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 .
Status of Claims
Claims 1 and 6 are amended.
Claims 2-5, 7-8 are cancelled.
Claims 1, 6, 9 are pending.
Response to Amendment
Applicant’s amendments filed on 7/6/2026 have been entered.
102 rejections have been withdrawn in view of the amendments.
Double patenting rejections have been withdrawn in view of the amendments.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 6, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al (WO 2021002064; machine translation).
Regarding Claim 1,
Tanaka teaches solid electrolyte that has a formula A2 as shown below.
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Wherein 1.0 ≤ a ≤ 2.0, and 1.5 ≤ b ≤ 6.0 is satisfied (Paragraph 0024). X is atleast one element selected from the group consisting of Cl, Br, and I.
Based on elemental ranges in Tanaka, the Li would range between 0.5-2, La would range between 1-2, and X= I (iodine) would range between 1.5 -6.
Claimed ranges for Li (i.e. a), La (i.e. b), I (i.e. c) are 0.5 ≤ a ≤ 2.0, 1.0 ≤ b ≤ 1.5, c= 3.0.
These values of elemental ranges are within the ranges as shown in Tanaka above. Per 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. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the compositional formula as claimed and within the overlapping ranges with Tanaka in order to improve the ionic conductivity of the solid electrolyte material.
Tanaka does not teach that the solid electrolyte has a lithium ion conductivity of greater than or equal to 5x10-5 S/cm.
However, lithium ion conductivity is a property associated with the composition of the solid electrolyte. Per MPEP 2112.01, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Tanaka teaches the solid electrolyte material as described above, and hence it would be reasonable to presume that the lithium ion conductivity of greater than or equal to 5x10-5 S/cm is inherent to Tanaka.
Regarding Claim 6,
Tanaka teaches solid electrolyte that has a formula A2 as shown below.
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Wherein 1.0 ≤ a ≤ 2.0, and 1.5 ≤ b ≤ 6.0 is satisfied (Paragraph 0024). X is atleast one element selected from the group consisting of Cl, Br, and I.
Based on elemental ranges in Tanaka, the Li would range between 0.5-2, La would range between 1-2, and X= I (iodine) would range between 1.5 -6.
Claimed ranges for Li (i.e. a), La (i.e. b), I (i.e. c) are 0.8 ≤ a ≤ 2.0, 1.0 ≤ b ≤ 1.4.
These values of elemental ranges are within the ranges as shown in Tanaka above. Per 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. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the compositional formula as claimed and within the overlapping ranges with Tanaka in order to improve the ionic conductivity of the solid electrolyte material.
Regarding Claim 9,
Tanaka teaches a battery that includes a positive electrode, a first electrolyte layer per formula shown above, a negative electrode in this order (Paragraph 0010).
Response to Arguments
Applicant's arguments filed 7/6/2026 have been fully considered but they are not persuasive.
Applicant argues that Tanaka does not describe a working example directed to a Li-La-O-I solid electrolyte based on the compositional formula claimed. Examiner disagrees with this argument because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123. In the instant case the formula shown in Claim 1 and the formula of Tanaka show overlap as described in rejection section above. Hence, a prima facie case of obviousness exists.
Applicant argues that Tanaka does not teach a lithium ion conductivity of greater than or equal to 5x10-5 S/cm. Examiner disagrees with this and points to rejection above which describes that the conductivity is inherent to the solid electrolyte composition which is shown in Tanaka. Hence, rejection above is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUHANI JITENDRA PATEL whose telephone number is (571)272-6278. The examiner can normally be reached Monday-Friday 8:00 AM - 5:00 PM.
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/SUHANI JITENDRA PATEL/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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