DETAILED ACTION
Notice to Applicant
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/7/2025 has been entered.
In the amendment dated 5/7/2025, the following has occurred: Claims 1 and 6 have been amended.
Claims 1, 3, 6, and 8-32 are pending; claims 18-32 remaining withdrawn. Claims 1, 3, 6, and 8-17 are examined herein. This is a Non-Final Rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 6 is rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 6 is directed towards a lithium- or sodium-containing species selected from “Li4B, Na4B,” and others. These species do not appear to be stable salts, known in the art as components of an electrolyte, and the specification does not clarify how to make or provide them as components of an electrolyte. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). See MPEP 2164.01(a).
In the instant case, the claims are clearly directed towards a few species, but it is unclear whether the claims are directed towards an exotic species in an electrolyte, or even whether or not there are clear ways of obtaining or making the claimed species. The instant specification does not appear to disclose working examples, nor does it indicate what might be required to produce the claimed species or add them to an ionically conductive “protecting shell.” The claim is therefore rejected for lack of enablement.
Note on Claim Interpretation
Claims 1, 3, 6, and 8-32 have previously been rejected for lack of enablement in the Final Rejection from 9/7/2021 for the limitation “having a first lithium concentration C1 near a particle surface and a second lithium concentration C2 inside said particle and away from said surface and wherein C1<C2.”. The claims were held not to be enabling in response to Applicant’s arguments that previously cited Zhamu did not teach an active material with a surface concentration of lithium that was approximately zero. In the Remarks filed 12/2/2021 with the instant amendments no argument is made concerning the lack of enablement. Instead the claims have been amended to argue that the newly claimed material is not taught or rendered obvious in the prior art.
The Office has interpreted the claims requiring a “substantially lithium-free” particle surface to be met by 1) a coating or “protecting shell” that does not intercalate lithium ions and/or 2) an intercalating material that is charged and then subsequently discharged, since the instant specification teaches the use of conventional anode materials such as carbon that are at least partially discharged in order to achieve the claimed surface feature (see e.g. instant specification at page 13 lines 19-24; see also Final Rejection of 9/7/21 for discussion of enablement). Insofar as Applicant argues that discharge of conventional materials that are substantially the same as those disclosed in the instant invention do not meet the claim limitations concerning the relative surface concentration of lithium ions, the claims should be considered still rejected under § 112 for lack of enablement. That rejection is not explicitly given here because Applicant has not reiterated arguments that e.g. Zhamu does not teach or render obvious this set of limitations
Claim Rejections - 35 USC § 103
Claims 1, 3, and 8-17 are rejected under 35 U.S.C. 102/103 as being unpatentable over Zhamu (US 2017/0288211 to Zhamu et al.) in view of Armand (US 2015/0188189 to Armand et al.).
Regarding Claim 1, Zhamu teaches:
a prelithiated anode active material particle for use in a lithium battery, wherein said particle is capable of reversibly storing lithium ions therein during a charge or discharge of said battery and comprises an amount of lithium from 1-100% of a maximum lithium content contained in said anode active material particle (paras 0017-0019)
wherein the anode active material is encapsulated by elastomers that can be inert, such as a mixture or blend of elastomer and PEO/PPO/PAN, etc. (para 0028), thereby forming what is interpreted to read on the broadest reasonable interpretation of a “protecting shell that wraps around, embraces, or encapsulates said anode active material particle” as claimed
wherein the elastomer can PVDF (para 0027)
in a matrix with lithium ion-conducting additives such as lithium salts like lithium perchlorate, lithium hexafluorophosphate, and other conventional lithium salts (paras 0025-0027)
While Zhamu does not explicitly teach that the lithium concentration near the particle surface is lower, or substantially lithium-free, in comparison to a higher lithium concentration inside the particles, Zhamu also teaches that such anode active material is intended for cycling in a cell (see e.g. para 0100). The instant specification teaches that “the step of de-lithiating comprises electrochemically de-intercalating lithium from the prelithiated particles […] Typically, the step of de-lithiation results in a lithium concentration gradient wherein there is a first lithium concentration C1 near a particle surface and a second lithium concentration C2 inside the particle and away from the particle surface and wherein C1<C2 (see para 0045 of PGPub US2021/0013490). Zhamu is therefore interpreted to anticipate or render obvious the limitation wherein the lithium concentration at the surface is less than the lithium concentration inside the particle, including a lithium concentration near the surface of zero, since the prelithiated anodes are cycled, including discharged to electrochemically de-lithiate the anode materials, which the instant specification says typically results in the claimed concentration gradient.
To the extent that Applicant might argue that this is not explicitly taught in Zhamu within the terms of the instant claim language, the claims are rejected for lack of enablement under § 112 as discussed in the rejection of 9/7/2021 (mentioned in the note above), because Applicant has not pointed to a specific method step or structural feature which differs from the disclosure, teachings, ordinary skill in the art, and implied normal course of use as set forth in Zhamu.
Furthermore, while Zhamu does not explicitly teach one of the claimed polymers, it does teach PVdF and PVDF-copolymers, as well as other conventional binders in the art. Armand, meanwhile, directed towards a hybrid material comprising a polymer minder and a silicon species (para 0004), teaches that PEGDME was a substitutable equivalent for PEG in the art (paras 0011, 0030, etc.). Simple substitution of one known element for another to obtain predictable results has been found to be obvious. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). It would have been obvious to use a commercially available binder like PEGDME, since it was a known substitutable equivalent of binders like SBR and PEG.
Regarding Claim 3, Zhamu teaches:
wherein the particles have a protective shell (para 0036, Figs. 2-3) with a thickness from 1nm to 10 microns and a lithium ion conductivity of no less than 10-6 S/cm that embraces or encapsulates said active material particles (para 0016)
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]).
Regarding Claims 8 and 9, Zhamu teaches:
wherein the anode active material can comprise silicon in nanoparticle form (paras 0057 and 0059)
Regarding Claim 10, Zhamu teaches:
wherein the anode active material further comprises graphite or graphene sheets between the anode active material and the elastomeric polymer coating (claim 22, paras 0094-0095, etc.)
Regarding Claim 11, Zhamu teaches:
oxides, carbides, nitrides, etc. as alloys/dopants with metalloid semiconductors as was conventionally understood in the art (para 0057)
Regarding Claims 12-13 and 15, Zhamu teaches:
a mass of the powder formed into an electrode (claim 21) with optional conductive additive and binder (e.g. para 0002, examples) to form a battery with a cathode and an electrolyte (para 0100, claim 24)
Regarding Claims 14 and 16, Zhamu teaches:
combinations of anode active materials (para 0057) and silicon- or other metalloid-based active materials with active carbon forms (para 0098, etc.) wherein either or both are prelithiated
Regarding Claim 17, Zhamu teaches:
wherein the core comprises multiple anode active material particles comprising the prelithiated material of claim 1 (claim 21, Fig. 4)
Claim 6 is rejected under 35 U.S.C. 102/103 as being unpatentable over Zhamu (US 2017/0288211 to Zhamu et al.) in view of Zhamu2 (US 2017/0194663 to Zhamu et al.)
Regarding Claim 6, Zhamu teaches:
a prelithiated anode active material particle for use in a lithium battery, wherein said particle is capable of reversibly storing lithium ions therein during a charge or discharge of said battery and comprises an amount of lithium from 1-100% of a maximum lithium content contained in said anode active material particle (paras 0017-0019)
wherein the anode active material is encapsulated by elastomers that can be inert, such as a mixture or blend of elastomer and PEO/PPO/PAN, etc. (para 0028), thereby forming what is interpreted to read on the broadest reasonable interpretation of a “protecting shell that wraps around, embraces, or encapsulates said anode active material particle” as claimed
wherein the elastomer can be sulfonated elastomeric polymers like sulfonated PVDF and PVDF-HFP (para 0027)
in a matrix with lithium ion-conducting additives such as lithium salts like lithium perchlorate, lithium hexafluorophosphate, and other conventional lithium salts (paras 0025-0027)
While Zhamu does not explicitly teach that the lithium concentration near the particle surface is lower, or substantially lithium-free, in comparison to a higher lithium concentration inside the particles, Zhamu also teaches that such anode active material is intended for cycling in a cell (see e.g. para 0100). The instant specification teaches that “the step of de-lithiating comprises electrochemically de-intercalating lithium from the prelithiated particles […] Typically, the step of de-lithiation results in a lithium concentration gradient wherein there is a first lithium concentration C1 near a particle surface and a second lithium concentration C2 inside the particle and away from the particle surface and wherein C1<C2 (see para 0045 of PGPub US2021/0013490). Zhamu is therefore interpreted to anticipate or render obvious the limitation wherein the lithium concentration at the surface is less than the lithium concentration inside the particle, including a lithium concentration near the surface of zero, since the prelithiated anodes are cycled, including discharged to electrochemically de-lithiate the anode materials, which the instant specification says typically results in the claimed concentration gradient.
Zhamu does not explicitly teach e.g. e.g. NaOH in the lithium-containing salt, but Zhamu2, directed towards a conductive polymer matrix, teaches the lithium-containing species may be combined with a sodium salt, including (ROCO2Na)2 (para 0064) — which reads on “(CH2OCO2Na)2” as merely the simplest example of (ROCO2Na)2 — as a substitutable equivalent for e.g. LiOH, Li2O, Li2CO3, etc. Simple substitution of one known element for another to obtain predictable results has been found to be obvious. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Response to Arguments
The arguments submitted 5/7/2025 have been considered but do not place the application in condition for allowance. Armand is now cited for teaching that PEG and PEGDME were substitutable equivalents known in the art. Zhamu, previously cited, still renders obvious “(CH2OCO2Na)2”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Dignan, whose telephone number is (571) 272-6425. The examiner can normally be reached from Monday to Friday between 10 AM and 6:30 PM. If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Tiffany Legette, can be reached at (571)270-7078. Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Applicants are invited to contact the Office to schedule an in-person interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
/MICHAEL L DIGNAN/Examiner, Art Unit 1723