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 .
Claim Rejections - 35 USC § 102/103
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 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bohnsack et al.; “Ternare Halogenide vom Typ A3MX6 VI. Ternare Chloride der Selten-Erd-Elemente mit Lithium, Li3MCl6 (M=Tb-Lu, Y, Sc): Synthese, Kristallstrukturen und Ionenbewegung.” Zeitschrift Fur Anorganische und Allgemeine Chemie, vol. 623, 1 July 1997, pages 1067-1073. (see Examiner supplied machine translation).
Regarding claim 1, Bohnsack discloses Li3MCl6 (M=Tb-Lu, Y, Sc) (abstract). Bohnsack explicitly teaches two types of Li3YCl6 wherein one type has the crystal structure P3m1 (thus a crystal structure in Li3ErCl6 belonging to space group P-3m1), and the other has the crystal structure of Pnma (thus a crystal structure in Li3YbCl6 belonging to space group Pnma) (Table 1, p. 1068). The lattice constants for the P3m1 example are a=1120.2 pm, c=603.2 pm (Table 1), and the lattice constants for the Pnma example are a=1293.0 pm, b=1121.2 pm, and c=604.0 pm (Table 1). Bohnsack teaches these materials have excellent lithium-ion conductivity (Introduction/Einleitung, pp. 1067-1068), and is therefore an electrolyte. Therefore, because Bohnsack teaches Li3YCl6 (of either P3m1 or Pnma crystal structure), this composition anticipates the claimed composition of Li6-3zYz-X6 when z=1 and X is Cl.
Further, Bohnsack teaches a Li3YCl6 with a P-3m1 structure (Table 1), which meets the limitations of the solid electrolyte includes at least one second crystal phase; and in the second crystal phase, the arrangement of halogen X is the same as that of Cl in Li3ErCl6 having a crystal structure belong to space group P-3m1.
With regards to the limitations of wherein “wherein ILEC(301) denoting an X-ray diffraction intensity of a plane of the second crystal phase corresponding to a (301) plane of the Li3ErCl6 crystal structure, and ILEC(101) denoting an X-ray diffraction intensity of a plane of the second crystal phase corresponding to a (110) plane of the Li3ErCl6 crystal structure satisfy: ILEC(110)/ILEC(301) < 0.3”, while Bohnsack teaches that X is Cl (abstract) and two different crystal structures for Li3YCl6 [P3m1 and Pnma] (Table 1), Bohnsack does not explicitly disclose these claimed properties.
However, consider the following: Bohnsack teaches examples of Li3YCl6 with either P3m1 or Pnma crystal structure (Table 1). Bohnsack discloses Li3YCl6 with the P3m1 crystal structures with lattice constants of a=1120.2 pm, [b=1120.2 pm because in P3m1 structures b=a,] c=603.2 pm, and discloses Li3YCl6 with the Pnma crystal structures with lattice constants of a=1293.0 pm, b=1121.2 pm, and c=604.0 pm (Table 1). While Bohnsack does not explicitly disclose the lattice angles for P3m1 and Pnma structures, P3m1 is a trigonal structure (alpha=90, beta=90, gamma=120) and Pnma is an orthorhombic structure (alpha=90, beta=90, gamma=120).
Thus, the Li3YCl6 with the P3m1 crystal structure with lattice constants of a=1120.2 pm [11.202 angstroms], c=603.2 pm [6.032 angstroms] are within the ranges disclosed in the specification (where a=10.97 to 11.5 angstroms, b=a, c=5.9 to 6.2 angstroms [0058]), and is made from a ratio of 3:1 of LiCl and MCl3 (experimental, vs. published paragraph [0240]).
Further, the Li3YCl6 with the Pnma crystal structure with lattice constants of a=1293.0 pm [12.930 angstroms], b=1121.2 pm [11.212 angstroms], and c=604.0 pm [6.04 angstroms] are within the ranges disclosed in the specification (where a=12.8 to 13.5 angstroms, b=11.1 to 12.0 angstroms, and c=5.90 to 6.10 angstroms [0131]), and is made from a ratio of 3:1 of LiCl and MCl3 (experimental, vs. published paragraph [0240]).
Below is a comparison between the two types of Li3YCl6 of Bohnsack and the fifth, second, and third crystal structure disclosed in the instant specification.
Instant Specification
Fifth crystal
Second Crystal
Third Crystal
Bohnsack Examples
Lattice
X=Cl
LEC
P-3m1
LYC
Pnma
P3m1
Pnma
constants
angstroms
angstroms
angstroms
a
not
10.97
11.5
12.8
13.5
11.202
12.93
b
disclosed
a
11.1
12
11.202
11.212
c
5.9
6.2
5.9
6.1
6.032
6.04
alpha
not
90
90
90
90
beta
disclosed
90
90
90
90
gamma
120
90
120
90
peaks
15.3
16.3
29.8
32
29.8
32
29.8
32
38.5
41.7
38.5
41.7
38.5
41.7
46.3
50.4
46.3
50.4
46.3
50.4
50.8
55.4
50.8
55.4
50.8
55.4
* Italics in Bohnsack indicate not explicitly disclosed, but because of structure must be true
As illustrated by the Table, the P3m1 example of Bohnsack is entirely within the disclosed lattice constant range of the second crystal structure while the Pnma example of Bohnsack is entirely within the disclosed latticed constant range of the third crystal structure. As further illustrated, the second crystal structure and the third crystal structure share the same strong peak range (29.8-32, 38.5-41.7, 46.3-50.4, 50.8-55.4 degrees), which is also shared with the fifth crystal range. Because the examples of Bohnsack are entirely within the disclosed lattice constant ranges for the specific P-3m1 and Pnma crystal structures, Bohnsack tends to show inherency of both materials sharing the ILEC(110)/ILEC(301) ratio of < 0.3.
To further that Bohnsack tends to show inherency, the examples of Bohnsack are compared to Examples A2 and C3 of the instant specification in the table below.
Instant Specification
Fifth crystal
A2
C3
Bohnsack Examples
X=Cl
P-3m1/LEC
Pnma/LYC
P3m1
Pnma
angstroms
a
11.202
12.93
11.202
12.93
not
b
11.202
11.202
11.202
11.212
disclosed
c
6.032
6.04
6.032
6.04
alpha
90
90
90
90
not
beta
90
90
90
90
disclosed
gamma
120
90
120
90
peaks
15.8
15.8
15.3
16.3
31.4
31.2
29.8
32
40.9
40.7
38.5
41.7
48.7
48.6
46.3
50.4
53.6
53.7
50.8
55.4
I-LEC(303)/110
26%
n/a
FWHM peak
31.4
31.2
FWHM/2theta
1.80%
1.75%
As illustrated by the table, the P-3m1 example of Bohnsack has identical lattice constants (a, b, and c, and alpha, beta, gamma) with example A2 of the instant invention. While Bohnsack does not provide structural analysis using the specific X-ray diffractometry, the example of Bohnsack inherently has a value when analyzed using this specific method. Because the P-3m1 example of Bohnsack has identical lattice constants with example A2 and is made from the same ratio of 3:1 of LiCl and MCl3 (experimental, vs. published paragraph [0240]) [thus substantially the same method as the instant], the P-3m1 example appears identical in structure to the example A2 of the instant invention. Thus the P-3m1 example of Bohnsack tends to show inherency of the same claimed peaks within the diffraction intensities of the second crystal phase, the same ILEC(101)/ILEC(303) (26%, or 0.26), the same peak within 29.8-32 degrees (31.4), and the same FWHM/2θc (1.80%, or 0.018) of Example A2 which meets the claim limitations.
Further, the Pnma example of Bohnsack has the same lattice constants (a, c, and alpha, beta, gamma) and the remaining lattice constant (b) is substantially close to example C3 (11.212 instead of 11.202). While Bohnsack does not provide structural analysis using the specific X-ray diffractometry by a θ-2θ method using Cu-Kα rays having wavelengths of 1.5405 angstrom and 1.5444 angstrom as the X-ray, the example of Bohnsack inherently has a value when analyzed using this specific method. Because the Pnma example of Bohnsack has numerous matching lattice constants and one lattice constant substantially the as those of example C3 and is made from the same ratio of 3:1 of LiCl and MCl3 (experimental, vs. published paragraph [0240]) [thus substantially the same method as the instant], the Pnma appears to have substantially the same structure to the example C3 of the instant invention. Thus the Pnma example of Bohnsack tends to show inherency of the same claimed peaks within the diffraction angle ranges of the fifth crystal structure, the same peak within 29.8-32 degrees (31.2), and the same FWHM/2θc (1.75%, or 0.0175) of Example C3 which meets the claim limitations.
In conclusion, Bohnsack teaches P-3m1 and Pnma with the same or substantially the same lattice constants and made by substantially the same method as examples A2 and C3 of the instant invention, both of which have the claimed fifth crystal structure with peaks in the claimed ranges and satisfy the relationship of the claimed relationship of FWHM5/2θc5 ≥ 0.015. Because the lattice constants are the same or substantially the same, and made by substantially the same method, Bohnsack tends to show inherency of the claimed ratio of ILEC(110)/ILEC(303) < 0.3 in the P-3m1 example for Li3YCl6 having a P-3m1 crystal structure.
However, if it is taken that Bohnsack does not have the material with the recited properties, the differences in the properties would be obvious to one having ordinary skill in the art absent unexpected results.
Regarding claims 2-3, Bohnsack teaches Li3YCl6 (abstract), which satisfies 0.75≤z≤1.5 and 1≤z≤1.25 because z=1.
With regards to the limitations in claims 4-5, (i.e., claim 4, wherein the solid electrolyte material includes a heterogeneous crystal phase having a crystal structure different from that of the second crystal phase; and the heterogeneous crystal phase lies between the second crystal phases; and claim 5, wherein the solid electrolyte material includes an amorphous phase; and the amorphous phase lies between the second crystal phases), while Bohnsack teaches that X is Cl (abstract) and the P-3m1 crystal structure (Table 1), Bohnsack does not explicitly disclose the claimed properties in claims 4-5.
However, as set forth above in the rejection of claim 1 and rationale, Bohnsack discloses Li3YCl6 with the P3m1 crystal structures with lattice constants of a=1120.2 pm, [b=1120.pm because P3m1 structures b=a,] c=603.2 pm (Table 1), thus having the claimed crystal structure and space group, the Li3YCl6 material with space group P3m1 would have substantially the same properties as claimed, including the properties in claims 4-5. For instance, the Li3YCl6 with the P3m1 crystal structures with lattice constants of a=1120.2 pm, c=603.2 pm are the same as the disclosed (where a=10.97 to 11.5 angstroms, b=a, c=5.9 to 6.2 angstroms [0058]), shares identical lattice constants of example A2, is made from a ratio of 3:1 of LiCl and MCl3 (experimental, vs. published paragraph [0240]). Thus, because the material of Bohnsack is made substantially the same way and has similar properties (lattice constants), the material of Bohnsack is substantially the same as claimed and thus tends to show inherency of the properties recited in claims 4-5.
However, if it is taken that Bohnsack does not have the material with the recited properties, the differences in the properties would be obvious to one having ordinary skill in the art absent unexpected results.
Claim(s) 6 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bohnsack et al.; “Ternare Halogenide vom Typ A3MX6 VI. Ternare Chloride der Selten-Erd-Elemente mit Lithium, Li3MCl6 (M=Tb-Lu, Y, Sc): Synthese, Kristallstrukturen und Ionenbewegung.” Zeitschrift Fur Anorganische und Allgemeine Chemie, vol. 623, 1 July 1997, pages 1067-1073. (see Examiner supplied machine translation), as applied to claim 1 above, and further in view of Takada et al. (US 6,428,935).
Regarding claim 6, while Bohnsack teaches two types of Li3YCl6 with lithium ion conductivity and mobility [P-3m1 or Pnma] (p. 1067-1068), Bohnsack does not explicitly disclose a battery comprising the material used as a solid electrolyte, a positive electrode, a negative electrode, and the electrolyte layer disposed between the positive electrode and the negative electrode, wherein at least one of the negative electrode and the electrolyte layer contains the solid electrolyte material.
Takada discloses a lithium secondary battery comprising a positive electrode, a negative electrode, and a solid electrolyte (abstract). At least one of the positive and negative electrode comprises a lithium-containing halide (abstract). The solid electrolyte is a lithium ion conductive inorganic solid electrolyte (C4/L40-32). The solid electrolyte 2 is disposed between the positive electrode 1 and the negative electrode 3 (see Fig 3).
Because Bohnsack teaches the Li3YCl6with lithium ion conductivity and mobility, thus suggesting using the material with lithium ions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the Li3YCl6 material as a solid electrolyte in a secondary battery (including a positive electrode and separator) such as Takada which has halides in the electrodes because the Li3YCL6 material has excellent lithium-ion conductivity and has halides contained therein, thus suggesting compatibility with other halides.
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 1-6 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8, 14-16 of U.S. Patent No. 11,239,492. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims disclose a solid electrolyte material of the composition Li6-3cYzX6 where 0<z<2, and where X represent Cl (claim 1). The conflicting claims further disclose the solid electrolyte having at least one second crystal phase, where the arrangement of halogen X is the same as that of Cl in Li3ErCl6 having a crystal structure belonging to space group P-3m1 (claim 4), with the same claimed ILEC(301), ILEC(110), and ILEC(301)/ILEC(110) ratio (claim 5). The conflicting claims further disclose limitations regarding z (claims 2-3), heterogenous crystal phases (claim 14), amorphous phases (claim 15), and a battery containing the solid electrolyte (claim 16).
Conclusion
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/JACOB BUCHANAN/ Examiner, Art Unit 1725
/JONATHAN CREPEAU/ Primary Examiner, Art Unit 1725