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 .
Status of Claims
Claims 1-10 are currently pending.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2 & 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (US 2021/0226247 A1).
Regarding claims 1-2 & 7-9, Zhang teaches a solid-state lithium-ion battery comprising a positive electrode including a positive electrode active material such as LiFePO4; a negative electrode including metallic lithium, and a composite solid electrolyte placed between the positive electrode and the negative electrode and functioning as a separator and an electrolyte, wherein the composite solid electrolyte is a high ionic conductivity polymer-based composite solid electrolyte characterized in that the raw materials of which include carbonate-based polymer such as polycarbonate which forms a matrix ([0056]); inorganic solid lithium-ion conductor containing hydroxyl groups; an initiator such as AIBN; a lithium salt such as LiTFSI and a silane coupling agent having the claimed formula I (i.e R1 is an alkyl such as methyl and ethyl and R2 is an organofunctional group such as an amine attached to a C2-C6 alkylene group to give groups such as aminoethyl and aminopropyl as described in [0054]-[0056]), wherein the mass fraction of the carbonate-based polymer in the mixture is 10%-96%, the mass fraction of the silane coupling agent in the mixture is 1%-50%, the mass fraction of the lithium salt in the mixture is 1%-30%, the mass fraction of the inorganic solid lithium-ion conductor in the mixture is 1%-50% and the mass faction of the initiator in the mixture is 1%-10% ([0042]-[0043], [0050]-[0064] & [0099]). It is noted that the “preparation of the positive electrode of a lithium-ion battery…” and “The preparation of other negative electrodes…” recited in claim constitute product-by-process limitations. "Even 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". See MPEP 2113 I.
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.
Claims 3 & 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (US 2021/0226247 A1) in view of Choi (US 2018/0351202 A1), Amine (US 2010/0330433 A1) Guo (CN 110734517 A), and Miura (US 2002/0012849 A1).
Regarding claims 3 & 5-6, Zhang teaches a method for preparing the high ionic conductivity organic-inorganic composite solid electrolyte of claim 1, comprising the steps: (1) mixing an inorganic ion conductor material, a functionalized silane coupling agent and an organic solvent raw material such as ethanol, stirring and mixing them uniformly, heating and hydrolyzing them at 30C-80C for 12-24 hours ([0097]); (2) mixing the silanized inorganic ion conductor material obtained in step (1), carbonate-based polymer, conductive lithium salt, and organic solvent; adding an initiator to form an electrolyte mixture, coating or immersing the electrolyte mixture into a mold containing a porous support material, and heating and curing at 80C for 30 min to form a film. Zhang is silent as to (1) removing the solvent in a vacuum drying oven at 80C to 120C to prepare a silanized inorganic ion conductor material; (2) uniformly stirring the mixture in step (2); (3) the mold being a polytetrafluoroethylene mold and containing a porous support material; and (4) the heating and curing being performed for 4-12 hours. While Zhang does not explicitly teach uniformly stirring the mixture in step (2), it would have been obvious to one of ordinary skill in the art to uniformly stir the mixture in order to disperse the inorganic ion conductor material homogenously in the mixture as taught by Zhang ([0062]). It would have been obvious to one of ordinary skill in the art at the time of the invention to perform drying in a vacuum oven at 80C in order to remove the solvent from the obtained silanized inorganic ion conductor material as taught by Choi ([0091]-[0095]). Furthermore, it would have been obvious to provide a mold containing a porous support material such as a polyolefin non-woven fabric so that Zhang’s composite solid electrolyte can be formed on the porous support material because the thickness of the composite solid electrolyte necessary for device fabrication can be reduced while providing additional structural content to the device and ensuring electrode separation as taught by Amine ([0083]-[0084]). Amine does not explicitly teach examples of polyolefins, however, one of ordinary skill in the art would be apprised to use polyethylene or polypropylene as well-known polyolefins used in battery separators. Moreover, it would have been obvious to one of ordinary skill in the art to perform the heating and curing for 2-24 hours because such a duration is taught to be suitable for crosslinking to obtain an electrolyte film as taught by Guo (Page 2; 3rd from last paragraph). The use of polytetrafluoroethylene (PTFE) as a material for a mold to form an electrolyte film is well-known within the battery art as evidenced by Miura ([0101]-[0102]). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang (US 2021/0226247 A1), Choi (US 2018/0351202 A1), Amine (US 2010/0330433 A1), Guo (CN 110734517 A) and Miura (US 2002/0012849 A1), as applied to claims 3 & 5-6 above, and further in view of Tarnopolskiy (EP 4,270,578 A1).
Regarding claim 4, Zhang teaches the organic solvent in step (2) being NMP and in step (1) being ethanol but is silent as to the organic solvent in step (1) being selected from the claimed group. However, it would have been obvious to one of ordinary skill in the art to use an organic solvent such as acetonitrile in view of its suitability as a solvent for forming a silanized inorganic ion conductor as taught by Tarnopolskiy ([0012]-[0045]). See MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 09/30/2025 have been fully considered but they are not persuasive. In response to applicant’s arguments that Zhang does not fairly teach or suggest the claimed composite solid electrolyte, the examiner respectfully disagrees. Specifically, applicant argues that Zhang does not fairly teach or suggest a carbonate-based polymer with the specified hydrogen bonding (C=O—H with a silane). However, it is noted that the claim merely requires the C=O double bond in the carbonate group being capable of forming a chemical interaction with the active hydrogen on the silane coupling agent. In other words, the claims as presently recited does not require the actual bonding to the present but rather merely recites that such a bonding can occur. While Zhang is silent as to this feature, Zhang’s discloses a polymer matrix comprising polycarbonate which is the same as one of the claimed polymers intended for the carbonate-based polymer and further discloses a silane coupling agent which reads on the claimed formula I (i.e R1 is an alkyl such as methyl and ethyl and R2 is an organofunctional group such as an amine attached to a C2-C6 alkylene group to give groups such as aminoethyl and aminopropyl as described in [0054]-[0056]) contrary to applicant’s assertions. Accordingly, one of ordinary skill in the art would expect a chemical interaction to be capable of being formed between the carbonate group in the polycarbonate and an active hydrogen on the silane coupling agent. Applicant’s arguments that the claimed chemical interaction between the carbonate group in the polycarbonate and an active hydrogen in the silane coupling agent of Zhang would be formed is not found to be persuasive because Zhang teaches the same materials as the carbonate-based polymer and silane coupling agent intended for the present invention. With regards to applicant’s arguments that modified Zhang does not teach or suggest the claimed ionic conductivity of 3.1x10-3- S/cm at 25C measured by AC impedance, it is noted that Zhang nevertheless discloses the same components as the presently claimed polymer-based composite solid electrolyte and which are further used in both cases in significantly overlapping amounts as noted in the above rejection. Moreover, it would have been obvious to one of ordinary skill in the art to optimize the amounts of each component in the composite solid electrolyte because the silane content affects the extent with which the inorganic solid electrolyte is coated which affects the ionic conductivity by reducing agglomeration of the inorganic solid electrolyte whereas the content of the inorganic solid electrolyte is a known result effective variable for improving the ionic conductivity ([0043]-[0046]). With respect to applicant’s arguments that the combination of the references does not render obvious the use of a vacuum drying step of the silanized inorganic ion conductor at 80-120C, the examiner respectfully disagrees. In particular, applicant argues that Choi’s drying occurs in a different material system and at a different stage. However, contrary to applicant’s assertions, the vacuum drying step in Choi is performed immediately after forming a silane coupling agent on the surface of an inorganic ion conductor which includes some of the same materials used in Zhang. Choi merely discloses a vacuum drying step for removing a solvent used for mixing the silane coupling agent and the inorganic ion conductor. Therefore, it would have also been obvious to one of ordinary skill in the art to perform a vacuum drying step, after obtaining the silanized inorganic ion conductor, in order to remove the solvent as taught by Choi. Thus, in view of the foregoing, claims 1-10 stand rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kosyakov (US 2024/0250288 A1) discloses a separator comprising a ceramic-polymer composite electrolyte layer within a button battery ([0124]-[0125]).
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANAEL T ZEMUI whose telephone number is (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 can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHANAEL T ZEMUI/Examiner, Art Unit 1727
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