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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-3, 5, & 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of Application No. 17/810,842. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claim 1 of the present application, Application No. 17/810,842 claims a solid electrolyte material comprising Li, Zr, Y, Cl, O, and H (all elements but Zr found in claim 1; Zr found in initially filed claim 3), wherein a molar ratio of O to Y is greater than 0.01 and less than or equal to 0.80 (the molar ratio range in claim 1 fits the claimed range).
Regarding claim 2 of the present application, Application No. 17/810,842 claims a molar ratio of O to Y greater than 0.01 and less than or equal to 0.17 (claim 6; claims have significant overlap).
Regarding claim 3 of the present application, Application No. 17/810,842 claims a molar ratio of O to Y greater than 0.07 and less than or equal to 0.17 (claim 6; claims have significant overlap).
Regarding claim 5 of the present application, Application No. 17/810,842 claims the solid electrolyte material of claim 1, wherein a surface region of the solid electrolyte material includes O binding to H (claim 4).
Regarding claim 8 of the present application, Application No. 17/810,842 claims a battery comprising: a positive electrode; a negative electrode; and an electrolyte layer disposed between the positive electrode and the negative electrode, wherein at least one selected from the group consisting of the positive electrode, the negative electrode, and the electrolyte layer contains the solid electrolyte material of claim 1 (entire claim found in claim 7).
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 Suzuki et al. (US 2022/0246983 A1, foreign priority date of 08/07/2019), further in view of Takeuchi et al. (US 2020/0266494 A1).
Regarding claim 1, Suzuki teaches a solid electrolyte material (Abstract) comprising Li, Zr, Y, Cl, and O (all found in Table 6, Examples 36-41). Suzuki fails to explicitly teach H being present in the electrolyte.
However, Takeuchi teaches a secondary battery including a solid electrolyte (Par. 0013). Takeuchi states that it is preferred for the solid electrolyte to have a low melting point (Par. 0056), and the electrolyte is preferred to contain a lithium halide (Par. 0056). Additional examples are provided which contain Li, Zr, Cl, O, and H (Par. 0055-0056).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the solid electrolyte material taught by Suzuki by incorporating H, as taught by Takeuchi. One of ordinary skill would have done this to lower the melting point of the electrolyte, thus allowing the electrolyte to fill the pores in the positive and negative electrode plates, resulting in strong interfacial contact, as stated in Takeuchi (Par. 0056).
Suzuki fails to teach a molar ratio of O to Y greater than 0.01 and less than or equal to 0.80 in the embodiments provided in Table 6.
However, Suzuki teaches the general formula A2+aE1-b-αGbDcXd (Formula 1), where G may represent Y and D may represent O. G’s subscript b may range from 0-0.5 (Par. 0057), and D’s subscript c may range from 0.01-3 (Par. 0072). These ranges contain many potential ratios, for example, if b is set to 0.5, c may be set from 0.01-0.4 to fit the claimed molar ratio range of 0.01-0.80.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the compounds taught in Table 6, Examples 36-41 with the O:Y molar ratios created by the general formula, both of which are taught by Suzuki. One of ordinary skill could have determined that applying a known technique of controlling the O:Y molar ratio to a known compound with Li, Zr, Y, Cl, and O ready for improvement would yield predictable results of high utility (See MPEP 2143(I)(D), Examples 1-3). Additionally, one of ordinary skill could have determined that setting the molar amount of Y to 0.5 would prevent a decrease in the ionic conductivity of the solid electrolyte (Par. 0069), and setting the molar amount of O to at least 0.01 would result in improved ionic conductivity (Par. 0072), as stated in Suzuki.
Regarding claim 2, Suzuki teaches the solid electrolyte material of claim 1, wherein the molar ratio of O to Y is greater than 0.01 and less than or equal to 0.17 (Formula 1, Par. 0057, 0072; if b is set to 0.5, c may be set between 0.01 and 0.085 to fit the claimed range).
Regarding claim 3, Suzuki teaches the solid electrolyte material of claim 2, wherein the molar ratio of O to Y is greater than or equal to 0.07 and less than or equal to 0.17 (Formula 1, Par. 0057, 0072; if b is set to 0.5, c may be set between 0.035 and 0.085 to fit the claimed range).
Regarding claim 4, Suzuki teaches the solid electrolyte material of claim 1, further comprising: at least one selected from the group consisting of Mg, Ca, Zn, Sr, Ba, Al, Sc, Ga, Bi, La, Sm, Hf, Ta, and Nb (Par. 0025; Mg, Ca, Sr, Ba, Al, Sc, Bi, La, Sm, Hf, Ta, and Nb are listed).
Regarding claim 5, Suzuki teaches the solid electrolyte material of claim 1, wherein a surface region of the solid electrolyte material includes O binding to H (Par. 0111-0112; A binder is used to bind the electrolyte and an electrode, thus the binder contacts a surface of the electrolyte. The binder may include polyacrylic acids, which include O-H bonds).
Regarding claim 6, modified Suzuki teaches a solid electrolyte as stated above. While modified Suzuki does not provide an X-ray diffraction pattern for the compositions including a peak within each of diffraction angle 2θ ranges of 15.5° - 15.7°, 16.6° - 16.8°, 17.4° - 17.6°, 20.1° - 20.3°, 31.4° - 31.6°, 35.6° - 35.8, 47.0° - 47.2°, and 49.0° - 49.2°, modified Suzuki teaches a composition that entirely overlaps with the claimed composition provided by applicant. Modified Suzuki teaches the compound Li2.5Zr0.5Y0.5OCl4 (Table 6, Example 41), the molar ratios of which are in the ranges of 4.4-5.5 for Li:Y, and 0.8-1.1 for Zr:Y. Suzuki also teaches a molar ratio for Cl:Y of 10.1-12.6 (Par. 0025; Cl may have a subscript of up to 6.1, while Y may have a subscript of up to 0.5. This would correspond to a molar ratio of 12.2). These requirements are stated in claim 7 and specification Par. 100 of the present application. Therefore, because modified Suzuki teaches a composition that renders obvious the composition claimed with the same chemical formula, it is the examiner’s position that the composition of modified Suzuki necessarily provides the claimed X-ray diffraction pattern. In the absence of evidence to the contrary, the burden is shifted to the applicant to prove that the compound of the claimed invention and that of the prior art will exhibit different physical properties in X-ray diffraction tests (See In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977)).
Regarding claim 7, Suzuki teaches a solid electrolyte material, wherein a molar ratio of Li to Y is greater than or equal to 4.4 and less than or equal to 5.5 (Table 6, Example 41; Li2.5Zr0.5Y0.5OCl4 has an Li:Y ratio of 5.0); a molar ratio of Zr to Y is greater than or equal to 0.8 and less than or equal to 1.1 (Table 6, Example 41; Li2.5Zr0.5Y0.5OCl4 has a Zr:Y ratio of 1.0); and a molar ratio of Cl to Y is greater than or equal to 10.1 and less than or equal to 12.6 (Formula 1, Par. 0025; Cl may have a subscript of up to 6.1, while Y may have a subscript of up to 0.5. This would correspond to a molar ratio of 12.2).
Regarding claim 8, Suzuki teaches a battery (Par. 0048) comprising: a positive electrode (Par. 0048); a negative electrode (Par. 0048); and an electrolyte layer disposed between the positive electrode and the negative electrode (Par. 0101), wherein at least one selected from the group consisting of the positive electrode, negative electrode, and the electrolyte layer contains the solid electrolyte material according to claim 1 (Par. 0048).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON M BAIRD whose telephone number is (571)272-9742. The examiner can normally be reached 7:30am-5pm.
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/CAMERON M BAIRD/ Examiner, Art Unit 1728
/MATTHEW T MARTIN/ Supervisory Patent Examiner, Art Unit 1728
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