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 .
Response to Amendment
Applicant’s amendment, filed 10/14/10/2025, has been entered. Claims 1-4 are currently pending. Claims 1-3 are amended. Claims 5-7 are canceled. Support for the amended claims is found in the claims as originally filed, paragraphs 0031 and 0035, and Examples 2-6 of the instant application specification. Applicant’s amendments have overcome each and every objection set forth in the previous Office Action.
Terminal Disclaimer
The terminal disclaimer filed on 10/14/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 17/983,497 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kato (US 20150017548 A1) in view of Harada et al. (US 20180277905 A1).
Regarding claim 1-4, Kato discloses a battery (paragraph 0025), the battery includes a cathode layer containing a cathode active material, an anode layer containing an anode active material, and an electrolyte layer arranged between the cathode layer and the anode layer, at least one of the cathode layer, the anode layer, and the electrolyte layer contains a sulfide solid electrolyte (paragraph 0025), the sulfide solid electrolyte comprises a LGPS-type crystal phase containing a Li element, a Sn element, a P element, and a S element (paragraph 0060), wherein: the sulfide solid electrolyte has a composition represented by Li4-xSn-1-xPxS4, provided that 0.71 < x < 0.74 (paragraph 0016, Li4-xSn-1-xPxS4, 0.65 < x < 0.75, paragraph 0118, x=0.725, within the claimed range). Kato further discloses that an ion conductivity of the sulfide solid electrolyte at 25°C is 1x10-3 S/cm or more (paragraph 0066) which significantly overlaps with Applicant’s claimed range of 5.25 mS/cm and therefore anticipates the instantly claimed range. In the alternative, a prima facie case of obviousness exists due to the significant overlap. MPEP 2144.05: 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Harada discloses a vehicle comprising a secondary battery which may comprise a solid electrolyte (Harada paragraphs 0005, 0026, 0180). Harada further discloses that improved secondary batteries are capable of improving motive performances in vehicles such as hybrid automobiles, and efficient recovery of regenerative energy of motive force. Harada and Kato are analogous because they both disclose secondary batteries.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the battery disclosed by Kato to be used in a vehicle as disclosed by Harada. Doing so would improve motive performances in vehicles such as hybrid automobiles, and provide efficient recovery of regenerative energy of motive force.
Kato does not explicitly disclose that the sulfide solid electrolyte includes, in a 31P-NMR measurement, a first peak of which peak position is 77 ppm ± 1 ppm, and a second peak of which peak position is 93 ppm ± 1 ppm; when S1 designates a total area of all peaks obtained in the 31P-NMR measurement, and S2 designates a total area of the first peak and the second peak, a ratio of S2 with respect to S1, which is S2/S1 is from 92.0% or more to 96.6% or less.
Kato also does not disclose that the sulfide solid electrolyte includes at least one of a third peak of which peak position is 87 ppm ± 1 ppm, and a fourth peak of which peak position is 89 ppm ± 1 ppm, in a 31P-NMR measurement; and when Si designates a total area of all peaks obtained in the 31P-NMR measurement, and S3 designates a total area of the third peak and the fourth peak, a ratio of S3 with respect to S1, which is S3/S1 is 6.0% or less as recited in claim 2.
Kato is silent regarding the sulfide solid electrolyte including a fifth peak of which peak position is 68 ppm ± 1 ppm in a 31P-NMR measurement; and when S1 designates an area of all peaks obtained in the 31P-NMR measurement, and S4 designates an area of the fifth peak, a ratio of S4 with respect to S1, which is S4/S1 is 0.5% or less as recited in claim 3.
Kato does not teach that the S2/S1 is from 95.0% or more to 96.6% or less as recited in claim 4.
However, it is deemed that the claimed 31P-NMR peaks and peak area ratios are an inherent characteristic and/or property of the specifically disclosed solid electrolyte. In this respect, MPEP 2112 sets forth the following:
• 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).
• “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the instant case, the solid electrolyte disclosed by Kato has a substantially identical composition to the claimed configuration. Additionally, the solid electrolyte disclosed by Kato is produced by a substantially identical process (paragraphs 0103-0112, see paragraphs 0049-0057 of the instant application specification). Kato discloses a raw material mixture that may comprise the same raw materials as disclosed in the instant application (paragraph 0103-0104, Li2S, SnS2, P2S5). Kato further discloses an equivalent amorphizing step including parameters within the ranges disclosed in the instant application (paragraph 0105-0107). The reference teaches an equivalent heating step to the instant application in an inert gas atmosphere or vacuum, with heating temperatures within the range taught by the instant application (paragraph 0112). Kato teaches a solid electrolyte of substantially identical composition, and produced in a substantially identical process. Therefore, Kato is deemed to anticipate the inherent characteristics of the claimed configuration.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicant argues that the sulfide solid electrolyte disclosed by Kato is not substantially identical to the claimed configuration. Specifically, Applicant asserts that the predictability of the effect in the synthesis of a sulfide solid electrolyte is extremely low and therefore, the production conditions are very important.
However, Kato does disclose a substantially identical composition and method (see claims 1-4 and 9 rejections). Further, applicant highlights Examples 3 to 4 and Comparative Example 3 in the present application to demonstrate the impact of the production conditions on the properties of the resulting electrolyte. Kato teaches a substantially similar composition to the provided examples (paragraph 0118, x=0.725) with a substantially identical heating step and temperature to the claimed example (see claims 1-4 rejection, Kato paragraph 0119, heating step is at 550 °C, equivalent to Example 3 of the present application). Kato discloses a substantially identical process to the claimed invention including parameters within those disclosed by the present application (see claims 1-4 rejection). Kato additionally discloses substantially identical parameters to the examples highlighted in the present specification. Therefore, Kato is deemed to anticipate the inherent properties of the claimed invention.
Applicant fails to meet their burden to prove that the sulfide electrolyte disclosed by Kato does not possess the inherent characteristics of the claimed invention. "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). See also MPEP 2112 V, 2112.01 I and II. Applicant alleges that the production method disclosed by Kato and the production method of the present application are not the same, but fails to point out distinct differences in the production methods. In fact, Kato does disclose a substantially identical production method to that of the present application (see claim 1-4 rejection). Further Kato discloses substantially identical parameters to those of the disclosed examples in the present application (paragraphs 0118-0119).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/B.T.L./Examiner, Art Unit 1727
/Maria Laios/Primary Examiner, Art Unit 1727