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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
`
`17/214,943
`
`03/29/2021
`
`TATSUYA OSHIMA
`
`083710-3317
`
`1737
`
`Rimon PC - Pansonic Corporation
`423 WashingtonStreet
`Suite 600
`San Francisco, CA 94111
`
`MEDLEY, JOHN SAMUEL
`
`1752
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/13/2023
`
`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*
`1-10 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-10 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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) The drawing(s) filed on 03/29/2021 is/are: a)[¥) accepted or b)(. 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)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) 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
`02/17/2023;02/08/2022;03/29/2021.
`
`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 20231017
`
`Application No.
`Applicant(s)
`17/214,943
`OSHIMA etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JOHN S MEDLEY
`1752
`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 03/29/2021.
`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: 17/214,943
`Art Unit: 1752
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthefirst
`
`inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
`
`2.
`
`In the event the determination ofthe 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 groundofrejection if
`
`the prior art relied upon, and the rationale supporting the rejection, would be the same undereitherstatus.
`
`3.
`
`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 madein this Office action:
`
`A personshall beentitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, onsale,
`or otherwise available to the public before the effective filing date of the claimed invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for
`patent published or deemed published under section 122(b), in which the patent or application, as the
`case may be, names another inventor and waseffectively filed before the effective filing date of the
`claimed invention.
`
`4,
`
`Claim(s) 1, 7, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katoh
`
`et al. (US 20180316056 A1) (Katoh).
`
`Regardingclaims 1 and 7, Katoh discloses a battery (0011) comprising a positive electrode (]
`
`0012), a negative electrode (0016), and an electrolyte layer disposed between the positive electrode and
`
`the negative electrode (solid electrolyte (SE) layers 2—4, {| 0013-15; see FIG. 1), wherein the electrolyte
`
`layer includesa first layer (SE layer 4, { 0013), a second layer (SE layer 2, { 0015), and a mixture layer
`
`disposed betweenthefirst layer and the second layer (sulfide-based mixture layer 3, { 0014; see FIG. 1),
`
`the first layer includesa first solid electrolyte material (sulfide-based sodium-containing SE material, {
`
`0013), the second layer includes a second solid electrolyte material (sulfide-based lithitum-containing SE
`
`material, {| 0015), the second solid electrolyte material being different from the first solid electrolyte
`
`

`

`Application/Control Number: 17/214,943
`Art Unit: 1752
`
`Page 3
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`material (note the compositionally distinct sulfide-based lithium-containing and sulfide-based sodium-
`
`containing SE materials of {| 0029 and 0032, respectively), and the mixture layer includesthefirst solid
`
`electrolyte material and the secondsolid electrolyte material (0017).
`
`It is further submitted that the second SE material of Katoh, in comprising a sulfide-based
`
`lithium-containing material, also reads on claim 7, i.e., wherein the secondsolid electrolyte material is a
`
`sulfide solid electrolyte @ 0015, 0029).
`
`Regardingclaim 8, Katoh discloses the battery according to claim 1, wherein the second solid
`
`electrolyte material contains Li, M2, and X2, where M2isat least one selected from the group consisting
`
`of metalloid elements and metal elements other than Li, and X2is at least one selected from the group
`
`consisting of F, Cl, Br, and I (see {| 0029 to note that the sulfide-based lithium-containing material,i.e.,
`
`the recited second SE material, may comprise, e.g., LizS—SiS2—-LiBr, which reads on the second SE
`
`material’s containing Li, M2, i.c., a metalloid element Si, and X2, i.e., Br).
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`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 groundofrejection if
`
`the prior art relied upon, and the rationale supporting the rejection, would be the same undereitherstatus.
`
`6.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed inventionis 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 obviousbefore the effective
`filing date of the claimed invention to a person having ordinaryskill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the mannerin which the invention was made.
`
`7.
`
`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
`
`103 are summarizedas follows:
`
`1. Determining the scope and contents of the priorart.
`
`2. Ascertaining the differences between the prior art and the claimsat issue.
`
`

`

`Application/Control Number: 17/214,943
`Art Unit: 1752
`
`Page 4
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`3. Resolving the level of ordinary skill in the pertinentart.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`8.
`
`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 asof 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 ownedasofthe effective filing date of the later invention in order for the examinerto
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)() prior art against
`
`the later invention.
`
`9.
`
`Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katoh, as applied
`
`to claims 1, 7, and 8 above, as evidenced by Deng (First Principles Modeling of Lithium Solid
`
`Electrolytes).
`
`It is noted that references cited to show a universal fact, including that characteristics of prior art
`
`products were known, need not be available as prior art before applicant’s filing date, as set forth in
`
`MPEP 2124. It is further noted that a multi-reference rejection under 35 U.S.C. 102 is proper when the
`
`extra reference is cited to show that a characteristic not disclosed in the reference is inherent, as set forth
`
`in MPEP 2131.01 CID.
`
`Katoh is analogousprior art to the claimed invention because they pertain to the samefield of
`
`endeavor, namely solid electrolyte materials.
`
`Regarding claim 2, Katoh discloses the battery according to claim 1, wherein one of the first
`
`solid electrolyte material and the second solid electrolyte material has a Young's modulus lower than a
`
`Young's modulus of another ofthe first solid electrolyte material and the second solid electrolyte material
`
`(as seen in Katoh, {| 0030, the sulfide-based lithium-containing SE material, 1.c., the recited second SE
`
`material, may comprise, e.g., LisPS4, which, as evidenced by Deng, Table 4.3, p. 44, exhibits a Young’s
`
`Modulus of 29.5 GPa; as seen in Katoh, {| 0032, the sulfide-based sodium-containing SE material, i.e., the
`
`

`

`Application/Control Number: 17/214,943
`Art Unit: 1752
`
`Page 5
`
`recited first SE material, may comprise, e.g., Na3PS4, which, as evidenced by Deng, Table 4.3, p. 46,
`
`exhibits a Young’s Modulus of 33.6 GPa).
`
`Katoh further discloses a weight ratio of Na3PS4:LisPSy, i.e., the recited first SE material to the
`
`recited second SE material, of x:100—x in the SE mixture layer ( 0034) butfails to explicitly disclose that
`
`the one ofthe first solid electrolyte material and the second solid electrolyte material constitutes a volume
`
`fraction of greater than 50% in the mixture layer.
`
`It would have been obviousto the skilled artisan, before the effective filing date of the claimed
`
`invention, to select the portions of the disclosed x:100-x Na3PS4:Li3PS, ratio that are reasonably expected
`
`to significantly overlap the recited volume fraction range such that Li3PS,, i.e., the recited one ofthe first
`
`and second SE material, comprises a volumefraction > 50% in the mixture layer because Katoh discloses
`
`the sameutility across the range, and selection of overlapping portions of ranges has been held to be a
`
`prima facie case of obviousness (see MPEP 2144.05 (1)).
`
`Thus, the skilled artisan would find it obvious that Katoh as evidenced by Deng discloses that the
`
`one of the first solid electrolyte material and the second solid electrolyte material constitutes a volume
`
`fraction of greater than 50% in the mixture layer (Katoh: via including LisPS, at > 50 vol%, { 0034).
`
`10.
`
`Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katoh, as applied
`
`to claims 1, 7, and 8 above, in view of Endoetal. (JP H08222235 A) (Endo).
`
`Regardingclaim 3, Katoh discloses the battery according to claim 1, wherein thefirst layer is
`
`disposed between the positive electrode and the mixture layer (SE layer 4 of FIG. 1), and the second layer
`
`is disposed between the negative electrode and the mixture layer (SE layer 2 of FIG. 1).
`
`However, Katoh fails to explicitly disclose that a reduction potential of the second solid
`
`electrolyte material is less noble than a reduction potential of the first solid electrolyte material.
`
`Endo,in teaching a solid battery with a multi-layered SE (Abstract), teaches a first SE in contact
`
`with a positive electrode and a second SE in contact with a negative electrode (Abstract). Endo teaches
`
`that the reduction potential of the second SE is less noble than a reduction potential of the first SE (see ]
`
`0013 to note that the first SE exhibits a wider potential window in the noble direction, t.e., a more positive
`
`

`

`Application/Control Number: 17/214,943
`Art Unit: 1752
`
`Page 6
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`and, thus, more noble reduction potential, compared to the second SE; note also in { 0015 that the first SE
`
`exhibits excellent oxidation resistance, which necessitates a higher reduction potential, while the second
`
`SE exhibits excellent reduction resistance, which necessitates a lower reduction potential). Endo further
`
`teachesthat, by using a stack of solid electrolytes with different potential windows, the potential window
`
`of the whole stack can exhibit a wide range that cannot be obtained with a single material, which prevents
`
`the SE from decomposingat the electrode interface not only in the potential range of both electrodes but
`
`also in a wide potential range including overvoltage (0015).
`
`Katoh and Endoare analogousprior art to the claimed invention because they pertain to the same
`
`field of endeavor, namely SE materials.
`
`It would have been obviousto one of ordinary skill in the art, before the effective filing date of
`
`the claimed invention, to incorporate the first SE and second SE of Endoasthe first and second SE
`
`material of Katoh, respectively, with the reasonable expectation that doing so would allow the multi-
`
`layered SE to exhibit a wide potential window,preventing the SE from decomposingat the electrode
`
`interface not only in the potential range of both electrodes but also in a wide potential range including
`
`overvoltage, as taught by Endo.
`
`Thus, the skilled artisan would find it obvious that modified Katoh discloses that a reduction
`
`potential of the second solid electrolyte material is less noble than a reduction potential of the first solid
`
`electrolyte material (Endo: via the first SE having a wider potential window in the noble direction than
`
`the second SE; because Katoh discloses that the mixture layer forms by simple mixing of two materials (]]
`
`0056), the materials disclosed by Katoh are reasonably interpreted to not be integral in the mixture layer’s
`
`structure and, thus, be interchangeable such that the mixture layer comprising both materials, as required
`
`by parent claim 1, wouldstill form upon manufacturing the SE of modified Katoh).
`
`11.
`
`Claim(s) 4-6, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Katoh,as applied to claims 1, 7, and 8 above,in view of Asanoet al. (Solid Halide Electrolytes with
`
`High Lithium-Ion Conductivity for Application in 4 V Class Bulk-Type All-Solid-State Batteries)
`
`(Asano).
`
`

`

`Application/Control Number: 17/214,943
`Art Unit: 1752
`
`Page 7
`
`Regarding claims 4—6, Katoh discloses the battery according to claim 1.
`
`However, Katoh fails to disclose wherein the first solid electrolyte material contains Li, M1, and
`
`X1, where M1 is at least one selected from the group consisting of metalloid elements and metal elements
`
`other than Li, and X1 is at least one selected from the group consisting of F, Cl, Br, and I, wherein the
`
`first solid electrolyte material is represented by a composition formula of Ligi1M1g:X1,1, where a1, B1, and
`
`yl are each a value greater than zero, wherein M1 includes yttrium.
`
`Asano,in teaching yttrium halide SE materials (Abstract), teaches SEs such as LizYCle that
`
`provide high Li-ion conductivity, electrochemical and chemicalstability, and deformability, which sulfide
`
`or oxide SEs alone havenotyet realized (p. 1, 73).
`
`Asano and Katoh are analogousprior art to the claimed invention because they pertain to the
`
`samefield of endeavor, namely lithiated SE materials.
`
`It would have been obviousto one of ordinary skill in the art, before the effective filing date of
`
`the claimed invention, to incorporate LizYCle, as taught by Asano,as the first SE material of Katoh with
`
`the reasonable expectation that doing so would provide high Li-ion conductivity, electrochemical and
`
`chemical stability, and deformability, as taught by Asano.
`
`Thus, the skilled artisan would find it obvious that modified Katoh discloses wherein the first
`
`solid electrolyte material contains Li (Asano: Li in Liz3¥Cl¢), M1, and X1, where M1 is at least one
`
`selected from the group consisting of metalloid elements and metal elements other than Li (Asano: metal
`
`element Y in LizYCl¢), and X1 is at least one selected from the group consisting of F, Cl, Br, and I
`
`(Asano: Cl in LizYCle), wherein the first solid electrolyte material is represented by a composition
`
`formula of Ligi3M1giX1y1, where a1 = 3, B1 = 1, yl = 6, M1 = Y, and X1 = CL, and wherein M1 includes
`
`yttrium (Asano: Li3YCle6; because Katoh discloses that the mixture layer forms by simple mixing of two
`
`materials ({| 0056), the materials disclosed by Katoh are reasonably interpreted to not be integral in the
`
`mixture layer’s structure and, thus, be interchangeable such that the mixture layer comprising both
`
`materials, as required by parent claim 1, wouldstill form upon manufacturing the SE of modified Katoh).
`
`Regardingclaims 9 and 10, Katoh discloses the battery according to claim 8.
`
`

`

`Application/Control Number: 17/214,943
`Art Unit: 1752
`
`Page 8
`
`However, Katoh fails to disclose wherein the secondsolid electrolyte material is represented by a
`
`composition formula of Ligz2M2g2X2y2, where a2, 82, and y2 are each a value greater than zero, wherein
`
`M2includes yttrium.
`
`Asano,in teaching yttrium halide SE materials (Abstract), teaches SEs such as LiYBre that
`
`provide high Li-ion conductivity, electrochemical and chemicalstability, and deformability, which sulfide
`
`or oxide SEs alone havenotyet realized (p. 1, 73).
`
`Asano and Katoh are analogousprior art to the claimed invention because they pertain to the
`
`samefield of endeavor, namely lithiated SE materials.
`
`It would have been obviousto one of ordinary skill in the art, before the effective filing date of
`
`the claimed invention, to incorporate LizYBre, as taught by Asano, as the second SE material of Katoh
`
`with the reasonable expectation that doing so would provide high Li-ion conductivity, electrochemical
`
`and chemicalstability, and deformability, as taught by Asano.
`
`Thus, the skilled artisan would find it obvious that modified Katoh discloses wherein the second
`
`solid electrolyte material is represented by a composition formula of Ligz2M2g2X2,2, where a2 = 3, 82 = 1,
`
`y2 = 6, M2 = Y, X2 = Br, and wherein M2 includes yttrium (Asano: LiYBre; because Katoh discloses that
`
`the mixture layer forms by simple mixing of two materials (| 0056), the materials disclosed by Katoh are
`
`reasonably interpreted to not be integral in the mixture layer’s structure and, thus, be interchangeable such
`
`that the mixture layer comprising both materials, as required by parent claim 1, would still form upon
`
`manufacturing the SE of modified Katoh).
`
`Conclusion
`
`12.
`
`The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
`
`Lee et al. (US 9093707 B2) disclose a multi-layered SE, wherein one layer may comprise LiAlF,.
`
`Hudsonet al. (US 20120110835 A1) disclose a two-layered polymerelectrolyte, wherein the two
`
`electrolytes may be mixed togetherat an interface.
`
`

`

`Application/Control Number: 17/214,943
`Art Unit: 1752
`
`Page 9
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`13.
`
`Anyinquiry concerning this communication or earlier communications from the examiner should
`
`be directed to JOHN S MEDLEY whosetelephone numberis (703)756-4600. The examiner can normally
`
`be reached 7:30-5:30 EST M-F.
`
`Examinerinterviewsare 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 AutomatedInterview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Pamela Weiss can be reached on 571-270-7057. The fax phone number for the organization wherethis
`
`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
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`Patent Center. Unpublished application information in Patent Center is available to registered users. To
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`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`or 571-272-1000.
`
`/V.S.M./
`Examiner, Art Unit 1752
`
`/JAMES M ERWIN/
`Primary Examiner, Art Unit 1725
`10/27/2023
`/PAMELA H WEISS/
`Supervisory Primary Examiner, Art Unit 1752
`
`