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 .
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 8-12 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.
Claim 8 recites “a particle size distribution of the solid electrolyte material contained in the inner layer solid electrolyte composition has a peak in a region where a particle diameter is 1 μm or less, and a particle size distribution of the solid electrolyte material contained in the first outer layer solid electrolyte composition and a particle size distribution of the solid electrolyte material contained in the second outer layer solid electrolyte composition each have a peak in a region where a particle diameter is 1 μm or less and a peak in a region where a particle diameter is 3 μm or more” (emphasis added). It is unclear to whether each “peak” is in reference to a SEM photograph (see Specification para 0056), a structure of each particle, or some other meaning.
Claim 9 recites the limitation "the thickness of the inner layer". There is insufficient antecedent basis for this limitation in the claim. Claims 10-12 are also rejected as depending on claim 9.
Claim Rejections - 35 USC § 103
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 nonobviousness.
Claims 1-3 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nitta et al (JP No. 2017037780, machine translation cited below) in view of Ozawa et al (US 2021/0104773).
With respect to claim 1, Nitta discloses in fig. 1(a) a solid electrolyte sheet comprising: a “main solid electrolyte layer” (i.e. claimed “inner layer”) [130]; a “secondary solid electrolyte layer” (i.e. claimed “first outer layer”) [160] stacked on one side of the inner layer [130]; and a “secondary solid electrolyte layer ” (i.e. claimed “second outer layer”) [160] stacked on another side of the inner layer [130] (Abstract; para 0030). Nitta further discloses: the inner layer [130] contains “solid electrolyte particles, ethyl vinyl acetate, and an optional binder” (i.e. claimed “inner layer solid electrolyte composition containing a solid electrolyte material and a binder”) (para 0033); and the first outer layer [160] (also called “sub-solid electrolyte layer” at para 0039 or “subsolid electrolyte layer” at para 0040) has “solid electrolyte particles, expandable particles, and an optional binder” (i.e. claimed “first outer layer solid electrolyte composition containing a solid electrolyte material and a binder”) and the second outer layer [160] also has “solid electrolyte particles, expandable particles, and an optional binder” (i.e. claimed “second outer layer solid electrolyte composition containing a solid electrolyte material and a binder”) (para 0039). Nitta also discloses the inner solid electrolyte composition has the ethyl vinyl acetate functioning as a binder that “can be 30% by mass or more” and with the optional binder at about 5% by mass to have a binder content ratio of about 35% by mass or more (para 0033, 0037-0038, and 0072), and each of first and second outer layer solid electrolyte compositions having the optional binder at a binder content ratio of about 5% by mass (para 0039, 0046, and 0072); resulting in the binder content ratio of the inner layer solid electrolyte composition being higher than the binder content ratio of each of the first and second outer layer solid electrolyte compositions. Nitta further teaches in fig. 1(a) the solid electrolyte material (i.e. solid electrolyte particles [131]) in the inner layer solid electrolyte composition has an average particle size that is smaller than an average particle size of each of the solid electrolyte material (i.e. solid electrolyte particles [131] and expandable particles [161]) in each of the first and second outer layer solid electrolyte compositions (para 0033-0036 and 0039-0044).
However Nitta is limited in that while the inner layer (i.e. main solid electrolyte) [130] is applied as a slurry to a release sheet or film (para 0071-0072), the inner layer being formed as the claimed “porous base material and an inner layer solid electrolyte composition filled in the porous base material” is not specifically suggested as an alternative.
Ozawa teaches a solid electrolyte-containing sheet (Abstract; fig. 3; para 0114), wherein fig. 3 depicts the solid electrolyte-containing sheet comprises: a “solid electrolyte layer 3 (first SE layer)” (i.e. claimed “first outer layer”); a “solid electrolyte layer 2 (second SE layer)” (i.e. claimed “inner layer”); and a “solid electrolyte layer 1 (third SE layer)” (i.e. claimed “second outer layer”), wherein the first and second outer layers [1],[3] are each stacked on different surfaces of the inner layer [2] (para 0114), similar to the solid electrolyte sheet of Nitta. Ozawa also teaches the inner layer solid electrolyte composition contains a solid electrolyte material and a binder (para 0092-0093); the first outer layer [1] includes a first outer layer solid electrolyte composition contains a solid electrolyte material and binder (para 0092-0093); and the second outer layer [3] includes a second outer layer solid electrolyte composition contains a solid electrolyte material and binder (para 0092-0093), also similar to Nitta. Ozawa further teaches the inner layer (i.e. second SE layer) [2] is applied as a slurry to a release film (para 0445-0446), similar to Nitta teaching the inner layer [130] is applied as a slurry to the release sheet or film; Ozawa also suggests alternatively that the inner layer [2] is formed by disposing a “linear structure” (i.e. claimed “porous base material”) that is “impregnated with the solid electrolyte composition” (i.e. the inner layer electrolyte composition is filled in the porous base material) (para 0448).
Since Ozawa recognizes the similarities of applying a solid electrolyte as a slurry to a release film to form a solid electrolyte layer and impregnating a porous base material with the solid electrolyte to form the solid electrolyte layer, it would have been obvious to one of ordinary skill in the art to replace applying the slurry of the solid electrolyte to the release film of Nitta with the impregnating the solid electrolyte into the porous base material of Ozawa as it is merely the selection of functionally similar formation methods of forming the solid electrolyte layer recognized in the prior art, and one of ordinary skill would have a reasonable expectation of success in doing so.
With respect to claims 2 and 3, as discussed above for claim 1, modified Nitta discloses the inner layer solid electrolyte composition has the ethyl vinyl acetate functioning as the binder “can be 30% by mass or more” and with the optional binder at about 5% by mass to have the binder content ratio of about 35% by mass or more (para 0033, 0037-0038, and 0072), and each of first and second outer layer solid electrolyte compositions having the optional binder at the binder content ratio of about 5% by mass (para 0039, 0046, and 0072); resulting in the binder content ratio of each of the first and second outer layer solid electrolyte composition to the binder content ratio of the inner layer solid electrolyte composition being about 0.15. Alternatively when the optional binder of the inner layer solid electrolyte composition is not included (para 0033, 0037-0038, and 0072), the binder content ratio of each of the first and second outer layer solid electrolyte compositions to the binder content ratio of the inner layer solid electrolyte composition is about 0.17; it has been held that a prima facie case of obviousness exists where the claimed ranges (0.1-0.9 for claim 2 or 0.3-0.6 for claim 3) and prior art ranges (0.15 or 0.17) do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (MPEP 2144.05, I).
With respect to claim 8, modified Nitta further discloses the solid electrolyte material of the inner layer [130] has an average particle size of 1 mm or less (para 0036), and each of the solid electrolyte material of the first and second outer layers [160],[160] has an average particle size of 1 mm or less for finer particles (similar to the inner layer [130]) and an average particle size of “expandable particles” (i.e. coarser particles) of 3 mm or more (fig. 1(a); para 0036, 0044, and 0046). Since modified Nitta teaches the claim requirements of the solid electrolyte of the inner layer [130] having the average particle size of 1 mm or less, and each of the solid electrolyte material of the first and second outer layers [160],[160] having the average particle size of 1 mm or less for finer particles and average particle size 3 mm or more for coarser particles, a prima facie case of either anticipation or obviousness has been established that modified Nitta also teaches the resulting solid electrolyte of the inner layer [130] having a property of “a particle size distribution of the solid electrolyte material contained in the inner layer solid electrolyte composition has a peak in a region where a particle diameter is 1 μm or less” and each of the solid electrolyte material of the first and second outer layers [160],[160] having a property of “a particle size distribution of the solid electrolyte material contained in the first outer layer solid electrolyte composition and a particle size distribution of the solid electrolyte material contained in the second outer layer solid electrolyte composition each have a peak in a region where a particle diameter is 1 μm or less and a peak in a region where a particle diameter is 3 μm or more”, as further evidenced by Applicant’s Specification para 0056 (MPEP 2112.01, I).
With respect to claims 9-12, modified Nitta further discloses a thickness of the inner layer [130] is between 5-100 mm (para 0030 and 0034), and a thickness for each of the first and second outer layers [160],[160] is between 5-20 mm and various values therebetween (para 0030 and 0039-0040); thus modified Nitta suggests: each of the first and second outer layers [160],[160] has the thickness within a claimed range of “1/5 to 2 times” (claim 9) or “1/5 to 4/5 times” the thickness of the inner layer [130] (claim 11); each of the first and second outer layers [160],[160] are capable of being thinner than the inner layer [130] (e.g. 5 mm for each of layers [160] and 100 mm for layer [130] (claim 10); and the thickness of the inner layer is between 10-25 mm (claim 12).
With respect to claim 13, modified Nitta further discloses in fig. 1(a) an all-solid-state battery comprising: a positive electrode [110],[120], a negative electrode [140],[150], and a solid electrolyte layer [160],[130],[160] (para 0030), wherein the solid electrolyte layer [160],[130],[160] consists of the solid electrolyte sheet having the first outer layer [160] in contact with the positive electrode [110],[120] and the second outer layer [160] in contact with the negative electrode [140],[150] (fig. 1(a); para 0030).
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nitta et al (JP No. 2017037780, machine translation cited below) and Ozawa et al (US 2021/0104773) as applied to claim 1, and further in view of Lee et al (US 2024/0258562).
With respect to claims 4-5 and 7, the combination of references Nitta and Ozawa is cited as discussed for claim 1.
However modified Nitta is limited in that while the ethyl vinyl acetate (EVA) is part of the binder and “can be 30% by mass or more” in the solid electrolyte composition of the inner layer [130] (para 0037-0038), a lower amount of the EVA is not specifically suggested.
Lee teaches a solid electrolyte film (i.e. layer) comprising a binder, wherein the binder is EVA (Abstract; para 0021 and 0056), similar to the solid electrolyte composition of the inner layer [130] of Nitta. Lee further discloses the binder of EVA to be included in an amount of 0.5-5 wt% based on total weight of the solid electrolyte layer based upon packing density and ion conductivity considerations (para 0057).
It would have been obvious to one of ordinary skill in the art to have the binder of EVA of modified Nitta be 0.5-5 wt% as taught by Lee (and thus a binder content ratio of 5.5-10 wt% according to Nitta’s para 0033 and 0072) to gain the advantage of desirable packing density and ionic conductivity considerations.
With respect to claim 6, modified Nitta further discloses a thickness of the inner layer [130] is between 5-100 mm (para 0030 and 0034); thus modified Nitta suggests: the thickness of the inner layer [130] is between 10-25 mm.
Double Patenting
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.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8-9 of copending Application No. 18/190133 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims regarding the different “regions” from the copending and the ’inner, first outer, and second outer layers’ of the current invention. Therefore, any reference meeting the limitations set forth in claims 1-5 and 8-9 of the US Patent would also meet the requirements set forth in claims 1-13 of the current invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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