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 .
Election/Restrictions
Claims 111-116 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/05/2026.
Applicant’s election without traverse of Group I (Claims 93-110) in the reply filed on 06/05/2026is acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application Nos. 16756386 and 17979083, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claims 93-94, 96-105, and 109-110 are determined to not meet the requirements for priority benefit because there is no support provided for the scope of “a salt” in either 16756386 and 17979083. Therefore, the effective filling date of Claims 93-94, 96-105, and 109-110 is 11/02/2022. However, Claims 95 and 106-108 sufficiently narrow the scope of the salt to be supported by 16756386 and 17979083. Claims 95 and 106-108 are granted the priority benefit and have an effective filling date of 11/06/2017.
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 93, 95, 100-103, and 106-109 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 93-94 and 96-103 of U.S. Patent No. 11817551.
Regarding Claim 93 (instant application), Claim 93 of U.S. Patent No. 11817551 teaches:
A process for making a sintered lithium-stuffed garnet thin film or pellet (A process for making a sintered lithium-stuffed garnet thin film or pellet),
comprising:(1) providing a solution comprising a first salt and a solvent (comprising (1) providing a solution comprising a salt and a solvent);
(2) providing a sintered lithium-stuffed garnet thin film or pellet ((2) providing a sintered lithium-stuffed garnet thin film or pellet);
(3) contacting at least one surface of the sintered lithium-stuffed garnet thin film or pellet with the solution ((3)immersing at least one surface of the sintered lithium-stuffed garnet thin film or pellet in the solution at room temperature);
11817551-Claim 93 does not explicitly teach:
and (4) removing the solution from the at least one surface of the sintered lithium-stuffed garnet thin film or pellet.
However, the processes of (4) in Claim 93 of the instant application and the process of (4) of 11817551-Claim 93 solve the same problem of drying a sintered lithium-stuffed garnet thin film after being soak in a solution. These processes represents a problem with a finite number of predictable potential solutions, namely, to have 1) “to removing the at least one surface of the sintered lithium-stuffed garnet thin film from the solution,” see 11817551-Claim 93 or 2) “removing the solution from the at least one surface of the sintered lithium-stuffed garnet thin film or pellet,” see instant application Claim 93. It is the Examiners position that either of the presented predictable solutions are obvious.
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention have pursued the presented known potential solution of “removing the solution from the at least one surface of the sintered lithium-stuffed garnet thin film or pellet,” with a reasonable expectation of success.
Claims 95, 100-103, and 106-109 are substantially similar to those of claim 93-94 and 96-103 of U.S. Patent No. 11817551.
Claims 93, 95, 100-103, and 106-109 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 93-94 and 96-103 of U.S. Patent No. 11600850.
Regarding Claim 93 (instant application), Claim 93 of U.S. Patent No. 11817551 teaches:
A process for making a sintered lithium-stuffed garnet thin film or pellet (A process for making a sintered lithium-stuffed garnet thin film or pellet),
comprising:(1) providing a solution comprising a first salt and a solvent (comprising (1) providing a solution comprising a fluoride salt and a solvent);
(2) providing a sintered lithium-stuffed garnet thin film or pellet (2) providing a sintered lithium-stuffed garnet thin film or pellet);
(3) contacting at least one surface of the sintered lithium-stuffed garnet thin film or pellet with the solution ((3) immersing at least one surface of the sintered lithium-stuffed garnet thin film or pellet in the solution at a temperature between, or equal to, 0 °C and 60 °C);
11600850-Claim 93 does not explicitly teach:
and (4) removing the solution from the at least one surface of the sintered lithium-stuffed garnet thin film or pellet.
However, the processes of (4) in Claim 93 of the instant application and the process of (4) of 11600850-Claim 93 solve the same problem of drying a sintered lithium-stuffed garnet thin film after being soak in a solution. These processes represents a problem with a finite number of predictable potential solutions, namely, to have 1) “to removing the at least one surface of the sintered lithium-stuffed garnet thin film from the solution,” see 11600850-Claim 93 or 2) “removing the solution from the at least one surface of the sintered lithium-stuffed garnet thin film or pellet,” see instant application Claim 93. It is the Examiners position that either of the presented predictable solutions are obvious.
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention have pursued the presented known potential solution of “removing the solution from the at least one surface of the sintered lithium-stuffed garnet thin film or pellet,” with a reasonable expectation of success.
Claims 95, 100-103, and 106-109 are substantially similar to those of claim 93-94 and 96-103 of U.S. Patent No. 11600850.
Claim Rejections - 35 USC § 102
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 93, 104, and 109 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuppan et al. (US-20200212483-A1).
Regarding Claim 93, Kuppan discloses:
A process for making a sintered lithium-stuffed garnet thin film or pellet, comprising (All examples of Kuppan used LLZO as solid electrolyte which is formed into a thin film, see [0026] and [0030]. The instant specification recognizes LLZO a material which meets the requirements of a sintered lithium-stuffed garnet, see at least instant spec.- [002]):
providing a solution comprising a first salt and a solvent; providing a sintered lithium-stuffed garnet thin film or pellet; contacting at least one surface of the sintered lithium-stuffed garnet thin film or pellet with the solution (LLZO thin film is soaked in an organic solvent with a salt or mixture of salts, see [0025]-[0026] and Fig. 2);
and (4) removing the solution from the at least one surface of the sintered lithium-stuffed garnet thin film or pellet (after soaking in the organic solvent and salt solution the LLZO thin film is rinsed and dried, see Fig. 2).
Regarding Claim 104, Kuppan discloses:
wherein (3) is performed at a temperature between, or equal to, 0 0C and 60 0C (the soaking step of the LLZO thin film is performed at a temperature between 20-60 °C which is within the claimed range, see [0026]).
Regarding Claim 109, Kuppan discloses:
wherein the at least one surface is free or substantially free of a contaminant after (3) (the removal of surface contaminants (e.g., Li2CO3) occurs due to the treatment, see [0035]).
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) 94, 96-101, and 105 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuppan et al. (US-20200212483-A1).
Regarding Claim 94, Kuppan does not necessarily teach:
wherein the solution further comprises a second salt.
However, Kuppan teaches it is suitable to use a combination of one or more salts in the soaking solution of step 32, see [0026] and Fig. 2. The Examiner notes that there is no particular significance of using a first and second salt in the instant specification, see instant spec.- Table 1 and [0065]-[0073].
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used a combination of two salt in the soaking solution because Kuppan teaches this is a suitable embodiment of his invention.
Regarding Claim 96-98, Kuppan does not necessarily teach:
wherein the concentration of the first salt is about 0.5 M to about 1.5 M; or the concentration of the first salt or the second salt is about 0.5 to about 1.5 M (per Claim 96).
wherein the concentration of the first salt is about 0.5 M (per Claim 97).
wherein the concentration of the second salt is about 0.5 M to about 1.5 M (per Claim 98).
However, Kuppan indicates “the concentration of salt in the organic solvent may be any one of the following values or within a range of any two of the following values: 0.1, 0.2, 0.3, 0.4, 0.5, 0.6, 0.7, 0.8, 0.9, 1.0, 1.1 and 1.2 M,” see [0026].
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used the overlapping concentrations of first and second salts claimed above because Kuppan teaches these are suitable concentrations to use in the soaking solution of his invention. Overlapping ranges are prima facie obvious (see MPEP 2144.05, I).
Regarding Claim 99, Kuppan does not explicitly teach:
wherein the concentration of the second salt is about 1.35 M.
However, the instant specification provides no indication that this salt concentration of the second salt of being 1.35 M is of any significance, with all examples having a concentration 1M for a singular salt used, see instant spec.-Table 1. Therefore, it is reasonable to conclude that the teaching of Kuppan to have at least one salt that has a concentration with an upper end point of 1.2M is so mathematical close to the claimed end point that one skilled in the art would expect it to have the same properties as the claimed range thus providing a prima facie case of obviousness absent a showing of any secondary considerations (See MPEP 2144.05 I).
Regarding Claim 100, Kuppan does not necessarily teach:
wherein the solvent is selected from the group consisting of ethylene carbonate (EC), dimethyl carbonate (DMC), ethyl-methyl carbonate (EMC), propylmethyl carbonate, nitroethyl carbonate, propylene carbonate (PC), diethyl carbonate (DEC), methyl propyl carbonate (MPC), 2,5-dioxahexanedioic acid dimethyl ester, tetrahydrofuran (THF), y-butyrolactone (GBL), fluoroethylene carbonate (FEC), fluoromethyl ethylene carbonate (FMEC), trifluoroethyl methyl carbonate (F-EMC), fluorinated 3-(1,1,2,2-tetrafluoroethoxy)-1,1,2,2-tetrafluoropropane/ 1,1,2,2-tetrafluoro-3-(1,1,2,2- tetrafluoroethoxy)propane (F-EPE), fluorinated cyclic carbonate (F-AEC), dioxolane, prop-1- ene-1,3-sultone (PES), sulfolane, acetonitrile (ACN), succinonitrile (SCN), pimelonitrile, suberonitrile, propionitrile, propanedinitrile, glutaronitrile (GLN), adiponitrile (ADN), hexanedinitrile, pentanedinitrile, acetophenone, isophorone, benzonitrile, ethyl propionate, methyl propionate, methylene methanedisulfonate, dimethyl sulfate, dimethyl sulfoxide (DMSO), ethyl acetate, methyl butyrate, dimethyl ether (DME), diethyl ether, dioxolane, gamma butyl-lactone, methyl benzoate, 2-methyl-5-oxooxolane-2-carbonitrile, and combinations thereof.
However, Kuppan indicates tetrahydrofuran (THF) or 1,3-dioxolane (DOL), ethylene carbonate (EC), propylene carbonate (PC), dimethyl carbonate (DMC), , diethyl carbonate (DEC), fluorinated cyclic carbonate (F-AEC), and mixtures thereof (see [0026] and Fig. 2) are suitable solvents used in the solution for the soaking of LLZO thin films.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used the solvents indicated above because Kuppan teaches this is a suitable embodiment of his invention for preparing the solution for the soaking of LLZO thin films.
Regarding Claim 101, Kuppan does not necessarily teach:
wherein the solvent is selected from the group consisting of succinonitrile (SCN), glutaronitrile (GLN), sulfolane, ethylene carbonate (EC), ethyl-methyl carbonate (EMC), and combinations thereof.
However, Kuppan indicates ethylene carbonate (EC) (see [0026]) is a suitable solvent to be used in the solution for the soaking of the LLZO thin films.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used ethylene carbonate (EC) because Kuppan teaches this is a suitable embodiment of his invention for preparing the solution for the soaking of LLZO thin film.
Regarding Claim 105, Kuppan does not necessarily teach:
wherein (3) is performed at room temperature.
However, Kuppan indicates the soaking step of the LLZO thin film is performed at a temperature between 20-60 °C which is within the claimed range, see [0026].
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have performed the soaking step at room temperature because Kuppan teaches this is a suitable embodiment of his invention for the soaking temperature of LLZO thin film.
Claim(s) 102 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuppan et al. (US-20200212483-A1) as applied to Claims 93 and 100-101 above and in further view of Besli et al. (ACS Applied Materials & Interfaces 12.18 (2020): 20605-20612.).
Regarding Claim 102, Kuppan does not teach:
wherein the solvent has a water content less than 200 ppm, or less than 150 ppm, or less than 100 ppm, or less than 60 ppm, or less than 50 ppm, or less than 40 ppm, or less than 30 ppm, or less than 20 ppm, or less than 10 ppm.
To solve the same problem of soak treating LLZO pellets with an electrolyte solution to remove lithium carbonate on the surface (see Abstract), Belsi teaches performing the soaking step in a glovebox allows for an atmosphere which has O2 < 0.1 ppm and H2O < 0.1 ppm which lowers the formation of Li2CO3 and LiOH contaminates on the LLZO pellet, see Pg20610/C(left)/Soaking Procedure Section and Pg20605/C(left). The formation of Li2CO3 and LiOH contaminates are disadvantageous because it increases interfacial resistance, see Pg20605/C(left). It stands to reason, one of ordinary skill based on these teachings would be motivated to similarly only interact the LLZO films with solvent which as dry as possible in order to prevent the formation of Li2CO3 and LiOH contaminates on the LLZO pellet.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have optimized the water content in the solvent to be as minimal as possible to reduce the formation of Li2CO3 and LiOH contaminates on the LLZO surface.
It is the Examiner’s position that this routine optimization would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at the claimed “the solvent has a water content less than 200 ppm,” without undue experimentation.
Claim(s) 103 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuppan et al. (US-20200212483-A1) as applied to Claims 93 and 109 above and in further view of Matsuda et al. (Solid State Ionics 277 (2015): 23-29. as provided in the IDS dated 03/26/2024).
Regarding Claim 103, Kuppan does not teach:
wherein the lithium-stuffed garnet thin film or pellet comprises LiALaBAlcM"DZrEOF, wherein 5<A<8, 1.5<B<4, 0.1<C<2, 0≤D<2, 1<E<3, 10<F<13, and M" is selected from the group consisting of Mo, W, Nb, Y, Ta, Ga, Sb, Ca, Ba, Sr, Ce, Hf, and Rb.
To solve the same problem of providing a garnet type lithium ion conductor (see Title) Matsuda teaches Li7−3xAlxLa3Zr2O12 wherein x=0.25 (which falls within the claimed formula ranges) provides higher lithium ion conductivity compared to LLZO without Al present, see Pg 29/Table 3.
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have replaced the LLZO of Kuppan with Li7−3xAlxLa3Zr2O12 wherein x=0.25 taught by Matsuda in order to increase lithium ion conductivity.
Claim(s) 110 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuppan et al. (US-20200212483-A1) as applied to Claims 93 and 109 above and in further view of Sakamoto et al. (US-20180301752-A1).
Regarding Claim 110, Kuppan teaches:
wherein the contaminant is Li2CO3 and the at least one surface has Li2CO3 on the surface in an amount less than 1 atomic % as measured by XPS. (The upper bound for the remaining contamination of Li2CO3 after soaking of the pellet is 0.02 wt%. The skilled artisan would readily acknowledge LLZO has a significantly higher molecular weight than Li2CO3, therefore, logically the disclosure of Kuppan is within the claimed range.)
However, Kuppan teaches the Li2CO3 contamination amount is measured by XAS, see [0030]. Therefore, Kuppan does not teach the Li2CO3 contamination amount is measured by XPS.
To solve the same problem of determining the Li2CO3 contamination amount on a LLZO solid electrolyte [0156]-[0158], Sakamoto teaches XPS is a conventional and successful way of determining the Li2CO3 contamination amount on a LLZO solid electrolyte.
Consequently, one of ordinary skill in the art at the time the instant invention was filed would have had a reasonable expectation of success measuring the Li2CO3 contamination in the LLZO films of Kuppan with XPS as taught by Sakamoto.
Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chi et al. (Energy Storage Materials 17 (2019): 309-316). Chi teaches:
“The LLZTO ceramic electrolyte with the composition of Li6.4La3Zr1.4Ta0.6O12 was synthesized by solid-state reaction method The SPE precursor solution was prepared by dissolving PEO (Mw 100000, Sigma Aldrich) and lithium bis-trifluoromethanesulfonimide (LiTFSI) in acetonitrile with O/Li mole ratio of 8:1 and vigorously stirred for 24 h in an argon-filled glove box. Additionally, for coating SPE on LLZTO electrolyte, the SPE precursor solution was quantificationally dripped onto the surface of LLZTO ceramic disk with burette and put in vacuum oven at 50 °C to evaporate the acetonitrile solvent. Similarly, the other face of the LLZTO ceramic disk was also coated as same as the above steps. After this facile SPE-coated LLZTO process, the symmetric solid-state electrolyte was generated and assigned as SPE-LLZTO-SPE electrolyte,” see Pg310/Section 2.1
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kayla E Clary whose telephone number is (571)272-2854. The examiner can normally be reached Monday - Friday 8:00-5:00 (PT).
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/K.E.C./
Kayla E. ClaryExaminer, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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