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 Claims 1-7 in the reply filed on 8/25/2026 is acknowledged. The traversal is on the ground(s) that the combination of Cewen and Cairns does not adequately meet the claims and as such, do not present a lack of unity of invention. This is not found persuasive because the corresponding special technical feature of Claim 1 is met by Nakayama, see below.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakayama et al. (US 2022/0263122).
Regarding Claim 1, Nakayama meets the claimed,
A powder of solid material particles comprising at least Li, P and S elements ([0147] teaches a raw material powder that contains lithium, phosphorous, and sulfur).
Nakayama does not explicitly teach a thiol to carbonate surface group ratio of less than 2.
However, Nakayama does teach all other claimed elements, including the exact chemical formulae and size of the particles, and further teaches a substantially similar method of producing the invention and as per MPEP 2112.01, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Thus, Nakayama is presumed to also possess the property of a thiol to carbonate surface group ratio of less than 2.
As per Applicant’s remarks in response to the Restriction Requirement, the production method is at least one major cause for producing the notable properties as claimed (See Applicant’s Remarks to the Restriction Requirement Pg. 4). Notably, Nakayama teaches a method similar to the method and should thus result in a material with the same properties as the claimed invention.
In Nakayama [0132],
L
i
2
S
,
P
2
S
, and
L
i
C
l
powders are mixed together with toluene using a ball mill, producing a slurry. This slurry is heated and dried, then thermally treated at 500°C for 4 hours. This process is substantially similar to the claimed method. Nakayama [0153] performs a substantially similar process but changes the input to produce
L
i
5.8
P
S
4.8
C
l
1.2
.
Regarding Claim 2, Nakayama meets the claimed,
The powder of claim 1, wherein the solid material is according to formula (I):
L
i
a
P
S
b
X
c
([0153] teaches a raw material with composition
L
i
5.8
P
S
4.8
C
l
1.2
, which meets the claimed when “a”=5.8, “b”=4.8, and “c”=1.2).
Regarding Claim 3, Nakayama meets the claimed,
The powder of claim 1, wherein the solid material is according to formula (II):
L
i
7
-
x
P
S
6
-
x
X
x
([0153] teaches a raw material with composition
L
i
5.8
P
S
4.8
C
l
1.2
, which meets the claimed when “x”=1.2).
Regarding Claim 4, Nakayama meets the claimed,
The powder of claim 1, wherein the solid material is
L
i
6
P
S
5
C
l
,
L
i
4
P
2
S
6
,
L
i
7
P
S
6
,
L
i
7
P
3
S
11
, or
L
i
3
P
S
4
.
([0153] teaches a raw material with composition
L
i
5.8
P
S
4.8
C
l
1.2
, which is essentially
L
i
6
P
S
5
C
l
).
Regarding Claim 5, Nakayama meets the claimed,
The powder of claim 1, presenting:
- a d50 value of less than 50µm ([0012] teaches a d50 value of between 0.1 µm and 2.0 µm),
- a d10-value of higher than 0.05 µm ([0061] teaches a d10 value of between 0.1 µm and 1 µm),
- a d90-value of less than 100 µm, as measured by laser diffraction in para-xylene ([0062] teaches a d95 value of between 0.7 µm and 3 µm, which means the d90 must be below 100 µm).
Regarding Claim 6, Nakayama does not specifically teach an ionic conductivity of at least 1.5 mS/cm.
However, Nakayama does teach all other claimed elements, including the exact chemical formulae and size of the particles, and further teaches a substantially similar method of producing the invention and as per MPEP 2112.01, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Thus, Nakayama is presumed to also possess the property of an ionic conductivity of at least 1.5 mS/cm.
Regarding Claim 7, Nakayama does not specifically teach an ageing resistance.
However, Nakayama does teach all other claimed elements, including the exact chemical formulae and size of the particles, and further teaches a substantially similar method of producing the invention and as per MPEP 2112.01, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Thus, Nakayama is presumed to also possess the property of ageing resistance.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-5 and 7 of copending Application No. 18/701,469 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
While Claims 1-5 and 7 do not explicitly teach a thiol to carbonate surface group ratio of less than 2, they do meet all other claimed elements as recited in the instant applications Claims 1-6, copending application No. 18/701,469 is presumed to also possess a thiol to carbonate surface group ratio of less than 2.
Furthermore, Claim 7 of the copending application teaches a method of producing the material identical to the method of producing in the withdrawn Claim 8 of the instant application. As per Applicant’s remarks in response to the Restriction Requirement, the production method is at least one major cause for producing the notable properties as claimed (See Applicant’s Remarks to the Restriction Requirement Pg. 4). Notably, Nakayama teaches a method similar to the method and should thus result in a material with the same properties as the claimed invention.
Claim 2 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 18/701,469 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
In particular, Claim 1 of the Copending Application recites a solid material having a formula
L
i
7
-
x
P
S
6
-
x
X
x
where X is either F, Cl, Br, I, or a combination thereof, and “x” is a positive number from 0.5 to 2.0.
Claim 3 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 18/701,469 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
In particular, Claim 1 of the Copending Application recites a solid material having a formula
L
i
7
-
x
P
S
6
-
x
X
x
where X is either F, Cl, Br, I, or a combination thereof, and “x” is a positive number from 0.5 to 2.0.
Claim 4 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 3 of copending Application No. 18/701,469 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
In particular, Claim 3 of the Copending Application recites a solid material having a formula of is
L
i
6
P
S
5
C
l
,
L
i
4
P
2
S
6
,
L
i
7
P
S
6
,
L
i
7
P
3
S
11
, or
L
i
3
P
S
4
.
Claim 5 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 4 of copending Application No. 18/701,469 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
In particular, Claim 4 of the Copending Application recites a solid material having a
- a d50 value of less than 50µm,
- a d10-value of higher than 0.05 µm,
- a d90-value of less than 100 µm, as measured by laser diffraction in para-xylene.
Claim 6 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 5 of copending Application No. 18/701,469 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
In particular, Claim 5 of the Copending Application recites an ionic conductivity of at least 1.5 mS/cm.
Claim 7 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-5 and 7 of copending Application No. 18/701,469 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
While Claims 1-5 and 7 do not explicitly teach an ageing resistance of any kind, they do meet all other claimed elements as recited in the instant applications Claims 1-6, including the exact chemical formulae and size of the particles, thus copending application No. 18/701,469 is presumed to also possess a thiol to carbonate surface group ratio of less than 2.
Furthermore, Claim 7 of the copending application teaches a method of producing the material identical to the method of producing in the withdrawn Claim 8 of the instant application. As per Applicant’s remarks in response to the Restriction Requirement, the production method is at least one major cause for producing the notable properties as claimed (See Applicant’s Remarks to the Restriction Requirement Pg. 4). Notably, Nakayama teaches a method similar to the method and should thus result in a material with the same properties as the claimed invention.
Conclusion
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/A.Y.H./Examiner, Art Unit 1744
/MICHAEL M. ROBINSON/Primary Examiner, Art Unit 1744
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