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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/08/2026 has been entered.
Response to Amendment
Acknowledgment is made to applicant’s amendment of claim 1 filed on 06/08/2026. Claim 4 has been canceled. Accordingly, claims 1-3, and 5-6 remain pending and are claims addressed and examined below.
Response to Arguments
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive.
With regards to applicant’s argument that “Kajdos encompass a very large number of possible compositions, which does not direct a person skilled in the art to the presently claimed Li/M range of 1.2-1.4, as a specific or preferred range. On the contrary, the Applicant's Specification describes, "[t]o increase the ionic conductivity and heat resistance of the solid electrolyte material, the molar ratio of Li to M in the solid electrolyte material according to the first embodiment may be 1.2 or more and 1.4 or less,"” Kadjos teaches a broad range of the Li to M molar ratio, and the claimed range falls within this range. On page 6 of the remarks, applicant acknowledges that Kadjos teaches a ratio of M to Li of 3 to 0.0001. The inverse of this ratio is the Li to M ratio which is 1/3 to 10,000. This range encompasses the claimed range of 1.2 to 1.4. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Without provision of unexpected results, it would be obvious to one of ordinary skill in the art, through routine experimentation, to try any range within the broad range taught by Kadjos.
With regards to applicant’s argument that Yushin lists numerous categories of electrolytes that include sulfide-based electrolytes, telluride-based electrolytes, mixed halide-based electrolytes, lithium-oxy- halide electrolytes, hydride-based electrolytes, and oxide-based electrolytes. However, the claimed solid electrolyte material requires a specific combination: Li, M (Nb or Ta), O, X (F, Cl, Br, or I), sulfur-free, with specific XRD peaks and intensity ratio, and a Li/M ratio of 1.2 to 1.4. Further, the XRD peak positions and the intensity ratio are highly dependent on the specific claimed crystal structure and having the same elemental components does not guarantee the XRD characteristics.” Although Yushin teaches numerous categories of electrolytes, Yushin still teaches the specific combination that includes all the components of the claimed electrolyte.
With regards to applicant’s argument that “Kadjos does not describe the solid electrolyte has, in an X-ray diffraction pattern obtained by X-ray diffraction measurement using a Cu-Ka ray, a first peak positioned within a range of a diffraction angle 20 from 13.49* to 13.590 and a second peak positioned within a range of the diffraction angle 28 from 14.82* to 14.92*. Further, Kadjos does not describe an intensity ratio of the first peak to the second peak is 0.50 or more and 4.50 or less.” In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The 103 rejection of claim 4 set forth in the final office action, mailed on 04/10/2026, modified the molar ratio of Li to M in the electrolyte taught by Yushin to be within the broad range of 5000:1 to 1:3 as taught by Kadjos. As discussed earlier, the claimed range of 1.2 or more and 1.4 or less falls within this broad range. As mentioned above, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, Yushin and Kadjos render the claimed electrolyte obvious, resulting in an electrolyte that comprises all the components of the claimed invention. Although Yushin and Kadjos do not specifically provide X-ray diffraction pattern obtained by X-ray diffraction measurement using a Cu-Ka ray, the electrolyte taught by Yushin in view of Kadjos comprises all the elements of the claimed electrolyte and will inherently possess the same characteristics, such as an XRD. NOTE: Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on “prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
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.
Claim(s) 1-3 and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US 20200235420 A1) in view of Kajdos et al. (US 20170170515 A1).
With regards to claim 1, Yushin teaches a Lithium-metal-oxy-halide solid electrolyte that that reads on the solid electrolyte comprising Li; M (metal); O: and X (halide) (¶ 0085). Yushin teaches that M (metal) may include Ta (¶ 0085), and the X (halide) may comprise Cl or other halogens such as F or Br (¶ 0085). Although Yushin teaches examples of the solid electrolyte that may include sulfur, Yushin also teaches examples that do not include sulfur and therefore read on the solid electrolyte material being free of sulfur (¶ 0085). Yushin does not teach the solid electrolyte material wherein a molar ratio of the Li to the M is 1.2 or more and 1.4 or less.
In a similar field of endeavor, Kajdos teaches a solid electrolyte material comprising Li, M, O, and X wherein the M is at least one selected from the group consisting of Nb and Ta, the X is at least one selected from the group consisting of F, Cl, Br, and I (¶ 0014). Kajdos goes on to teach an example of a solid electrolyte material wherein a molar ratio of the Li to the M is 5000:1 to 1:3 (¶ 0014). Kadjos teaches that this ratio may tuned within this range to achieve a desired ionic conductivity (¶ 0042). Kadjos goes on to teach that it may be advantageous for the M to Li ratio (z2:z1) to be less than 3 and more than 0.0001 (¶ 0041). In this case, the Li to M ratio (z1:z2) is 1/3 to 10,000. The claimed range of 1.2 or more and 1.4 or less falls within the 1/3 to 10,000 range taught by Kadjos. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was effectively filed to try a ratio of Li to M within the range taught by Kajdos through routine experimentation. Applying this ratio to the solid electrolyte taught by Yushin would predictably yield an effective electrolyte that has exhibits good ionic conductivity.
Modified Yushin does not specifically teach the solid electrolyte material has, in an X-ray diffraction pattern obtained by X-ray diffraction measurement using a Cu-Ka ray, a first peak positioned within a range of a diffraction angle 20 from 13.490 to 13.590 and a second peak positioned within a range of the diffraction angle 20 from 14.820 to 14.920, and an intensity ratio of the first peak to the second peak is 0.50 or more and 4.50 or less.
However, the electrolyte taught by modified Yushin comprises all the elements of the claimed electrolyte and would inherently have, in an X-ray diffraction pattern obtained X-ray diffraction measurement using a Cu-Ka ray, a first peak positioned within a range of a diffraction angle 2Θ from 13.490° to 13.590° and a second peak positioned within a range of the diffraction angle 2Θ from 14.82° to 14.92°, and an intensity ratio of the first peak to the second peak is 0.50 or more and 4.50 or less, since a material and its properties are inseparable. NOTE: Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on “prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
With regards to claim 2, Yushin teaches that X includes Cl (¶ 0085).
With regards to claim 3, Yushin teaches that the M (metal) includes Ta (¶ 0085).
With regards to claim 5, modified Yushin teaches the solid electrolyte material according to claim 1. Modified Yushin does not specifically teach the solid electrolyte material wherein the intensity ratio is 0.70 or more and 1.72 or less. However, as discussed earlier, the electrolyte taught by modified Yushin comprises all the elements of the claimed electrolyte. Thus, the electrolyte taught by modified Yushin would inherently have, in an X-ray diffraction pattern obtained X-ray diffraction measurement using a Cu-Ka ray, a first peak positioned within a range of a diffraction angle 2Θ from 13.490° to 13.590° and a second peak positioned within a range of the diffraction angle 2Θ from 14.82° to 14.92°, and an intensity ratio of the first peak to the second peak is 0.50 or more and 4.50 or less, since a material and its properties are inseparable. NOTE: Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on “prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
With regards to claim 6, Yushin teaches a battery comprising: a positive electrode; a negative electrode; and an electrolyte layer disposed between the positive electrode and the negative electrode (¶ 0015). Yushin teaches that at least the positive electrode includes the solid electrolyte material (¶ 0015). Yushin, in view of Kadjos, teaches the electrolyte of claim 1. It would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed to substitute the electrolyte taught by Yushin with the electrolyte taught by modified Yushin as there are no unexpected results. Through this modification, modified Yushin teaches a battery comprising: a positive electrode; a negative electrode; and an electrolyte layer disposed between the positive electrode and the negative electrode, wherein at least the positive electrode includes the solid electrolyte material according to claim 1.
Conclusion
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/HUNSUYADOR MUGEESATU YUSIF/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
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