DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 depends from claim 2, a cancelled claim. Therefore, claim 11 is of improper dependent form because claim 11 fails to contain a reference to a claim previously set forth. The examiner notes that claim 11 should be cancelled because a change to the dependency of claim 11 would result in a duplicate claim (see claims 8, and 12-16), which is improper.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a 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 obvious before 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.
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 as of 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 owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-5, 7, 8, 11-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. US 2019/0260077 (hereinafter “Kim”), in view of KR 10-2000-0018387 with a machine translation (submitted on 25 September 2025) (hereinafter “Soo”) being used as the English language equivalent translation, and further in view of an article titled “Solid-state synthesis of NASICON (Na3Zr2Si2PO12) using nanoparticle precursors for optimization of ionic conductivity” by A. Jalalian-Khakshour, C. O. Phillips, L. Jackson, T. O. Dunlop, S. Margadonna, and D. Deganello (hereinafter “Khakshour”).Regarding claims 1, 8 and 11 Kim teaches a hybrid solid electrolyte (composite solid electrolyte separation membrane), for a secondary battery, comprising a hybrid film including an ion conductive ceramic (sodium oxide-based ceramic material), a polymer, and a liquid electrolyte (electrolyte) including an ion compound and a solvent (abstract and paragraph [0009]). Kim teaches the ion conductive ceramic (sodium oxide-based ceramic material) includes a sodium oxide-based compound such as Na3Zr2Si2PO12 (paragraph [0016]). Kim teaches the liquid electrolyte (electrolyte) is impregnated in the film (paragraph [0005]). Kim does not explicitly teach the hybrid solid electrolyte (composite solid electrolyte separation membrane) comprises an inorganic fiber. Soo teaches a secondary battery comprising a fiber, which includes a glass fiber (inorganic fiber), where the fiber is impregnated with an ion conductive polymer gel which produces a polymer electrolyte having enhanced mechanical properties (abstract; paragraphs 1, 2, 4, 5, and 7; and claim 1). Kim and Soo are analogous inventions in the field of secondary batteries. It would have been obvious to one skilled in the art at the time of the invention to modify the hybrid solid electrolyte film of Kim with the fibers of Soo to enhance the mechanical properties of the hybrid solid electrolyte film. The combination of Kim and Soo corresponds to the claimed features requiring: (1) the sodium oxide-based ceramic material is impregnated into the inorganic fiber; and (2) the electrolyte to be impregnated into the inorganic fiber into which the sodium oxide-based ceramic material is impregnated. In addition, Kim teaches the use of the ion conductive ceramic (sodium oxide-based ceramic material) in the hybrid solid electrolyte (composite solid electrolyte separation membrane) provides the resultant hybrid solid electrolyte with improved ion conductivity (paragraph [0018]). Kim does not teach the ion conductive ceramic (sodium oxide-based ceramic material) is present in an amount of 120 to 150 parts by weight based on 100 parts by weight of the inorganic fiber (from the combination of Kim and Soo). Absent a showing of criticality with respect to the content of the ion conductive ceramic (sodium oxide-based ceramic material) (a result-effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to determine an appropriate content of the ion conductive ceramic (sodium oxide-based ceramic material) through routine experimentation in order to achieve the desired improvement to the ion conductivity of the hybrid solid electrolyte. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Please see MPEP § 2144.05(II)(B). Kim also teaches when the amount of the liquid electrolyte (electrolyte) used is too low the interfacial resistance is too high, and when the amount of the liquid electrolyte (electrolyte) used is too high problems which are found in a conventional liquid electrolyte battery, such as high inflammability and low thermal stability, persists (paragraph [0033]). Kim does not teach the liquid electrolyte (electrolyte) is present in an amount of 3 to 10 parts by weight based on 100 parts by weight of the inorganic fiber (from the combination of Kim and Soo). Absent a showing of criticality with respect to the content of the liquid electrolyte (electrolyte) (a result-effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to determine an appropriate content of the liquid electrolyte (electrolyte) through routine experimentation in order to achieve the desired balance between low interfacial resistance, low inflammability, and high thermal stability. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Please see MPEP § 2144.05(II)(B). In addition, Kim teaches it is desirable for the hybrid solid electrolyte to exhibit high ion conductivity (paragraphs [0020], [0022], [0038], etc.), where the sodium oxide-based compound such as Na3Zr2Si2PO12 is an ion conductive ceramic (paragraphs [0016]). The combination of Kim and Soo does not explicitly teach the inorganic fiber into which the electrolyte is impregnated is pressed by a firing roller at a temperature of 900 to 1100 °C. Khakshour teaches the use of nanopowder precursor materials for forming NASICON (Na3Zr2Si2PO12), which are sintered, were found to produce substantially higher ionic conductivities, with improved morphology and higher density than those produced from larger micron-scaled precursors (abstract). Khakshour also teaches the nanoparticle precursors were shown to give a maximum ionic conductivity of 1.16 x 10-3 S cm-1 when sintered at 1230 °C for 40 h, which is in the higher range of published solid-state Na3Zr2Si2PO12 conductivities (Id). Khakshour teaches ionic conductivity increases with sintering duration due to an increase in grain growth and densification (page 2292, right hand column, 1st full paragraph). It would have been obvious to a person having ordinary skill in art at the time of the invention to modify the sodium oxide-based compound (NASICON (Na3Zr2Si2PO12)) of the ion conductive ceramic of Kim with the nanopowder precursor materials and sintering process disclosed by Khakshour to improve the ionic conductivity of the ion conductive ceramic. The use of product-by-process limitations has been noted in claim 1, for example, "the inorganic fiber into which the electrolyte is impregnated is pressed by a firing roller at a temperature of 900 to 1100°C." "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113. In the instant application, the structure which is implied by the claimed process corresponds to a sintered structure of the ion conductive ceramic. This structure has been met with the modification of Kim by Khakshour, as detailed above.Regarding claims 3 and 12 As previously mentioned, Kim teaches the hybrid solid electrolyte (composite solid electrolyte separation membrane) is used in a secondary battery (abstract and paragraph [0009]). In addition, Kim teaches the hybrid solid electrolyte (composite solid electrolyte separation membrane) has a thickness of 10-150 µm (paragraph [0008]), which encompasses the claimed range.Regarding claims 4 and 13 As previously mentioned, Kim teaches the hybrid solid electrolyte (composite solid electrolyte separation membrane) is used in a secondary battery (abstract and paragraph [0009]). In addition, Soo teaches the fiber comprises glass (glass fiber), polyester (thermosetting fiber), polyurethane (thermosetting fiber), among other materials (paragraph 7).Regarding claims 5 and 14 As previously mentioned, Kim teaches the hybrid solid electrolyte (composite solid electrolyte separation membrane) is used in a secondary battery (abstract and paragraph [0009]). Kim also teaches the ion conductive ceramic (sodium oxide-based ceramic material) includes Na3Zr2Si2PO12 (NASICON (Na3Zr2Si2PO12)) (paragraph [0016]).Regarding claims 7 and 16 As previously mentioned, Kim teaches the hybrid solid electrolyte (composite solid electrolyte separation membrane) is used in a secondary battery (abstract and paragraph [0009]). In addition, Kim teaches the electrolyte is a liquid electrolyte and includes lithium and/or sodium ions (ion electrolyte) (abstract).
Claims 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kim, Soo and Khakshour as applied to claim 5 above, as further evidenced by an article titled “A hybrid solid electrolyte for flexible solid-state sodium batteries” by Jae-Kwang Kim, et al. (hereinafter “Lim”).Regarding claims 6 and 15 The limitations for claim 5 have been set forth above. As previously mentioned, Kim teaches the hybrid solid electrolyte (composite solid electrolyte separation membrane) is used in a secondary battery (abstract and paragraph [0009]). Kim also teaches the ion conductive ceramic (sodium oxide-based ceramic material) includes Na3Zr2Si2PO12 (NASICON (Na3Zr2Si2PO12)) (paragraph [0016]). Lim teaches it is well known that a NASICON-type Na3Zr2Si2PO12 solid electrolyte is prepared from ZrO2, SiO2, and Na3PO4•12H2O (page 3590, first paragraph under the “Experimental” heading in the left hand column).
Response to Arguments
Applicant’s arguments, see page 4, filed 11 May 2026, with respect to the rejections of claims 4 and 13 under 35 USC §112(b) and §112(d) have been fully considered and are persuasive. The rejections of claims 4 and 13 under 35 USC §112(b) and §112(d) have been withdrawn.
Applicant's arguments filed 11 May 2026 have been fully considered but they are not persuasive.
The applicant argued the claimed amounts of the sodium oxide-based ceramic material and the electrolyte have an unexpected result. The unexpected result is a superior tensile strength which is about 30 times higher than a tensile strength of a commercially available separation membrane. The examiner respectfully submits the applicant has failed to establish unexpected results of the claimed sodium oxide-based ceramic material and the electrolyte because there is no analysis with regards to demonstrating a criticality of the claimed ranges. The applicant has failed to provide any data points inside and outside the claimed ranges to show any kind of unexpected trend in the data. See MPEP §716.02(d)(II). Furthermore, comparing a commercially available separation membrane having a completely different chemical composition and structure than the separation membrane of the instant application fails to establish unexpected results; that is, a person having ordinary skill in the art would expect different properties when comparing different articles with different structures and/or chemical compositions.
The applicant argued, in the last paragraph on page 5, the commercially available separation membrane (Celgard®2400) cannot be used even at a temperature of 200°C because it would be melted or deformed. This argument is not commensurate in scope with the rejection of record. The examiner does not rely on the commercially available separation membrane (Celgard®2400) highlighted by the applicant. Moreover, the limitation in question is a product-by-process limitation. Product-by-process limitations are considered to the extent that there is a distinct structure to the product which is implied by the process steps. This has been considered, and the structure implied by the processing step added to claim 1 is considered to be obvious over the updated rejection of record, specifically, with the additional consideration of Khakshour.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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