DETAILED ACTION
This is the final office action on the merits for 18/337,629, filed 6/20/2023, which claims priority to Korean application KR10-2022-0094829, filed 6/20/2022.
Claims 1-44 are pending; Claims 10-18, 31, 34, 37, 40, and 43 are considered herein.
In light of the claim amendments filed 6/22/2026, the rejections of record are withdrawn, and new grounds of rejection are presented herein.
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 .
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following references, which are not currently applied in a rejection.
U.S. Patent Application Publication 2022/0223904 A1: This reference teaches lithium halide solid electrolytes.
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.
Claims 10-11 and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki, et al. (WO2021/024785A1, with reference made to patent family document U.S. Patent Application Publication 2022/0246983 A1), as evidenced by Dodd, et al. (Acta Materiala, 49, 2001, 4215-4220).
In reference to Claim 10, Suzuki teaches a product formed by ball milling Li2O, ZrCl4, and ZrF4 at 500 rpm for 24 hours to produce a solid electrolyte (paragraph [0146], Example 68, Table 4).
Evidentiary reference Dodd teaches that ball milling Li2O and ZrCl4 for 6 hours causes the reactants to have a nanocrystalline structure (section 3.1, paragraph 1, page 4216).
Dodd further teaches that solid phase reaction of Li2O and ZrCl4 produces ZrO2 and LiCl, via an intermediate product comprising Li2ZrCl6 (Fig. 3, described in section 3.1 of page 4216, and the first paragraph of page 4217).
Further, the instant specification recognizes that a material of the instant invention may be suitably made by ball-milling Li2O, ZrCl4, and ZrF4 at 600 rpm under Ar for 20 hours (Synthesis Example 3-6, “First Step,” Table 5, paragraph [0191]).
Therefore, it is the Examiner’s position that there is reasonable basis to conclude that the process of Suzuki (which is substantially similar to the process of the instant invention) produces a lithium halide-based nanocomposite represented by Formula 2A, in which a nanosized compound of ZrO2 is dispersed in a halide compound of Li2ZrCl3F.
This disclosure teaches the limitations of Claim 10, of a lithium halide-based nanocomposite represented by Chemical Formula 2A, in which a nanosized compound of ZrO2 is dispersed in a halide compound of LiaM2X1b-dX2d, Li2ZrCl3F, wherein M1 and M2 are Zr, X1 is Cl and X2 is F, and wherein a is 2, b is 4, c is 2, and d is 1.
This disclosure teaches the limitations of Claim 11, wherein LiaM2X1b-dX2d in Chemical Formula 2A is LiaM2Clb-dFd wherein M2 is Zr, and wherein a is 2, b is 4, c is 2, and d is 1.
In reference to Claim 14, as described in the rejection of Claim 10 above, it is the Examiner’s position that, because the method of Suzuki is substantially similar to the method of the instant invention, there is reasonable basis to conclude that the product of Suzuki meets the structural and compositional features of the claimed material.
Therefore, it is the Examiner’s position that Suzuki teaches that the ZrO2 has a crystal size of less than or equal to about 100 nm.
It is noted that Claim 14 is considered a product-by-process claim.
The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
In reference to Claim 15, it is the Examiner’s position that there is reasonable basis to conclude that the process of Suzuki (which is substantially similar to the process of the instant invention) produces a lithium halide-based nanocomposite with the properties recited in Claim 15.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
In reference to Claim 16, Suzuki teaches that the lithium-halide based nanocomposite of his invention has an ionic conductivity of 1.7 mS/cm (Example 68, Table 8).
This disclosure teaches the limitations of Claim 16, wherein the lithium-halide based nanocomposite has an ionic conductivity of about 0.1 to about 5 mS/cm at 30 °C.
In reference to Claim 17, it is the Examiner’s position that there is reasonable basis to conclude that the process of Suzuki (which is substantially similar to the process of the instant invention) produces a lithium halide-based nanocomposite with the properties recited in Claim 17.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
In reference to Claim 18, Suzuki does not explicitly teach that the material of his invention has the NMR properties recited in Claim 18.
However, the instant specification states that these NMR properties are indicative of interfacial lithium ion conduction (paragraph [0130]).
Therefore, because Suzuki teaches a material that meets the limitations of Claim 10, and because he further teaches that the material of her invention is capable of lithium ion conduction (Table 8, paragraph [0087]), it is the Examiner’s position that the material of Suzuki has the properties recited in Claim 18.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
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.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki, et al. (WO2021/024785A1, with reference made to patent family document U.S. Patent Application Publication 2022/0246983 A1), as evidenced by Dodd, et al. (Acta Materiala, 49, 2001, 4215-4220).
In reference to Claim 12, the embodiment of Example 68 of Suzuki does not meet the limitations of Claim 12.
However, in the broader disclosure of Suzuki, he teaches that the transition metal in the compounds of his invention may suitably be one or more of Zr, Hf, Ti, and Sn (paragraph [0025]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have replaced a portion of the Zr in the compound made in Example 68 with Hf, Ti, or Sn.
Replacing a portion of the Zr in the compound made in Example 68 of Suzuki with Hf, Ti, or Sn teaches the limitations of Claim 12, wherein a portion of M2 is substituted with M3, wherein M3 is one of Hf, Sn, or Ti, and wherein e is in the range of 0.01-0.9. It is the Examiner’s position that the amount of the substitution would have been obvious to one of ordinary skill in the art at the time the instant invention was filed, as a matter of material optimization to achieve desired crystallinity and lithium conductivity.
In reference to Claim 13, the embodiment of Example 68 of Suzuki does not explicitly teach the limitations of Claim 13.
However, in a separate embodiment, he teaches that the amount of ZrO2 in a solid electrolyte material of his invention influences its ionic conductivity. Specifically, he teaches that Example 16, which comprises a material with a general formula of Li2ZrOCl4, has an ionic conductivity of 2.1 mS/cm (Example 16, Table 5), while Example 82, which comprises Li2ZrOCl4 + ZrO2, has an ionic conductivity of 2.5 mS/cm (Example 82, Table 8).
Therefore, it is the Examiner’s position that one of ordinary skill in the art at the time the instant invention was filed would have been motivated to control the amount of ZrO2 in the solid electrolyte material of Suzuki, in order to control its ionic conductivity.
It is the Examiner’s position that this routine optimization would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at a structure within the claimed range of Claim 13, without undue experimentation.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki, et al. (WO2021/024785A1, with reference made to patent family document U.S. Patent Application Publication 2022/0246983 A1), as evidenced by Dodd, et al. (Acta Materiala, 49, 2001, 4215-4220), and further in view of Kwon (U.S. Patent Application Publication 2021/0296691 A1).
In reference to Claim 31, Suzuki does not teach the positive electrode active material of Claim 31.
To solve the same problem of providing a solid state battery, Kwon teaches a positive electrode for a solid state electrode battery, comprising a core 112/113 including a composite metal oxide capable of reversible intercalation/deintercalation of lithium (Fig. 1, paragraphs [0035]-[0064]), and a shell 114 disposed on the core 112/113 (Fig. 1, paragraphs [0035] and [0066]).
Kwon teaches that the shell 114 is a lithium ion conductor (paragraph [0066]).
Kwon further teaches that the formation of a lithium ion conductor as a shell on the surface of the positive electrode active material of his invention provides the benefit of preventing diffusion of non-Li materials at the interface of the cathode particles and the electrolyte.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have formed the lithium ion conductor shell of the material of Kwon from the lithium ion conductor of Suzuki, because Suzuki teaches that the lithium ion conductor material of her invention provides high lithium conductivity (Suzuki, paragraph [0014]).
This modification teaches the limitations of Claim 31, wherein the positive electrode active material further comprises a shell disposed on the core and including the lithium halide-based nanocomposite, wherein the lithium halide-based nanocomposite is the lithium halide-based nanocomposite according to claim 10.
Claims 34, 37, 40, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki, et al. (WO2021/024785A1, with reference made to patent family document U.S. Patent Application Publication 2022/0246983 A1), as evidenced by Dodd, et al. (Acta Materiala, 49, 2001, 4215-4220), and further in view of Yamamoto, et al. (U.S. Patent Application Publication 2022/0069342 A1).
In reference to Claim 34, Suzuki teaches a solid electrolyte for a rechargeable lithium battery comprising the lithium halide-based nanocomposite according to claim 10 (described fully above).
Suzuki does not teach that the electrolyte comprises a sulfide-based solid electrolyte.
To solve the same problem of providing a solid state electrolyte for a lithium ion battery (Fig. 3), Yamamoto teaches that suitable electrolytes for a solid state battery include halide based electrolytes (as in Suzuki), sulfide-based electrolytes, and mixtures of electrolyte materials (paragraph [0222]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used a combination of a sulfide-based electrolyte and the lithium halide electrolyte material of Suzuki, based on the disclosure of Yamamoto that sulfide electrolytes and halide electrolytes may suitably be combined and used together in an electrolyte material.
This modification teaches the limitations of Claim 34, of a solid electrolyte for a rechargeable lithium battery comprising the lithium halide-based nanocomposite according to claim 10 and a sulfide-based solid electrolyte.
In reference to Claim 40, Suzuki teaches a solid electrolyte battery comprising a solid electrolyte between a positive electrode and a negative electrode (paragraphs [0048]-[0049]).
As described above, the solid electrolyte material of modified Suzuki corresponds to the solid electrolyte of Claim 34.
Therefore modified Suzuki teaches the limitations of Claim 40.
In reference to Claim 37, it is the Examiner’s position that the electrolyte of modified Suzuki can be considered to have two identical layers, each corresponding to a half-thickness of the electrolyte layer.
Therefore, modified Suzuki teaches a double-layer solid electrolyte for a rechargeable lithium battery comprising a solid electrolyte for a positive electrode including the lithium halide-based nanocomposite of claim 10.
Modified Suzuki does not teach that the electrolyte of his invention comprises and a solid electrolyte for a negative electrode disposed on the solid electrolyte for the positive electrode and including a sulfide-based solid electrolyte.
To solve the same problem of providing a solid state electrolyte for a lithium ion battery (Fig. 3), Yamamoto teaches that suitable electrolytes for a solid state battery include halide based electrolytes (as in Suzuki), sulfide-based electrolytes, and mixtures of electrolyte materials (paragraph [0222]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used a combination of a sulfide-based electrolyte and the lithium halide electrolyte material of modified Suzuki, based on the disclosure of Yamamoto that sulfide electrolytes and halide electrolytes may suitably be combined and used together in an electrolyte material.
This modification teaches the limitations of Claim 37, of a solid electrolyte for a negative electrode disposed on the solid electrolyte for the positive electrode and including a sulfide-based solid electrolyte.
Because Claim 37 does not require that the “solid electrolyte for a positive electrode” and the “solid electrolyte for a negative electrode” have different compositions, it is the Examiner’s position that the mixed electrolyte material of Suzuki in view of Yamamoto meets the limitations of both the “solid electrolyte for a positive electrode” and the “solid electrolyte for a negative electrode,” because both of these layers comprise both the material of Claim 10 and a sulfide electrolyte.
In reference to Claim 43, Suzuki teaches a solid electrolyte battery comprising a solid electrolyte between a positive electrode and a negative electrode (paragraphs [0048]-[0049]).
As described above, the solid electrolyte material of modified Suzuki corresponds to the solid electrolyte of Claim 37.
Therefore modified Suzuki teaches the limitations of Claim 43, of an all-solid-state battery comprising a positive electrode; a negative electrode; and the double-layer solid electrolyte of claim 37 between the positive electrode and negative electrode; wherein the positive electrode is disposed on the solid electrolyte for the positive electrode of the double-layer solid electrolyte, and the negative electrode is disposed on the solid electrolyte for the negative electrode of the double-layer solid electrolyte.
Response to Arguments
The Applicant’s arguments with respect to the rejections of record have been fully considered and are persuasive. Therefore, these rejections have been withdrawn. However, upon further consideration, new grounds of rejection are presented herein.
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 SADIE WHITE whose telephone number is (571)272-3245. The examiner can normally be reached 6am-2:30pm ET.
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/SADIE WHITE/Primary Examiner, Art Unit 1721
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