DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. 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, or 365(c) is acknowledged. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
3. Information disclosure statements (IDS), submitted December 15, 2023, February 19, 2025, and June 2, 2025, have been received and considered by the examiner.
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 § 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 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.
5. Claims 1, 4, 8, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhamu US PG Publication 2018/0166759.
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).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
6. Claims 2-4, 7, 9-12, and 14 are rejected under 35 U.S.C. 103 as being obvious over Zhamu US PG Publication 2018/0166759.
Regarding Claims 2-3, Zhamu discloses the solid electrolyte comprising a mixed conducting polymer as described in the rejection of Claim 1, which is incorporated herein in its entirety. Zhamu further exemplifies the use of polymers such as e.g. polypyrrole, polyaniline, polythiophene (para 0031, all meeting Claim 2) 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, meeting Claim 3), 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 discloses 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.).
Regarding Claim 7, 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 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, 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.
7. Claims 5-6 are rejected under 35 U.S.C. 103 as being obvious over Zhamu US PG Publication 2018/0166759, as applied to Claim 10, and further in view of Ueda JP 2008-226637.
Regarding Claims 5 and 6, Zhamu 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 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.).
8. Claims 12-13 are rejected under 35 U.S.C. 103 as being obvious over Zhamu US PG Publication 2018/0166759, as applied to Claim 10, and further in view of Sakai US PG Publication 2013/0052564.
Regarding Claims 12-13, Zhamu 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 12 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 12) 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 13) (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.).
Conclusion
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
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