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 § 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nishio et al (WO 2020/137392, equivalent to US 2021/0296693 in view of Sasaki (i.e. REF1, US 2018/0316057) and Sasaki (i.e. REF2, US 2018/0062166).
With respect to claim 1, Nishio discloses a solid electrolyte material for a battery comprising a “first solid-electrolyte material” (of the First Embodiment) and “second solid-electrolyte material” (of the Second Embodiment) (Abstract; para 0001 and 0049-0050), wherein: the first solid-electrolyte material includes Li, Y, O, and “X”, with X being Cl, in addition to Zr (Abstract; para 0016-0017), wherein a molar ratio “a” of O:Y being 0<a≤0.67 of an entirety of the solid electrolyte material (para 0023 and 0049-0050); and the second solid-electrolyte material including sulfur in various compositions that do not include O and Y (such as Li2S-P2S5) (para 0060-0061).
However Nishio is limited in that a molar ratio of O:Y in a surface region of the solid electrolyte material being larger than the molar ratio in the entirety of the solid electrolyte material is not specifically suggested.
REF1 and REF2 each teaches a solid electrolyte material including sulfur for a battery (Abstract; para 0001), wherein the sulfur is included with various compositions that do not include O and Y (such as Li2S-P2S5) (REF1, para 0034 and 0103; REF2, para 0082), similar to the various compositions including sulfur but not O and Y of the second-solid electrolyte material of Nishio at para 0060-0061. REF1 and REF2 each respectively suggests for the solid electrolyte material to have molar ratios of O:Li (i.e. O:metal) (REF1, Tables 1 and 3) and O:S (i.e. O:nonmetal) (REF2, the Table) to each be larger at a surface region than deeper within the solid electrolyte material (i.e. an entirety of the solid electrolyte material), thereby providing advantages of enhancing discharge characteristics by reducing a change in structure for the battery (REF1, para 0032) improving charge-discharge efficiency by suppressing degradation of the charge-discharge for the battery (REF2, para 0069-0074).
It would have been obvious to one of ordinary skill in the art to have the molar ratio of O:Y (i.e. O:metal) at the surface region of the solid electrolyte material of Nishio be larger than the molar ratio of O:Y of the entirety of the solid electrolyte material as taught by each of REF1 and REF2 to yield or attempt to yield the predictable advantages of enhancing discharge characteristics and/or improving charge-discharge efficiency.
With respect to claims 2 and 3, modified Nishio further discloses the molar ratio “a” of O:Y being 0<a≤0.34 of the entirety of the solid electrolyte material (para 0023-0024); it has been held that in the case where the claimed ranges (i.e. “greater than 0 and less than or equal to 0.28” of claim 2 or “greater than 0.12 and less than or equal to 0.28” of claim 3) “overlap or lie inside ranges (i.e. greater than 0 and less than or equal to 0.34) disclosed by the prior art” a prima facie case of obviousness exists (MPEP 2144.05, I).
With respect to claim 4, modified Nishio further suggests to add at least one of Mg, Ca, Zn, Sr, Ba, Al, Sc, Ga, Bi, La, Hf, Ta, and/or Nb to the solid electrolyte material to increase ionic conductivity (para 0016).
With respect to claim 5, REF1 and REF2 each respectively suggests: the molar ratio of O:Li to be about 2-3 times larger at the surface region than the entirety of the solid electrolyte material (REF1, Tables 1 and 3); and the molar ratio of O:S to be about 2-4 times larger at the surface region than the entirety of the solid electrolyte material (REF2, the Table); thus one of ordinary skill would expect or desire to have the molar ratio of O:Y to be about 2-4 times larger at the surface region than the entirety of the solid electrolyte material. Although REF1 and REF2 each do not specifically suggest for the molar ratio O:Y to instead be the claimed “10 times or more larger at the surface region than the entirety of the solid electrolyte material”, it has been held that a particular parameter must first be recognized as a result-effect variable, i.e. a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (MPEP 2144.05, II, B). Therefore the molar ratio of O:Y being ‘10 times or greater’ is characterized as an obvious workable range from routine experimentation since each of REF1 and REF2 teaches to increase the molar ratio of O:metal or O:nonmetal in order to enhance discharge characteristics by reducing a change in structure for the battery (REF1, para 0032) and improve charge-discharge efficiency by suppressing degradation of the charge-discharge for the battery (REF2, para 0069-0074).
With respect to claims 6 and 7, as discussed above for claim 1, modified Nishio teaches the solid electrolyte material. Nishio further discloses a method of making the solid electrolyte material at para 0028-0033, similar to the method taught in Applicant’s Specification para 0036-0040. Since modified Nishio teaches the claim requirements of the solid electrolyte material and the method of making the solid electrolyte material similar to Applicant, a prima facie case of either anticipation or obviousness has been established that modified Nishio also teaches the resulting solid electrolyte material having properties (when an X-ray diffraction pattern is obtained by X-ray diffraction measurement using Cu-Ka) of including “a peak within each of diffraction angle 2θ ranges of greater than or equal to 15.5° and less than or equal to 15.7°, greater than or equal to 16.6° and less than or equal to 16.8°, greater than or equal to 17.4° and less than or equal to 17.6°, greater than or equal to 20.1° and less than or equal to 20.3°, greater than or equal to 22.2°and less than or equal to 22.4°, greater than or equal to 31.4° and less than or equal to 31.6°, and greater than or equal to 48.9° and less than or equal to 49.1°” (claim 6) and “a peak within a diffraction angle 2θ range of greater than or equal to 47.0° and less than or equal to 47.2°” (claim 7) (MPEP 2112.01, I).
With respect to claim 8, modified Nishio further discloses the solid electrolyte material has the first solid-electrolyte material including molar ratios of Li:Y being 2.6-3.4, Zr:Y being greater than 0, and Cl:Y being 1.4-2.4 (para 0017 and 0020-0022, 0033, and 0067); each of the molar ratios enhancing ionic conductivity (para 0016-0017,0020-0022, 0033-0034); it has been held that a prima facie case of obviousness exists where the claimed ranges (i.e. molar ratios of Li:Y is 4.4-5.6; Zr:Y is 0.7-1.1; and Cl:Y is 7.7-12.7) and ranges of Nishio do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (MPEP 2144.05, I). In this case, one of ordinary skill in the art would have expected the claimed ranges and ranges of Nishio to each have the same properties of enhancing ionic conductivity. In addition while Nishio does not specifically suggest the claimed molar ratios for Li:Y, Zr:Y, and Cl:Y, it has been held that particular parameters must first be recognized as a result-effect variables, i.e. a variables which achieves a recognized result, before the determination of the optimum or workable ranges of said variables might be characterized as routine experimentation (MPEP 2144.05, II, B). Therefore the claimed molar ratios are characterized as obvious workable ranges from routine experimentation since Nishio teaches various molar ratios of Li:Y, Zr:Y, and Cl:Y all being directed to enhancing the ionic conductivity, similar to Applicant’s Specification para 0026-0029.
With respect to claim 9, modified Nishio further discloses the solid electrolyte is included with the battery (para 0001; claims 1 and 10), wherein the “battery comprises: a positive electrode; a negative electrode; and an electrolyte layer interposed 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 includes the solid-electrolyte material”.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,308,383. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the US Patent are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-10 of the US Patent would also meet the requirements set forth in claims 1-9 of the current invention. For example, both claims recite a solid electrolyte material comprising: Li, Zr, Y, O, and Cl, wherein a molar ratio of O:Y is greater than 0 to 0.68 in the entire solid electrolyte material; a molar ratio of O:Y at a surface region is larger or higher than the molar ratio of O:Y in the entire solid electrolyte material; at least one element selected from Mg, Ca, Zn, Sr, Ba, Al, Sc, Ga, Bi, La, Sm, Hf, Ta, and Nb; a peak within a diffraction angle 2Q range of greater than or equal to 47.0o and less than or equal to 47.2o; and a battery comprising positive and negative electrodes with an electrolyte layer disposed therebetween, with at least one of the positive electrode, negative electrode, and electrolyte layer containing the solid electrolyte material.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/452095 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are narrower in scope than the claims of the copending 18/452095, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-9 of the present application would also meet the requirements set forth in claims 1-8 of the copending 18/452095.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/452117 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are narrower in scope than the claims of the copending 18/452117, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-9 of the present application would also meet the requirements set forth in claims 1-8 of the copending 18/452117.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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