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 .
Preliminary Amendments
Claims 1, 3 & 21 are amended. Claims 2, 6-17, 19-20 & 22-23 are canceled. Claim 24-26 is newly added. Claims 1, 3-5, 18, 21 & 24-26 are currently pending.
Claim Rejections - 35 USC § 112
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 26 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 26 provides several possible compositions (last 6 compositions listed in the claim) for the claimed solid-state ion conductor which do not further limit the composition given by formula 1 in claim 1 since y1 is required to be between 0.03 and 0.1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements
Claim Rejections - 35 USC § 103
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.
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, 3-5, 18, 21 & 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Mo (US 2020/0251771 A1).
Regarding claims 1, 3, 18, 21 & 24-25, Mo teaches an electrochemical cell comprising: a positive electrode comprising a positive active material layer comprising a lithium transition metal oxide ([0082] & [0085]); a negative electrode ([0081] & [0086]); and an electrolyte layer including a solid-state ion conductor between the positive electrode and the negative electrode ([0080]), wherein the solid-state ion conductor comprises LixB(P1-yAyO4)2 where x is a value such that charge neutrality of the formula is obtained; 0 < y < 1; and A can be at least one element selected from groups 2-10 & 14-16 but different from P ([0017], [0025]-[0026] & [0030]). In one exemplary embodiment in which P is aliovalently substituted with M6, M6 is only one element and consists of Ge (Table 1). In particular, Mo discloses a composition NaLi2.25B(P0.875Ge0.125O4)2 obtained from a base composition of Li3B(PO4)2 in which Li is partially substituted with Na and P is partially substituted with Ge (Table 1; [0073]). While Mo does not explicitly teach A being Ti, Zr, Hf, Si, Sn or a combination thereof, it is noted that each of the elements recited belong to group 4 and group 14 elements of the periodic table which is envisaged by Mo as noted above. Moreover, Mo teaches that the substitution of P with element A results in excess Li vacancies in the crystal structure which can improve the ionic conductivity ([0049], [0063] & [0073]). Accordingly, it would have been obvious to one of ordinary skill in the art to optimize the selection of A in Mo in view of optimizing the ionic conductivity by providing excess lithium vacancies in Mo’s solid electrolyte. Furthermore, since the claimed range of 0.03 to 0.1 for the value of y overlaps with the range of 0 to 1 disclosed in Mo, the claimed range is rendered obvious over Mo barring any evidence of criticality resulting from the use of the claimed range. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”. See MPEP 2144.05 I.
Regarding claims 4-5, Mo teaches a solid-state ion conductor having the same composition as that recited in claim 3 but is silent as to a structure of the solid-state ion conductor comprising corner sharing BO4 and PO4 tetrahedra (claim 4) and wherein, in the structure, A1 resides on a P site and a lithium coordination environment is non-symmetric (claim 5). However, Mo’s solid-state ion conductor composition is the same as that presently claimed and is further produced by heat-treating stoichiometric amounts of a precursor mixture ([0077]) similarly to the presently claimed invention. Accordingly, Mo’s structure would be expected to comprise corner sharing BO4 and PO4 tetrahedra as well as A1 residing on a P site and a lithium coordination environment being non-symmetric. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”. See MPEP 2112.01 I.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANAEL T ZEMUI whose telephone number is (571)272-4894. The examiner can normally be reached M-F 8am-5pm (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BARBARA GILLIAM can be reached on (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NATHANAEL T ZEMUI/Examiner, Art Unit 1727
Prosecution Insights