DETAILED ACTION
Notice to Applicant
In the amendment dated 2026/01/16, the following has occurred: Claim 1 has been amended; Claims 6-19 and 21 have been (previously) canceled.
Claims 1-5 and 20 are pending and are examined herein. This is a 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.
Response to Arguments
The arguments filed 2026/01/16 have been considered but are not persuasive. The new amendments introduce new matter and are indefinite. Applicant’s arguments concerning the obviousness rejections appear to be conclusory, grounded in supposed differences not found in the instant claim language, or premised on indefinite “performance requirements.” All claims are now rejected over § 112(a) and 112(b). The obviousness rejections are maintained.
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.
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.
Claims 1-5 and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to require “wherein said lithium-containing polymeric film (1) does not dissolve in organic liquid electrolytes, (2) exhibits no chemical changes upon cycling, and (3) is not affected by electrochemical cycling.” None of these characteristics are explicitly found in the specification as written. In the Remarks filed 1/16/2025 Applicant asserts that “No new matter has been added,” but does not point to anything in the specification that would provide support for these amendments. The closest support for the instant amendments might appear to come from instant paragraph 0015, which says: “The protected lithium metal electrodes have little to no formation of SEI and dendrite growth” (see instant PGPUB US 2022/0238857). The specification does not provide explicit evidence, however, of “no chemical changes” and “no affect” of any kind, whatsoever, upon the polymeric film during cycling. It is, frankly, unclear whether “little to no formation of SEI” is a rhetorical expression meaning “some minor but insignificant changes” (which would exclude claim limitations like “no affect”) or whether there is actual scientific evidence and backing for enabling a conformal layer with literally no chemical change or affect upon cycling—though, for how many cycles?
The claims are therefore rejected for lack of written description. The dependent claims are rejected for depending on claim 1.
Claims 1-5 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
As pointed out above, there is no support in the specification for the newly added limitations: “wherein said lithium-containing polymeric film (1) does not dissolve in organic liquid electrolytes, (2) exhibits no chemical changes upon cycling, and (3) is not affected by electrochemical cycling.” The Remarks filed 1/16/2026 suggest that the limitations were added to overcome the prior § 112(b) rejections of the claims, which found that the limitation requiring the polymeric film was “stable in said organic liquid electrolytes” was indefinite (see the Non-Final Rejection of 2025/10/17), as well as to overcome the prior art.
First, it is unclear how characteristic (2) is supposed to be interpreted in light of characteristic (3). If the film “is not affected” by cycling tout court it is unclear why Applicant has amended the claim to also require “no chemical changes upon cycling.” If the Office assumes that Applicant was intentional about including both (2) and (3), such that (3) does not render (2) completely redundant, it is unclear what exactly Applicant means by “not affected.”
Second, it is unclear what is meant by “cycling.” One cycle? two cycles? 1000 cycles? The claim appears to require no chemical change—no effect of any kind, in fact—for cycling indefinitely. But this does not appear to be supported and seems implausible. The metes and bounds of the claims concerning what “cycling” means is therefore indefinite.
Third, Applicant argues in the Remarks filed 2026/01/16 that Heiska, cited for teaching LiEG, uses a different LiEG (mono-lithium) that is different from the claimed invention (with di-lithium ethylene glycoxide, see Remarks p. no. 6). Applicant further presents a conclusory argument that the differences in the LiEG mean that the prior art does not meet the “performance requirements” of characteristics (1)-(3). The Office notes that this argument appears to be merely the argument of attorney, unsupported by evidence either in the instant specification or filed affidavits. Nonetheless, Applicant has pointed to a fatal ambiguity in claim terms like “LiEG,” “LiHQ,” and “LiGL.” If the chemical composition matters, like Applicant appears to argue, then the claims need to reflect the composition. It is unclear what LiEG, LiHQ, and LiGL mean—are they terms known in the art to read on references like Heiska or are they only what Applicant says they are? Claims 2-5 are therefore rejected for indefiniteness in those claim terms.
Finally, insofar as Applicant merely intended the 3 characteristics to be evaluated relative to conventional electrodes which form prominent SEI layers, it is still unclear why Applicant thinks that this “relatively unaffected” limitation would overcome prior art that teaches conformal coatings of Heiska and Kazyak. That is, it is unclear on what basis Applicant thinks that the instant claim amendments might apply to the instant coatings but do not apply to Heiska and Kazyak.
The claims have been interpreted broadly to read on conformal coatings like those in Heiska and Kazyak absent persuasive argument grounded in evidence found in the record.
Note on Claim Interpretation
Claim 1 now requires “having sufficient mechanical strength to inhibit Li-dendritic growth; having sufficient elasticity and flexibility to accommodate a volume of Li stripping and plating.” These properties are not further specified, and are deemed to be inherent properties of the particular layer provided. While some dependent claims indicate what the Li-containing polymer film actually is (e.g. LiEG, LiHG, etc.), claim 1 appears to be directed towards essentially any “lithium-containing polymer film” said to have those properties. The specification itself does not appear to enable the whole universe of polymer films having such properties, so that the limitations have been interpreted to refer to inherent properties of similar kind of metalcone films known in the prior art and the specific films claimed in the dependent claims. The Office points out that “inhibition of Li-dendritic growth” and “accommodating volume change” are interpreted as relative properties in comparison to a lithium anode with no coating whatsoever, and that such properties are therefore a relatively low bar absent quantitative limitation: less dendritic growth than a lithium anode by itself, and accommodating some minimal amount of volume change.
Claim 1 also requires that the “protective lithium-containing polymeric film” also is “deposited on Li anodes directly at low temperatures less than 180 °C.” The Office points out that the claims are directed towards an apparatus—“a battery.” Limitations concerning process steps for forming the apparatus are only afforded patentable weight insofar as they imply necessary structural features not found through any other process. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113 [R-1].
Claim Rejections - 35 USC § 103
Claims 1, 2, 5, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Elam (US Patent No. 10,553,874 to Elam et al.), in view of Heiska (Heiska et al. “CO2-based atomic/molecular layer deposition of lithium ethylene carbonate thin films.” Nanoscale Adv., 2020, 2, 2441) and/or Kazyak (Kazyak et al. “Molecular layer deposition of Li-ion conducting ‘Lithicone’ solid electrolytes.” Chem. Commun., 2020, 56, 15537).
Regarding Claim 1, Elam teaches:
forming an “artificial SEI,” conformal thing film on a lithium anode surface through ALD and MLD for use in a battery (column 4 lines 32-49)
the protective thin film being ionically conductive, preventing dendrites, and accommodating volume change, or otherwise “stable” in an organic electrolyte (column 9, etc.)
the thin film comprising a hybrid metalcone layer, that can be formed from the metal oxides of, among other things, and esters of ethylene glycol (column 8 lines 31-52)
Elam does not explicitly teach an example with a lithium-containing “lithicone” material. Heiska, however, from the same field of invention, teaches LiEG formed via ALD/MLD processes to form an artificial SEI layer on an anode with high lithium conductivity (chart 1, abstract, etc.). Heiska further teaches that this layer functions as a stable substitute for conventional SEI layers in the art (p. 2441) similar to the instant invention, and would be expected to have little chemical change upon cycling. Kazyak, also from the same field of invention, teaches forming a “protective layer” that is also a solid electrolyte conducting ions, from Li-containing “lithicone” films deposited via MLD (pp. 15537-8). It would have been obvious to use a lithicone-type film, such as those described in Heiska and Kazyak, in the invention of Elam, to form an artificial SEI film layer having lithium in the layer already, and being a good ionic conductor. 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). while also protecting the surface of the anode.
Regarding Claims 2 and 5, Elam teaches:
use of an organic electrolyte comprising conventional carbonate mixtures known in the art and conventional lithium salts, such as lithium hexafluorophosphate (column 10)
US 2015/0364747 to Elam et al., also directed towards a battery with an anode having a protective layer, teaches that a conventional electrolyte was 1.2 M LIPF6 in EC:EMC 3:7 (¶ 0113). It would have been obvious to use conventional organic electrolytes, such as those claimed, absent some finding of unexpected results. 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).
Regarding Claim 20, Elam teaches:
a separate organic electrolyte (column 9, etc.)
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Elam (US Patent No. 10,553,874 to Elam et al.), in view of Heiska (Heiska et al. “CO2-based atomic/molecular layer deposition of lithium ethylene carbonate thin films.” Nanoscale Adv., 2020, 2, 2441) and/or Kazyak (Kazyak et al. “Molecular layer deposition of Li-ion conducting ‘Lithicone’ solid electrolytes.” Chem. Commun., 2020, 56, 15537), in further view of Basu (US Patent No. 11,990,609 to Basu et al.).
Regarding Claims 3-4, Elam does not teach:
hydroquinone and glycerol
Basu, however, from the same field of invention, regarding a protective polymer film deposited via scalable alternatives to ALD (column 2 lines 53-65), teaches that ethylene glycol, glycerol, and hydroquinone were substitutable equivalents for the deposition of X-“cone” layers (column 7 lines 1-10). 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 HQ and GL in place of EG absent evidence of unexpected results.
Conclusion
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.
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