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
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Republic of Korea on 12/01/2022 and 09/19/2023. It is noted, however, that applicant has not filed a certified copy of the KR10-2022-0166000 or the KR10-2023-0124943 application as required by 37 CFR 1.55.
It is noted that the Office’s attempt to retrieve the foreign applications under the Electronic Priority Document Exchange (PDX) Program failed on 05/01/2024. Additional information can be found at the PDX Program website (https://www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx).
Information Disclosure Statement
The information disclosure statements filed on 11/29/2023 and 07/12/2025 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. The lined through references were not received.
Claim Objections
Claim 19 objected to because of the following informalities: In claim 19 “and of” should read as “and”. The claim has been read 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, 11, and 13-15 and by their dependance claims 2-19 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, 11, and 13-15, 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 2-19, 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 1-5 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 11-12 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 11 of the co-pending application recites a solid-liquid composite electrolyte comprising a sulfide-based solid electrolyte and a liquid electrolyte including a salt and an organic solvent, wherein the salt of the liquid electrolyte comprises a metal cation and an anion with a radius of less than about 295 pm.
Regarding claims 4-5 of the instant application, claim 12 of the co-pending application recites a solid-liquid composite electrolyte comprises a solid-liquid composite electrolyte wherein the anion in the salt is Cl−, CH3COO−, NO3−, BF4−, ClO4−, SO42−, OTf−, FSI−, or a combination thereof.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 7 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 1-6 of the instant application, claim 7 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 an organic solvent and a salt, wherein a cation in the salt is Li+, Na+, K+, Mg2+, Al3+, Zn2+, or a combination thereof and an anion is Cl−, CH3COO−, NO3−, BF4−, ClO4−, SO42−, OTf−, FSI− or a combination thereof. As evidenced by page 10 line 17 – page 11 line 10 of the as-filed specification, Cl−, CH3COO−, NO3−, BF4−, ClO4−, SO42−, OTf−, and FSI− are anion having a radius of less than about 295 pm, where Cl− has a radius of about 181 pm, CH3COO− has a radius of about 162 pm, NO3− has a radius of about 179 pm, BF4− has a radius of about 230 pm, ClO4− has a radius of about 240 pm, SO42− has a radius of about 230 pm, OTf− has a radius of about 270 pm, and FSI− has a radius of about 283 pm, thus satisfying the ranges of claims 1-3 of the instant application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 7 of co-pending Application No. US 18/524006 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claims 1-6 of the instant application, claim 7 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 an organic solvent and a salt, wherein a cation in the salt is Li+, Na+, K+, Mg2+, Al3+, Zn2+, or a combination thereof and an anion is Cl−, CH3COO−, NO3−, BF4−, ClO4−, SO42−, OTf−, FSI− or a combination thereof. As evidenced by page 10 line 17 – page 11 line 10 of the as-filed specification, Cl−, CH3COO−, NO3−, BF4−, ClO4−, SO42−, OTf−, and FSI− are anion having a radius of less than about 295 pm, where Cl− has a radius of about 181 pm, CH3COO− has a radius of about 162 pm, NO3− has a radius of about 179 pm, BF4− has a radius of about 230 pm, ClO4− has a radius of about 240 pm, SO42− has a radius of about 230 pm, OTf− has a radius of about 270 pm, and FSI− has a radius of about 283 pm, thus satisfying the ranges of claims 1-3 of the instant application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-19 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-16 and 29-31 respectively of co-pending Application No. US 18/810220 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claims 1-19 of the instant applications, claims 1-16 and 29-31 respectively of the co-pending application describe 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, and the salt includes a metal cation and an anion with a radius of less than about 295 pm in claim 1. The rest of the listed dependent claims are identical in scope between the instant application and co-pending reference application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 and 6-19 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 4-13, 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 claims 1-3 of the instant applications, 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, wherein an anion in the salt is OTf-, FSI-, or a combination thereof. The radii of OTf- and FSI- are 270 pm and 283 pm respectively, as evidenced by page 11 lines 7-10 of the as-filed specification. OTf- in the co-pending application meets the anion radius limitation of being less than about 295 pm as stated in claim 1 of the instant application by the inherent characteristic of its radius. By inherency, OTf- also meets the limitations of claim 2 in the instant application since its radius falls within the given range of about 100 pm to about 290 pm. Claim 3 of the instant application recites an anion radius range of about 160 pm to about 240 pm. Since the bounds of this range as described as “about” and since there is no further information on the specific bounds of the anion range, the examiner has interpreted the 270 pm anion radius of OTf- to fall within given limitation of about 160 pm to about 240 pm. Therefore, claims 1-3 of the instant application are unpatentable over claim 1 of the co-pending application.
Regarding claim 4 of the instant applications, 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, wherein an anion in the salt is OTf-, FSI-, or a combination thereof. The limitations of claim 1 in the instant application are met by claim 1 of the co-pending application as stated above, and claim 4 of the instant application states OTf- and FSI- as possible anions which overlaps the scope of claim 1 in the co-pending application.
Regarding claim 6 of the instant applications, claim 4 of the co-pending application recites the limitations of claim 1 in the instant application and further recites the cation in the salt is Li+, Na+, K+, Mg2+, Al3+, Zn2+, or a combination thereof.
Regarding claim 10 of the instant applications, 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, wherein an anion in the salt is OTf-, FSI-, or a combination thereof. The limitations of claim 1 in the instant application are met by claim 1 of the co-pending application as stated above. Claim 1 of the co-pending application recites a liquid electrolyte concentration of 2.5 – 20 m, which falls within the range recited in claim 10 of the instant applications. 0.5 – 20 m, making the claimed range anticipated by the co-pending application.
Regarding claims 7-9, and 11-19 of the instant applications, claims 5-13 and 26-28 respectively of the co-pending application recite the limitations of claim 1 in the instant application, and the rest of the listed claims are identical in scope between the instant application and co-pending reference application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 and 6-19 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 4-16 of co-pending Application No. US 18/523013 (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 applications, 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, wherein an anion in the salt is OTf-, FSI-, or a combination thereof. The radii of OTf- and FSI- are 270 pm and 283 pm respectively, as evidenced by page 11 lines 7-10 of the as-filed specification. OTf- in the co-pending application meets the anion radius limitation of being less than about 295 pm as stated in claim 1 of the instant application by the inherent characteristic of its radius. By inherency, OTf- also meets the limitations of claim 2 in the instant application since its radius falls within the given range of about 100 pm to about 290 pm. Claim 3 of the instant application recites an anion radius range of about 160 pm to about 240 pm. Since the bounds of this range as described as “about” and since there is no further information on the specific bounds of the anion range, the examiner has interpreted the 270 pm anion radius of OTf- to fall within the given limitation of about 160 pm to about 240 pm. Therefore, claims 1-3 of the instant application are unpatentable over claim 1 of the co-pending application.
Regarding claim 4 of the instant applications, 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, wherein an anion in the salt is OTf-, FSI-, or a combination thereof. The limitations of claim 1 in the instant application are met by claim 1 of the co-pending application as stated above, and claim 4 of the instant application states OTf-and FSI- as possible anions which overlaps the scope of claim 1 in the co-pending application.
Regarding claim 10 of the instant applications, 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, wherein an anion in the salt is OTf-, FSI-, or a combination thereof. The limitations of claim 1 in the instant application are met by claim 1 of the co-pending application as stated above. Claim 10 of the instant application states a molal concentration of the liquid electrolyte is about 0.5 m to about 20 m which overlaps the scope of claim 1 in the co-pending application which recites a liquid electrolyte concentration of about 2.5 m to about 20 m. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists.
Regarding claims 6-9 and 11-19 of the instant applications, claims 4-16 respectively of the co-pending application recites the limitations of claim 1 in the instant application, and the rest of the listed claims are identical in scope between the instant application and co-pending reference application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claims 1-10, 12, and 16-19 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kim et al. (US 20190260077 A1).
Regarding claims 1-3, Kim teaches a secondary battery [0001] which includes a hybrid-solid electrolyte (solid-liquid composite electrolyte) [0005]. This electrolyte contains 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 and an anion [0029]. The lithium salt embodiments include LiClO4 and LiBF4 [0026]. The ionic radius of BF4- and ClO4- are 230 pm and 240 pm (see page 11 lines 2-3 in as-filed specification) respectively. By their inherent characteristic of their radii, these anions meet the limitation of claim 1 of the instant application that recites an anion with a radius of less than about 295 pm. Both the anions, BF4- and ClO4-, in the solid liquid composite hybrid-solid electrolyte also meet the limitations of claims 2 and 3 of the instant application since their radii fall within the ranges of about 100 pm to about 290 pm and about 160 pm to about 240 pm.
Regarding claims 4-6, Kim teaches that the liquid in the hybrid solid electrolyte contains a lithium or sodium salt which can be for example LiClO4, LiBF4, LiClO4, LiBF4, or a combination thereof [0026]. Therefore, the hybrid-solid electrolyte can contain cations of Li+ and Na+ and can contain anions of BF4- and ClO4- [0029].
Regarding claim 7, Kim teaches lithium and sodium salts [0026] with a monovalent anion with a radius of less than about 295 pm as described above.
Regarding claims 8 and 9, Kim 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 10, Kim teaches that the liquid electrolyte is obtained by dissolving 0.1-3 molar of a lithium or sodium salt in a solvent [0032]. Using LiClO4 as an example, the instant application states a concentration range of about 0.5 molal to about 20 molal (see page 33 Table 1 Examples 5-6, and page 17 lines 6-7 of the as filed specification) which is about 0.5 molar to about 10 molar at 25°C. Since the bounds of this range as described as “about” and since there is no further information on the specific bounds of the anion range, the examiner has interpreted the range taught by Kim of 0.1-3 molar to be fall within given limitation of about 0.5 molar to about 10 molar. The concentration taught by Kim anticipates the one recited in claim 10 of the instant application.
Regarding claim 12, Kim 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 [0016-0018].
Regarding claims 16 and 17, Kim teaches that the solid portion of the hybrid-solid electrolyte is made of particles ceramic particles [0038] that are sulfide based [0016]. 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 serves as an electrolyte for a secondary battery [0005].
Regarding claims 18 and 19, Kim 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 example lithium or sodium based [0043-0044].
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190260077 A1) as applied to claim 1 above, and further in view of Fleutot et al. (US 20240266511).
Regarding claim 11, 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 of 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 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 thicknesses in the range of 10-150 µm as taught in Kim and 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).
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190260077 A1) as applied to claim 1 above.
Regarding claims 13-15, 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].
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 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.
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 - 5 pm.
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/N.R.A./Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
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