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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
`
`16/911,725
`
`06/25/2020
`
`Tetsuya Asano
`
`083710-3050
`
`1021
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`HANSEN,JARED A
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/06/2023
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J 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)[VM. Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.{¥] Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) 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)
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`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)
`
`(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 20230329
`
`Application No.
`Applicant(s)
`16/911,725
`Asano et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JARED HANSEN
`1728
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`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.
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`- 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 17 January 2023.
`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.
`
`Disposition of Claims*
`) 1-6 and8is/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) 1-6and8is/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/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventorto file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), wasfiled in this application after final rejection. Since this application is
`
`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
`
`has been timely paid, the finality of the previous Office action has been withdrawn pursuantto
`
`37 CFR 1.114. Applicant's submission filed on 17 January 2023 has been entered.
`
`Status of the Claims
`
`Claims 1-6 and 8 are pending and examined below. Claim 7 has been cancelled.
`
`Claim Rejections - 35 USC § 103
`
`Thetext of those sections of Title 35, U.S. Code not included in this action can be found
`
`in a prior Office action.
`
`Claim(s) 1-6 and8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tomita,
`
`Yasumasa,et al. "Substitution effect in the ion conductor Lis3InBre, studied by nuclear magnetic
`
`resonance." Zeitschrift fiir Naturforschung A 57.6-7 (2002): 447-450 (hereafter referred to as
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 3
`
`Tomita-2002; cited in the office action mailed 13 June 2022) in view of Steiner, et al. "Novel
`
`Fast Ion Conductors of the Type MI3MIIICI6 (MI= Li, Na, Ag; MIII= In, Y)." Zeitschrift fiir
`
`anorganische und allgemeine Chemie 613.7 (1992): 26-30 (hereafter referred to as Steiner; cited
`
`in the office action mailed 13 June 2022).
`
`Regarding claim 1, Tomita-2002 teachesa solid lithium ion conductor material (Tomia-
`
`2002, pp. 447-450, Figs. 1-6), which satisfies the limitation of a solid electrolyte material,
`
`represented by compositional formula Li3-2xMg.JnBre (p.447, which falls within the scope
`
`of the claimedformula with the proviso that 6 = a), where:
`
`0<6<04,
`
`0<a<0.4,
`
`0 < 3-36 +a, which, from above, = 3 — 26 ~ 2.2 to 3,
`
`0 < 1+6-a, which, from above = 1,
`
`x=6, which falls within the claimed range of 0<x<6,
`
`y=0, whichfalls within the claimed range of 0<y<6,
`
`and x+y=6, whichfalls within the claimed range of xty<6,
`
`satisfying the claim limitation wherein M isat least Mg.
`
`Tomita-2002 further teaches wherein knownsolid lithium ion conductor materials
`
`include Li3MXe6 (M = lanthanoids including Y; X = Cl, Br), where indium (In)a trivalent cation,
`
`and yttrium (Y) a trivalent cation are both used in solid ion conducting materials, but Tomita-
`
`2002 does not explicitly teach wherein the solid electrolyte material is represented by
`
`compositional formula Li3-2x%MgxYBre.
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 4
`
`Steiner howeverteaches ion conductive ternary metal halide materials with compositional
`
`formulae LizsInCle and Li3YCle, which exhibit fast ionic conductivity (Steiner, abstract, Abb. 6),
`
`demonstrating Y and In are known equivalentart effective materials for use in ion conducting
`
`ternary metal halide materials.
`
`Therefore it would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the claimed invention to modify the ion conducting material of Tomita-
`
`2002 through simple substitution of one known element, (In) a trivalent cation, for another
`
`knownelement, yttrium (Y) a trivalent cation, wherein the solid electrolyte materialis
`
`represented by compositional formula Li34aY1-aMaClox«-yBrsly (with the proviso that 6 = a),
`
`wherein M = Mg,
`
`0<6<04,
`
`0<a<0.4,
`
`0 < 3-36 +a, which, from above, = 3 — 26 ~ 2.2 to 3,
`
`0 < 1+6-a, which, from above = 1,
`
`x=6, which falls within the claimed range of 0<x<6,
`
`y=0, whichfalls within the claimed range of 0<y<6,
`
`and x+y=6, whichfalls within the claimed range of xty<6,
`
`satisfying the claim limitation wherein M is at least Mg.
`
`Regarding claims 2-5, Tomita-2002 further discloses wherein 6 = a = 0 — 0.3 (p.448),
`
`falling within and significantly overlapping with the claimed ranges of 0.01 <a<0.5,0.01 <a<
`
`0.3 and -0.25 <6 <0.4,0<6<04.
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 5
`
`Regarding claim 6, modified Tomita-2002 teachesthe use of solid lithium ion
`
`conductive inorganic solid electrolytes, particularly those that exhibit good ionic conductivity (p.
`
`449), such as that set forth in claim 1 above, improving the ionic conductivity (p. 449-450),
`
`which is a known important property of solid electrolyte batteries which improves operation of
`
`the battery.
`
`Oneof ordinary skill in the art before the effective filing date of the claimed invention
`
`understands a battery consists of an anode (negative electrode), a cathode (positive electrode)
`
`and a solid electrolyte layer, disposed between the cathode and the anode, containing the solid
`
`electrolyte material and would find it obvious to includea solid electrolyte material according to
`
`modified Tomita-2002 as discussed with regards to claim 1 in a battery comprising a positive
`
`electrode, a negative electrode, and an electrolyte layer provided between the positive electrode
`
`and the negative electrode, wherein at least one selected from the group consisting of the positive
`
`electrode, the negative electrode, and the electrolyte layer contains the solid electrolyte material,
`
`to improve the performanceofthe battery.
`
`Regarding claim 8, modified Tomita-2002 teachesall of the limitations of claim 1 as set
`
`forth above and wherein the solid lithium ion conducting material, Li3-2xMg.JnBre, conductivity
`
`at room temperature is about 1 x 10% S/cm or more and about 1 x 10° S/cm at room temperature
`
`(p.449), falling within the claimed range of 1 x 10° S/cm or more and 2.2 x 10° S/cm orlessat
`
`room temperature.
`
`Based on the structural similarity and chemical similarity of Lizs-2xMgxInBre and
`
`Li3-2xMgxYBre, one of ordinary skill in the art would expect similar ion conductivity, inherently
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 6
`
`meeting the limitation of having an ion conductivity falling within the claimed range of 1 x 10°
`
`S/cm or more and 2.2 x 10° S/cm orless at room temperature.
`
`and/or alternatively, Tomita-2002 teaches the amount of doping controls the ion
`
`conductivity of the solid ion conducting material (p. 449). Tomita-2002 therefore identifies the
`
`amount of doping as a knownresult effective variable because it determines the ion conductivity.
`
`Therefore it would be obvious to one of ordinary skill in the art before the effectivefiling
`
`date of the claimed invention through routine experimentation to optimize the ion conductivity at
`
`room temperature of the ion conducting material of modified Tomita-2002 wherein an ion
`
`conductivity of the solid ion conducting material is of 1 x 10° S/cm or more and 2.2 x 10° S/em
`
`or less at room temperature.
`
`The examinernotes that 1 x 10° S/cm or more and 2.2 x 10° S/cm orless is an extremely
`
`broad range. The Courts have held that “"[W]here the general conditions of a claim are disclosed
`
`in the priorart, it is not inventive to discover the optimum or workable ranges by routine
`
`experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”.
`
`Claim(s) 1-6 and8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steiner,et al.
`
`"Novel Fast Ion Conductors of the Type MI3MHICI6 (MI= Li, Na, Ag; MIII= In, Y)." Zeitschrift
`
`fiir anorganische und allgemeine Chemie 613.7 (1992): 26-30 (hereafter referred to as Steiner;
`
`cited in the office action mailed 13 June 2022) in view of Tomita, Yasumasa,et al. "Substitution
`
`effect in the ion conductor Li3InBre, studied by nuclear magnetic resonance.” Zeitschrift fiir
`
`Naturforschung A 57.6-7 (2002): 447-450 (hereafter referred to as Tomita-2002; cited in the
`
`office action mailed 13 June 2022).
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 7
`
`Regarding claim 1, Steiner teaches a ternary metal halide material represented by
`
`compositional formula Li3+xYCle,
`
`Steiner does not teach M as claimed. Steiner however teaches ion conductive ternary
`
`metal halide materials with compositional formulae Li3InCle and LizYCle, which exhibitfast
`
`ionic conductivity (Steiner, abstract, Abb. 6), demonstrating Y and In are known equivalentart
`
`effective materials for use in ion conducting ternary metal halide materials.
`
`Tomita teaches a ternary metal halide material represented by compositional formula
`
`Li3e+xInixMxBre,
`
`wherein M= Zn (Tomita, pp.973-975, Fig. 1-3) for use as a solid electrolyte material
`
`(Tomita, p. 973, ion conductive inorganic solid electrolyte):
`
`d=0,
`
`a=0.15, which falls within the claimed range of O<a<3,
`
`0<3+a=2.85,
`
`O<1-a=0.85,
`
`x=6, which falls within the claimed range of 0<x<6,
`
`0=y, which falls within the claimed range of 0<y<6,
`
`And x+y=6, whichfalls within the claimed range of x+y<6,
`
`Tomita teaches that Mg can be doped on the Li site to increase conductivity in Liz3InBre.
`
`Tomita additionally discloses it is knownin the art wherein the halide can be either Cl or Br in
`
`the formula Li3M'X6, where M’is lanthanides, and Li3InBrexClx (Tomita, p. 973), suggesting this
`
`would behave analogously in the LizM'Cle, where M'is a lanthanide because of Steiner’s and
`
`Tomita’s teaching of equivalency of Li3M'Cle where M'is lanthanides, and LisInCle.
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 8
`
`Therefore it would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the claimed invention to modify the ion conducting material of Tomita-
`
`2002 through simple substitution of one known element, (In) a trivalent cation, for another
`
`knownelement, yttrium (Y) a trivalent cation, wherein the solid electrolyte materialis
`
`represented by compositional formula Li34aY1-aMaClox«-yBrsly (with the proviso that 6 = a),
`
`wherein M = Mg,
`
`0<6<04,
`
`0<a<0.4,
`
`0 < 3-36 +a, which, from above, = 3 — 26 ~ 2.2 to 3,
`
`0 < 1+6-a, which, from above = 1,
`
`x=6, which falls within the claimed range of 0<x<6,
`
`y=0, which falls within the claimed range of 0<y<6,
`
`and x+y=6, whichfalls within the claimed range of xty<6,
`
`satisfying the claim limitation wherein M is at least Mg.
`
`Regarding claims 2-3, modified Steiner disclosesall of the limitations of claim 1 as set
`
`forth above and suggests routine optimization of a to optimize the conductivity, which would
`
`yield a falling within the claimed ranges wherein 0.01 <a <0.5 and 0.01 <a < 0.3 is satisfied.
`
`Regarding claims 4-5, modified Steiner discloses all of the limitations of claim 1 as set
`
`forth above and teaches wherein 6 = 0,falling within the claimed ranges wherein -0.25 <6 <0.4
`
`and 0 <6 <0.4 is satisfied.
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 9
`
`Regarding claim 6, modified Steiner teaches the use of lithium ion conductive inorganic
`
`solid electrolytes, particularly those that exhibit fast ionic conductivity (Steiner, abstract), such
`
`as that set forth in claim 1 above, as a way to improve lithium ion secondary batteries (Tomita, p.
`
`973). One of ordinary skill in the art before the effective filing date of the claimed invention
`
`understands a battery consists of an anode (negative electrode), a cathode (positive electrode)
`
`and a solid electrolyte layer, disposed between the cathode and the anode, containing the solid
`
`electrolyte material and would find it obvious to includea solid electrolyte material according to
`
`modified Steiner as discussed with regards to claim 1 in a battery comprising a positive
`
`electrode, a negative electrode, and an electrolyte layer provided between the positive electrode
`
`and the negative electrode, wherein at least one selected from the group consisting of the positive
`
`electrode, the negative electrode, and the electrolyte layer contains the solid electrolyte material,
`
`to improve the performanceofthe battery.
`
`Claim 8 is rejected analogously to above.
`
`Claim(s) 1-6 and8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tomita,etal.
`
`"Synthesis of Lis4xInixMxBre (M= Zn, Co, Fe) by Nano-grinding and their Ionic Conductivity."
`
`Transactions of the Materials Research Society of Japan 33.4 (2008): 973-976 (hereafter referred
`
`to as Tomita; cited in the office action mailed 13 June 2022) in view of Steiner, et al. "Novel Fast
`
`Ion Conductors of the Type M3M"Cle (M/= Li, Na, Ag; M"& In, Y)." Zeitschrift fiir
`
`anorganische und allgemeine Chemie 613.7 (1992): 26-30 (hereafter referred to as Steiner; cited
`
`in the office action mailed 13 June 2022).
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 10
`
`Regarding claim 1, Tomita teaches a ternary metal halide material represented by
`
`compositional formula Li34xIni-xMxBre (claimed a = priorart x),
`
`wherein M= Zn (Tomita, pp.973-975, Fig. 1-3) for use as a solid electrolyte material
`
`(Tomita, p. 973, ion conductive inorganic solid electrolyte):
`
`6=0, which falls within the claimed range of -1< 6<2,
`
`a=0.15, which falls within the claimed range of O<a<3,
`
`0<3+a=2.85,
`
`O<1-a=0.85,
`
`x=6, which falls within the claimed range of 0<x<6,
`
`0=y, which falls within the claimed range of 0<y<6,
`
`And xt+y=6, whichfalls within the claimed range of x+y<6,
`
`Tomita additionally discloses it is knownin the art wherein the halide can be either Cl or
`
`Br in the formula Li3M'X6, where M'is lanthanides, and Li3InBr6-xClx (Tomita, p. 973),
`
`suggesting this substitution with M would behave analogously in the Lis3M'Cle, where M'is a
`
`lanthanide.
`
`Tomita does not explicitly disclose wherein the compositional formula is
`
`Li34aY1-aMaCle-x-yBrxly, specifically wherein Y is a component, instead only teaching In is a
`
`component.
`
`Steiner howeverteaches ion conductive ternary metal halide materials with compositional
`
`formulae LizsInCle and Li3YCle, which exhibit fast ionic conductivity (Steiner, abstract, Abb. 6),
`
`demonstrating Y and In are known equivalentart effective materials for use in ion conducting
`
`ternary metal halide materials.
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 11
`
`While Tomita does not explicitly disclose wherein M = Mg, Ca, Sr or Ba modified
`
`Tomita teaches M = Zn, Fe and Co, divalent cations which improvethe ionic conductivity
`
`(Tomita, p. 974). Tomita further teaches that there is a need to increase the ion capacity of solid
`
`electrolyte materials for use in powersources of electric vehicles (Tomita, p. 973) and that
`
`divalent metals, of which there are a finite numberof predictable divalent cation metals dopants
`
`known(Zn, Fe, Co, Mg and other chemically and physically similar divalent cations) and that
`
`oneor ordinary skill in the art could use as dopants in a solid electrolyte material such that the
`
`solid electrolyte material is represented by compositional formula Li3+aY1-aMaCle+yBraly,
`
`wherein M = Mg andothersimilar divalent cations such as Ca, Sr and Ba
`
`6=0, which falls within the claimed range of -1< 6<2,
`
`a=0.15, which falls within the claimed range of O<a<3,
`
`0<3+a=2.85,
`
`O<1-a=0.85,
`
`x=6, which falls within the claimed range of 0<x<6,
`
`0=y, which falls within the claimed range of 0<y<6,
`
`and x+y=6, whichfalls within the claimed range of xt+y<6,
`
`having a reasonable expectation of success of improving the ionic conductivity of the
`
`solid electrolyte material of modified Tomita.
`
`Regarding claims 2-3, modified Tomita disclosesall of the limitations of claim 1 as set
`
`forth above and teaches wherein a is 0.15 (Tomita, p. 974), falling within the claimed ranges
`
`wherein 0.01 <a<0.5 and 0.01 <a< 0.3 is satisfied.
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 12
`
`Regarding claims 4-5, modified Tomita disclosesall of the limitations of claim 1 as set
`
`forth above and teaches wherein 6 = 0,falling within the claimed ranges wherein -0.25 <6 <0.4
`
`and 0 <6 <0.4 is satisfied.
`
`Regarding claim 6, modified Tomita teaches the use of lithium ion conductive inorganic
`
`solid electrolytes, particularly those that exhibit fast ionic conductivity (Steiner, abstract), such
`
`as that set forth in claim 1 above, as a way to improve lithium ion secondary batteries (Tomita, p.
`
`973). One of ordinary skill in the art before the effective filing date of the claimed invention
`
`understands a battery consists of an anode (negative electrode), a cathode (positive electrode)
`
`and a solid electrolyte layer, disposed between the cathode and the anode, containing the solid
`
`electrolyte material and would find it obvious to includea solid electrolyte material according to
`
`modified Tomita as discussed with regards to claim 1 in a battery comprising a positive
`
`electrode, a negative electrode, and an electrolyte layer provided between the positive electrode
`
`and the negative electrode, wherein at least one selected from the group consisting of the positive
`
`electrode, the negative electrode, and the electrolyte layer contains the solid electrolyte material,
`
`to improve the performanceofthe battery.
`
`Claim 8 is rejected analogously to above.
`
`Claim(s) 1-6 and8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steiner, etal.
`
`"Novel Fast Ion Conductors of the Type M3M™Cle (M5 Li, Na, Ag; M"& In, Y)."” Zeitschrift
`
`fiir anorganische und allgemeine Chemie 613.7 (1992): 26-30 (hereafter referred to as Steiner) in
`
`view of Tomita, et al. "Synthesis of Lis+xInixMxBre (M= Zn, Co, Fe) by Nano-grinding andtheir
`
`

`

`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 13
`
`Ionic Conductivity.” Transactions of the Materials Research Society of Japan 33.4 (2008): 973-
`
`976 (hereafter referred to as Tomita).
`
`Regarding claim 1, Steiner teaches a ternary metal halide material represented by
`
`compositional formula Li3+xYCle,
`
`Steiner does not teach M as claimed. Steiner however teaches ion conductive ternary
`
`metal halide materials with compositional formulae Li3InCle and LizYCle, which exhibitfast
`
`ionic conductivity (Steiner, abstract, Abb. 6), demonstrating Y and In are known equivalentart
`
`effective materials for use in ion conducting ternary metal halide materials.
`
`Tomita teaches a ternary metal halide material represented by compositional formula
`
`Li3e+xInixMxBre,
`
`wherein M= Zn (Tomita, pp.973-975, Fig. 1-3) for use as a solid electrolyte material
`
`(Tomita, p. 973, ion conductive inorganic solid electrolyte):
`
`d=0,
`
`a=0.15, which falls within the claimed range of O<a<3,
`
`0<3+a=2.85,
`
`O<1-a=0.85,
`
`x=6, which falls within the claimed range of 0<x<6,
`
`0=y, which falls within the claimed range of 0<y<6,
`
`And x+y=6, whichfalls within the claimed range of x+y<6,
`
`Tomita suggests that, in some cases, substitution of Li3InBre with M, to yield
`
`Li34aln1zMBre, can improve the conductivity. While it is not explicitly demonstrated for the
`
`combination of a=0.15 and M=Zn, conductivity is increased at low temperatures with other
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`

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`Application/Control Number: 16/911,725
`Art Unit: 1728
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`Page 14
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`cations of the same valency as Zn, suggesting one of ordinary skill in the art could in theory use
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`Zn to replace In, with correspondingincreasein lithium stoichiometry, in order to improve the
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`conductivity. Tomita additionally discloses it is known in the art wherein the halide can be either
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`Cl or Br in the formula Li3M'X6, where M'is lanthanides, and Li3InBr¢x.Clx (Tomita, p. 973),
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`suggesting this would behave analogously in the Li3M'Cle, where M'is a lanthanide because of
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`Steiner’s and Tomita’s teaching of equivalency of Li3M'Cle6 where M'is lanthanides, and
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`LisInCle.
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`Tomita further teaches M = Zn, Fe and Co,divalent cations which improve the ionic
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`conductivity (Tomita, p. 974) and that, when =a, M = Mg”* also improvesthe ionic conductivity
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`(Tomita, p. 974). Tomita further teaches that there is a need to increase the ion capacity of solid
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`electrolyte materials for use in power sources ofelectric vehicles (Tomita, p. 973) and that
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`divalent metals, of which there are a finite numberof predictable divalent cation metals dopants
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`known(Zn, Fe, Co, Mg and other chemically and physically similar divalent cations) and that
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`oneor ordinary skill in the art could use as dopantsin a solid electrolyte material such that the
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`solid electrolyte material is represented by compositional formula Li3+aY 1-aMaCle+yBrxly,
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`wherein M = Zn, Fe, Co, Mg andother similar divalent cations such as Ca, Sr and Ba
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`6=0, which falls within the claimed range of -1< 6<2,
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`a=0.15, which falls within the claimed range of O<a<3,
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`0<3+a=2.85,
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`O<1-a=0.85,
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`x=6, which falls within the claimed range of 0<x<6,
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`0=y, which falls within the claimed range of 0<y<6,
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`and x+y=6, whichfalls within the claimed range of xt+y<6,
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`

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`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 15
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`having a reasonable expectation of success of improving the ionic conductivity of the
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`solid electrolyte material of modified Steiner.
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`Regarding claims 2-3, modified Steiner disclosesall of the limitations of claim 1 as set
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`forth above and suggests routine optimization of a to optimize the conductivity, which would
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`yield a falling within the claimed ranges wherein 0.01 <a <0.5 and 0.01 <a < 0.3 is satisfied.
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`Regarding claims 4-5, modified Steiner discloses all of the limitations of claim 1 as set
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`forth above and teaches wherein 6 = 0,falling within the claimed ranges wherein -0.25 <6 <0.4
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`and 0 <6 <0.4 is satisfied.
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`Regarding claim 6, modified Steiner teaches the use of lithium ion conductive inorganic
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`solid electrolytes, particularly those that exhibit fast ionic conductivity (Steiner, abstract), such
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`as that set forth in claim 1 above, as a way to improve lithium ion secondary batteries (Tomita, p.
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`973). One of ordinary skill in the art before the effective filing date of the claimed invention
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`understands a battery consists of an anode (negative electrode), a cathode (positive electrode)
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`and a solid electrolyte layer, disposed between the cathode and the anode, containing the solid
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`electrolyte material and would find it obvious to includea solid electrolyte material according to
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`modified Steiner as discussed with regards to claim 1 in a battery comprising a positive
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`electrode, a negative electrode, and an electrolyte layer provided between the positive electrode
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`and the negative electrode, wherein at least one selected from the group consisting of the positive
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`electrode, the negative electrode, and the electrolyte layer contains the solid electrolyte material,
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`to improve the performanceofthe battery.
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`

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`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 16
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`Claim 8 is rejected analogously to above.
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`Response to Arguments
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`Applicant's arguments filed 17 January 2023 have been fully considered butthey are not
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`persuasive.
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`Applicant argues:
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`It is clear that page 974 of Tomita does not teach M=Mg?-+,butrather Liis
`substituted with Mg. Thatis, the Li in the compoundsof Li34.Jn-xMxBre (M=Zn,
`Co, Fe) and Liz3InBre in Tomita would be replaced by Mg. Therefore, Tomita does
`not teach M=Mg, accordingly, there is no basis for the substitution of Mg with
`other alkaline earth metals, such as Ca, Sr, and Ba.
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`This is not persuasive. As noted in the above rejections, when 6 = a the substitution will
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`occur at the A site and at the B site for other instances (see instant examples 4 and 28) and satisfy
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`the claim limitations. Additionally, as set forth above, that while it is true that Mg can be doped
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`on the Lisite, the important teaching is that Mg”* can beincorporatedinto the compounds, and
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`hence the examiner's proposed substitution of Mgon theY site, like the isoelectronic Zn**
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`cation,still meets the burden for a prima facie case of obviousness and would further it would be
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`obvious to one of ordinary skill in the art to try the finite number of known divalent cations
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`similar to Zn and that have similar physical and chemical properties, such as Mg and other ITA
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`elements such as Ca, Sr and Ba.
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`Conclusion
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`The prior art made of record andnotrelied uponis considered pertinent to applicant's
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`disclosure,
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`

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`Application/Control Number: 16/911,725
`Art Unit: 1728
`
`Page 17
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`Tomita, Y., et al. "Li ion conductivity of solid electrolyte, Li3z-2xMxInBre (M= Mg, Ca,Sr,
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`Ba).” Solid State Ionics 174.1-4 (2004): 35-39, teaches substitution with a variety of cations.
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`Anyinquiry concerning this communication or earlier communications from the
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`examiner should be directed to JARED HANSENwhosetelephone numberis (571)272-4590.
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`The examiner can normally be reached M-F.
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`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Matthew Martin can be reached on (571)270-7871. The fax phone numberfor the
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`organization where this application or proceedingis 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 Center is available
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`to registered users. To file and manage patent submissions in Patent Center, visit:
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`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more
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`
`/JARED HANSEN/
`Examiner, Art Unit 1728
`
`/WILLIAM E MCCLAIN/
`Primary Examiner, Art Unit 1721
`
`