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
Applicants’ election of Species Ia (claims 1, 3, 6, 9, 12, 13, and 19-26) in the reply filed on January 29, 2026 is acknowledged. Because applicants did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “M1” and “M2” (see paragraphs [0034], [0053], [0096], [0105], and [0131] of the specification). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because the graphs of Figures 1-4 have no units on the axes. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
In this instance, the abstract recites the phrases that can be implied “The present invention provides” (in the 1st line) and “according to the present invention” (in the 6th line).
The use of the term “Ketjen black”, which is a trade name or a mark used in commerce, has been noted in this application (see paragraph [0230] of the specification). The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kagei et al. (US 2012/0012776).
Regarding independent claim 1, Kagei et al. disclose a lithium-based solid electrolyte of a positive electrode active material for use in a lithium secondary battery (see abstract; paragraphs [0020], [0094], [0097], [0109], [0137], and [0155]-[0165] under Examples 1-4; and TABLE 1), in which the lithium-based solid electrolyte includes the following components:
lithium tetraborate (Li2B4O7) in an amorphous, or non-crystalline state (see paragraphs [0097] and [0156]);
water (see paragraph [0156]); and
a lithium salt in the form of (at least) lithium carbonate (Li2CO3) and/or lithium hexafluophosphate (LiPF6) – see paragraphs [0094] and [0109]).
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.
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.
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 3, 6, 9, 12, 13, and 19-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kagei et al. (US 2012/0012776).
Regarding claim 3, Kagei et al. disclose the lithium-based solid electrolyte of independent claim 1, including that 0.4% by weight of lithium tetraborate and water were mixed and stirred to prepare a slurry with a solid content concentration of 25% by weight (see paragraph [0156]), but fail to explicitly disclose a molar ratio of the lithium salt to the lithium tetraborate is 0.001 to 1.5, and a molar ratio of the water to the lithium tetraborate is 3 to 15. However, one of ordinary skill in the art would have recognized that each of these molar ratios (wherein the molar ratio of the lithium salt to the lithium tetraborate is likely disclosed since this range spans three orders of magnitude) would have been subject to routine experimentation with a reasonable expectation of success, for the purpose of obtaining a slurry with a desired solid content concentration to optimize output characteristics of a positive electrode active material for a lithium battery (see abstract; and paragraph [0020]). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 6, although Kagei et al. disclose the lithium-based solid electrolyte of independent claim 1, including that the lithium salt would include (at least) one or more of lithium hydroxide (LiOH), lithium carbonate (Li2CO3), lithium nitrate (LiNO3), lithium oxide (Li2O), other fatty acid lithium and lithium halides, and the like, and/or lithium hexafluophosphate (LiPF6) – see paragraphs [0094] and [0109]), Kagei et al. do not explicitly disclose the claimed Formula (I) of LiN(Rf1SO2)(Rf2SO2), where Rf1 and Rf2 each independently represent a fluorine atom or a perfluoroalkyl group. However, one of ordinary skill in the art would have recognized that Kagei et al. would readily contemplate a substitution of one or more lithium salts that include SO2 groups, as suggested in the phrase “and the like” after the above listing of various lithium salts (see paragraph [0094], while also reciting a fluorine-containing lithium salt of lithium hexafluophosphate (LiPF6) – see paragraph [0109]). In this instance, one of ordinary skill in the art would have conducted routine experimentation among a group of similar lithium salts under an “obvious to try” rationale, in order to optimize output characteristics of the lithium salt for use in a positive electrode active material for a lithium battery (see abstract; and paragraph [0020]). With regard to the types of materials that are suitable for use, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 9, although Kagei et al. disclose the lithium-based solid electrolyte of independent claim 1, Kagei et al. do not disclose that (in an infrared absorption spectrum), a ratio of a maximum absorption intensity in a wave number range of 3,000 to 3,500 cm-1 to a maximum absorption intensity in a wave number range of 800 to 1,600 cm-1 is 1/5 or more. However, since Kagei et al. disclose the lithium-based solid electrolyte of independent claim 1 and render obvious the relative molar ratios (of claim 3) applied to the three components (lithium tetraborate, water, and lithium salt), one of ordinary skill in the art would have readily conducted routine experimentation by any of a variety of instrumental analysis operations (including performing measurements via infrared absorption spectroscopy), and given the teachings of Kagei et al. with respect to applicants’ claims 1 and 3, would have reasonable expectation of success in obtaining the claimed ranges of a ratio of a maximum absorption intensity in a wave number range of 3,000 to 3,500 cm-1 to a maximum absorption intensity in a wave number range of 800 to 1,600 cm-1 is 1/5 or more, wherein further optimization of these ranges would be advantageous for optimizing output characteristics of a positive electrode active material for a lithium battery (see abstract; and paragraph [0020]). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 12 and 13, although Kagei et al. disclose the lithium-based solid electrolyte of independent claim 1, Kagei et al. do not disclose wherein a proportion of a full width at half maximum of a peak in which a chemical shift appears in a range of -100 to +100 ppm in a spectrum obtained in a case where a solid 7Li-NMR measurement is carried out at 120°C is 50% or less with respect to a full width at half maximum of a peak in which a chemical shift appears in a range of -100 to +100 ppm in a spectrum obtained in a case where a solid 7Li-NMR measurement is carried out at 20°C (of claim 12), as well as wherein a spectrum obtained by carrying out a solid 7Li-NMR measurement at 20°C, in a case where a first peak appearing in a range of -100 to +100 ppm is subjected to waveform separation, the lithium-based solid electrolyte has a second peak having a full width at half maximum of 5 ppm or less in a range where a chemical shift is of -3 to +3 ppm, and a ratio of an area intensity of the second peak to an area intensity of the first peak is 0.5% or more (of claim 13). However, since Kagei et al. disclose the lithium-based solid electrolyte of independent claim 1 and render obvious the relative molar ratios applied to the three components (lithium tetraborate, water, and lithium salt) of claim 3, one of ordinary skill in the art would have readily conducted routine experimentation by any of a variety of instrumental analysis operations (including performing solid 7Li-NMR measurements at both 20°C and 120°C for comparison of first and second peaks and their corresponding full widths at half maximum), and given the teachings of Kagei et al. with respect to applicants’ claims 1 and 3, would have reasonable expectation of success in obtaining the claimed ranges of -100 to +100 ppm and -3 to +3 ppm with respect to the parameters measured in the solid 7Li-NMR measurements at both 20°C and 120°C, wherein further optimization of these ranges would be advantageous for optimizing output characteristics of a positive electrode active material for a lithium battery (see abstract; and paragraph [0020]). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 19 and 20, although Kagei et al. disclose the lithium-based solid electrolyte of independent claim 1, including its production method (in referring to Examples 1-4 and TABLE 1) that includes the steps of subjecting a lithium-based oxide containing Li and B (lithium tetraborate) to a mechanical milling treatment (including teaching of subjecting the lithium-based oxide (of applicants’ claim 20) prior to any of requirements 1, 2, or 3), mixing a product obtained in the subjecting step with water, and removing water from a dispersion liquid obtained in the mixing step to obtain a lithium-based solid electrolyte, Kagei et al. do not explicitly disclose that the production method satisfies any of the three requirements 1, 2, or 3. However, one of ordinary skill in the art would have conducted routine experimentation with a reasonable expectation of success to add two or more elements of those in the group listed under requirement 1 (including during the mechanical milling treatment), in order to obtain a homogeneous mixture of these two or more elements in the lithium-based oxide disclosed in paragraphs [0097] and [0156] of Kagei et al., for the purpose of optimizing output characteristics of a positive electrode active material for a lithium battery (see abstract; and paragraph [0020]). With regard to the types of materials that are suitable for use, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 21-23, although Kagei et al. disclose the lithium-based solid electrolyte of a positive electrode active material for use in a lithium battery (of independent claim 1), Kagei et al. do not explicitly disclose that the lithium-based solid electrolyte is a coating layer disposed on the positive electrode active material or is the positive electrode active material itself. However, one of ordinary skill in the art would have recognized that use of the lithium-based solid electrolyte of a positive electrode active material would be readily applied as a coating or used as a base material in the positive electrode active material itself under the rationale of a finite number (two) of predictable solutions with a reasonable expectation of success, for the purpose of optimizing output characteristics of a positive electrode active material for a lithium battery (see abstract; and paragraph [0020]). Moreover, Kagei et al. disclose that the lithium-based solid electrolyte of a positive electrode active material for use in a lithium battery (of independent claim 1), that the lithium-based solid electrolyte would readily be used as a coating layer disposed on the positive electrode active material or as the positive electrode active material itself (in referring to claim 21 above), and that materials that include lithium or carbon would be used for the negative electrode active material (see paragraph [0109]), wherein a sequential order of the positive electrode active material layer, the solid electrolyte layer, and the negative electrode active material would form an all-solid state secondary lithium battery, and at least the positive active material layer contains the lithium-based solid electrolyte according to claim 1.
Regarding claims 24-26, although Kagei et al. disclose the lithium-based solid electrolyte (of independent claim 1), and disclose/suggest the modified positive and negative electrode active materials (of claims 21 and 22) and all-solid state secondary battery (of claim 23), Kagei et al. do not explicitly disclose that an electrode for the all-solid state secondary battery is in the form of a sheet (of claim 24), as a solid electrolyte sheet (of claim 25), or is an electrode comprising an active material layer and a collector (of claim 26). However, one of ordinary skill in the art would have recognized that the electrode for use in the all-solid state secondary battery would be readily selected from a variety of shapes, as well as that a collector (see paragraph [0137]) would be used in combination with the active material layer. Moreover, it would have been obvious to one of ordinary skill in the art to modify the structure of the electrode to be in the form of a sheet, since modification of shape is merely a design choice. In the absence of persuasive evidence to the contrary, any change in shape is merely a matter of choice which a person of ordinary skill in the art would have found obvious. See MPEP 2144.04(IV)(B) and referring to In re Dailey, 357 F.2d 669, 149 USPQ 7 (CCPA 1966).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 March 24, 2026
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