www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/329, 145
`
`05/25/2021
`
`NORIHITO FUJINOKI
`
`083710-3370
`
`2129
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`HAMMOND,KRISHNA R
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/13/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time 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
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/320, 145
`FUJINOKI, NORIHITO
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`KRISHNA R HAMMOND
`1728
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 03/07/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) 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)(2) 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.
`
`Disposition of Claims*
`1,3 and 5-15 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`Claim(s) 1,3 and 5-14 is/are allowed.
`Claim(s) 15 is/are rejected.
`[) Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto 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)() The drawing(s) filed on
`is/are: a)C] 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)LJ None ofthe:
`b)LJ Some**
`a)D) All
`1.) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240511
`
`

`

`Application/Control Number: 17/329,145
`Art Unit: 1728
`
`Page 2
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`underthefirst inventor to file provisions of the AIA.
`
`Allowable Subject Matter
`
`Claims 1, 3, 5— 14 are allowed.
`
`The following is a statement of reasons for the indication of allowable subject
`
`matter:
`
`Applicant’s narrowing amendment specifying the compositional formula Lis-3 6
`
`M1+3CkBrylz, indicates allowable subject matter. First, regarding Claim 1, by stating M is
`
`at least one element selected from the Markush grouping of Gd, Tb, and Sm, this
`
`effectively precludes, for example, substances paired with additional metal oxides such
`
`as titanium oxides as present within the previous modification. Further, the system of
`
`formulae is complex enough that the universe of compositions covered by this formula
`
`can be considered to be have been sufficiently covered by the additional search
`
`conducted pursuant to the final action. Putting these concerns together, the modification
`
`of lwasaki can no longer be said to read upon this composition, and further modification
`
`would not be obvious without impermissible hindsight. Finally, search for the
`
`embodiments presented in Table 1 and 2 did not present applicable art. Because the
`
`dependent claims 3, 5-14 depend upon an allowable Claim, these claims additionally
`
`stand allowed.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`

`

`Application/Control Number: 17/329,145
`Art Unit: 1728
`
`Page 3
`
`A patent fora claimed invention may notbe obtained, notwithstanding thatthe 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 invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall notbe
`negated by the mannerin whichthe invention was made.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contents of the priorart.
`
`2. Ascertaining the differences between theprior 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.
`
`Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki, et.
`
`al. (JP2017220339A) in view of Yamazaki, et. al. (EP 2043188 A1).
`
`Regarding Claim 15, lwasaki teaches a solid electrolyte (“ [013] solid electrolyte
`
`layer”) consisting essentially of: Li, M, and X, wherein M is Y and at least one element
`
`selected from the group consisting of Gd, Tb, and Sm, X is at least one element
`
`selected from the group consisting of Cl, Br, and | (([0013] “the solid electrolyte
`
`contained in the solid electrolyte layer is not particularly limited .
`
`.
`
`. [for example it may
`
`be] [(M1/2Li1/2) 1-zNz] TiOs (M is Sm, N is Sr, Ba, 0 <x [sic: this appears to be a misprint
`
`and should be z] < 0.5) ... Further, a lithium compound selected alone or in combination
`
`from the group consisting of LIF, LiCl, LiBr, Lil, LisPOQ4, LidSiO4 and ListGeS4 can be
`
`used as a mixture”. lwasaki at [0013]. Specifically, if z is set to 0 and LiCl is used in
`
`combination with the formula above, then Sm1/2) Li (1/2) TiO3 and LiCl, LiBr, and Lil
`
`would meet the claim terms when combined.
`
`/d. lwasaki teaches as a goal the
`
`

`

`Application/Control Number: 17/329,145
`Art Unit: 1728
`
`Page 4
`
`suppression of a high-resistance layer at the solid electrolyte interface and the
`
`improvementof ionic conductivity. lwasaki at [0001 —5].
`
`Under the broadest reasonable interpretation,
`
`two compounds meeting the
`
`requirements still meets “consisting essentially of,” but lwasaki does not teach these
`
`elements are found in a single compound, evenif they may bein the same solution /
`
`layer. lwasaki does not teach a molar ratio of a total amount of Li, M, and X relative to a
`
`total amountof all elements constituting the solid electrolyte is greater than or equal to
`
`90%, because the molar ratio presented above includes a substantial portion of TiOs.
`
`Yamazaki teachesa solid electrolyte which may include Lis InBrsCls as a rock
`
`salt type Li ion conductor and/or LiCl as a supporting electrolyte, found within the
`
`ceramic state. Yamazaki at Table 2, p. 6. Yamazaki teaches these as supporting
`
`electrolytes (lithium salt) for ensuring ion conductivity. Yamazaki at [0036]. Yamazaki
`
`does not directly disclose the amount of supporting electrolyte salt required.
`
`A solid electrolyte as in lwasaki comprising this additional supporting LisInBr3sCls
`
`electrolyte of Yamazaki, may be modified such that it contains a molarratio of a total
`
`amountof Li, M, and X relative to a total amount of all elements constituting the solid
`
`electrolyte is greater than or equal to 90%. This is because the teaching of
`
`improvements to ion conductivity renders the molar concentration of Li and the halides
`
`which comprise X (Cl, Br,
`
`I) a result-effective variable; as such, as both Yamazaki and
`
`Iwasaki teach or suggest these as supporting electrolyte salts within solid electrolytes to
`
`improve ion conductivity, it would be obvious for one of ordinary skill in the art
`
`to
`
`discover the optimum or workable ranges by routine experimentation. See MPEP
`
`2144.05(II). As such, Claim 15 is obvious over Iwasaki,
`
`in view of Yamazaki.
`
`

`

`Application/Control Number: 17/329,145
`Art Unit: 1728
`
`Page 5
`
`Response to Arguments
`
`Applicant’s arguments, see Applicant Arguments / Remarksfiled in an
`
`Amendment, filed 03/07/2024, with respect to Claims 1, 3, and 5-14 have beenfully
`
`considered and are persuasive. The 103 Rejection of Claims 1, 3, and 5-14 (note;
`
`Claim 15 is new, but is discussed above) has been withdrawn. Claim 15 is newly
`
`rejected as obvious over Iwasaki, in view of Yamazaki.
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of
`
`time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTHshortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`Inno event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date of this final action.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KRISHNA RAJAN HAMMOND whosetelephone
`
`numberis (571)272-9997. The examiner can normally be reached 9:00 - 6:30 PM M-F.
`
`Examinerinterviews are available via telephone,
`
`in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`

`

`Application/Control Number: 17/329,145
`Art Unit: 1728
`
`Page 6
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Matthew Martin can be reached on (571) 270-7871. 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 Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: httos://patentcenter.uspto.gov. Visit https:/Avww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling 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.
`
`/K.R.H./
`Examiner, Art Unit 1728
`
`/MATTHEW T MARTIN/
`Supervisory Patent Examiner, Art Unit 1728
`
`