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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
`
`08/04/2023
`
`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 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 07/12/2023.
`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)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*
`1-2,4-7 and 9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C) Claim(s)__ is/are allowed.
`Claim(s) 1-2,4-7 and 9 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} 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)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)1) 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)C 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) ([] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 06/30/2023.
`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 20230731
`
`

`

`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.
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`The present application, filed on or after March 16, 2013,
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`is being examined underthe
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`first inventor to file provisions of the AIA.
`
`Status of Claims
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`2.
`
`Claims 1 & 5 are amended. Claims 3 & 8 are canceled. Claims 1-2, 4-7 & 9 are currently
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`pending.
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`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
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`relied upon, and the rationale supporting the rejection, would be the same undereither status.
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`4,
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`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
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`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 toa 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 1-2, 4-7 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Tomita (JP 2006244734 A,as cited in the IDS mailed on 07/15/2020) in view of Bohnsack
`
`(“Ternary Halides ofthe AsM Xe Type VIT’, cited in the IDS mailed on 07/15/2020) and
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`Tomita (“Preparation of Substituted Compounds of Lithium Indium Bromide and
`
`

`

`Application/Control Number: 16/929,299
`Art Unit: 1727
`
`Page 3
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`Fabrication of All Solid-State Battery”, hereinafter cited as Tomita’2, cited inthe IDS
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`mailed on 07/15/2020).
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`6.
`
`Regarding claims 1, 4-6 & 9, Tomita teaches a battery comprising a positive electrode, a
`
`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
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`of Li, M, X and F and represented by Liz.2,M,Inj-yM’yL¢..L’, wherein x is from 0 to 1.5; y is
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`from 0 to 1 (not inclusive); M is a metal such as Ca, Sr, Ba and Mg; M’ can be Y; and L’ and L
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`are each independently halogen atoms ([0036]-[0037]). When x=0 and y>0,the solid electrolyte
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`material consists of Li, M, X and at least two halogen elements selected from F, Cl, I, Br and At,
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`where M includes In and Y. When x>0 and y>0, the solid electrolyte material consists of Li, M,
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`X andat least two halogen elements selected from F, Cl, I, Br and At, where M includes In, Y
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`and a metal such as Ca, Sr, Ba. Tomita’s solid electrolyte material reads on the presently claimed
`
`composition whenat least one of L and L’ is F with the other being any one of Br, Cl andI.
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`Tomita is silent as to y = 1 and 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° 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
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`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 inafirst converted pattern provided by
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`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 26 into q where q is defined; one or
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`

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`Application/Control Number: 16/929,299
`Art Unit: 1727
`
`Page 4
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`more peak appearing within a range where a value of q/go is not less than 1.14 and not more than
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`1.17 mn a second converted pattern provided by converting the X-ray diffraction pattern in such a
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`mannerthat the horizontal axis thereof is converted from the diffraction angle 2© into q/qo
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`where qois a value of q which corresponds to the reference peakin the first converted pattern;
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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 arange where the value of q/go 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 wherethe 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).
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`Bohnsackteaches a lithuum ion conductive solid electrolyte represented by the general
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`formula A3;MX¢ including LisMBre (where M = Sm-Lu, Y).
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`It would have been obvious to one of ordinary skill
`
`in the art, before the effective filing
`
`date of the present invention, to modify Tomita’s composition such that y=1 becausesolid
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`electrolytes of the form LiMX¢ where M is solely Y (i.e no In component) is known to have
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`good lithium ion conductivity as taught by Bohnsack (3. Results and Conclusion).
`
`While Tomita does not provide an X-ray diffraction pattern of the solid electrolyte
`
`material,
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`it is noted that solid electrolytes with the general formula LisMX, (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 a range where the value ofa 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
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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 as evidenced by Tomita’2 (Fig. 1; Introduction). Moreover, in light of
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`

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`Application/Control Number: 16/929,299
`Art Unit: 1727
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`Page 5
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`Tomita teaching an identical solid electrolyte composition to the claimed solid electrolyte
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`composition, one skilled in the art would expect the peaks recited in instant claims 5-6 to be
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`present in the converted X-ray diffraction patterns recited in claims 5-6 of Tomita’s solid
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`electrolyte. “Where the claimed and prior 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.
`
`Regarding claims 2 & 7, Tomita as modified by Bohnsack teaches the solid electrolyte
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`materials of claims 1 & 5, respectively, butis silent as to a sublattice of an anion forming a cubic
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`close-packed structure or a structure in which a cubic close-packed structure has been distorted.
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`However, as noted above, Tomita teaches a solid electrolyte composition which is
`
`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 (i.e a sublattice of an
`
`anion forming a cubic close-packed structure or a structure in which a cubic close-packed
`
`structure has been distorted). “Where the claimed andprior art products are identical or
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`substantially identical in structure or composition, or are produced by identical or substantially
`
`identical processes, a prima facie case of either anticipation or obviousness has been established.
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`In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”. See MPEP 2112.01 I.
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`Response to Arguments
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`8.
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`Applicant's arguments filed 07/12/2023 have been fully considered but they are not
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`persuasive. In response to Applicant’s arguments that the cited references (i.e Tomita, Bohnsack
`
`and Tomita’2), either alone or in combination, does not fairly teach or suggest the claimed solid
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`

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`Application/Control Number: 16/929,299
`Art Unit: 1727
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`Page 6
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`electrolyte material composition,
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`the examiner respectfully disagrees.
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`In particular, Applicant argues that “Bohnsack does not disclose that LiaMX.¢ where M is
`
`solely Y shows a higherlithium ion conductivity than the case where In is included (y is not 1)...
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`Thus, one of ordinary skill in the art would readily understand that LilnBre and LigInBr3Chk have
`
`a higher Li ion conductivity than A3MX¢ where M does not include In”. Contrary to Applicant’s
`
`assertions, one of ordinary skill in the art, based on the teachings of Tomita and Bohnsack,
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`would not have deduced that LilnBrg and LiInBr3Ck have a higher Li ion conductivity than
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`A3MXz where M consists of Y and does not include In. While Tomita requires the presence of In
`
`in the solid electrolyte composition,
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`there is no suggest of a reduced Li-ion conductivity by the
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`exclusion of In by using another metal such as Y in place of In. However, Bohnsack teaches a
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`solid electrolyte composition represented by A3MX¢ in which M is Y and does not include In
`
`showing good lithum ion conductivity (3. Results and Conclusion). Accordingly,
`
`it would have
`
`been obvious to one skilled in the art, before the effective filing date of the present invention,
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`to
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`set y=1 in Tomita’s composition such that In is excluded because Bohnsack teaches composition
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`represented by A3YX. providing good lithium ion conductivity.
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`In response to applicant’ s
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`argument that there is no teaching, suggestion, or motivation to combine the references, the
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`examiner recognizes that obviousness may be established by combining or modifying the
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`teachings of the prior art to produce the claimed invention where there is some teaching,
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`suggestion, or motivation to do so found either in the references themselves or in the knowledge
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`generally available to one of ordinary skill
`
`in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d
`
`1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR
`
`International Co. v. Teleflex, Inc.,550 U.S. 398, 82 USPQ2d 1385 (2007).
`
`Thus, in view of the foregoing, claims 1-2, 4-7 & 9 stand rejected.
`
`

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`Application/Control Number: 16/929,299
`Art Unit: 1727
`
`Page 7
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`Conclusion
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`9.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`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
`
`
`
`MONTHSfrom the mailing date of this action. In the eventafirst reply is filed within TWO
`
`MONTHSof the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTHshortenedstatutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
`
`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHSfrom the mailing
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`date of this final action.
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`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.
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`

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`Application/Control Number: 16/929,299
`Art Unit: 1727
`
`Page 8
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`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
`
`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 Center is available
`
`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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`
`Representative, call 800-786-9199 (INUSA OR CANADA)or 571-272-1000.
`
`/NATHANAEL T ZEMUI/
`Examiner, Art Unit 1727
`
`