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 .
Status of Claims
Claims 1-7, as filed 23 April 2024, are examined herein. No new matter is included.
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)(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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shui (CN 102780031 B) with paragraph numbering to the provided translation.
Regarding claim 1, Shui teaches a solid electrolyte material (abstract) and at [0009] teaches Li(5+x+2y+z-m)La(3-x)Mg(x)Al(y)Zr(z)Nb(2-y-z)O(12-m)F(m), where: x=0.1-0.5; y=0.1-0.2; z=0.1-0.2; m=0.1-0.3, which meets the claimed solid electrolyte.
Regarding claim 2, Shui teaches all of the limitations as set forth above, and Shui further teaches a ratio of an amount of substance of the Li to a sum of amounts of substance of the Nb and the M. Referring to the formula at [0009], if x=0.1; y=0.1; z=0.1; and m=0.1, the ratio of Li to Nb and M is 2.5, which falls within the claimed range of 2.2 to 3.3. If x=0.5; y=0.2; z=0.2; and m=0.3, the ratio is 2.4, which also falls within the claimed range.
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.
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(s) 1 and 3-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagamine (US 20210273259 A1) in view of Tanaka (WO 2020137153 A1, with paragraph citations to US 20210242494 A1).
Regarding claims 1 - 3, Nagamine teaches at [0013-0025] a solid electrolyte material comprising Li, M, and X, where M can be any metal element that is not a metalloid (candidates include Al, Nb) and where X can be selected from F, Cl, Br, or I. The selection of F is rendered obvious as it represents one of 4 candidates for the anion in the instant electrolyte. At [0037], the lithium-ion conductivity is maintained at a higher rate if M contains a trivalent metal, therefore the selection of Al is rendered obvious as it represents one of a finite number of trivalent metals. At [0078] Nagamine discloses a solid electrolyte with the composition Li3(Al, Ga, In)X6, where X may be F, Cl, Br, or I. (Examiner notes that this is a separate embodiment.) A person of ordinary skill would be motivated to select the subscript 3 for lithium and 6 for fluorine, based on Nagmine’s teaching of a successful electrolyte. This creates Li3AlF6. Nagamine discloses Nb as one of several candidates for M, but does not explicitly provide a motivation for replacing some of the Al with Nb.
Tanaka, in the field of (abstract) solid electrolyte materials having a high lithium-ion conductivity, discloses a first embodiment at [0021] a solid electrolyte material which includes Li, M, O, and X, where M is at least one element selected from the group consisting of Nb and Ta, and X is selected from Cl, Br, and I. At [0295], Tanaka contemplates that where M includes Nb, the solid electrolyte material has higher ionic conductivity. (Examiner notes that Tanaka’s electrolyte of the first embodiment does not include Al and does not include F, as required by claim 1.)
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to modify Nagamine’s halide solid electrolyte material by substituting some of the aluminum with niobium as taught by Tanaka with a reasonable expectation of successfully achieving the desirable result of higher ionic conductivity, thus creating an electrolyte having the formula Li3Nb1-xAlxF6, where 0<x<1. This meets the limitations of claims 1 and 2. (Li : metal ratio = 3)
Regarding the formula of claim 3, ( Li6−(5−2x)b(Nb1−xMx)bF6, wherein in the M is Al, and 0 < x < 1 and 0 < b ≤ 1.2 are satisfied), Nagamine in view of Tanaka falls within this formula. (assume b=1)
Regarding claims 4 and 5, Nagamine in view of Tanaka teaches all of the limitations as set forth above. Nagamine does not explicitly teach (claim 4) wherein in the composition formula (1), 0.40 ≤ x ≤ 0.80 is satisfied and (claim 5) wherein 0.80 ≤ b ≤ 1.10 is satisfied.
At [0037], Nagamine teaches that the lithium-ion conductivity is maintained at a higher rate if M contains a trivalent metal. At [0044], Nagamine teaches that lithium-ion conductivity has a higher retention rate if the average ionic radius ratio is between 0.424 and 0.460. This ratio is defined at [0020]. Because the ionic radius of Nb is known to be larger than the ionic radius of Al, a person of ordinary skill would be motivated to optimize the amount of Nb in the electrolyte, to raise the ionic radius ratio and with a reasonable expectation of selecting a value within the claimed range and successfully improving the lithium-ion conductivity retention rate.
A person of ordinary skill would recognize the need for charge balance in the electrolyte. Because the valence of Nb is +5 and of Al is +3, as Al is replaced with Nb, the total amount of Nb + Al needs to be optimized, with a reasonable expectation of successfully creating an electrolyte where the composition falls within the range of 0.80 ≤ b ≤ 1.10 for formula (I).
Regarding claim 6, Nagamine in view of Tanaka teaches all of the limitations as set forth above, and Nagamine further teaches a battery comprising: a positive electrode; a negative electrode; and an electrolyte layer disposed between the positive electrode and the negative electrode, wherein at least one selected from the group consisting of the positive electrode, the negative electrode, and the electrolyte layer includes the solid electrolyte material according to claim 1. ([0056])
Regarding claim 7, Nagamine in view of Tanaka teaches all of the limitations as set forth above, and Nagamine further wherein the electrolyte layer includes a first electrolyte layer and a second electrolyte layer, the first electrolyte layer is disposed between the positive electrode and the negative electrode, the second electrolyte layer is disposed between the first electrolyte layer and the negative electrode, and the first electrolyte layer includes the solid electrolyte material. ([0078] “A layer composed of the solid electrolyte material according to the first embodiment and a layer composed of a solid electrolyte material different from the solid electrolyte material according to the first embodiment may be placed sequentially.”)
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, 3, 6 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 10-13, and 15-17 of copending Application No. 18/643712 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
(a) It would be obvious that the electrolyte of the instant claim 1 could be used as part of a positive electrode active material, as in copending claims 1, 5, 7, 10, 13 and 15;
(b) The formula of instant claim 3 is equivalent to claims 11 of the copending application. (Examiner notes that the limitation “occluding and releasing lithium ions” of copending claim 13 is known to be a necessary feature for a functioning lithium ion battery.)
(c) The instant claim 6 requires a battery with a solid electrolyte layer, similar to copending claim 15.
(d) The instant claim 7 requires a second electrolyte layer and therefore is equivalent to claims 16-17.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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CLAIRE A. RUTISER
Examiner
Art Unit 1751
/C.A.R./Examiner, Art Unit 1751
/Haroon S. Sheikh/Primary Examiner, Art Unit 1751
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