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 without traverse of Group I, claims 1-8 in the reply filed on 23 June 2026 is acknowledged.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of co-pending Application No. 18/378,746 (reference application, now US Pub 2024/0128451 newly cited). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims require all the limitations of the instant claims, by requiring (in claim 1) a positive electrode for an all-solid-state rechargeable battery, the positive electrode comprising: a current collector; and a positive electrode active material layer on the current collector, wherein: the positive electrode active material layer includes a positive electrode active material and a solid electrolyte, the solid electrolyte includes: sulfide solid electrolyte particles, and a lithium-metal-phosphate on a surface of the sulfide solid electrolyte particles, and in an X-ray diffraction analysis of the solid electrolyte, a full width at half maximum of a main peak is less than or equal to about 0.160. Further, the dependent claims of the instant application and co-pending application are identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 8 is 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 8 recites “(D90 D10)/D50” which appears to be missing a minus symbol as described in the instant specification. For the purpose of examination this limitation is taken to read “(D90 – D10)/D50” as described in paragraph [0072] of the instant specification as originally filed.
Relevant MPEP Sections
MPEP 2112.01 relating to Composition, Product, and Apparatus Claims: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The following is a section from the MPEP 2144.05 concerning the obviousness of ranges: 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
The following is a section from MPEP 2144.05 - Part II. OPTIMIZATION OF RANGES: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim Rejections - 35 USC § 103
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Aihara et al. (US Pub 2015/0093651 cited in IDS).
In regard to claim 1, Aihara et al. teach a solid electrolyte (figure 1 and 2), comprising: sulfide solid electrolyte particles 301 and lithium-metal-phosphate 203 on a surface of the sulfide solid electrolyte particles (paragraphs [0031-0039] – paragraph [0034] – “The cathode layer 200 includes the sulfide-based solid electrolyte 301 to increase a surface where the cathode active material with a coating layer therein 201 and the sulfide-based solid electrolyte 301 contact.”).
The material of the prior art is formed via mechanical milling and heat treatment to arrive at a “selected” particle diameter (paragraphs [0061-0063]) therefore, while no X-ray diffraction analysis of the solid electrolyte is performed by the prior art, a full width at half maximum (FWHM) of a main peak which overlaps the claimed range of less than or equal to about 0.160 is taken to be present (as the prior art and the instant claims are substantially identical in structure or composition, or are produced by identical or substantially identical processes – see MPEP 2112.01 above) or obvious in the product of the prior art as “selecting” a uniform particle distribution would have been obvious in the prior art in order to arrive at uniform properties (MPEP 2144.05 above regarding optimization of the ranges).
In regard to claim 2, the lithium-metal-phosphate includes LiZr2(PO4)3 and LiTi2(PO4)3 (paragraph [0037]).
In regard to claim 3 and 4, the lithium-metal- phosphate is included in an amount of about 0.01 mol% to about 4mol% based on a total weight of the solid electrolyte (paragraph [0042]) which overlaps the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).
In regard to claim 5, the lithium-metal- phosphate is preferably amorphous (paragraph [0039]).
In regard to claim 6, the sulfide solid electrolyte particles include crystalline or glass ceramic versions of Li3PS4 (paragraph [0055]), while an argyrodite-type sulfide is not explicitly disclosed, such is a common crystal structure for sulfide electrolytes and therefore taken to be obvious in view of the prior art discussion of crystal phases.
In regard to claim 7, an average particle diameter (D50) of the solid electrolyte is about 0.1 to about 20 microns (paragraph [0048]), 10 microns in a specific example (paragraph [0092]) which overlaps or is close enough to the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).
In regard to claim 8, as noted above, selecting particle size distributions are taught in the prior art, therefore while a value of (D90 - D10)/D50 in a particle size distribution for the solid electrolyte is greater than about 1 and less than or equal to about 5 is not explicitly disclosed, using ball milling and heat treatment temperatures to arrive at a uniform particle distribution would have been obvious to one of ordinary skill in the art absent evidence to the contrary (MPEP 2144.04 above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ritter (US Pub 2016/0293946 newly cited) teaches various lithium argyrodites (paragraph [0025]) with compositions similar to the prior art cited above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS P D'ANIELLO whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723
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