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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 24 March 2026 has been entered.
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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-3, 6-14 and 16-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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. The claims recite the limitation “without substantial reduction of the Li ion”. However, this does not appear to be supported by the disclosure as originally filed.
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.
Claim 1-3, 6-14 and 16-22 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.
The term “substantially” in claim 1 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term “substantially” renders indefinite the degree of reduction of lithium allowed.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 3, 6-12, 16, 17, 18, 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0341050 A1 to Underwood et al. (Underwood) in view of US 2022/0376223 to Yadav et al. (Yadav) and further in view of US 2021/0381115 A1 to Kang et al. (Kang).
As to claims 1, 16 and 17, Underwood teaches a method comprising electrolytically extracting lithium, for the purpose of downstream battery usage, from an aqueous lithium solution wherein the aqueous lithium solution is formed as an anolyte on an anode side of a lithium ion selective membrane and an electric field is applied between the anode and a cathode, such as a manganese dioxide cathode, in a catholyte on a cathode side of the ion selective membrane (Abstract; Paragraphs 0003, 0007, 0062, 0089, 0097; Figures 3A, 3B and 3D). Underwood further teaches that the catholyte, through which the extracted lithium ions pass prior to reaching the cathode, comprises a nonaqueous liquid electrolyte (Paragraphs 0013 and 0081; Figures 3A, 3B, 3D).
However, Underwood fails to specifically teach that the lithium ions are intercalated into the cathode material, instead contemplating surface deposition with the reduction of lithium ions. However, Yadav also discusses the production of battery materials formed via electrolytic movement of lithium ions on a cathode comprising manganese dioxide and teaches that by providing the cathode material as a surface paste of the appropriate form of manganese dioxide the lithium ions can instead be intercalated into the paste and form a material for batteries that has enhanced charge transfer characteristics and conductivity (Paragraph 0003, 00013, 0015, 0018, 0019 and 0029). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the cathode of Underwood with a form of manganese dioxide applied as a paste in order to allow for the extracted lithium ions of Underwood to be intercalated as lithium ions at the cathode of Underwood such that the battery material formed has enhanced charge transfer characteristics and conductivity as taught by Yadav without substantial reduction of the lithium ions.
Underwood further teaches that the nonaqueous electrolyte comprises an organic solvent (Paragraph 0082). However, Underwood fails to further teach that the nonaqueous electrolyte comprises an active salt. However, Kang also discusses the electrolytic production of lithium in a membrane separated electrolytic cell wherein the anolyte is aqueous and the catholyte is nonaqueous and comprises an organic solvent. Kang teaches that the nonaqueous anolyte should further comprises a lithium salt, such as, LiFSI, LiTFSI or LiBETI, dissolved in an ether based solvent, in order to ensure consistent lithium availability in the cathode compartment for lithium deposition (Paragraphs 0024 and 0031). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the nonaqueous liquid of Underwood with a liquid formed of a lithium salt, such as LiFSI, LiTFSI or LiBETI, in an ether based solvent in order to ensure consistent lithium availability as taught by Kang.
As to claims 2, 7, 8, 9, 10, 11 and 12, the combination of Underwood, Yadav and Kang teaches the method of claim 1. As discussed above, the combination teaches that the cathode material comprises manganese dioxide. Underwood further teaches that the aqueous Li solution comprises seawater, brine, an underground source of concentrated salt water (geothermal), industry wastes (wastewater), or a recycle solution (Paragraph 0097).
As to claim 3, the combination of Underwood, Yadav and Kang teaches the method of claim 1. Yadav further teaches that one of the appropriate forms of manganese dioxide for intercalation is electrolytic manganese dioxide (Paragraph 0015).
As to claim 6, the combination of Underwood, Yadav and Kang teaches the method of claim 1. Underwood further teaches that the applied electric field has a voltage of, for example, about 2V (Paragraph 0069).
As to claim 18, the combination of Underwood, Yadav and Kang teaches the method of claim 3. Yadav further teaches that the process conditions should be chosen in order to achieve the desired metallic ion density within the active cathode material (Paragraph 0035). Thus, rendering obvious optimizing the Li content as desired, and rendering obvious an Li content as claimed. However, it is further important to note that the claim does not specify at which point in the process this content is achieved, thus, clearly, the Li content would be only very slightly above zero during the first moments of operation, and meet the claim limitations.
As to claim 19, the combination of Underwood, Yadav and Kang teaches the method of claim 3. As discussed in claim 1 above a battery material is produced from the lithium intercalated manganese dioxide of the combination.
As to claim 21, Underwood teaches a method comprising electrolytically extracting lithium, for the purpose of downstream battery usage, from an aqueous lithium solution comprising seawater, brine or a recycle solution wherein the aqueous lithium solution is introduced, as an anolyte, into a first chamber of an electrolytic device, the electrolytic device comprising an anode, a cathode comprising manganese dioxide and a lithium ion selective membrane between the anode and the cathode; the first chamber contacts the anode and a first surface of the membrane; a second chamber contacting the cathode and a second surface of the membrane; the second chamber comprising a nonaqueous liquid catholyte. The method comprising applying an electric field to the device and selectively permitting lithium ions to flow through the membrane and into the second chamber for deposition on to the cathode (Abstract; Paragraphs 0003, 0007, 0062, 0089, 0097; Figures 3A, 3B and 3D).
However, Underwood fails to specifically teach that the lithium ions are intercalated into the cathode material, instead contemplating surface deposition with the reduction of lithium ions. However, Yadav also discusses the production of battery materials formed via electrolytic movement of lithium ions on a cathode comprising manganese dioxide and teaches that by providing the cathode material as a surface paste of the appropriate form of manganese dioxide the lithium ions can instead be intercalated into the paste and form a material for batteries that has enhanced charge transfer characteristics and conductivity (Paragraph 0003, 00013, 0015, 0018, 0019 and 0029). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the cathode of Underwood with a form of manganese dioxide applied as a paste in order to allow for the extracted lithium ions of Underwood to be intercalated as lithium ions at the cathode of Underwood such that the battery material formed has enhanced charge transfer characteristics and conductivity as taught by Yadav without substantial reduction of the lithium ions.
Underwood further teaches that the nonaqueous electrolyte comprises an organic solvent (Paragraph 0082). However, Underwood fails to further teach that the nonaqueous electrolyte comprises an active salt. However, Kang also discusses the electrolytic production of lithium in a membrane separated electrolytic cell wherein the anolyte is aqueous and the catholyte is nonaqueous and comprises an organic solvent. Kang teaches that the nonaqueous anolyte should further comprises a lithium salt, such as, LiFSI, LiTFSI or LiBETI, dissolved in an ether based solvent, in order to ensure consistent lithium availability in the cathode compartment for lithium deposition (Paragraphs 0024 and 0031). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the nonaqueous liquid of Underwood with a liquid formed of a lithium salt, such as LiFSI, LiTFSI or LiBETI, in an ether based solvent in order to ensure consistent lithium availability as taught by Kang.
Underwood further teaches that the applied electric field has a voltage of, for example, about 2V (Paragraph 0069).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Underwood, Yadav and Kang as applied to claim 1 above, and further in view of the Non-Patent Literature “Preparation and ionic conduction of Li1.5Al0.5Ge1.5(PO4)3 solid electrolyte using inorganic germanium as precursor” to Sun et al. (Sun).
As to claims 13 and 14, the combination of Underwood, Yadav and Kang teaches the method of claim 1. As discussed above, Underwood teaches that the membrane is a lithium ion selective membrane, but fails to teach the specific membranes as claimed. However, Sun also discusses lithium ion selective membranes for electrolytic lithium transfer and teaches that Li1.5Al0.5Ge1.5(PO4)3 is a desirable membrane in terms of ionic conductivity, wide electrochemical window and high interfacial stability (Introduction). Therefore, it would have been obvious to one of ordinary skill in the art to form the membrane of the combination of Li1.5Al0.5Ge1.5(PO4)3 in order to form a membrane that has a high ionic conductivity, a wide electrochemical window and a high interfacial stability as taught by Sun.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Underwood, Yadav and Kang as applied to claim 19 above, and further in view of US 2021/0167432 to Han et al. (Han).
As to claim 20, the combination of Underwood, Yadav and Kang teaches the method of claim 19. As discussed above, the combination teaches that the lithium intercalated manganese dioxide, LiMnO2, is used for forming a battery cathode. However, the combination fails to further teach that the cathode material comprises the materials as further claimed. However, Han also discusses the formation of battery cathodes and teaches that in addition to LiMnO2 a cathode battery can effectively be formed with combinations including spinel LiMn2O4 and LiMnxNiyCoxO2 (wherein x+y+z=1) (Paragraph 0045). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize the generated LiMnO2 in combination with, for example, LiMn2O4 and LiMnxNiyCoxO2 (wherein x+y+z=1) as taught by Han with the expectation of effectively forming the battery cathode.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Underwood, Yadav and Kang as applied to claim 21 above, and further in view of Sun.
As to claim 22, the combination of Underwood, Yadav and Kang teaches the method of claim 21. As discussed above, Underwood further teaches that the aqueous Li solution comprises seawater, brine or a recycle solution (Paragraph 0097), Underwood further teaches that the nonaqueous electrolyte comprises an organic solvent (Paragraph 0082), and Kang teaches a lithium salt, such as LiFSI, LiTFSI or LiBETI.
As discussed above, Underwood teaches that the membrane is a lithium ion selective membrane, but fails to teach the specific membranes as claimed. However, Sun also discusses lithium ion selective membranes for electrolytic lithium transfer and teaches that Li1.5Al0.5Ge1.5(PO4)3 is a desirable membrane in terms of ionic conductivity, wide electrochemical window and high interfacial stability (Introduction). Therefore, it would have been obvious to one of ordinary skill in the art to form the membrane of the combination of Li1.5Al0.5Ge1.5(PO4)3 in order to form a membrane that has a high ionic conductivity, a wide electrochemical window and a high interfacial stability as taught by Sun.
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive.
Applicants argue that the combination of Underwood with Yadav is improper as the principle of operation of Underwood is the surface deposition and reduction of lithium and thus modifying this to intercalation of ion without substantial reduction is expressly contrary to the principle of operation. However, the Examiner maintains that this interpretation is too narrow of an interpretation of the principle of operation of Underwood. Underwood is directed towards creating lithium battery material electrolytically from available lithium containing sources such as brine. Yadav teaches that lithium ion can instead be inserted electrolytically to a cathode in order to form an improved battery material. The Examiner thus maintains that the modification of Underwood such that lithium ions can be inserted rather than deposited would have been obvious and beneficial to one of ordinary skill in the art at the time of filing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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