DETAILED ACTION
Terminal Disclaimer
The terminal disclaimer filed on February 19, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Pat. No. 12,053,521 has been reviewed and is accepted. The terminal disclaimer has been recorded and the corresponding double patenting rejections have been withdrawn.
Claim Rejections - 35 USC § 112
The rejections made under 35 U.S.C. 112 in the previous Office Action are withdrawn in view of Applicant’s amendment, filed January 26, 2026.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1, 3, 5, 19, 22, and 30 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kim (US PG Pub. No. 2017/0123115).
Regarding claims 1, 3, 5, 19, 22, and 30, Kim teaches a device comprising a porous nanowire bundle array (i.e. a “material structure”, “porous oxide body”, and “body”) comprising bundles of multiple alumina (i.e. aluminum oxide) nanowires (i.e. “elongated particles”), which are necessarily amorphous, nanocrystalline, or a combination thereof, each having a thickness (i.e. “diameter”) in the range of 10 to 70 nm and a length in the range of 100 nm to 50 µm, which corresponds to a diameter-to-length aspect ratio range of about 1:1.4 to 1:5,000 (Abstract; par. 28, 29). The instantly claimed aspect ratio range is overlapped by Kim’s aspect ratio range with sufficient specificity to constitute anticipation or, alternatively, obviousness. See MPEP 2144.05. Kim also depicts and exemplifies devices including nanofibers with aspect ratios that clearly fall within the claimed range (Figs. 1A, 1B, 3B).
The claim requirement that the elongated particles are “bundled”, wherein the particles “are formed from precursor elongated particles that are formed in a bundled state” is a product-by-process limitation. Product-by-process claims are not limited by the recited processing steps, but rather by the structure implied by the recited procedure. See MPEP 2113. As no actual structure for a “bundle” is recited and no manufacturing steps are recited that would dictate a manner or arrangement in which the elongated nanoparticles or their precursors are bundled, any degree of attachment or grouping of elongated nanoparticles has a structure that qualifies as a “bundle” and as having the structure of something that has been “bundled” in the context of the claims. As such, Kim’s product, which explicitly includes “bundles”, meets the claim requirement because it has the limited structure that is implied.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3, 5, 8, 19-22, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Joo (US PG Pub. No. 2015/0287967).
Regarding claims 1, 3, 5, 8, 19, 22, and 30, Joo teaches a battery (i.e. “device”, “electrochemical energy storage device”) comprising a separator between an anode and a cathode, the separator comprising a mat (i.e. “material structure”, “membrane”, “body”, “porous oxide membrane or body”, and “bundle”) comprising multiple, porous ceramic nanofibers (i.e. “one-dimensional elongated particles”), which are necessarily amorphous and/or nanocrystalline and may be alumina (i.e. aluminum oxide), each exhibiting a diameter in the range of 200 nm to 2 microns, a length of at least 1 micron, an diameter-to-length aspect ratio of greater than 1:10 (par. 29, 38, 41, 43, 52). The instantly claimed length and aspect ratio ranges are obvious in view of Joo. See MPEP 2144.05. It is also noted that Joo’s usage of the phrase “at least one nanofiber” encompasses a range of “at least two” and renders obvious a mat comprising “at least two nanofibers”. See MPEP 2144.05.
The claim requirement that the elongated particles are “bundled”, wherein the particles “are formed from precursor elongated particles that are formed in a bundled state” is a product-by-process limitation. Product-by-process claims are not limited by the recited processing steps, but rather by the structure implied by the recited procedure. See MPEP 2113. As no actual structure for a “bundle” is recited and no manufacturing steps are recited that would dictate a manner or arrangement in which the elongated nanoparticles or their precursors are bundled, any degree of attachment or grouping of elongated nanoparticles has a structure that qualifies as a “bundle” and as having the structure of something that has been “bundled” in the context of the claims. As such, Joo’s product meets the claim requirement because it has the limited structure that is implied. Additionally, Joo teaches that his ceramic nanofibers may be made by electrospinning, which he discloses may be followed by a carbonizing or calcining step to remove the polymeric material used in the fibers’ formation (par. 63). Figure 2 demonstrates that the precursor fibers (left photo) are formed into a mat (i.e. “bundled”) prior to being calcined into ceramic fibers (Fig. 2; par. 97). As such, Joo teaches bundled ceramic elongated particles of the recited dimensions and wherein “the at least two elongated particles are formed from precursor particles” that are in a bundled state, which has the structure that is implied by the claim.
Regarding claims 20 and 21, Joo teaches that his ceramic nanofibers (i.e. elongated particles) may be coated with a polymer (i.e. the “metal oxide comprises a surface on which a coating layer is deposited”) (par. 30, 31).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Joo, as applied to claim 1 above, alone or, optionally further in view of Maneeratana (Maneeratana et al.; "Electrospun Structures with Controlled Specific Surface Areas and Pores", 2012, p. 1-7) for the reasons discussed in the previous Office Action.
Claims 23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Joo, as applied above, and further in view of Jo (US Pat. No. 2012/0003524) for the reasons discussed in the previous Office Action.
Claims 23, 27, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Joo, as applied above, and further in view of Imachi (US PG Pub. No. 2005/0214637) for the reasons discussed in the previous Office Action.
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive.
Applicant has argued that the rejections made in view of Kim should be withdrawn because the requirement that the elongated aluminum oxide particles are bundled, wherein the particles “are formed from precursor elongated particles that are formed in a bundled state”, produces a different structure from Kim because Kim’s alumina nanowire (i.e. “elongated particle”) bundles would allegedly collapse in the absence of a capillary liquid and because alumina particles formed from precursors would retain some or all of the features of the precursors. As discussed above, this requirement is a product-by-process limitation. Product-by-process claims are not limited by the recited processing steps, but rather the structure implied by eth claimed procedure. See MPEP 2113. Applicant is also reminded that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the product-by-process limitations have been interpreted as requiring the structure that is implied by the claimed process rather than a more detailed process that might be described in the instant disclosure.
As the claims pose no limitations on what structure constitutes a “bundle”, provide no description of the type, structure, or formation process of bundled precursor particles, and provide no description of how the precursor bundles are transformed into the final bundled aluminum oxide particles, the only structure that is clearly implied by the recited process is that there are aluminum oxide particles of the recited dimensions that are in some way “bundled”. Kim’s product meets the claim requirements because it includes bundles of aluminum oxide particles having the required dimensions and aspect ratio. Applicant has provided no evidence that the recited process would necessitate a different structure from what is taught by Kim. In response to Applicant’s argument that Kim’s bundles collapse in the absence of a capillary liquid, it is noted that that the claims pose no requirements on the mechanical properties of a “bundle”, let alone that a bundle is resistant to collapsing in or out of a particular environment.
Applicant has further argued that the claims are distinguished over Joo because Joo’s fibers are “not formed in a bundled state” and because a nanowire mat is discernable from elongated particles that are “formed from precursor particles that are formed in a bundled state”. However, as discussed above, the claims place no limitations on what constitutes a “bundle” and Applicant has not described how a nanowire mat, which is a bundle of elongated particles, is discernable from the “bundle” of the claims. As also discussed above, the claim description of how the elongated particles, or elongated particle bundles, are formed is a product-by-process limitation. Joo’s bundled aluminum oxide elongated particles meet the claim requirements because they have the structure that is implied. See MPEP 2113. To the extent that the requirement that the elongated particles are formed from bundled precursor particles implies a particular structure, it is noted that Joo’s product also meets this limitation because his bundled elongated particles are formed from bundled precursor particles (Fig. 2, par. 63, 97). Applicant has provided no evidence that the recited process would necessitate a different structure from what is taught by Joo.
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 JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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, Humera Sheikh can be reached at (571) 272-0604. 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: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights