DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Regarding the limitation(s) in claim 5, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner has interpreted this as being lithium titanate, lithium tin oxide, or lithium titanium oxide, as these all must be lithium metal oxides.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Election/Restrictions
The Examiner notes that claims 17 - 20 recite(s) nominal apparatus and/or methods of making limitations, in combination with product limitations substantially identical to those of claim 1. As such, there is presently no undo burden in examining these, technically, divergent statutory classes of invention. Should Applicants' amend these claims to include non-nominal apparatus and/or method limitations, these newly added claims may be subject to restriction by original presentation.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/669,330 (PGPUB 2025/0105343 A1 to Chen et al.). Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference is that the present Application claims a solid state battery with conventional/known cathode and anode limitations, while App. ‘330 is directed exclusively to the solid electrolyte (having identical solid electrolyte limitations as in the present claims). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding the solid-state anode and cathode limitations that are in the present claims versus those in App. ‘330, the Examiner takes Official Notice that these limitations are conventional in the lithium-ion battery arts and sodium-ion battery arts and, as such, do not present a novel or non-obvious difference between the claimed products. For support of the Examiner’s position that these anode and cathode limitations are known in the art, see the art cited below in the 103(a) rejections, as well as the art cited on the filed PTO-1449’s and PTO-892 attached herewith.
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.
Claim 12 is 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 pre-AIA the applicant regards as the invention.
The term “hard carbon” in claim 12 is a relative term which renders the claim indefinite. The term “hard carbon” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of evaluating the prior art, the Examiner has interpreted this claim as covering only graphite, carbon nanotubes, graphene, or carbon arsenide as the as-filed disclosure provides no specificity as to what constitutes ‘hard’ carbon versus ‘soft’ carbon. This rejection can be overcome by deleting the term ‘hard carbon’ or pointing to a specific definition in the as-filed disclosure as to what is meant by ‘hard carbon’.
Claim Rejections - 35 USC § 102
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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 – 6, 15 and 17 – 19 are rejected under 35 U.S.C. 102(a)(1/(a)(2) as being anticipated by Assat et al. (U.S. Patent App. No. 2022/0376292 A1).
Regarding claim 1, Assat et al. disclose a solid-state battery comprising an anode (examples, e.g. Paragraph 0358), a cathode (ibid), and a solid electrolyte meeting the claimed limitations (e.g. Table 5: Li2.865Na0.135Y1Cl6).
Regarding claim 2, Assat et al. disclose the claimed crystal structure as suitable for the disclosed solid electrolytes (at least Paragraph 0054). The Examiner also takes Official Notice that there is sound basis that the disclosed example in Table 5 inherently possesses the trigonal ordered crystal structure given that Li3YCl6 is known to possess the same crystal structure (see International Written Opinion for support of this position of Official Notice).
Regarding claim 3, Assat et al. disclose the claimed battery type (at least Paragraph 0003).
Regarding claim 4, Assat et al. disclose anodes meeting the claimed limitations (at least Paragraph 0358: Li-In anode).
Regarding claims 5 and 6, while Assat et al. fails to disclose the claimed anodes, the Examiner notes that these claims never positively require the selected material to be picked as the anode from the Markush listing in claim 4. Ergo, the disclosure of Li-In still reads on these claims.
Regarding claim 15, these limitations are an intended use limitation and are not further limiting in so far as the structure of the product is concerned. Note that in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See MPEP Form Paragraph 7-37-09. In the instant case, the disclosed battery is clearly capable of meeting all of the claimed intended uses, as that is what batteries do.
Regarding claims 17 – 19, these limitations are met for the reasons set forth above given that the method steps are nominal only (“placing”) and that all batteries are necessarily housed in some form of a “container”, be they button batteries, pouch-type batteries, or cylindrical jelly-roll types.
Claims 1 – 8 and 15 – 19 are rejected under 35 U.S.C. 102(a(1)/(a)(2) as being anticipated by Ouspenski et al. (U.S. Patent App. No. 2021/0320326 A1).
Regarding claim 1, Ouspenski et al. disclose a solid-state battery comprising an anode (Figure 1 and at least Paragraphs 0072 - 0074), a cathode (ibid), and a solid electrolyte meeting the claimed limitations (e.g. Table 1, example 6: 90% of Li2Na1Y1Cl6).
Regarding claim 2, the Examiner also takes Official Notice that there is sound basis that the disclosed example in Table 5 inherently possesses the trigonal ordered crystal structure given that Li3YCl6 is known to possess the same crystal structure (see International Written Opinion for support of this position of Official Notice).
Regarding claim 3, Ouspenski et al. disclose the claimed battery type (at least Paragraph 0003).
Regarding claims 4 and 6, Ouspenski et al. disclose anodes meeting the claimed limitations (at least Paragraph 0073: e.g. carbon-based anode).
Regarding claim 5, while Ouspenski et al. fails to disclose the claimed anode material (their disclosed metal oxides are not lithium titanates, lithium tin oxides or lithium titanium oxides), the Examiner notes that these claims never positively require the selected material to be picked as the anode from the Markush listing in claim 4. Ergo, the disclosure of carbon materials still reads on these claims.
Regarding claims 7 and 8, Ouspenski et al. disclose various metal oxides, including lithium cobalt oxides as suitable cathode materials (at least Paragraph 0072), which reads on the claimed limitations.
Regarding claim 15, these limitations are an intended use limitation and are not further limiting in so far as the structure of the product is concerned. Note that in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See MPEP Form Paragraph 7-37-09. In the instant case, the disclosed battery is clearly capable of meeting all of the claimed intended uses, as that is what batteries do.
Regarding claim 16, Ouspenski et al. disclose materials meeting the claimed limitations as noted above.
Regarding claims 17 – 19, these limitations are met for the reasons set forth above given that the method steps are nominal only (“placing”) and that all batteries are necessarily housed in some form of a “container”, be they button batteries, pouch-type batteries, or cylindrical jelly-roll types.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claim 2 is rejected under 35 U.S.C. 103(a) as being unpatentable over Ouspenski et al. as applied above, and further in view of Assat et al. (‘292 A1).
Ouspenski et al. is relied upon as described above.
While the Examiner maintains that there is sound basis that the disclosed material (example 6 in Table 1) inherently possesses a trigonal ordered crystal structure, the Examiner acknowledges that Ouspenski et al. fails to explicitly disclose such.
However, alternative to anticipation based upon inherency of this crystal structure, the Examiner notes that Assat et al. clearly teach that the claimed crystal structure is suitable for these classes of solid electrolyte materials (at least Paragraph 0054 and examples).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Ouspenski et al. to meet the claimed crystal structure as taught by Assat et al., as such a crystal structure is art recognized as functionally equivalent and suitable to other crystal structures for NaxLi3-xY1Cl6 type materials.
Claims 3 - 8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Ouspenski et al. as applied above, and further in view of Thackeray et al. (U.S. Patent No. 12,633,519).
Ouspenski et al. is relied upon as described above.
While Ouspenski et al. is taken to anticipate claims 3 – 8 for the reasons set forth above, the Examiner notes that Ouspenski et al. only briefly touches on the claimed anode and cathode materials, even though the Examiner maintains that these are all conventional and known cathode and anode materials for lithium ion batteries.
However, Thackeray et al. teaches a lithium ion solid state battery (Title; Abstract; and at least col. 1, lines 25 – 29) comprising anode materials (i.e. for claims 4 – 6) meeting the claimed limitations (col. 1, lines 32 – 55) and cathode materials (i.e. for claims 7 and 8) meeting the claimed limitations (col. 1, lines 32 – 55 and Table 1).
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the various disclosed and claimed anode and cathode materials are functional equivalents in the field of known and conventional anode and cathode materials for use in lithium ion solid-state batteries. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Ouspenski et al. to use anode and cathode materials meeting the claimed limitations (claims 4 – 6 for anodes; claims 7 -8 for cathodes) as taught by Thackeray et al., as all of the claimed materials are known and conventional anode/cathode materials, well recognized by a person of ordinary skill in the art.
Claims 9 - 14 and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Ouspenski et al. as applied above, and further in view of one or more of Jang (U.S. Patent App. No. 2023/0261190 A1), Plichta et al. (U.S. Patent No. 5,462,818), and/or Tai et al. (U.S. Patent App. No. 2024/0243370 A1), as also evidenced by IDS reference Sebti et al. (J. Mat. Chem. A, 2022, 10, 21565-21578).
Ouspenski et al. is relied upon as described above.
Ouspenski et al. fail to disclose using the solid electrolyte for use in a sodium ion battery, only disclosing the use in a lithium ion battery.
However, regarding claims 9 and 20, the prior art recognize that this class of material (M-Y1Cl6) have found use in both lithium ion batteries (M is at least Li) and sodium ion batteries (M is at least Na). The primary reference teaches using a solid electrolyte where M includes both Li and Na, which would naturally lead a skilled artisan to consider it for use in both types of batteries (lithium-ion solid-state batteries and sodium-ion solid-state batteries). For support of the above, see Jang (at least Paragraphs 0002 – 0006) and evidentiary NPL reference to Sebti et al. (Abstract and entire disclosure; especially the Introduction section).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Ouspenski et al. to be used in a sodium-ion solid-state battery as recognized by the prior art, at least in view of Jang and evidentiary reference to Sebti et al., as noted above.
Regarding claims 10 – 12, these anode materials are art recognized as conventional anode materials for sodium ion batteries (Jang, at least Paragraphs 0004, 0006 and 0009: metal Na and carbon based), Plichta et al. (their claim 1: Na-Pb), and Tai et al. (at least Title and Abstract: Na-K).
Regarding claims 13 and 14, Jang teaches cathodes meeting the claimed limitations (Paragraph 0004: phosphate-based cathodes; and Paragraph 0021: cobalt oxide containing cathodes, etc.).
Claims 3 - 8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Assat et al. as applied above, and further in view of Thackeray et al. (U.S. Patent No. 12,633,519).
Assat et al. is relied upon as described above.
While Assat et al. is taken to anticipate claims 3 – 6 for the reasons set forth above, the Examiner notes that Assat et al. only briefly touches on the claimed anode and cathode materials, even though the Examiner maintains that these are all conventional and known cathode and anode materials for lithium ion batteries.
However, Thackeray et al. teaches a lithium ion solid state battery (Title; Abstract; and at least col. 1, lines 25 – 29) comprising anode materials (i.e. for claims 4 – 6) meeting the claimed limitations (col. 1, lines 32 – 55) and cathode materials (i.e. for claims 7 and 8) meeting the claimed limitations (col. 1, lines 32 – 55 and Table 1).
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the various disclosed and claimed anode and cathode materials are functional equivalents in the field of known and conventional anode and cathode materials for use in lithium ion solid-state batteries. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Assat et al. to use anode and cathode materials meeting the claimed limitations (claims 4 – 6 for anodes; claims 7 -8 for cathodes) as taught by Thackeray et al., as all of the claimed materials are known and conventional anode/cathode materials, well recognized by a person of ordinary skill in the art.
Claims 9 - 14 and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Assat et al. as applied above, and further in view of one or more of Jang (U.S. Patent App. No. 2023/0261190 A1), Plichta et al. (U.S. Patent No. 5,462,818), and/or Tai et al. (U.S. Patent App. No. 2024/0243370 A1), as also evidenced by IDS reference Sebti et al. (J. Mat. Chem. A, 2022, 10, 21565-21578).
Assat et al. is relied upon as described above.
Assat et al. fail to disclose using the solid electrolyte for use in a sodium ion battery, only disclosing the use in a lithium ion battery.
However, regarding claims 9 and 20, the prior art recognize that this class of material (M-Y1Cl6) have found use in both lithium ion batteries (M is at least Li) and sodium ion batteries (M is at least Na). The primary reference teaches using a solid electrolyte where M includes both Li and Na, which would naturally lead a skilled artisan to consider it for use in both types of batteries (lithium-ion solid-state batteries and sodium-ion solid-state batteries). For support of the above, see Jang (at least Paragraphs 0002 – 0006) and evidentiary NPL reference to Sebti et al. (Abstract and entire disclosure; especially the Introduction section).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Assat et al. to be used in a sodium-ion solid-state battery as recognized by the prior art, at least in view of Jang and evidentiary reference to Sebti et al., as noted above.
Regarding claims 10 – 12, these anode materials are art recognized as conventional anode materials for sodium ion batteries (Jang, at least Paragraphs 0004, 0006 and 0009: metal Na and carbon based), Plichta et al. (their claim 1: Na-Pb), and Tai et al. (at least Title and Abstract: Na-K).
Regarding claims 13 and 14, Jang teaches cathodes meeting the claimed limitations (Paragraph 0004: phosphate-based cathodes; and Paragraph 0021: cobalt oxide containing cathodes, etc.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
August 30, 2026
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