyte according to well-known terminology within the art should not comprise a solution or a solvent.
Furthermore, the instant specification (Using US 2024/0186565 for citations) discloses that the solution and solvent is used within the production of the solid electrolyte and is compression molded with a mold having releasing properties [0032-0033]. The resultant product discloses a solid electrolyte membrane being self-supported [0033]. Therefore, the claim should be wherein the solid electrolyte is formed from an electrolyte solution and carbonate solvent or made from an electrolyte solution and carbonate solvent. Otherwise, the claims are more of an intermediate product. Appropriate correction is required.
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 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Miyoshi et al. (JP 55-33875 B).
Miyoshi discloses a solid electrolyte (Title) comprising an electrolyte solution comprising a lithium salt [0043] and a carbonate solvent [0048], and metal oxide particle [0028], the lithium salt is LiFSI and LiBF4 [0043], and the carbonate solvent is propylene carbonate [0048]. Although Miyoshi fails to explicitly disclose an embodiment or example requiring the specific Li salt and carbonate solvent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to pick the instant claimed elements as a mere combing prior art elements according to known methods to obtain predictable results i.e. solid electrolytes ( see MPEP 2143 I and 2144.06 I).
It has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992)
Further, Miyoshi discloses the specific surface area of the metal oxide particles is 500-1000 m2/g [0029], which overlaps the claimed range, and the content of the metal oxide particles is 2-80 parts by mass of the electrolyte solution [0035], which overlaps the claimed mass ratio range. 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 the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Furthermore, Miyoshi fails to explicitly disclose a molar ratio of the lithium salt to the carbonate solvent is 1/3 to 1/1 as presently claimed. However, Miyoshi discloses that the content of the carbonate solvent is up to 50 mass% of the solid electrolyte [0046], and the content of the Li salt is 5-40 mass% of the solid electrolyte [0045], and thus all values within the range appear to be functionally equivalent. This thereby overlaps the claimed molar ratio. For example, when calculated for specific Li salt, LiBF4, and PC, the range is 1:9.18 to 43.6:1, or 0.109-43.6 (molar mass of LiBF4 is 93.75 g/mol and PC is 102.09 g/mol). 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 the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Additionally, it would have been obvious to choose any content from that range based on the desired electrolyte properties [0019] and that choosing the content of Li salt and carbonate solvent would have rendered the claimed relationship between the molar concentration values would have rendered the claimed relationship between Li salt and carbonate solvent obvious in the absence of showing criticality.
Regarding claims 2 and 4, Miyoshi discloses PTFE binder [0037].
Regarding claim 5, Miyoshi discloses that the content of the binder is 0.5-70 mass% of the solid electrolyte [0042]. In light of Miyoshi explicit teaching that the content of the metal oxide particles is 2-80 parts by mass of the electrolyte solution [0035], Miyoshi discloses an overlapping claimed range. 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 the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 6, Miyoshi discloses silica particles [0028].
Regarding claim 7, although Miyoshi discloses it is preferable silica particles [0028], Miyoshi is silent that it is dry silica particles. However, it would have been well within the purview of one of ordinary skill in the art at the time of the invention to choose to use dry silicas. One of ordinary skill in the art would be well aware that silica is either dry or wet. Thus, choice of being dry given only two alternatives would be well within the level of ordinary skill in the art.
Regarding claim 8, please see [0001].
Regarding claim 9, Miyoshi discloses AEROSIL300 [0096], which is known to be fumed silica.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2 and 4-9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
With regarding to allowable subject matter, applicants have several different examples using specific mol ratio range of Li salt/solvent, specific material of oxide particles and its specific surface area range, specific mass ratio range of electrolyte solution/filler 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. In other words, the evidence (Table 1-2) is not commensurate in scope with the claims.
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
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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785
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