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 with traverse of Group 1 (Claim 1-11), Species 1a (Formula 1), and Species 2a (wherein raw material C is used) in the reply filed on 05/22/2026 is acknowledged. The traversal is on the ground(s) that the Examiner did not meet the burden of showing the groups are independent or patentably distinct and that there is a serious search burden, and the Examiner did not explain why each group lacks unity of invention with each other group specifically describing the special technical feature.
Specifically, Applicant has argued that the Examiner has misinterpreted the phrase “contribution which each of the inventions, considered as a whole, makes over the prior art” as relating to patentable claims, and that such an interpretation denies Applicant due process (Pg. 3). The Applicant has also argued that the Examiner has not provided any indication that the contents of the claims were interpreted in light of the description (Pg. 3).
The Examiner has considered this argument, but does not find it persuasive. The Examiner notes that the claims were considered for unity of invention a posteriori (see MPEP 1850 and MPEP 1893.03(d)), and the technical feature was not found to make a contribution over the prior art (see Restriction Requirement mailed 05/07/2026). The Examiner notes that citations to the instant specification were included in the Restriction Requirement (see Pgs. 5-6 of Restriction Requirement), and that Applicant has not provided any evidence that the claims were not interpreted in light of the instant specification.
Applicant has argued that the Examiner has not considered the relationship of the inventions of Groups 1-6 with respect to 37 CFR 1.475(b)(3) (e.g. a product and process specially adapted for the manufacture of said product) and MPEP 806.03 (e.g. a single disclosed embodiment) (Pg. 4).
The Examiner notes that MPEP 800 is drawn to applications filed under USC 111(a) which use a different analysis (independent / distinct). Since the application was filed under 35 USC 371, arguments directed towards MPEP 800 are moot. Additionally, the Examiner notes that 37 CFR 1.475(a) recites:
Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
As laid out in the Restriction Requirement mailed 05/07/2026, the technical feature does not make a contribution over the prior art, and therefore is not a special technical feature. Since Applicant has not pointed out a specific error in the Restriction Requirement, the analysis and restriction requirement is deemed proper.
Applicant has argued that the Examiner has not provided any reasons or examples to support a conclusion that the species are indeed patentably distinct, and cites MPEP 808.01(a) (Pgs. 4-5). Applicant has also argued that there is no search burden, and therefore the claims should be examined as laid out in MPEP 803 (Pg. 5).
The Examiner again notes that MPEP 800 is drawn to applications filed under USC 111(a) which use a different analysis, and therefore does not apply to applications filed under 35 USC 371. In regards to the search burden, the Examiner further notes that there is currently no evidence on record to suggest that Species 1a-1g or Species 2a-2c are obvious variants of one another.
As laid out, above, Applicant arguments are not found persuasive, and the requirement is still deemed proper and is therefore made FINAL.
Claims 7 and 12-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to either a nonelected invention or a nonelected species as evidenced by the instant specification [0028-0029], there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/22/2026.
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 statement filed 11/18/2025 includes the reference “Combined Chinese Office Action and Search Report issues September 27, 2025, in corresponding Chinese Patent Application No. 202280015821.5, 8 pages” which is not in the English language. Accordingly, only the citations of references in the table bridging Pgs. 6-7 of the reference have been considered.
Claim Objections
Claims 9 is objected to because of the following informalities:
Claim 9 recites: “adding an oxidizing agent to a raw material compound comprising P and S, and one or more elements selected from the group consisting of O, N, and halogen as constituent elements, and reacting the raw material compound and the oxidizing agent” (emphasis added). This phrasing appears to indicate that the raw material comprises P and S, and that the additional “one or more elements” are not a part of the raw material. Since it is understood from the instant specification that the raw material comprises the “one or more elements” in addition to P and S [0063], the Examiner suggests changing the claim language to read (emphasis added):
“adding an oxidizing agent to a raw material compound comprising P, S, and one or more elements selected from the group consisting of O, N, and halogen as constituent elements, and reacting the raw material compound and the oxidizing agent”.
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.
Claims 10-11 are 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 10 includes Reaction Scheme (9). However, it is unclear whether Reaction Scheme (9) is meant to be interpreted exactly as written, or whether it is meant to denote a general reaction while not limiting the reaction to the exact product depicted. For instance, it is unclear whether exactly four starting material units are intended to react with an oxidant to form exactly four P’s connected via disulfide bonds. Additionally, Reaction Scheme (9) also appears to indicate that the terminal sulfur units include terminal methyl groups (i.e. “S–” which is understood to denote S–CH3). However, it is unclear from Reaction Scheme (9) where these methyl groups come from. The Examiner notes that the instant specification includes the exact same reaction scheme [0075] and therefore does not clarify which interpretation should be applied to the claims. Accordingly, Claim 10 and dependent Claim 11 are rejected as being indefinite. For the sake of compact prosecution, the second interpretation will be applied since the instant specification indicates that the oxidation of the raw material results in a cross-linking reaction to form repeating P–S–S units [0071-0072, 0080-0081], which appears to support that Reaction Scheme (9) is intended to denote general reactivity. As such, for the sake of compact prosecution, Reaction Scheme (9) will be interpreted as indicating that some number of repeating units of P–S–S–P are formed via reaction of some amount of starting material units with an oxidant.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6 and 8-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tatsumisago et al. (US-20120189918-A1; cited 05/07/2026).
Regarding Claim 1, Tatsumisago discloses a compound (Example; [0050-0052]), comprising:
P and S as constituent elements [0012, 0018, 0050],
a group bonding to P and comprising one or more elements selected from the group consisting of O, N and halogen (i.e. O; [0012, 0018, 0050]), and
a disulfide bond (see Fig. 2; [0061]).
Regarding Claim 2, Tatsumisago discloses all of the limitations as set forth above, including that the group comprises O [0012, 0018, 0050].
Regarding Claim 3-6, Tatsumisago discloses all of the limitations as set forth above. Although Tatsumisago does not specifically disclose the structure of the compound, Tatsumisago discloses the use of similar starting materials [0050] to those described in the instant specification [instant specification: 0062-0063], and Tatsumisago discloses that the material is subjected to air (i.e. an oxidant; [0022]). The Examiner notes that this process is substantially similar to that described in the instant specification [instant specification: 0062-0063]. Tatsumisago also discloses that a disulfide bond is formed as evidenced by Raman spectroscopy (see Fig. 2; [0022]). Therefore, it is understood that “a peak derived from a disulfide bond which bonds two Ps’ in Raman spectroscopy” as required by Claim 3 is inherently formed in Tatsumisago. Additionally, it is understood that the compound inherently has a peak derived from a PS3O structure in 31P NMR measurement, as required by Claim 4 (i.e. x = 3 and y = 1) and Claim 5. Furthermore, it is understood that the compound inherently has a structure represented by Formula (1) as recited in Claim 6. See MPEP 2112.01, I-II.
Regarding Claim 8, Tatsumisago discloses all of the limitations as set forth above. Tatsumisago further discloses that the compound comprises Li [0012, 0018, 0050] which is within the list of elements.
Regarding Claims 9-11, Tatsumisago discloses all of the limitations as set forth above. The Examiner notes that the limitations of Claims 9-11 amount to product-by-process limitations. See MPEP 2113, I. “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
Here, the structure implied by the process of Claim 9 is the formation of a disulfide bond. Since Tatsumisago discloses such a structure (see rejection of Claim 1, above; Fig. 2; [0022]), the limitations of Claim 9 are met.
Assuming, arguendo, that Applicant is able to show by means of evidence or persuasive argument that the process of Claim 9 imparts additional structure, the limitations of Claim 9 would still have been anticipated by Tatsumisago. Specifically, Tatsumisago discloses that the compound is obtained by mixing starting materials comprising P, S, and O with an agate mortar to obtain a raw material [0050], mechanically milling the raw material to obtain a glass [0051], heating the glass to obtain a sulfide solid electrolyte [0052], and then exposing the sulfide solid electrolyte to air (see Fig. 2; [0022]). Air contains oxygen, which is a known oxidant. Therefore, the process disclosed by Tatsumisago reads on the claimed limitations of obtaining the compound by a process comprising: adding an oxidizing agent (i.e. air; [0022]) to a raw material compound comprising P and S, and one or more elements selected from the group consisting of O, N, and halogen as constituent elements (i.e. the sulfide solid electrolyte comprising oxygen; [0050-0052]), and then reacting the raw material compound and the oxidizing agent (see Fig. 2; the disulfide bond forms after exposure to air). Thus, the limitations of Claim 9 are met.
Similarly, the structure implied by the process of Claims 10-11 is the formation of a disulfide bond between two P’s to form a polymer with the configuration depicted to the right in Reaction Scheme (9). Since Tatsumisago discloses the use of similar starting materials [0050] to those described in the instant specification [instant specification: 0062-0063] and Tatsumisago discloses that the material is subjected to air (i.e. an oxidant; [0022]), the process disclosed by the prior art is understood to be substantially similar to that described in the instant specification [instant specification: 0062-0063]. Currently, there is nothing on record to suggest that the structure of the polymer formed using a halogen as an oxidant is different than the structure of the polymer formed using air as an oxidant. Thus, the limitations of Claims 10 and 11 are met.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu et al. (Solid State Ionics 2006, 117, 305-309; see attached NPL for citations).
Regarding Claim 1, Xu discloses a compound ([NPS2)3]; Pg. 306: Scheme 1) comprising (see annotation of Scheme 1, below):
P and S as constituent elements (Pg. 306: Scheme 1),
a group bonding to P and comprising one or more elements selected from the group consisting of O, N and halogen (i.e. N; Pg. 306: Scheme 1), and
a disulfide bond (Pg. 307: Section 3.1: “Characteristic absorbing peaks of N=P (N-P) and S-S bonds are very evident in the IR spectra to imply the specific structure of phosphazene polymer”).
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Annotation of Xu: Scheme 1 product.
Regarding Claim 3, Xu discloses all of the limitations as set forth above, including that a disulfide bond links two P’s (see annotation of Scheme 1, above). Therefore, although Xu does not explicitly disclose that the compound was characterized by Raman spectroscopy, and therefore does not specifically disclose “a peak derived from a disulfide bond which bonds two P’s in Raman spectroscopy”, it is understood that such a peak inherently is present in the compound disclosed by Xu, since Xu discloses the structure required for such a peak to be present in Raman spectroscopy.
Claim(s) 1-6 and 8-11 is/are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Yao et al. (US-20210066748-A1).
Regarding Claim 1, Yao discloses a compound (Na3PS4-xOx material; Fig. 10b; [0013, 0057, 0061]), comprising:
P and S as constituent elements [0013, 0057, 0061],
a group bonding to P and comprising one or more elements selected from the group consisting of O, N and halogen (i.e. O; Figs. 10a-10e; Table 1; [0062]), and
a disulfide bond (see Fig. 10b; Table 1).
Regarding Claim 2, Yao discloses all of the limitations as set forth above, including that the group comprises O (Figs. 10a-10e; Table 1).
Regarding Claim 3, Yao discloses all of the limitations as set forth above. Yao discloses that the compound has a peak derived from a disulfide bond in Raman spectroscopy (see Fig. 10b; Table 1). Although Yao does not specifically disclose that the peak is derived from a disulfide bond which bonds two P’s, the Examiner notes that the method of forming the compound is substantially similar to that disclosed in the instant specification. Specifically, Yao discloses that similar raw materials are ball milled together [0012, 0052, 0054, 0061], and that a disulfide bond is formed as detected by Raman spectroscopy (see Fig. 10b; Table 1). Therefore, the method of forming the compound disclosed by Yao appears substantially similar to the method disclosed in the instant application [instant specification: 0063], and it is understood that the disulfide bond inherently bonds two P’s. See MPEP 2112.01, I.
Regarding Claims 4-5, Yao discloses all of the limitations as set forth above. Yao further discloses that the compound has a peak derived from a PSxOy structure, where 1 ≤ x and 0 < y in 31P-NMR measurement (see Fig. 4; [0019]; top spectrum corresponds to Na3PS3O) as required by Claim 4. This further corresponds to the peak being derived from a PS3O structure, as required by Claim 5.
Regarding Claim 6, Yao discloses all of the limitations as set forth above. Yao discloses that the compound includes units of Na3PS4-xOx and in specific examples x = 1 [0019], thereby resulting in units of Na3PS3O [0064, 0076]. Additionally, Yao discloses that oxygen is incorporated into the PS4 tetrahedra unit [0062] (see Fig. 10c). Furthermore. Yao discloses that the compound it formed by ball milling raw materials including sodium sulfide and at least one oxide [0012, 0052, 0054], which is substantially similar to the method disclosed in the instant specification [instant specification: 0063]. Accordingly, it is understood that Yao inherently discloses a compound comprising a structure represented by the claimed formula (1) (i.e. X = Na). See also MPEP 2112.01, I.
Regarding Claim 8, Yao discloses all of the limitations as set forth above, including that the compound (i.e. Na3PS4-xOx) further comprises Na [0019], which is within the list of claimed elements.
Regarding Claims 9-11, Yao discloses all of the limitations as set forth above. The Examiner notes that the limitations of Claims 9-11 amount to product-by-process limitations. See MPEP 2113, I. “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
Here, the structure implied by the addition of an oxidizing agent is the formation of a disulfide bond as evidenced by the instant specification [instant specification: 0071-0072]. Since Yao discloses the formation of an S-S bond (see rejection of Claim 1, above; Fig. 10b), the limitations of Claim 9 are met.
Similarly, the structure implied by the process of Claims 10-11 is the formation of a disulfide bond. Since Yao discloses the use of similar starting materials [0012, 0052, 0061] to those described in the instant specification [instant specification: 0062-0063] and Yao discloses that the material forms a disulfide bond (see Fig. 10b), the prior art is understood to inherently possess the critical components of the structure implied by the process of Claims 10-11. The Examiner notes that there is currently no evidence on record to suggest that halogens (i.e. I2, Br2, Cl2 F2) are exclusively necessary to form the structure indicated in Claim 10. Thus, the limitations of Claims 10 and 11 are met.
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) 9-11 is/are further rejected under 35 U.S.C. 103 as obvious over Yao et al. (US-20210066748-A1) as applied to Claim 1, above, in view of Ryu et al. (Chemical Engineering Journal 2020, 402, 126179; see attached NPL for citations).
Regarding Claims 9-11, Yao discloses all of the limitations as set forth above. Yao discloses that the Na3PS4-xOx material (i.e. the compound) comprises some units of PS4 (see Fig. 10b; [0057]). Yao further discloses that the compound is designed to have high ionic conductivity [0005-0006, 0047, 0052, 0069-0070]. Yao does not specifically disclose that an oxidant is added to a raw material.
Ryu teaches that doping is an effective way to improve the performance of sulfide-based solid electrolyte (Pg. 3: left column, Par. 1), and that doping pure elements increases the ionic conductivity as well as the electrochemical performance (Pg. 4: left column, Par. 1). In a specific embodiment, Ryu discloses adding I2 to S and P-containing raw materials in order to dope iodine into a Li3PS4 material (Pg. 4: right column, Par. 1; Fig. 3c).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have added I2 to the raw material formed by Yao [0052] with a reasonable expectation that such an addition would result in a successful material with increased ionic conductivity.
The Examiner notes that the limitations of Claims 9-11 amount to product-by-process limitations. See MPEP 2113, I. “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
I2 is a known oxidant. Accordingly, the addition of I2 to the Na3PS4-xOx material formed by Yao is understood to necessarily and inherently form the compound with a disulfide bond, as implied by the process recited in Claim 9, wherein the compound has the configuration depicted to the right of Reaction Scheme (9), as implied by the process recited in Claims 10-11, and as evidenced by the instant specification [instant specification: 0063-0064]. See MPEP 2112.01, I. Accordingly, the addition of I2 reads on the limitations of instant Claims 9-11.
Other References Considered
The following references, although not prior art under USC 102(a)(1) / USC 102(a)(2), are considered relevant to the instant application:
Kato et al. (Commun. Mater. 2021; see attached NPL for citations) discloses the addition of I2 to Li3PS4 to form a bridging disulfide bond (Fig. 1).
Hiroi et al. (J. Phys. Chem. C 2023; see attached NPL for citations) discloses the use of I2 to Li3PS4 to form a bridging disulfide bond (Abstract; Fig. 3).
Conclusion
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/D.C.N./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 7/22/2026
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