DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
3. In response to the amendment received on 8/27/2026:
Claims 1 an 4-16 are pending in the current application. Claims 1 and 10 have been amended, and Claims 2-3 and 17 are cancelled.
The previous prior art-based rejections have been overcome in light of the amendment and are modified below to reflect the amendment. All changes made to the rejection are necessitated by the amendment.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 103
5. Claims 1, 4, 7-11, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Zhamu US PG Publication 2018/0166759 in view of Garrity US PG Publication 2024/0332520.
Regarding Claims 1, 4, 8, and 15-16, Zhamu discloses a solid electrolyte in the form of a film (para 0074, meeting Claim 8) coated on a negative electrode in an all-solid battery (Fig. 1, meeting Claims 15-16) comprising a mixed conducting polymer (e.g. S-PANi and S-PEEK, samples B6 and B6b) which is a polymer having mixed conducting properties including ion conductivity and electrical conductivity, a binder (S-PANi or S-PEEK in samples B6 and B6b; both polymers have mixed conductivity and can be considered a binder or a matrix polymer so one can be designated as the polymer while the other is designated as the binder), and a lithium salt (e.g. LiOH), para 0072-0074, meeting Claim 4) (see entire disclosure and especially Fig 1 and Table 1, B6 and B6-b and paras 0130-0140).
Zhamu further exemplifies the use of polymers such as e.g. polypyrrole, polyaniline, polythiophene (para 0031) which are polymers having mixed conducting properties including ion conductivity and electrical conductivity (as shown in the instant application), a binder (e.g. polyethylene oxide, polyacrylonitrile, polyvinylidene fluoride-hexafluoropropylene, polyvinylidene fluoride, para 0032), and a lithium salt (e.g. LiPF6, LiBF4, LiTFSI, LiFSI,LiN(CF3SO2)2, LiOH, LiX (X is F, Cl, I, Br), and other claimed species, paras 0033, 0039) (see entire disclosure and especially Fig 1 and paras 0025, 0028-0040). Zhamu does not specifically disclose these materials in a single embodiment, but it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use these materials in a solid electrolyte composition together because Zhamu teaches that these components are usable in the inventive solid electrolyte and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). Further, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Zhamu does not specifically disclose wherein the mixed conducting polymer and binder comprise one or more from the following respective lists:
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However, in the same field of endeavor of solid electrolyte design, Garrity discloses wherein a matrix polymer for a solid electrolyte can be e.g. polyimide (para 0083) as a functional equivalent to polyvinylidene fluoride (used by Zhamu) and further teaches that polymers that can serve as a separator having binder properties (e.g. they can be cast on an electrode) are e.g. carboxymethyl cellulose, styrene butadiene, polyacrylic acid, and poly(3,4-ethylenedioxythiophene) polystyrene sulfonate (PEDOT:PSS) as functionally equivalent to e.g polyvinylidene fluoride and polyaniline (para 0077) (see entire disclosure and especially paras 0077-0083). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use the species taught by Garrity in place of those taught by Zhamu, e.g. replace Zhamu’s polyaniline with PEDOT:PSS and replace Zhamu’s polyvinylidene fluoride binder with polyimide (para 0083) because Garrity teaches that these materials are functionally equivalent in the same type of application and the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding Claim 7, modified Zhamu discloses wherein the solid electrolyte is in the form of a mixed conducting polymer matrix comprising a mixed conducting polymer and a binder (again, either polymer can be designated as a mixed conducting polymer while the other polymer is designated as the binder) and a lithium salt comprised in the mixed conducting polymer matrix while being dissociated therein (para 0143). Although modified Zhamu does not specifically recite wherein the lithium salt dissociates in the other samples/embodiments, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to ensure that the lithium salt dissociates in the mixed conducting polymer matrix of all embodiments in order to promote lithium ion conductivity since the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claims 9-11 and 14, modified Zhamu discloses a method for manufacturing a solid electrolyte of the composition described in the rejection of Claim 1, for example, having a mixed conducting polymer and a binder and a lithium salt using e.g. step S1: casting of a solution of the components in solvent (i.e. solution casting using e.g. water as the solvent, meeting Claims 11 and 14) to form a coating (paras 0074, 0118, on a substrate, para 0124) and the method further includes S2: drying the coating layer obtained in S1 (para 0074, 0118, meeting Claim 10) to arrive at a film having a thickness of 150 nm to 15 µm (a range which overlaps the claimed range of 10 µm to 60 µm, meeting Claim 9). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Although Zhamu does not specifically refer to the examples of any specific embodiment using the method of para 0074, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use this method to form a solid electrolyte of Zhamu where the electrolyte includes a mixed conducting polymer and a binder and a lithium salt since the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claim 12, Zhamu teaches in para 0124 that water from the solution casting technique is allowed to evaporate.
6. Claims 5-6 are rejected under 35 U.S.C. 103 as being obvious over Zhamu US PG Publication 2018/0166759 in view of Garrity US PG Publication 2024/0332520, as applied to Claim 1, and further in view of Ueda JP 2008-226637.
Regarding Claims 5 and 6, Zhamu modified by Garrity discloses the solid electrolyte of Claim 1, the rejection of which is incorporated herein in its entirety. Zhamu teaches in paras 0031-0033 that the amount of the two polymers mixed in the solid electrolyte (one being a binder and one being the other material) is optimized in amounts from 1:99 to 99:1 (which includes the amount of 100 parts by weight of a mixed conducting polymer and 2 to 30 parts by weight of a binder as a ratio that falls within the range taught by Zhamu), but the amount of lithium salt used in the composition relative to the amount of weight of the mixed conducting polymer to form the electrolyte is not discussed. However, in a similar field of endeavor of polymer electrolyte design for a solid state battery, Ueda discloses that the lithium salt content in such a membrane should be from 3 to 300 parts by weight relative to 100 parts by weight of the matrix polymer (para 0030) and while Ueda does not provide specific rationale for this range of salt content, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to apply this teaching to the solid electrolyte of Zhamu and Garrity to arrive at the claimed solid electrolyte having 5 to 300 parts by weight of lithium salt) meeting Claim 5) or 100 to 300 parts by weight of lithium salt (meeting Claim 6) relative to 100 parts by weight of mixed conducting polymer because Ueda teaches that this amount provides an electrolyte having good performance. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
7. Claims 12-13 are rejected under 35 U.S.C. 103 as being obvious over Zhamu US PG Publication 2018/0166759 in view of Garrity US PG Publication 2024/0332520, as applied to Claim 10, and further in view of Sakai US PG Publication 2013/0052564.
Regarding Claims 12-13, Zhamu modified by Garrity discloses the method of manufacturing the solid electrolyte of Claim 10, the rejection of which is incorporated herein in its entirety. Zhamu discloses casting an aqueous polymer solution onto a glass substrate (see e.g. paras 0074, 0118) but does not specifically disclose the substrates listed in instant Claim 13 and does not include the drying temperature of the aqueous solution such that it is less than 300 °C. However, in a similar field of endeavor of forming polymer electrolyte membranes by casting a polymer solution onto a substrate, Sakai teaches that a substrate usable for casting a polymer solution to form a polymer electrolyte membrane can be e.g. glass or SUS (stainless steel) foil as functional equivalents (see e.g. paras 0082-0086, meeting Claim 13) and that washing the membrane with water is followed by a drying (evaporating) step that can be carried out at e.g. 40 to 150 °C (meeting Claim 12) (paras 0088-0093). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the method of Zhamu such that the aqueous polymer solution is cast onto a stainless steel substrate (instead of glass) and that the drying step is carried out at a temperature less than 300 °C because Sakai teaches that when forming a similar membrane by casting, these method elements are known to be effective. 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.).
Response to Arguments
8. Applicant's arguments with respect to the claims are based on the claims as amended. The amended claims have been addressed in the new rejection above.
Further,
Arguments directed at claim 1
9. Applicant argues that Zhamu lists two polymers in a single column and so characterizes the “polymer matrix or binder” as a single component described by alternative names and not as two components, and that the Office’s designation of one of two sulfonated polymers as “the mixed conducting polymer” and the other as “the binder” is a relabeling performed by the Office and not a disclosure in Zhamu, and therefore is not anticipation by Zhamu.
The Office has considered this argument and respectfully disagrees. It is submitted that the labels “mixed conducting polymer” and “binder” are seen as intended uses for which the claimed materials are capable. The prior art does not need to label the materials in the same way as the claim for the claim to be met.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Conclusion
10. 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).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shi CN107403904 discloses a negative electrode sheet comprising conductive polymer( polypyrrole, polyaniline, polythiophene, polyphenylene, polyacetylene, polyphenylenevinylene, and polydiyne) and solid electrolyte (polyoxyethylene polymer electrolyte, polyvinylidene fluoride polymer electrolyte, and polyacrylonitrile-based polymer electrolyte) and binder ) sodium carboxymethyl cellulose, polyvinylidene fluoride, polyacrylonitrile, polyacrylic acid, polystyrene-butadiene copolymer,
polyvinyl alcohol, polyacrylate, polyurethane, chlorinated rubber, and epoxy resin), species which are listed in both solid electrolyte and binder lists of the claimed invention (even if they are labelled differently, e.g. as a binder vs as an electrolyte in one document vs. the other). Shi does not disclose a lithium salt in this mixture. Eren et al JOTCSA 2018; 5 (3): 1413-1422 (“Eren NPL”) discloses a solid electrolyte based on a chitosan matrix that holds PEDOT:PSS mixed conducting polymer and a lithium salt. Chitosan is not a claimed binder.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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/LISA S PARK/Primary Examiner, Art Unit 1729
