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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 recites “[a] solid electrolyte material comprising: a cation A that is an ion conductive species; a cation B that is not an ion conductive species; an anion X; and an anion Z, wherein the cation A is at least one element selected from the group consisting of alkali metal elements and alkaline earth metal elements, the cation B is at least one element selected from the group consisting of alkali metal elements and alkaline earth metal elements other than the cation A, transition metal elements, the Group 13 elements, the Group 14 elements, the Group 15 elements, and the Group 16 elements, the anion X and the anion Z are each independently at least one element selected from the group consisting of the Group 14 elements, the Group 15 elements, the Group 16 elements, and the Group 17 elements, the anion X and the anion Z constitute an anion framework having a
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-type structure, and a molar ratio of the anion X to the anion Z is greater than or equal to 1 and less than or equal to 4.”
However, the applicant’s disclosure does not provide sufficient detail to enable one of ordinary skill in the art to make such a material without undue experimentation due to an undetermined number of combination of ingredients and a lack of particular guidance in methodology for all compounds claimed. To reach this conclusion, the Wands factors were weighted (See MPEP 2164.01 (a)). The relevant Wands factors are:
The Breadth of the Claims
The breadth of the claim is considered unreasonably broad in light of the specifications. The applicant claims a list three separate lists of elements for cation A, cation B, and anions X and Z.
For cation A, any alkali metal or alkaline earth metal may be used as per the claim. However, the applicant’s specification only discloses the use of lithium, and thus only discloses a use of an alkali metal.
For cation B, any element that is an alkali metal, alkaline earth metal, transition metal or any element in Groups 13, 14, 15, or 16 may be used as per the claim. However, the applicant’s specifications only teach five different elements (Zn, P, Si, Sn, and Ge), which neglects teaching the use of an alkali metal, alkaline earth metal, Group 13 element, and Group 16 element. Also notable is that of all 34 transition metals, only zinc is taught by the applicant’s specifications.
For anions X and Z, any element in Groups 14, 15, 16 or 17, may be used as per the claim. However, the applicant’s specifications only teach six different elements (N, Te, Se, Br, I, and Cl), which neglects all Group 14 elements.
Furthermore, the applicant only discloses the synthesis method for a single compound,
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.
Nature of the Invention
The nature of the invention is a material comprising at least four different elements with two elements forming the specific structure typically found in
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. Of particular difficulty is achieving the specific structure, which is typically found occurring between metallic compounds. Claim 1 as recited lists that the two elements that are to form this structure may be chosen from any of the Group 14, Group 15, Group 16, or Group 17 elements, many of which do not constitute metals or metalloids. The applicant states that only
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was synthesized, and while the applicant lists 8 compounds that theoretically should have the claimed structure, it is unknown whether these compounds, as well as all other claimed compounds that meet the other recited limitations of the claim, could be synthesized by the same method as was taught in the synthesis of
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and form the desired structure.
State of the Prior Art
The prior art does not teach the particularly taught compound of
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, any of the other listed compounds, or any compound that meets the limitations of the claim including the
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type structure. The art on record do not mention even the hypothetical existence of the particularly taught compound with the closest compound being taught by Braunling et al. (Synthesis, Crystal Structure and Lithium Motion of
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and
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) which teaches
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. Notably, the prior art lacks a substantial amount of lithium as well as the presence of zinc.
Level of One of Ordinary Skill
Further, Braunling does not teach the use of a planetary ball mill to create their compound. Instead, small amounts of
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and
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were reacted together in sealed tantalum ampoules (See Braunling “Experimental Section”). It would not have been obvious to one of ordinary skill in the art to thus take
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,
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, and
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and place them all in a planetary ball mill and produce
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. There is a lack of evidence in the prior art that the compounds would necessarily react to fully combine into the desired end product.
Level of Predictability
There is also a lack of evidence that any of the applicant’s hypothetical compounds can be made in the prior art. Given the diverse set of properties exhibited between groups of elements, if not the properties between individual elements, and the particular chemical reagents comprising these other elements and groups of elements, it would not be predictable for or obvious to one of ordinary skill in the art to be able to produce the other hypothetical compounds using the same or even similar method(s) as was used by the applicant to produce
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.
Amount of Direction Provided
The applicant discloses ball milling a mix of three powders,
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,
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, and
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in a ratio of 4:1:1. It does not teach any other compound being produced. Simply putting the proper ratio of elements together and milling them together does not necessarily guarantee a particular product. It is possible, and even likely, for byproducts to form. The applicant states that the initial ratio of the powders may be adjusted to account for these undesirable byproducts. In an attempt to make any other claimed compound, one of ordinary skill in the art would require significant experimentation just to determine what reagents to use, as well as whether to use a mill, mill specifications (such as ball size and material), how long to mill for, at what temperature, or at what pressure, among other parameters, in order to obtain a significant amount of the desired compound.
Existence of Working Products
The applicant claims to have successfully synthesized
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, however no other compounds have been claimed to have been synthesized by the applicant, nor by any of ordinary skill in the art at the time of filing. Of the eight direct examples provided by the applicant (Table 1), all but
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are entirely hypothetical.
Given the different chemical compositions of the other compounds, it is difficult to simply assume that the synthesis of these other compounds could be made through the same method as the one used to synthesize the working example. As mentioned before, the particular reagents, the amount of the particular reagents, milling time, mill specifications (such as ball size and material), temperature, and pressure, among other parameters, are all parameters whose values would likely change depending on the desired compound.
The Quantity of Experimentation Needed
Given the number of parameters that would have an effect on the compound produced, the quantity of experimentation needed to make the invention would be extremely high. There is limited guidance given by the applicant and is only clearly applicable to one of the compounds claimed. One of ordinary skill in the art would have to first model a given compound to see if it could stably maintain the
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type structure, then physically test multiple groups of reagents, milling times, mill specifications, temperatures, and pressures, in order to produce the desired compound as the applicant gives little to no instruction on how to produce any substance that isn’t
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.
Specifically, applicant provides the pertinent details on producing
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, including mixing method, treatment times, and raw materials used. However, no such instruction is given for any other compound, including any compound that uses Group 13 elements, any other alkali metal or alkaline earth metal, or any other non-disclosed but claimed element. It would be infeasible for another to take the work as disclosed by the applicant and determine how to produce any of the other claimed compounds. There is no information on what compounds to use, whether these hypothetical compounds would even mix properly through a planetary ball mill, or what kinds of conditions the mixing would need to be done under. The varying differences in reagent chemical and physical properties, element group chemical properties, and individual element chemical properties would necessarily require differences in the production of any kind of desired chemical compound. Further, there are innumerable reagents that can be theoretically mixed to achieve a claimed chemical compound. These reagents can be scaled up in amount to properly achieve the necessary molar ratios to form the claimed chemical compounds but the applicant gives no indication on how to even begin choosing which compounds to use as reagents.
Thus, since there is a lack of sufficient direction in how to produce the various other compounds claimed by the applicant, there would need to be an incredibly high quantity of experimentation required to determine how to make the other claimed compounds.
Conclusion
Weighing all of the Wands factors together leads to the conclusion that there would be undue experimentation necessary for one of ordinary skill in the art at the time of the invention to have made the solid electrolyte material with the limitations of claim 1. It was found that the breadth of the claims is far wider than is particularly taught in the specifications, including the usage of elements not particularly discussed anywhere in the applicant’s specifications, thus leaning towards undue experimentation. Requiring the X and Z anions to form the
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type structure, a structure typically found with metallic compounds, that is only hypothetically present in seven of the eight given examples. The prior art does not disclose any of the compounds as taught in the applicant’s specifications, only teaching similar substances that still lack at least one element in the composition, and often lacking the particularly claimed
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type structure. The amount of direction provided by the applicant is limited to only a single species, and neglects to generally teach how one of ordinary skill in the art would produce any other claimed invention, especially considering the numerous possible reagents that can be mixed together in varying quantities. There is a lack of working examples, as the applicant provides only a single working example amongst the at least eight examples, and of the innumerable other claimed compounds. Finally, the quantity of experimentation needed is necessarily high due to the various parameters that must be tested including the particular reagents used, the amount of the reagents used, whether or not the produced compound possesses the
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type structure, the material of the planetary ball mill, the temperature at which the mill is run, the length of time for which the mill is run, the speed of the mill, and the internal gas pressure of the mill. All these parameters would increase the amount of experimentation needed exponentially.
Thus, the evidence leads to the conclusion that claim 1, and all claims directly or indirectly dependent on claim 1, is not enabled due to the undue experimentation that would be required to make the claimed invention by one of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW Y. HO whose telephone number is (571)842-1342. The examiner can normally be reached 7:30 - 6:00, Mon - Thurs.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao S. Zhao can be reached at (571) 270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.Y.H./ Examiner, Art Unit 1744
/XIAO S ZHAO/ Supervisory Patent Examiner, Art Unit 1744
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