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 . 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.
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 3 and 10 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 3 recites Li4P2S6 and Li7P3S11 as possible solid materials, rendering the claim indefinite. Specifically, claim 1, upon which claim 3 depends, requires that for S, “b represents a number from 3.0 to 6.0.” Furthermore, P has no subscript, which is generally accepted as being equal to 1.0. In Li7P3S11, b is 11 which is well outside of the previously recited range for b. Additionally, formula (I) does not seem to allow for P2 in Li4P2S6 and P3 in Li7P3S11. The claim is indefinite because it is unclear what solid materials Applicant intends to claim and which are not included in the claims’ scope.
Regarding claim 10, the phrase "e.g." renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim 3 is 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. Claim 3 fails to further limit claim 1, upon which it depends, because it broadens claim 1 by reciting Li4P2S6 and Li7P3S11 where b is well outside the claimed range of 3.0 to 6.0 and presents subscripts for P greater than 1. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
Claims 1-10 and 12-15 are rejected under 35 U.S.C. § 103 as being unpatentable over Song et al. (US 2021/0043963 A1), hereinafter “Song.”
Regarding claim 1, Song discloses a powder according to formula (I): LiaPSbXc, in this case Li6PS5Cl, Li6PS5Br, Li7P3S11, and Li3PS4 (¶ [0044]), wherein:
X represents at least one halogen element, in this case Cl or Br (¶ [0044]);
a is 2.0 to 7.0, in this case 6.0, 7.0, or 3.0 (¶ [0044]);
b is 3.0 to 6.0, in this case 5.0 (¶ [0044]); and
c is 0 to 3.0, in this case 1.0 (¶ [0044]).
Song further teaches that the powder has a d50 value of 2 μm to 70 μm, in this case 1 μm to 5 μm (¶ [0045]). A prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. M.P.E.P. § 2144.05. Furthermore, it is unclear how the method of measuring the particle size distribution would have any effect on the resulting value or what difference would result from employing a different measurement technique.
Regarding claim 2, Regarding claim 1, Song discloses a solid particle powder according to formula (I): Li7-xPS6-xXx, in this case Li6PS5Cl and Li6PS5Br (¶ [0044]), wherein:
X represents at least one halogen element, in this case Cl or Br (¶ [0044]);
x is 0.5 to 2.0, in this case 1.0 (¶ [0044]).
Regarding claim 3, Song further discloses that the solid material is Li6PS5Cl, Li7P3S11, or Li3PS4 (¶ [0044]).
Regarding claim 4, Song further discloses that the powder possesses
a d50 value of less than 50 μm, in this case 1 μm to 50 μm (¶ [0045]);
a d10 value greater than 0.05 μm, in this case 0.5 μm to 10 μm (¶ [0045]); and
a d90 value of less than 100 μm, in this case 5 μm to 10 μm (¶ [0045]).
A prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. M.P.E.P. § 2144.05. Furthermore, it is unclear how the method of measuring the particle size distribution would have any effect on the resulting value or what difference would result from employing a different measurement technique.
Regarding claim 5, Song is silent as to the powder’s ionic conductivity. However, Song discloses the same solid materials that make up the powder as set forth in the rejection of claims 1 and 3, above, and further teaches overlapping ranges of the powder’s particle size distributions as set forth in the rejection of claims 1 and 4, above. Song’s powder would therefore inherently possess the same ionic conductivity because it also possesses the same chemical makeup and size distribution. See M.P.E.P. § 2112.
Regarding claims 6-9, Applicant is reminded that “‘even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).” M.P.E.P. § 2113 I. Here, Song discloses the same solid materials that make up the powder as set forth in the rejection of claims 1 and 3, above, and further teaches overlapping ranges of the powder’s particle size distributions as set forth in the rejection of claims 1 and 4, above, thus rendering the claim obvious.
Regarding claim 10, Song teaches a process for manufacturing a powder of formula (I): LiaPSbXc, in this case Li6PS5Cl, Li6PS5Br, and Li3PS4 (¶ [0044]), wherein:
X represents at least one halogen element, in this case Cl or Br (¶ [0044]);
a is 2.0 to 7.0, in this case 6.0, 7.0, or 3.0 (¶ [0044]);
b is 3.0 to 6.0, in this case 5.0 (¶ [0044]); and
c is 0 to 3.0, in this case 1.0 (¶ [0044]);
comprising the steps of:
mixing the starting materials with a carbonated solvent, in this case tetrahydrofuran (THF) (¶ [0034], Fig. 1, ref. no. S100);
drying the paste, in this case the solution is dried (¶ [0034], Fig. 1, ref. no. S100); and
heating the dried paste to a temperature of 350°C to 580°C for at least two hours, in this case thermal treatment is conducted at 300°C to 500°C for 5 to 24 hours (¶ [0036], Fig. 1, ref. no. S300).
Song further teaches that the powder has a d50 value of 2 μm to 70 μm, in this case 1 μm to 5 μm (¶ [0045]). A prima facie case of obviousness exists in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art. M.P.E.P. § 2144.05. Furthermore, it is unclear how the method of measuring the particle size distribution would have any effect on the resulting value or what difference would result from employing a different measurement technique.
Regarding claim 12, Song further discloses a solid electrolyte (¶ [0044]-[0046]).
Regarding claim 13, Song further discloses a solid state battery (¶ [0006]-[0007]).
Regarding claim 15, Song teaches a separator comprising the powder as set forth in claim 1, above.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Song in view of Yushin et al. (US 2014/0170503 A1), hereinafter “Yushin.”
Regarding claim 14, Song discloses the powder of claim 1 as set forth above, but is silent as to the electrode. However, Yushin teaches an electrode comprising:
a metal substrate, in this case a metal current collector foil (¶ [0008]); and
a composition directly adhered onto the metal substrate comprising:
a solid electrolyte material powder (¶ [0008]);
an electro-active compound, in this case the active material (¶ [0008]); and
a electro-conductive material, in this case the conductive carbon powder (¶ [0008]).
One having ordinary skill in the art would have understood that substituting the powder of claim 1 for the solid electrolyte particle powder would have yielded the predictable result of a functioning electrode. See M.P.E.P. § 2143 I. B. Therefore, it would have been obvious to have substituted Song’s electrolyte powder for that of Yushin in order to yield the predictable result of a functioning electrode.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT J CHMIELECKI whose telephone number is (571)272-7641. The examiner can normally be reached M-F 9 am to 5 pm.
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/SCOTT J. CHMIELECKI/Primary Examiner, Art Unit 1729
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