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 .
Continued Examination Under 37 CFR 1.114
3. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 9/11/2026 has been entered.
Response to Amendment
4. In response to the submission received on 9/11/2026:
Claims 1, 4, 6-7, 9-10, 14-16, and 18-21 are pending in the current application. Claims 2-3, 8, 11-13, and 17 are cancelled.
Claims 1, 4, 6-7, 9-10, 14-16, and 18-21 were previously allowed but in light of the submission of an IDS on 9/11/2026, the indication of allowable subject matter is withdrawn.
Claim Interpretation
5. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 102
6. Claim 19 is rejected under 35 U.S.C. 102 as being anticipated by Yu US PG Publication 2022/0131184.
Regarding Claim 19, Yu discloses a method for making a solid electrolyte (SSE or solid state electrolyte) comprising providing a sulfide-containing solid electrolyte (e.g. Li3PS4 or Li10GeP2S12, para 0039) and combining the sulfide-containing solid electrolyte material with at least one surface protective agent meeting compound of Chemical Formula 1 or Chemical Formula 2 to form a coated sulfide-containing solid electrolyte material, e.g. the surface protective agent includes molecules having a hydrophilic head (para 0034, hydrophilic head is -NH2 or -SH) and a hydrophobic tail (-C3-C50, which includes n-hexyl, n-heptyl, n-octyl, n-nonyl, n-decyl, and meets a total of 6-16 carbons) and see specific examples 1-butanethiol through 1-octanethiol listed in para 0036 (see entire disclosure and especially paras 0013, 0030-0037, 0044).
Claim Rejections - 35 USC § 103
7. Claims 1, 6-7, 9-10, 14, 18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Yu US PG Publication 2022/0131184 in view of Chen US PG Publication 2017/0162901.
Regarding Claims 1, 6-7, 9, 14, 18, and 20-21, Yu discloses a solid state battery comprising a negative electrode (lithium film), a positive electrode, and a solid electrolyte (meeting Claim 20) interposed in between the electrodes (para 0055, meeting Claim 21) , the solid electrolyte comprising a solid electrolyte composition and a method for making the solid electrolyte comprising providing a sulfide-containing solid inorganic electrolyte (e.g. Li6PS5Cl or Li10GeP2S12, paras 0021, 0039, meeting Claim 14) and combining the sulfide-containing solid electrolyte material with at least one surface protective agent meeting compound of Chemical Formula 1 or Chemical Formula 2 (para 0013) to form a coated sulfide-containing solid electrolyte material, e.g. the surface protective agent includes molecules having a hydrophilic head (para 0034, hydrophilic head is -NH2 or -SH, meeting Claim 4) and a hydrophobic tail (-C3-C50, which includes n-hexyl, n-heptyl, n-octyl, n-nonyl, n-decyl, n-dodecyl, etc. and meets a total of 6-16 carbon, meeting Claim 9, and meets R is a C6 – C16 alkyl and C8-C12 alkyl, meeting Claims 6 and 7) ( see specific examples 1-butanethiol through 1-dodecanethiol listed in para 0036) (see entire disclosure and especially paras 0013, 0030-0040). Yu does not specifically recite that the compound of Chemical Formula 1 or 2 reacts with the sulfide-containing solid state electrolyte material to form a covalent bond. However, in the same field of endeavor of LPSI solid electrolyte design which is covalently bonded with organic materials on the electrolyte surface, Chen discloses that the same claimed solid electrolyte as Yu covalently bonds the thiol end of dodecanethiol to the surface of the electrolyte (see entire disclosure and especially para 0101). 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 solid electrolyte of Yu such that the organic coating using Chemical Formula 1 where A is -SH is covalently bonded to the surface via reaction because Chen teaches that this is a known material for use in the same type of composition for the same purpose. 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).
Regarding Claim 10, Yun further teaches that the hydrophobic tail of the compound can be a substituted alkyl and e.g. (CF2)n (n≥2) (para 0035) which would provide an R that is substituted with fluorine. 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 solid electrolyte of Yu such that the organic coating using Chemical Formula 1 where A is -SH to have R being substituted with F because Yun teaches that this is a known hydrophobic tail moiety 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.).
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
