CTNF 18/588,075 CTNF 94687 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA 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. 08-37 AIA Claim s 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim s 1-13 of copending Application No. 18/418,288 in view of Mun et al. (US PGPub 2013/0071745 A1) and Ito et al. (US PGPub 2018/0212233 A1). Regarding Claims 1-14 , copending Application No. 18/418,288 discloses all of the limitations of the instant application except for: wherein the first solid electrolyte contains Ti, wherein the second solid electrolyte is in indirect contact with the positive electrode active material with the coating layer disposed between the second solid electrolyte and the positive electrode active material, wherein the coating layer includes a first coating layer and a second coating layer, the first coating layer contains the first solid electrolyte, and the second coating layer contains a base material, and the first coating layer is located outside of the second coating layer. Mun teaches a coating layer formed on a surface of a positive electrode active material comprising a material having lithium conductivity that suppresses a side reaction between the positive electrode active material and an electrolyte ([0026], [0038]), wherein the material may be chosen to be contain Li, Zr, Ti, and a halogen, in order to prevent performance degradation of a battery under high temperature and high voltage conditions ([0007], [0027]-[0029]). It would have been obvious to one of ordinary skill in the art to form the first solid electrolyte of copending Application No. 18/418,288 to contain Ti, as taught by Mun, such that the first solid electrolyte contains Li, Zr, M, and X, wherein M is Ti and X is at least one selected from the group consisting of F, Cl, Br, or I, as taught by Mun, in order to prevent performance degradation of a battery under high temperature and high voltage conditions, wherein such contains Li, Zr, M, and X, wherein M is a metal element and X is at least one selected from the group consisting of F, Cl, Br, or I and therefore the skilled artisan would have a reasonable expectation that such would successfully function as the first solid electrolyte desired by copending Application No. 18/418,288. Ito teaches a coating layer (102, 103), wherein a second solid electrolyte (300) is in indirect contact with a positive electrode active material (101) with the coating layer (102, 103) disposed between the second solid electrolyte (300) and the positive electrode active material (101), wherein the coating layer (102, 103) includes a first coating layer (103) and a second coating layer (102), the first coating layer (103) contains the first solid electrolyte, and the second coating layer (102) contains a base material, and the first coating layer (103) is located outside of the second coating layer (102) in order to suppress a reaction between the positive electrode active material (101) and the second solid electrolyte (300) (Fig. 2, [0050]-[0051]). Furthermore, it would have been obvious to one of ordinary skill in the art to form the coating layer of copending Application No. 18/418,288 such that the second solid electrolyte is in indirect contact with the positive electrode active material with the coating layer disposed between the second solid electrolyte and the positive electrode active material, wherein the coating layer includes a first coating layer and a second coating layer, the first coating layer contains the first solid electrolyte, and the second coating layer contains a base material, and the first coating layer is located outside of the second coating layer, as taught by Ito, in order to suppress a reaction from occurring between the positive electrode active material and the second solid electrolyte . This is a provisional nonstatutory double patenting rejection. Claim Rejections - 35 USC § 112 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 07-36-01 AIA Claim s 2-5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The Examiner notes that Claim 1 requires the ratio to be greater than or equal to 4% and less than or equal to 45%. However, Claim 2 recites “wherein the ratio is greater than or equal to 4.8%”, which is broader than the range of greater than or equal to 4% and less than or equal to 45%, and therefore Claim 2 fails to include all the limitations of the claim upon which it depends. The Examiner further notes that the ranges recited in Claims 3-5 are also broader than the range set forth in Claim 1 and therefore Claims 3-5 also fail to include all the limitations of the claim upon which they depend. The Examiner suggests amending the claims as recited below: Claim 2: “wherein the ratio is greater than or equal to 4.8% and less than or equal to 45%”. Claim 3: “wherein the ratio is greater than or equal to 4% and less than or equal to 41.2%”. Claim 4: “wherein the ratio is greater than or equal to 8% and less than or equal to 45%”. Claim 5: “wherein the ratio is greater than or equal to 4% and less than or equal to 30%” . Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (US PGPub 2018/0212233 A1), and further in view of Mun et al. (US PGPub 2013/0071745 A1) and Takano et al. (US PGPub 2022/0336854 A1) . Regarding Claims 1-5, 7-8, and 13-14 , Ito discloses in Figs. 1-2 a battery (1) comprising a positive electrode (10) comprising a positive electrode material ([0050]) comprising: a positive electrode active material (101) ([0050]-[0051]); a coating layer (102, 103) containing a first solid electrolyte and coating at least a portion of a surface of the positive electrode active material (101) ([0051]); and a second solid electrolyte (300) ([0050]); the second solid electrolyte (300) is in indirect contact with the positive electrode active material (101) with the coating layer (102, 103) disposed between the second solid electrolyte (300) and the positive electrode active material (101) (Fig. 2, [0050]-[0051]). Ito further discloses wherein the first solid electrolyte is a material having lithium ion conductivity that suppresses a reaction from occurring between the positive electrode active material (101) and the second solid electrolyte (300) in order to suppress degradation of the second solid electrolyte (300), wherein the first solid electrolyte includes a Li-containing compound including Ge, Nb, Ga, or a combination thereof ([0077]-[0079]). However, Ito does not disclose wherein the first solid electrolyte contains Li, Ti, M, and X, wherein M is at least one selected from the group consisting of metalloid elements and metal elements other than Li or Ti, and X is at least one selected from the group consisting of F, Cl, Br, and I. Mun teaches a coating layer formed on a surface of a positive electrode active material comprising a material having lithium conductivity that suppresses a side reaction between the positive electrode active material and an electrolyte ([0026], [0038]). Specifically, Mun teaches wherein the material may be chosen to be Li a MeX b , wherein Me is Ti, Al, and Nb and/or Ge, X is a halogen such as F, a is an integer from 1 to 3, and b is an integer from 4 to 6 in order to prevent performance degradation of a battery under high temperature and high voltage conditions ([0007], [0027]-[0029]). It would have been obvious to one of ordinary skill in the art to utilize Li a MeX b , wherein Me is Ti, Al, and Nb and/or Ge, X is a halogen such as F, a is an integer from 1 to 3, and b is an integer from 4 to 6 as the first solid electrolyte of Ito, as taught by Mun, in order to prevent performance degradation of the battery of Ito under high temperature and high voltage conditions, wherein such is a Li-containing compound including Nb and/or Ge having lithium conductivity that suppresses a side reaction between a positive electrode active material and an electrolyte and therefore the skilled artisan would have a reasonable expectation that such would successfully function as the first solid electrolyte desired by Ito. Thus, modified Ito discloses wherein the first solid electrolyte contains Li, Ti, M, and X, wherein M includes Al, and X is F ([0028]-[0029] of Mun). Modified Ito does not explicitly disclose wherein a ratio of a volume of the first solid electrolyte to a total volume of the first solid electrolyte and the second solid electrolyte is greater than or equal to 4% and less than or equal to 45%, and further greater than or equal to 4.8% and less than or equal to 41.2%, and further greater than or equal to 8% and less than or equal to 30%. Though, modified Ito discloses wherein a total amount of the first solid electrolyte and the second solid electrolyte in the positive electrode material is greater than 1 wt% and less than 90 wt% ([0068] of Ito, e.g. when the positive electrode active material 101 is between 10 wt% and 99 wt%) and further discloses wherein an amount of the first solid electrolyte in the positive electrode material may be about 10 wt% or less ([0030] of Mun). Furthermore, Takano teaches a positive electrode material comprising a positive electrode active material and a solid electrolyte, wherein a volume ratio of the solid electrolyte in the positive electrode material is not particularly limited but is preferably 20% to 60% from the viewpoint of balance among further improvement in the use rate of a negative electrode active material, a decrease in a leakage current, and higher density of a battery ([0109]). The Examiner notes that an amount of the first solid electrolyte in the positive electrode material in the range of about 10 wt% or less ([0030] of Mun) and a total volume of the first solid electrolyte and the second solid electrolyte in the range of 20% to 60% ([0109] of Takano) achieves a ratio that overlaps with the instantly claimed ranges of greater than or equal to 4% and less than or equal to 45%, and further greater than or equal to 4.8% and less than or equal to 41.2%, , and further greater than or equal to 8% and less than or equal to 30%. It would have been obvious to one of ordinary skill in the art to form the positive electrode material of modified Ito to comprise an amount of the first solid electrolyte in the range disclosed by modified Ito and a total amount of the first solid electrolyte and the second solid electrolyte in the range taught by Takano, such that a ratio of a volume of the first solid electrolyte to a total volume of the first solid electrolyte and the second solid electrolyte is greater than or equal to 4% and less than or equal to 45%, and further greater than or equal to 4.8% and less than or equal to 41.2%, and further greater than or equal to 8% and less than or equal to 30%, in order to improve use rate of a negative electrode active material, decrease a leakage current, and achieve a higher density of the battery of modified Ito. Regarding Claim 6 , modified Ito discloses all of the limitations as set forth above and further discloses wherein the second solid electrolyte (300 of Ito) contains Li and S ([0098]-[0099] of Ito). Regarding Claim 9 , modified Ito discloses all of the limitations as set forth above and further discloses wherein the first solid electrolyte is Li a MeX b , wherein Me is Ti, Al, and Nb and/or Ge, X is a halogen such as F, a is an integer from 1 to 3, and b is an integer from 4 to 6 ([0027]-[0029] of Mun), which reads on Li α Ti β M ϒ X δ (Formula 1) wherein α, β, ϒ, and δ are each a independently a value greater than 0. Regarding Claim 10 , modified Ito discloses all of the limitations as set forth above and further discloses wherein the coating layer (102, 103 of Ito) includes a first coating layer (103 of Ito) and a second coating layer (102 of Ito), the first coating layer (103 of Ito) contains the first solid electrolyte, and the second coating layer (102 of Ito) contains a base material (Fig. 2, [0051], [0069]-[0079] of Ito), and the first coating layer (103 of Ito) is located outside of the second coating layer (102 of Ito) (Fig. 2, [0051] of Ito). Regarding Claims 11-12 , modified Ito discloses all of the limitations as set forth above and further discloses wherein the base material contains an oxide solid electrolyte having lithium ion conductivity, and may be chosen to contain lithium niobate ([0069]-[0071] of Ito, lithium niobium oxide). Specifically, modified Ito discloses wherein second coating layer (102 of Ito) contains a material having lithium ion conductivity that suppresses a reaction occurring between the positive electrode active material (101 of Ito) and the second solid electrolyte (300 of Ito) in order to suppress degradation of the positive electrode active material (101 of Ito) ([0069]-[0071] of Ito). It would have been obvious to one of ordinary skill in the art to utilize lithium niobate as the base material, as disclosed by modified Ito, wherein the skilled artisan would have a reasonable expectation that such would successfully suppress a reaction occurring between the positive electrode active material and the second solid electrolyte in order to suppress degradation of the positive electrode active material, as desired by modified Ito. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIMBERLY WYLUDA whose telephone number is (571)272-4381. The examiner can normally be reached Monday-Thursday 7 AM - 3 PM EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BASIA RIDLEY can be reached at (571)272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KIMBERLY WYLUDA/Primary Examiner, Art Unit 1725 Application/Control Number: 18/588,075 Page 2 Art Unit: 1725 Application/Control Number: 18/588,075 Page 3 Art Unit: 1725 Application/Control Number: 18/588,075 Page 4 Art Unit: 1725 Application/Control Number: 18/588,075 Page 5 Art Unit: 1725 Application/Control Number: 18/588,075 Page 6 Art Unit: 1725 Application/Control Number: 18/588,075 Page 7 Art Unit: 1725 Application/Control Number: 18/588,075 Page 8 Art Unit: 1725 Application/Control Number: 18/588,075 Page 9 Art Unit: 1725 Application/Control Number: 18/588,075 Page 10 Art Unit: 1725 Application/Control Number: 18/588,075 Page 11 Art Unit: 1725 Application/Control Number: 18/588,075 Page 12 Art Unit: 1725 Application/Control Number: 18/588,075 Page 13 Art Unit: 1725
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