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 .
Summary
This is the initial Office Action based on application 18/418,296 filed 01/21/2024 by Masashi Sakaida.
Claims 1-7 are currently pending and have been fully considered.
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.
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over YUSHIN (US 2020/0343580 A1) in view of UENO (US 2022/0294007 A1) and FEINAUER (“Unlocking the Potential of Fluoride-Based Solid Electrolytes for Solid-State Lithium Batteries”).
With respect to claims 1 and 4-6. YUSHIN teaches a solid-state electrolyte comprising a lithium-ion battery cell, where the solid electrolyte includes lithium-ion metals that include Al, and Zr (paragraph 0088). Both Zn and Al may be advantageously present in the electrolyte (paragraph 0088). The solid electrolyte may then further include one or more halogens (paragraph 0089). The halide then may include F (paragraph 0088).
YUSHIN does not explicitly teach the crystal phase containing Li, Zr, Al, and F is represented by the claimed formula (1).
UENO teaches a solid electrolyte that includes a main element and a halogen (paragraph 0020). The solid electrolyte may include Li2+aMbZr1+cCl6+d, where M may be Al (paragraph 0026). UENO teaches when a part of the tetravalent metal element is substituted with at least one element selected form a monovalent to trivalent elements, the number of movable ion carriers of a reduced cation content can be increase (paragraph 0065). As a result ion conductivity of the solid electrolyte is improved (paragraph 0065).
FEINAUER teaches a compound, Li3AlF6 as solid electrolyte having good ionic conductivity (abstract). FEINAUER teaches that metal fluorides are electrical insulators, a highly desirable property for electrolyte applications and that Li-containing metal fluorides posses’ high chemical and electrochemical stability like ceramic electrolytes and excellent mechanical properties like sulfide-based electrolytes (pages 7197-7198).
YUSHIN teaches a variety of solid-state electrolytes composed of two non-Li metals and a halogen (paragraph 0089). UENO then teaches a halide solid electrolyte containing Zr and Al (paragraph 0026, 0054, and 0049). FEINAUER teaches that Li-containing metal fluorides possess high chemical and electrochemical stability like ceramic electrolytes and excellent mechanical properties like sulfide-based electrolytes (page 7197). Therefore, Zr and Al are known non-Li metals for use in halide solid electrolytes, the selection of only one halogen is known in the art, and fluoride based solid electrolytes have desirable properties (YUSHIN paragraph 0089, UENO paragraphs 0026, 0054, and 0049, and FEINAUER page 7197).
In view of YISHIN, UENO, and FEINAUER, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to have selected non-lithium metals such as Zr and AL, as well as the halogen of F. This is taken to be a use of known materials which is based on its suitability for the intended use, is within the ability of one of ordinary skill in the art. Further the selection of a balanced chemical compound containing Li, Zr, Al, and F would have been obvious to one of ordinary skill in the art based on the teachings of YUSHIN, UENO, and FEINAUER (YUSHIN paragraph 0089, UENO paragraphs 0026, 0054, and 0049, and FEINAUER page 7197). The range of chemical formula subscripts taught by YUSHIN and UENO overlaps with the claimed range. 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). See MPEP 2144.05(I).
Therefore the crystal phase represented by formula (1) from claim 4 would have been obvious. None of YUSHIN, UENO, nor FEINAUER teaches the X-ray diffraction pattern as claimed. However, as noted above the references teaches the same compound as claimed, and therefore it would have the same properties as claimed, including the X-ray diffraction pattern.
With respect to claim 2. As noted above the combination of YUSHIN, UENO, and FEINAUER teaches the claimed compound and therefore would have the claimed structure such as cations as claimed.
With respect to claim 3. FEINAUER as noted above teaches the crystal phase with the Li3AlF6 as solid electrolyte having good ionic conductivity (abstract).
With respect to claim 7. YUSHIN teaches a battery comprising a positive electrode, negative electrode, and an electrolyte layer provided therebetween (paragraphs 0047, 0153-0154, 0052, 0156, and abstract).
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-12, 15, and 17-19 of copending Application No. 17/885,285 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application ‘885 claims the same composition as claimed (claim 11) and therefore would have the same properties as the claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JONATHAN G JELSMA/Primary Examiner, Art Unit 1722
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