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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/29/2023, 09/17/2025, and 06/15/2026 have been considered by the examiner.
The information disclosure statement filed on 07/10/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Drawings
The drawings are objected to because Figure 2 does not clearly show the difference between Comparative Example 2 and Comparative Example 3. Both lines appear the same in the figure body and legend and cannot be distinguished without reference to the specifications (page 33 lines 10-12). Please correct the figure accordingly.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 16 is objected to because of the following informalities: There is a typo in claim 16, "and of" should read as "and". The claim has been interpreted with this modification applied. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 8, and 10-12 and by their dependance claims 2-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1-3, 8, and 10-12, the term “about” is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claims 2-16, the claims are rejected based on their dependency on claim 1.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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, 14, and 15 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 13, and 14 of co-pending Application No. US 19/225724 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claims 1-3 of the instant application, claim 1 of the co-pending application recites a semi-solid rechargeable battery with a solid-liquid electrolyte which is comprised of a sulfide-based solid electrolyte and a liquid electrolyte including a salt and organic solvent. Claim 13 of the co-pending application further recites that the anion in the salt is OTf-, FSI-, or a combination thereof and the concentration of liquid electrolyte is about 2.5 m to about 20 m. Claim 14 of the co-pending application further recites a salt and organic solvent where the salt comprises LiFSI and the concentration of the liquid electrolyte is about 4 m to about 16 m. Based on the inherent properties of a salt, LiFSI has an anion of FSI- when dissolved in the liquid electrolyte.
Regarding claims 14 and 15 of the instant application, claim 1 of the co-pending application states a semi-solid rechargeable battery with a composite electrolyte film comprising a solid-liquid electrolyte which is comprised of a sulfide-based solid electrolyte and a liquid electrolyte including a salt and organic solvent. Claim 1 of the co-pending application also recites a positive electrode, negative electrode, and composite electrolyte film that is positioned between the positive and negative electrodes. Claim 13 of the co-pending application further recites that the anion in the salt is OTf-, FSI-, or a combination thereof, and the concentration of the liquid electrolyte is about 2.5 m to about 20 m.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 8 of co-pending Application No. US 18/809580 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claims 1-3 of the instant application, claim 1 of the co-pending application recites a solid-liquid composite electrolyte, comprising a sulfide-based solid electrolyte and a liquid electrolyte, wherein the liquid electrolyte includes a salt and organic solvent that dissolves the salt. Claim 8 of the co-pending application further recites that the liquid electrolyte has a molal concentration of about 0.5 m to about 20 m. When a salt is dissolved in a solvent, the solution will inherently contain at least one anion. Therefore, claim 8 of the co-pending application reads on the limitations of claims 1-3 in the instant application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 8 of co-pending Application No. US 18/524006 in view of Wang et al. (US 12562400). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claims 1-3 of the instant application, claim 1 of the co-pending application recites a solid-liquid composite electrolyte, comprising a sulfide-based solid electrolyte and a liquid electrolyte, wherein the liquid electrolyte includes a salt and organic solvent that dissolves the salt. Claim 8 of the co-pending application further recites that the liquid electrolyte has a molal concentration of about 0.5 m to about 20 m. The co-pending application does not recite in claims 1 or 8 that the anion in the salt is OTf-, FSI-, or a combination thereof.
Wang teaches an electrochemical cell with a liquid electrolyte (claim 1, Wang) where the electrolyte is an organic solvent (column 10 line 64 – column 11 line 7) with a lithium metal salt that has an anion of OTf- or FSI- (claim 12, Wang). Wang further teaches that the chosen anions are chemically stable meaning that the anion is thermodynamically stable (column 11 line 29-33).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the electrolyte of the co-pending application to include a salt with an anion of OTf-, FSI-, or a combination as taught by Wang to achieve the embodiment recited in claims 1-3 of the instant application. One of ordinary skill in the art would have been motivated to use OTf- or FSI- to improve the thermodynamic stability of the electrolyte.
This is a provisional non-statutory double patenting rejection.
Claims 1-3 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 10 of co-pending Application No. US 18/810220 in view of Wang et al. (US 12562400).
Regarding claims 1-3 of the instant application, claim 1 of the co-pending application recites a solid-liquid electrolyte comprising a sulfide-based solid electrolyte and a liquid electrolyte, wherein the liquid electrolyte includes a salt and an organic solvent. Claim 10 of the co-pending application further states that the molal concentration of the liquid electrolyte is about 0.5 m to 20 m. The co-pending application does not recite in claims 1 or 10 that the anion in the salt is OTf-, FSI-, or a combination thereof.
Wang teaches an electrochemical cell with a liquid electrolyte (claim 1, Wang) where the electrolyte is an organic solvent (column 10 line 64 – column 11 line 7) with a lithium metal salt that has an anion of OTf- or FSI- (claim 12, Wang). Wang further teaches that the chosen anions are chemically stable meaning that the anion is thermodynamically stable (column 11 line 29-33).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the electrolyte of the co-pending application to include a salt with an anion of OTf-, FSI-, or a combination as taught by Wang to achieve the embodiment recited in claims 1-3 of the instant application. One of ordinary skill in the art would have been motivated to use OTf- or FSI- to improve the thermodynamic stability of the electrolyte.
This is a provisional non-statutory double patenting rejection.
Claims 1-16 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-13 and 26-28 of co-pending Application No. US 18/809604 (reference application). 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 instant application, claim 1 of the co-pending application recites a solid-liquid composite electrolyte, comprising a sulfide-based solid electrolyte and a liquid electrolyte, wherein the liquid electrolyte includes a salt and an organic solvent. The anion in the salt is OTf-,FSI-, or a combination thereof, and a concentration of the liquid electrolyte is about 2.5 m to about 20 m.
Regarding claims 2-16 of the instant application, claims 2-13 and 26-28 respectively of the co-pending application are identical in scope to the instant application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 10 of co-pending Application No. 18/523235 in view of Wang et al. (US 12562400).
Regarding claims 1-3 of the instant application, claim 1 of the co-pending application recites a solid-liquid electrolyte comprising a sulfide-based solid electrolyte and a liquid electrolyte, wherein the liquid electrolyte includes a salt and an organic solvent. Claim 10 of the co-pending application further recites that the molal concentration of the liquid electrolyte is about 0.5 m to about 20 m.
Wang teaches an electrochemical cell with a liquid electrolyte (claim 1, Wang) where the electrolyte is an organic solvent (paragraph 63) with a lithium metal salt that has an anion of OTf- or FSI- (claim 12, Wang). Wang further teaches that the chosen anions are chemically stable meaning that the anion is thermodynamically stable (paragraph 67). Improved stability
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the electrolyte of the co-pending application to include a salt with an anion of OTf-, FSI-, or a combination as taught by Wang to achieve the embodiment recited in claims 1-3 of the instant application. One of ordinary skill in the art would have been motivated to use OTf- or FSI- to improve the thermodynamic stability of the electrolyte. The motivation for using these anions is to optimize the operation of the battery.
This is a provisional non-statutory double patenting rejection.
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.
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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190260077 A1.
Regarding claim 1, Kim teaches a secondary battery [0001] which includes a hybrid-solid electrolyte (solid-liquid composite electrolyte) [0005]. This electrolyte contains a solid (ceramic and polymer) [0005] and ionic liquid [0011]. The solid portion of the electrolyte is an ion conductive ceramic described as lithium sulfide, sodium sulfide, or a combination [0018]. The ionic liquid is derived from a lithium or sodium salt [0026] dissolved in a non-aqueous organic solvent [0027] and contains a cation [0029] and an anion which maybe FSI- [0026]. Kim also teaches that the concentration of the liquid electrolyte is 0.1-3 M and preferable 0.1-2 M [0032]. Kim teaches that the salt ions are dissolved in the liquid electrolyte to alleviate the negative properties of the solid electrolyte such as high interfacial resistance [0031]. The lithium salt embodiments in the liquid electrolyte taught by Kim include LiFSI [0026] in a dimethyl carbonate solvent [0027]. Kim teaches a range of 0.1-3 M, which corresponds to a molality of about 0.1-2.8 m. The range taught by Kim therefore overlaps the range of about 2.5 m to about 20 m recited in claim 1. In the case where the claimed ranges overlap or lie inside the ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claims 2 and 3, Kim teaches all of the limitations of claim 1 above. The electrolyte concentrations recited in the instant application are about 4 m to about 20 m and about 4 m to about 16 m for claims 2 and 3 respectively. Since the bounds of the concentration range are described as “about” and since there is no further information on the specific bounds of the concentration, the examiner has interpreted the concentration of 2.8 m to fall within the ranges of claims 2 and 3. Additionally, in cases where the claimed ranges or amounts do not overlap with the prior art but are merely close, a prima facie case of obviousness still exists. See MPEP 2144.05(I). Therefore, claims 2 and 3 are unpatentable as being obvious over Kim.
Regarding claims 4 and 5, Kim teaches all of the limitations of claim 1 above and further teaches that a lithium or sodium ion may be used for the liquid electrolyte [0025]. These lithium or sodium ions can be derived from a salt that has FSI- as the corresponding ion [0026], LiFSI.
Regarding claims 6 and 7, Kim teaches all of the limitations of claim 1 above and further teaches that the non-aqueous solvent used in the liquid portion of the hybrid-solid electrolyte can include a carbonate-based solvent, an ester-based solvent, and ether-based solvent, a ketone-based solvent, an alcohol-based solvent, or a combination thereof [0027, 0028].
Regarding claim 9, Kim teaches all of the limitations of claim 1 above and further teaches that the solid portion of the hybrid-solid electrolyte can include a lithium oxide-based ion conductive ceramic, a sodium oxide-based solid, or a combination [0016].
Regarding claims 10-12, Kim teaches all of the limitations of claim 1 of the instant application as described above. Kim also teaches that the ratio of the hybrid film (solid electrolyte) and liquid electrolyte may be 60 to 100 parts by weight and 1 to 40 parts by weight, respectively [0033]. Next, Kim teaches that if the liquid electrolyte fraction is too high, the battery will have low thermal stability and high inflammability, and if the solid electrolyte fraction is too high, the interfacial resistance will be too high [0033]. Finally, Kim teaches that the preferred solid and liquid ratio may be 70 to 80 parts by weight and 10 to 20 parts by weight, respectively [0034]. At this ratio, Kim recited the optimum effects of improved ion conductivity of the hybrid film and enhanced thermal stability of the liquid electrolyte. Kim does not teach what volume percentages (vol.%) of the solid and liquid components are present in the electrolyte.
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the hybrid electrolyte of Kim by adjusting the volume fractions of the solid and liquid electrolyte components within the claimed ranges of about 10 vol.% to about 99.99 vol.% for the solid electrolyte and about 0.01 vol.% to about 90 vol.% for the liquid electrolyte as stated in the instant application. One of ordinary skill in the art would have been motivated to change the volume fractions to optimize the thermal stability and ion conductivity of the battery. The motivation for changing the solid to liquid ratio is to optimize the operation of the battery.
Regarding claims 13 and 14, Kim teaches all of the limitations of claim 1 above and further teaches that the solid portion of the hybrid-solid electrolyte is made of ceramic particles [0038] that are sulfide based [0018]. The solid portion is arranged into a hybrid electrolyte film (composite electrolyte film) [0023]. This film is then impregnated with the described liquid electrolyte [0024]. This combination of a solid film and liquid electrolyte into a hybrid electrolyte film serves as an electrolyte for a secondary battery [0005].
Regarding claims 15 and 16, Kim teaches all of the limitations of claim 1 above and further teaches that the above-described hybrid electrolyte film is used in a rechargeable battery [0040]. The secondary battery includes a cathode (positive electrode), anode (negative electrode), and the hybrid electrolyte film interposed between the electrodes [0040]. The positive electrode includes an active material, which can be, for example, lithium or sodium based [0043-0044].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190260077) as applied to claim 1 above, and further in view of Fleutot et al. (US 20240266511).
Regarding claim 8, Kim teaches all of the limitation of claim 1 as described above. Kim also teaches that the sulfide hybrid solid electrolyte is made of particles [0038] and that the thickness of the electrolyte may be 10-150 µm and preferably 10-30 µm [0035]. Kim does not teach that the average particle diameter of the particles is about 0.1 µm to about 5 µm.
Fleutot teaches sulfide-based particles with a size of less than or equal to about 1 µm [0078]. Fleutot also teaches that these particles can be used in electrochemical applications. Particularly in solid-state batteries where the particles can be used in an electrolyte [0074].
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the sulfide-based solid electrolyte particles taught by Kim to have an average particle diameter of about 0.1 µm to about 5 µm as taught in Fleutot. It would have been obvious to one of ordinary skill in the art to adjust the particle size in this range to form electrolytes having a thicknesses in the range of 10-150 µm as taught in Kim for the practical construction of the battery. Furthermore, Fleutot teaches a particle size of the sulfide-based solid electrolyte particles which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside similar ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE R ALTVATER whose telephone number is (571)270-3162. The examiner can normally be reached M-R 8:00 am - 4 pm.
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/N.R.A./Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
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