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, 2, and 6-19 in the reply filed on 2/23/2026 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 1, 2, and 6-19 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.
Regarding claim 1, the chemical formula recited in claim 1 recites values “u” and “w” of the molar amount of element “Na” and “N”, but the claim does not recite the corresponding amounts that are applied to “u” and “w”. Thus, the amounts of “u” and “w” are unclear because they are undefined by numerical ranges.
Regarding claim 1, the phrase “y is from about zero to 0.4” is indefinite because zero appears to be the lowest possible limit of the range because the amount “y” cannot be negative. Thus, the phrase “about zero” is indefinite.
In claim 10, the phrase “y is from about 0.0” is indefinite because zero appears to be the lowest possible limit of the range because the amount “y” cannot be negative. Thus, the phrase “about 0.0” is indefinite.
In claim 10, the phrase “about less than 0.41” is indefinite because it is unclear whether the range must be less than 0.41 or may be greater than 0.41.
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.
Claim(s) 1, 2, and 6-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung US 2023/0411616 in view of CN 109133921.
Regarding claim 1-2, 6-12, 15, and 17, Jung teaches a sodium-halide based nanocomposite (Abstract), which may be used as a solid electrolyte in a solid-state battery (Abstract). The nanocomposite may include a sodium halide composite containing amounts of Ta, Nb, Zr, Hf, and La proportional to the amounts recited in the formula of claim 1. Jung teaches that the components Na, two or more of Ta, Nb, Zr, Hf, and La may each be present in amounts of 0.1 to 0.9 (Paragraph [0042], Formula 3B); and halogens such as Cl and Br may be present in amounts of 0.1 to 10, which overlap the claimed ranges of the elements recited in claim 1 and the ranges recited in claims 6-12, 15, and 17. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Jung teaches that the sodium-halide based composite may be used in a rechargeable solid-state battery (Paragraph [0015] – [0018]).
Jung does not expressly state that the composite is part of a separation membrane.
CN ‘921 teaches a solid-state sodium ion electrolyte composite analogous to the Jung that may include Na, La, Zr and Nd (Abstract). The electrolyte is used in solid-state batteries (Abstract). CN ‘921 teaches that the sodium composite may be used in the battery separation membrane to further increase the volume energy density of the battery (Background Technology).
At the time of invention, it would have been obvious to the person having ordinary skill in the to form the battery of Jung, wherein the membrane separating the electrodes include the sodium composite material in view of CN ‘921. The suggestion or motivation for doing so would have been to further increase the volume energy density of the battery (CN ‘921, Background Technology).
Regarding claim 13-14, and 16, in addition to Cl, Br, F, and I may also be included (Paragraph [0042]).
Regarding claim 18, Jung teaches the ionic conductivity may be 0.01 to 5 mS/cm (Paragraph [0027]), which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 19, Jung does not expressly state the electric conductivity of the material. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731