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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-8 and 11-16 in the reply filed on 21 October 2025 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites “the inorganic fiber is any one of … thermosetting fiber.” Therefore, the claim is indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention because a thermoset material is an organic material, which does not correspond to an inorganic material, and classifying a thermoset as an inorganic material goes against conventional knowledge in the pertinent art.
Claim 13 is included in this rejection based on its dependency from claim 4.
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.
Claims 4 and 13 are 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 4 contains an embodiment which excludes inorganic fibers. That is, claim 4 recites “the inorganic fiber is any one of … thermosetting fiber.” Claim 1, the claim from which claim 4 depends, requires “an inorganic fiber.” As such, claim 4 is inconsistent with claim 1, and, indeed contradicts claim 1. See Multilayer, 831 F.3d at 1362 (“A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid.”) (citing 35 U.S.C. §112(d) (requiring that “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” (emphasis added)). Other cases have held claims invalid under pre-AIA 35 U.S.C. § 112, fourth paragraph for claiming subject matter that was “non-overlapping” with the claim from which it depended. Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1391-92 (Fed. Cir. 2006); see also Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) (noting that a dependent claim can be invalid for failing to comply with pre-AIA 35 U.S.C. § 112, fourth paragraph).
Claim 13 is included in this rejection based on its dependency from claim 4.
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 1-5, 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”), and further 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.Regarding claims 1 and 8 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.Regarding claims 2 and 11 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 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).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 and Soo 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).
Conclusion
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783