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 .
Priority
Acknowledgment is made of applicant’s claim for priority in view of provisional application 63/309,103 with an effective filing date of 02/11/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/08/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Amendment
The amendments filed on 08/08/2024 and 01/31/2025 have been entered. Claims 21-30 are canceled and Claims 1-20 are pending.
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 1-6 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 1 recites the limitation “an intermetallic layer disposed on a surface and having a thickness” in lines 2-3 of the claim, which implies grammatically that the intermetallic layer has the thickness, however the claim later recites “a network of open pores disposed throughout the thickness of the porous electrolyte structure” which implies the thickness is a feature of the porous electrolyte structure. Appropriate correction is required for clarification.
Claims 2-6 are ultimately dependent on claim 1 and are therefore also rejected under 112(b).
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 (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 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.
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 20220069358 A1), hereinafter "Shi". Shi et al. is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely solid electrolyte interfaces.
In regard to Claims 1-3 and 5, Shi et al. discloses a porous electrolyte structure for a solid state battery (3D porous anode) and an interconnected ceramic matrix with a network of open pores disposed throughout the thickness of the porous electrolyte structure which may include LLZO, disclosed on a short list of preferred materials (Shi, Abstract, [0003, 0013-0014, 0054-0055]). Shi et al. also discloses the porous electrolyte structure comprising an intermetallic layer (electronically conducting networks 1380) disposed on a surface and having a thickness wherein the intermetallic layer may include a lithium metal alloy, disclosed on a short list of preferred materials and wherein the intermetallic layer is disposed on about 30 percent to about 70 percent of the total extent of the electrolyte structure (Shi, [0081, 0087]), which anticipates the claimed range.
Further, Shi et al. discloses that the ceramic occupies 20-80% of the defined volume and thus the remaining void fraction is therefore 20-80% (Shi[0055]), which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. 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.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 20220069358 A1), hereinafter "Shi" as applied to claim 1 above in view of Liao et al. (Extensively Reducing Interfacial Resistance by the Ultrathin Pt Layer between the Garnet-Type Solid-State Electrolyte and Li−Metal Anode, ACS Appl. Mater. Interfaces 2021, 13, 56181−56190), hereinafter "Liao". Shi and Liao et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely solid electrolyte interfaces.
In regard to Claims 4 and 6, Shi et al. discloses the porous electrolyte structure of claim 1. While Shi et al. discloses that the intermetallic layer (electronically conducting networks 1380) may be a layer formed from a lithium metal alloy (Shi, [0087]), it does not limit the alloy composition and is silent as to the alloy comprising platinum. However, the skilled artisan of Shi would be aware of several lithium metal alloys on a garnet ceramic framework to include alloys with lithium and platinum as evidenced by Liao et al.
Liao et al. discloses a garnet ceramic with an intermetallic layer wherein the layer comprises a lithium metal alloy including a lithium platinum compound and wherein an intermetallic phase (LiPt and LiPt2) is formed on a surface of the intermetallic layer with an advantage of this material selection taught as be capable of improving lithium wetting, lowers interfacial resistance, and promotes uniform lithium ion flow at the garnet/lithium interface (Liao, pgs 56183-56185, Figure 3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the lithium metal alloy already disclosed in Shi with the lithium metal alloy materials comprising platinum taught in Liao as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Shi and as doing so would amount to nothing more than the use of known material to improve similar devices in the same way.
Claims 7-9, 12-13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 20220069358 A1), hereinafter "Shi". Shi et al. is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely solid electrolyte interfaces.
In regard to Claims 7-9, 12-13, and 17, Shi et al. discloses a solid state battery cell comprising a porous electrolyte structure for a solid state battery (3D porous anode) and an interconnected ceramic matrix with a network of open pores disposed throughout the thickness of the porous electrolyte structure which may include LLZO, disclosed on a short list of preferred materials (Shi, Abstract, [0003, 0013-0014, 0054-0055]). Shi et al. also discloses the porous electrolyte structure comprising an intermetallic layer (electronically conducting networks 1380) disposed on a surface and having a thickness wherein the intermetallic layer may include a lithium metal alloy and/or carbon (conductive particles) disclosed on a short list of preferred materials and wherein the intermetallic layer is disposed on about 30 percent to about 70 percent of the total extent of the electrolyte structure and wherein one or more of the open pores are at least partially filled with lithium ions (Shi, [0005, 0081, 0087, 0091]), which anticipates the claimed range.
Further, Shi et al. discloses that the ceramic occupies 20-80% of the defined volume and thus the remaining void fraction is therefore 20-80% (Shi,[0055]), which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. 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.
Claims 10-11 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 20220069358 A1), hereinafter "Shi" as applied to claim 7 above in view of Liao et al. (Extensively Reducing Interfacial Resistance by the Ultrathin Pt Layer between the Garnet-Type Solid-State Electrolyte and Li−Metal Anode, ACS Appl. Mater. Interfaces 2021, 13, 56181−56190), hereinafter "Liao". Shi and Liao et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely solid electrolyte interfaces.
In regard to Claim 10-11 and 14-16, Shi et al. discloses the solid state battery of claim 7. While Shi et al. discloses that the intermetallic layer (electronically conducting networks 1380) may be a layer formed from a lithium metal alloy (Shi, [0087]), it does not limit the alloy composition and is silent as to the alloy comprising platinum. However, the skilled artisan of Shi would be aware of several lithium metal alloys on a garnet ceramic framework to include alloys with lithium and platinum as evidenced by Liao et al.
Liao et al. discloses a garnet ceramic with an intermetallic layer wherein the layer comprises a lithium metal alloy including an alloying element comprising platinum and a lithium platinum compound and wherein an intermetallic phase is formed on a surface of the intermetallic layer wherein the intermetallic phase comprises lithium metal alloy (LiPt and LiPt2) and wherein the intermetallic phase further comprises non-lithium-alloying metals (AlPt2) with an advantage of this material selection taught as be capable of improving lithium wetting, lowers interfacial resistance, and promotes uniform lithium ion flow at the garnet/lithium interface (Liao, pgs 56183-56185, Figure 3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the lithium metal alloy already disclosed in Shi with the lithium metal alloy materials comprising platinum taught in Liao as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Shi and as doing so would amount to nothing more than the use of known material to improve similar devices in the same way.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 20220069358 A1), hereinafter "Shi". Shi et al. is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely solid electrolyte interfaces.
In regard to Claim 18, Shi et al. discloses a solid state battery cell comprising a cathode, an anode and a porous electrolyte structure (1340 + 1330) disposed between the cathode and the anode (3D porous anode) and an interconnected ceramic matrix with a network of open pores disposed throughout the thickness of the porous electrolyte structure which may include LLZO, disclosed on a short list of preferred materials (Shi, Abstract, [0003, 0013-0014, 0054-0055, 0072-0074, Figure 13A]). Shi et al. also discloses the porous electrolyte structure comprising an intermetallic layer (electronically conducting networks 1380) disposed on a surface and having a thickness wherein the intermetallic layer may include a lithium metal alloy and/or carbon (conductive particles) disclosed on a short list of preferred materials and wherein the intermetallic layer is disposed on about 30 percent to about 70 percent of the total extent of the electrolyte structure and wherein one or more of the open pores are at least partially filled with lithium ions (Shi, [0005, 0081, 0087, 0091]), which anticipates the claimed range.
Further, Shi et al. discloses that the ceramic occupies 20-80% of the defined volume and thus the remaining void fraction is therefore 20-80% (Shi, [0055]), which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. 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.
In regard to Claims 19-20, Shi et al. discloses the solid state battery cell of claim 18. Shi et al also discloses wherein the intermetallic layer (1380) is a coating and is disposed on a portion of the interconnected ceramic matrix such that the porous electrolyte structure comprises a coated section (1380 on 1340) and a non-coated section (1330), and wherein the coated section of the electrolyte structure is situated adjacent the anode and the non-coated section is situated adjacent the cathode wherein a cathode interface layer (1330) is disposed between the cathode and the porous electrolyte structure (Shi, [0072-0074, 0081-0083, 0087-0088]. Figure 13a).
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, 2, 7-8, 18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 4, 9, 12-14 of U.S. Patent No. US12230752B2 in view of Hu et al. (US 20190088986 A1).
Claim 1 of the reference patent recites “A solid state electrolyte for a solid state battery, the solid state electrolyte consisting of a porous electrolyte structure having a thickness and an interconnected ceramic matrix with a network of open pores disposed throughout the thickness of the porous electrolyte structure, wherein the ceramic matrix and the network of open pores form two interpenetrating continua throughout the thickness of the porous electrolyte structure, and wherein the porous electrolyte structure comprises a porosity of about 20% by volume to about 80% by volume.
Claims 1, 7 and 18 recite inter alia “A solid state battery cell comprising a porous electrolyte structure and an intermetallic layer disposed on the porous electrolyte structure, wherein the porous electrolyte structure has a thickness and an interconnected ceramic matrix with a network of open pores disposed throughout the thickness of the porous electrolyte structure and a porosity of about 10% by volume to about 80% by volume.”
The difference is the intermetallic coating on the porous ceramic. Hu et al. discloses a porous garnet with an intermetallic layer that infiltrates the pores and coats the porous garnet with a lithium-alloy (Hu, Examples 2-3, Figures 15b-d, [0128-0130, 0136-0137]) which has the advantage of increased lithium wetting and reduction of interfacial resistance (Hu, [0070]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the intermetallic coating of Hu on the porous ceramic framework of US12230752B2 as doing so would give the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than an obvious variation of the current applications claims 1, 7 and 18.
Claims 2 and 8 of the current application correspond to claim 4 of the reference patent.
Claim 20 of the current application corresponds to claims 12-14 of the reference patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hu et al. (US 20190088986 A1) discloses a porous garnet with an intermetallic layer that infiltrates the pores and coats the porous garnet with a lithium-alloy (Hu, [0128-0130, 0136-0137]).
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/K.M.O./Examiner, Art Unit 1725
/JONATHAN CREPEAU/Primary Examiner, Art Unit 1725
