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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
`
`16/929,299
`
`07/15/2020
`
`MASASHI SAKAIDA
`
`083710-3078
`
`6771
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`ZEMUI, NATHANAEL T
`
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/22/2022
`
`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 No.
`Applicant(s)
`16/929,299
`SAKAIDAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`NATHANAEL T ZEMUI
`1727
`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 07/15/2020.
`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*
`1-9 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) 1-9 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 07/15/2020 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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail DateSeeContinuationSheet,
`U.S. Patent and Trademark Office
`
`3)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20221116
`
`

`

`Continuation Sheet (PTOL-326)
`
`Application No. 16/929,299
`
`Continuation of Attachment(s) 2) Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date: 07/15/2020, 04/07/2021, 10/06/2021, 05/05/2022, 06/22/2022, 07/18/2022, 10/13/
`2022
`
`

`

`Application/Control Number: 16/929,299
`Art Unit: 1727
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined underthe
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`first inventor to file provisions of the AIA.
`
`2.
`
`Claims 1-9 are currently pending.
`
`Status of Claims
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre-AJA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`4,
`
`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 fora 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 obviousbefore 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.
`
`5.
`
`Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tomita (JP
`
`2006244734 A, as cited in the IDS mailed on 07/15/2020) in vie w of Tomita (“Preparation of
`
`Substituted Compounds of Lithium Indium Bromide and Fabrication of All Solid-State
`
`Battery”, hereinafter cited as Tomita’2, cited in the IDS mailed on 07/15/2020).
`
`

`

`Application/Control Number: 16/929,299
`Art Unit: 1727
`
`Page 3
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`6.
`
`Regarding claims 1, 4-6 & 9, Tomita teaches a battery comprising a positive electrode, a
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`negative electrode and an electrolyte disposed betweenthe positive electrode and the negative
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`electrode ({0006]-[0007]), wherein the electrolyte includes a solid electrolyte material consisting
`
`of Li, M, X andFandrepresented by Liz-2xMxInj-yM’yLe.zL’, wherein x is from 0 to 1.5; y is
`
`from 0 to 1; Mis metal such as Ca, Sr, Ba and Mg; M’ can be Y; and L’ and L are each
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`independently halogen atoms ([0036]-[0037]). When x=0 and y=1, the solid electrolyte material
`
`is LhYL¢,L’, with L and L’ being selected from the group consisting of halogen elements
`
`including F, CL I, Br and At. Tomita’s solid electrolyte material reads on the presently claimed
`
`composition when atleast one of L and L’is F with the other being any one of Br, Cl andI.
`
`Tomita is silent as to two or more peaks present within a range where a value of a
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`diffraction angle 20 is not less than 24° and not more than 35° in an X-ray diffraction pattern of
`
`the solid electrolyte material; one or more peaks present within a range wherethe value of a
`
`diffraction angle 20 is not less than 40° and not more than 48° in an X-ray diffraction pattern of
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`the solid electrolyte material; two or more peaks present within a range where a value of a
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`diffraction angle 20 is not less than 48° and not more than 59° in an X-ray diffraction pattern of
`
`the solid electrolyte material (claim 1) and areference peak appearing within a range where a
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`value of q is not less than 1.76A and not more than 2.18A in a first converted pattern provided by
`
`converting an X-ray diffraction pattern of the solid electrolyte material in such a mannerthat a
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`horizontal axis thereof is converted from a diffraction angle 20 into q where q is defined; one or
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`more peak appearing within a range where a value of q/qo is not less than 1.14 and not more than
`
`1.17 in a second converted pattern provided by converting the X-ray diffraction pattern in sucha
`
`manner that the horizontal axis thereof is converted from the diffraction angle 20 into q/qo
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`where qo is a value of q which corresponds to the reference peak in the first converted pattern;
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`

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`Application/Control Number: 16/929,299
`Art Unit: 1727
`
`Page 4
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`and one or more peak appearing within a range where the value of q/qois not less than 1.62 and
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`not more than 1.65 in the second converted pattern (claim 5); and wherein one more peaks
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`appear within a range where the value of q/qo is not less than 1.88 and not more than 1.94 in the
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`second converted pattern and one or more peaks appear within a range where the value of q/qo is
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`not less than 1.9 and not more than 2.1 in the second converted pattern (claim 6).
`
`While Tomita does not provide an X-ray diffraction pattern of the solid electrolyte
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`material,
`
`it is noted that solid electrolytes with the general formula LizMX¢ (where M is a metal
`
`such as In and X includes at least one halogen) comprises two or more peaks present within a
`
`range where a value of a diffraction angle 20 is not less than 24° and not more than 35°; one or
`
`more peaks present within arange wherethe value of a diffraction angle 20 is not less than 40°
`
`and not more than 48° and two or more peaks present within a range where a value of a
`
`diffraction angle 20 is not less than 48° and not more than 59° in an X-ray diffraction pattern of
`
`the solid electrolyte as evidenced by Tomita’2 (Fig. 1; Introduction). Moreover, in light of
`
`Tomita teaching an identical solid electrolyte composition to the claimed solid electrolyte
`
`composition, one skilled in the art would expect the peaks recited in instant claims 5-6 to be
`
`present in the converted X-ray diffraction patterns recited in claims 5-6 of Tomita’s solid
`
`electrolyte. “Where the claimed andprior art products are identical or substantially identical in
`
`structure or composition, or are produced by identical or substantially identical processes, a
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`prima facie caseofeither anticipation or obviousness has been established. In re Best, 562 F.2d
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`1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”. See MPEP 2112.01 I.
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`7.
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`Regarding claims 2 & 7, Tomita teaches the solid electrolyte materials of claims 1 & 5,
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`respectively, but is silent as to a sublattice of an anion forming a cubic close-packed structure or
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`a structure in which a cubic close-packed structure has beendistorted.
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`

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`Application/Control Number: 16/929,299
`Art Unit: 1727
`
`Page 5
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`However, as noted above, Tomita teaches a solid electrolyte composition which is
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`identical to the claimed solid electrolyte composition. Accordingly, one skilled in the art would
`
`expect the Tomita’s solid electrolyte to possess the claimed properties (Le a sublattice of an
`
`anion forming a cubic close-packedstructure or a structure in which a cubic close-packed
`
`structure has been distorted). “Where the claimed andprior art products are identical or
`
`substantially identical in structure or composition, or are produced byidentical or substantially
`
`identical processes, a prima facie case of either anticipation or obviousness has been established.
`
`In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”. See MPEP 2112.01 I
`
`8.
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`Regarding claim 3 & 8, Tomita teaches the solid electrolyte materials of claims 1 & 5,
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`respectively, wherein M is Y and includes andleast one of Ca, Sr and Ba ((0037)).
`
`Contact Information
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to NATHANAEL T ZEMUIwhosetelephone numberis (571)272-
`
`4894. The examiner can normally be reached M-F 8am-5pm (EST).
`
`Examiner interviews are 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 Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, BARBARA GILLIAM canbe reached on (571)272-1330. The fax phone number for
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`the organization where this application or proceeding 1s assigned is 571-273-8300.
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`

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`Application/Control Number: 16/929,299
`Art Unit: 1727
`
`Page 6
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`
`/NATHANAEL T ZEMUI/
`Examiner, Art Unit 1727
`
`