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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/184,735
`
`02/25/2021
`
`EIICHI KOGA
`
`083710-3296
`
`6185
`
`Rimon PC
`423 WashingtonStreet
`Suite 600
`San Francisco, CA 94111
`
`WILLS, MONIQUE M
`
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/03/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`USPTOmail@rimonlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-21 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1-8 and 20-21 is/are rejected.
`Claim(s) 9-19 is/are objectedto.
`1) Claim(s
`are subject to restriction and/or election requirement
`)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11)M The drawing(s)filed on 2/25/21 is/are: a) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[¥] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.4] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231028
`
`Application No.
`Applicant(s)
`47/184,735
`KOGA, EIICHI
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`MONIQUE M WILLS
`1722
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 2/25/21.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/184,735
`Art Unit: 1722
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined
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`under the first inventor to file provisions of the AIA.
`
`Foreign Priority Documents
`
`The Japanese foreign priority document(s) 2018-215486, submitted under 35
`
`U.S.C. § 119 (a)-(d), was/were been received on March 23,2021 and placed of record in
`
`the file.
`
`Information Disclosure Statement
`
`The information disclosure statements filed February 25,2021 and January
`
`18,2022 has/have been received and complies with the provisions of 37 CFR 1.97, 1.98
`
`and MPEP § 609. Accordingly, the information disclosure statement(s) is/are being
`
`considered by the examiner, and an initialed copied is attached herewith.
`
`Allowable Subject Matter
`
`Claims 9-19 would be allowable if rewritten to overcome the rejection(s) under
`
`35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 2nd paragraph, set forth in this Office
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`action and to includeall of the limitations of the base claim and any intervening claims.
`
`

`

`Application/Control Number: 17/184,735
`Art Unit: 1722
`
`Page 3
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`Claim 9 would be allowable overthe prior art of record, because the prior art is
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`silent to the solid electrolyte according to Claim 1, further comprising: a particle
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`boundary layer consisted of a third solid electrolyte material, wherein the particle
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`boundary layer has a thickness smaller than a particle size of the first particles and a
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`particle size of the second particles, and the third solid electrolyte material has a
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`Young's modulus lower than or equal to the Young's modulus of the second solid
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`electrolyte material.
`
`The prior art, such as Chen et al. U.S. Pat. 10,116,001, teaches a solid
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`electrolyte comprising: first particles consisted of a first solid electrolyte material
`
`(LisPS5F, LisPSs5Cl, LisPSsBr, LisPSsl, and combinations thereof; col. 15, lines 14-16)
`
`and second particles consisted of a secondsolid electrolyte material (LizS:P2Ss; col. 9,
`
`lines 1-20), The limitation with respectto the first solid electrolyte material having a
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`higher ionic conductivity than the secondsolid electrolyte material, and the second solid
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`electrolyte material having a lower Young's modulus than the first solid electrolyte
`
`material are considered limitations of the prior art set forth. However, the reference is
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`silent to a particle boundary layer consisted of a third solid electrolyte material, wherein
`
`the particle boundary layer has a thickness smaller than a particle size of the first
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`particles and a particle size of the second particles, and the third solid electrolyte
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`material has a Young's modulus lower than or equal to the Young's modulus of the
`
`second solid electrolyte material.
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`Claims 10-19 would be allowable based on dependency to claim 9.
`
`

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`Application/Control Number: 17/184,735
`Art Unit: 1722
`
`Page 4
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`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
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`obviousness rejections set forth in this Office action:
`
`Apatent fora claimed invention may notbe 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 artare such that the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed inventionto a person having
`ordinaryskill in the art to which the claimed invention pertains. Patentability shall notbe
`negated by the manner in whichthe invention was made.
`
`Claim(s) 1-8 & 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Chenet al. U.S. Pat. 10,116,001.
`
`With respect to claim 1, Chen teaches a solid electrolyte comprising: first
`
`particles consisted of a first solid electrolyte material (LisPSsF, LisPSsCl, LisPSsBr,
`
`LisPSsl, and combinations thereof; col. 15, lines 14-16) and second particles consisted
`
`of asecondsolid electrolyte material (LizS:P2Ss; col. 9, lines 1-20), The limitation with
`
`respectto the first solid electrolyte material having a higher ionic conductivity than the
`
`second solid electrolyte material, and the second solid electrolyte material having a
`
`lower Young's modulus than thefirst solid electrolyte material are considered limitations
`
`of the prior art set forth. In accordance with MPEP 2112.01, “[p]roducts of identical
`
`chemical composition cannot have mutually exclusive properties.” A chemical
`
`composition and its properties are inseparable. Therefore, if the prior art teaches the
`
`identical chemical structure, the properties applicant discloses and/or claims are
`
`necessarily present.
`
`In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.
`
`1990).
`
`In the instant case, the first solid electrolyte material having a higher ionic
`
`conductivity than the second solid electrolyte material, and the second solid electrolyte
`
`material having a lower Young's modulus than thefirst solid electrolyte material; are
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`

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`Application/Control Number: 17/184,735
`Art Unit: 1722
`
`Page 5
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`necessarily present. With respect to claim 2, the first solid electrolyte material contains
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`at least one selected from the group consisting of a sulfide, an oxide, and a halide
`
`(LisPS5F, LisPSs5Cl, LisPSsBr, LisPSsl, and combinations thereof; col. 15, lines 14-16).
`
`With respect to claim 3, the first solid electrolyte material contains an argyrodite sulfide
`
`(LisPS5F, LisPSs5Cl, LisPSsBr, LisPSsl, and combinations thereof; col. 15, lines 14-16).
`
`With respect to claim 4, the argyrodite sulfide is represented by composition formula
`
`LicPSgCly, where 5.5 <a <6.5; 4.5< 8 <5.5, and 0.5 <y<1.5 (LisPSsCl, a= 6; B = 5,
`
`and y = 1; col. 15, lines 14-16). With respect to claim 5, the secondsolid electrolyte
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`material contains at least one selected from the group consisting of a sulfide, an oxide,
`
`and a halide (LizS:P2Ss; col. 9, lines 1-20). With respect to claims 6-7, the secondsolid
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`electrolyte material is selected froma sulfide, and the sulfide contains lithium sulfide
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`and phosphorus sulfide (LizS:P2Ss5; p=2, q=2; col. 9, lines 1-20). With respect to claim
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`8, the second solid electrolyte material containing a glass sulfide containingatriclinic
`
`crystal as a main component (LizS:P2S5; p=2, q=2; col. 9, lines 1-20).
`
`In accordance
`
`with MPEP 2112.01, “[p]roducts of identical chemical composition cannot have mutually
`
`exclusive properties.” A chemical composition and its properties are inseparable.
`
`Therefore, if the prior art teaches the identical chemical structure, the properties
`
`applicant discloses and/or claims are necessarily present.
`
`In re Spada, 911 F.2d 705,
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`709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
`
`In the instant case, the second solid
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`electrolyte material contains a glass sulfide containingatriclinic crystal as a main
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`component(LizS:P2S5; p=2, q=2; col. 9, lines 1-20). With respect to claim 20, a battery
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`comprising: a positive electrode (1105; Fig. 11); a negative electrode (1101; Fig. 11);
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`and an electrolyte layer between the positive electrode and the negative electrode
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`

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`Application/Control Number: 17/184,735
`Art Unit: 1722
`
`Page 6
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`(1103; Fig. 11). With respect to claim 21, the electrolyte layer contains the solid
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`electrolyte (first particles consisted of a first solid electrolyte material (LisPSs5F, LisPSsCl,
`
`LisPSsBr, LisPSsl, and combinations thereof; col. 15, lines 14-16) and second particles
`
`consisted of a second solid electrolyte material (LizS:P2Ss; col. 9, lines 1-20)).
`
`Although Chen doesteachafirst electrolyte and secondelectrolyte, the
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`reference does not explicitly teach a combination of both electrolytes together (claim 1).
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`However, it would have been obvious to one of ordinary skill in the art before the
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`effectivefiling date of the claimed invention to employthe first electrolyte and second
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`electrolyte in combination of both electrolytes together,
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`in the solid electrolyte of Chen in
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`order to increase ion conductivity of said solid electrolyte. Also, selection of any order of
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`performing process steps is orima facie abvious in the absence of new or unexpected
`
`results. Selection of any order of mixing inaredienis is prima facie obvious. See in
`
`re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930}.
`
`

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`Application/Control Number: 17/184,735
`Art Unit: 1722
`
`Page 7
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`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the
`examiner should be directed to MONIQUE M WILLS whose telephone numberis
`(571)272-1309. The Examiner can normally be reached on Monday-Friday from
`8:30am to 5:00 pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the Examiner's
`supervisor, Cynthia Kelly, may be reached at 571-272-1526. The fax phone numberfor
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`Patent Application Information Retrieval (PAIR) system. Status information for
`published applications may be obtained from either Private PAIR or Public PAIR.
`Status information for unpublished applications is available through Private PAIR only.
`For more information about the PAIR system, see http://portal.uspto.gov/external/portal.
`Should you have questions on access to the Private PAIR system, contact the
`Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`/Monique M Wills/
`Examiner, Art Unit 1722
`
`/CYNTHIA H KELLY/
`Supervisory Patent Examiner, Art Unit 1722
`
`