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
Applicant’s amendment and arguments, filed 11/06/25, have been fully considered. Claim(s) 10, 11, and 13–16 is/are amended; claim(s) 1–9, 17, and 18 remain(s) withdrawn, with claim 17 amended; and claim(s) 12, 19, and 20 is/are canceled; no new matter has been added. Examiner affirms that the original disclosure provides adequate support for the amendment.
Upon considering said amendment and arguments, the previous claim objections and 35 U.S.C. 112(b) rejection set forth in the Office Action mailed 08/06/25 has/have been withdrawn. However, the previous 35 U.S.C. 103 rejection has/have been maintained and altered as necessitated by Applicant’s amendment, as set forth below.
Claim Interpretation
The recitations of “branched-chain”, in light of the specification (¶ 0047–0052), seem to represent different categories of branched-chains versus requiring plural moieties within each chain. Therefore, it appears that for each type of branched-chain, prior art including at least one of the recited moieties would meet the respective branched-chain (e.g., a branched-chain with at least one alkane moiety would seem to meet the “alkanes branched-chain”, according to the spec.), which is also consistent with Applicant’s intended interpretation (Remarks, p. 12). This interpretation further applies to at least claims 11, 13, 14, and 16’s “alkanes branched-chain”, “ethers branched-chain”, and “halogens branched-chain”.
Claim Rejections - 35 USC § 103
The text forming the basis for the rejection under 35 U.S.C. 103 may be found in a prior Office Action.
Claim(s) 10, 11, and 13–16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qu et al. (WO 2020068870 A1) (Qu) in view of Lee et al. (US 20220102721 A1) (Lee).
Regarding claims 10, 11, 14, and 15, Qu discloses a method for preparing a negative electrode material (e.g., Ex. 1, ¶ 0089 and 0090), comprising adding a lithium source to a mixed solution comprising an aromatic composition and an organic solvent to form a lithiation solution (adding Li metal into solution of biphenyl and tetrahydrofuran (THF), ¶ 0089); wherein the lithiation solution comprises a Li-aromatic compound (e.g., Li-biphenyl, ¶ 0089), and adding a negative electrode raw material in a form of powder to the lithiation solution and then drying to obtain a pre-lithiated negative electrode material (adding Sn and P negative active powders to lithiation solution and drying, ¶ 0090).
Qu further generally discloses several examples of the aromatic compound, including not only the exemplified biphenyl, i.e., an unmodified aromatic compound, but also, e.g., 9,9-dimethylfluorene (e.g., ¶ 0079 and Sample 3, ¶ 0107), i.e., a branched-chain aromatic compound (as seen below), but fails to explicitly disclose an embodiment with both compounds in the same solution.
PNG
media_image1.png
133
182
media_image1.png
Greyscale
Qu is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely pre-lithiating negative electrode material.
As Qu recognizes biphenyl and 9,9-dimethylfluorene as equivalent aromatic compounds for pre-lithiation, it would have been obvious to one of ordinary skill in the art, before the claimed invention’s effective filing date, to routinely incorporate a mixture of these compounds with the reasonable expectation of forming a successful pre-lithiation solution and eventual negative electrode material (MPEP 2144.06 (I) and 2143 (A.)).
Thus, in incorporating 9,9-dimethylfluorene, Qu would disclose or render obvious that the aromatic composition comprises an aromatic compound having an alkanes branched-chain.
As noted above, Qu exemplifies several possible aromatic compounds, including the above biphenyl and 9,9-dimethylfluorene, while more broadly exemplifying formula (I) compounds (¶ 0069, reproduced below), which may be functionalized with a myriad of substituents such as alkyl or aryl groups (¶ 0069), but Qu fails to explicitly disclose halide or alkoxy substituents and, thus, that the other aromatic compound (e.g., biphenyl) in the aromatic composition has an ethers branched-chain or halogens branched-chain.
PNG
media_image2.png
59
97
media_image2.png
Greyscale
Lee, in teaching an anode pre-lithiation solution with an aromatic hydrocarbon-lithium complex (Abstract), teaches a similar general formula as Qu (see base biphenyl (Formula 1) and base naphthalene (Formula 2), ¶ 0038 and 0039), where substituents include C1–6 alkyl, C6–20 aryl, or C1–10 alkoxy (¶ 0039, 0040).
Lee is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely anode pre-lithiating solutions containing aromatic hydrocarbons.
As Lee recognizes alkyl, aryl, and alkoxy as equivalent substituents, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to routinely substitute Qu’s biphenyl with, e.g., Lee’s C1–10 alkoxy substituent or C1–6 alkyl halide substituent —such that the biphenyl would include an ether chain or halide chain, respectively—with a reasonable expectation of forming a successful compound for the aromatic composition and pre-lithiation solution (e.g., MPEP 2143 (B.) and 2144.06 (II)).
Regarding the biphenyl’s substituent’s being branched, one skilled in the art would recognize that only a finite number of constitutional isomers exists within C1–10 alkoxy or C1–6 alkyl halide and, more broadly, that the substituent itself, in being an ether or alkyl halide, must necessarily be straight-chain, branched-chain, or cyclic. The artisan would further realize that some orientation of the substituent must necessarily be chosen to be able to obtain the aromatic compound. In investigating the proper isomerism of the substituted biphenyl, then, it would have been obvious to routinely explore a branched-chain alkoxy or alkyl halide—such that the biphenyl would contain ethers branched-chain or halogens branched-chain, respectively, and, overall, that the aromatic composition would include two aromatic compounds having different branched-chains, i.e., 9,9-dimethylfluorene (“alkanes branched-chain”) and substituted biphenyl (“ethers branched-chain” or “halogens branched chain”)—with the reasonable expectation of producing successful compounds for the aromatic composition (MPEP 2143 (E.)).
Moreover, per MPEP 2144.09 (I and II), positional isomers—e.g., straight- versus branched-chain alkoxy/alkyl halide—are generally structurally similar enough to presume that such compounds possess similar properties, absent secondary considerations. As there appear to be no unexpected results in the instant specification from employing a branched-chain ether versus straight-chain, Examiner submits that the skilled artisan would reasonably expect success in selecting a branched-chain ether or branched-chain alkyl halide from Lee’s substituents.
It is submitted that the above disclosure further reads on the following:
(claim 11) at least feature (1) is satisfied because the alkanes branched chain in 9,9-dimethylfluorene comprises –CH3 (as depicted).
(claim 14) at least feature (1) is satisfied; i.e., the organic solvent comprises tetrahydrofuran (Qu’s ¶ 0089);
(claim 15) at least feature (1) is satisfied; i.e., the lithium source comprises lithium metal (Qu’s ¶ 0089).
Regarding claim 13, modified Qu discloses the method according to claim 10.
Although modified Qu, if selecting the ethers branched-chain aromatic compound (ether-substituted biphenyl) alongside the alkanes branched-chain aromatic compound (9,9-dimethylfluorene), fails to explicitly articulate these compounds’ weight ratios in the aromatic composition, the skilled artisan would understand that some molar ratio of the aromatic compounds must necessarily be selected to create the composition, further realizing that only two solutions exist for the molar ratios: they must be the same or different. In investigating the proper concentrations of each aromatic compound, then, it would have been obvious to routinely explore employing the aromatic compounds at the same molar ratio—so that each of the aromatic compound with alkanes branched-chain and aromatic compound with ethers branched-chain would constitute 50 mol% of the composition and, thus, satisfy the first-recited combination of ratios—with the reasonable expectation of producing a successful aromatic composition and eventual lithiation solution and negative electrode material (MPEP 2143 (E.)).
Regarding claim 16, Qu discloses the method according to claim 10, wherein the aromatic composition comprises an aromatic compound having alkanes branched-chain and an aromatic compound having halogens branched-chain (per claim 10, if selecting alkyl-halide-substituted biphenyl alongside 9,9-dimethylfluorene).
Qu further discloses that the active material may be silicon monoxide (SiO, ¶ 0060), as well as a separate embodiment immersing SiO into the pre-lithiation solution (Ex. 2, ¶ 0103), but fails to explicitly employ SiO in Ex. 1 above.
It would have been obvious to one skilled in the art, before the claimed invention’s effective filing date, to routinely employ SiO as the active material of the above embodiment—and, thus, add SiO to the lithiation solution—as suggested by Qu, with the reasonable expectation of producing a successful, pre-lithiated negative active material (e.g., MPEP 2143 (A.)).
Qu further discloses stirring before filtering (see reaction of active material with lithiation solution, followed by obtaining precipitates by centrifuging in ¶ 0090; Examiner submits that some degree of stirring would necessarily occur before the filtering as part of reacting SiO with the lithiation solution, as in Ex. 1’s reaction), washing with an organic solvent (THF, ¶ 0090), filtering and drying to obtain a pre-lithiated silicon monoxide material (¶ 0090; it is submitted that some additional degree of filtering would necessarily occur alongside vacuum-drying to obtain the desired bulk material versus any residual solvent or impurities).
Assuming, arguendo, that filtering did not necessarily occur alongside drying, it would have been obvious to filter to be able to obtain the purified SiO material for further anode processing.
Response to Arguments
Applicant's arguments with respect to claim 10 have been fully considered but are unpersuasive.
Applicant argues that Qu’s redox potential difference fails to recognize Applicant’s selected compounds that create a potential gradient relative to lithium to drive Li+ intercalation. Examiner respectfully submits 1) that such is unclaimed; 2) as Applicant admits, Qu still creates a potential difference within the electrode to promote Li+ migration and, thus, appears to achieve a similar effect; and 3) arguendo, if Qu does not necessarily promote Li+ transmission by creating a potential difference, it is unclear that Applicant has achieved truly unexpectedly superior results, as expounded upon below. Rather, per MPEP 2145 (II), Applicant’s recognizing another advantage that would flow naturally from following the prior art’s suggestion cannot be the basis for patentability when the differences would otherwise be obvious.
Applicant next argues that one skilled in the art would not combine Qu with Lee because Lee uses different solvents than Qu. Examiner respectfully submits that Lee allows THF (e.g., ¶ 0033), just as Qu does (e.g., Ex. 1, ¶ 0089/0090), rendering this argument unpersuasive.
Applicant then argues that Qu’s compound, if modified with Lee’s substituent(s), would cease to operate as Qu intends—i.e., form a passivating film atop the electrode or form redox gradients. Examiner respectfully asserts that Qu discloses utility with a broad class of monocyclic and polycyclic aromatics (e.g., ¶ 0068–0074), including biphenyl (e.g., Ex. 1, ¶ 0089), further disclosing that such may be substituted (¶ 0074). As Lee teaches a substantially similar biphenyl or naphthalene base structure that may be alkoxy- or alkyl-halide functionalized (¶ 0037–0039), where the aromatic compound is also used in an anode-lithiating solution (e.g., ¶ 0005–0008), where the anode may contain Si (see composite anode, e.g., ¶ 0008 and 0045), Examiner believes that the skilled artisan would substitute Qu’s biphenyl with Lee’s alkoxy or alkyl halide and reasonably expect similar results—a lithium source for Li+ conductivity in the electrode—without frustrating Qu’s purpose. Thus, Applicant’s auxiliary argument that modifying Qu with Lee would fail to achieve Qu’s electrode protection and potential gradient appears speculative and conclusory (see MPEP 2145 (I), where Applicant’s arguments cannot substitute for evidence).
Applicant then argues that Qu and Lee are both silent on claim 10’s combination of an alkanes-branched-chain aromatic and a halogens-branched-chain or ethers-branched-chain aromatic. Examiner respectfully refers Applicant to claim 10’s rejection, where Qu combined with Lee renders both combinations obvious.
Further, as noted above, Applicant appears to argue that the instant disclosure achieves unexpectedly superior Li+ transmission relative to Qu and/or Li. Examiner respectfully submits that all of Applicant’s inventive exs. employ only straight-chain substituents, whereas Qu/Li render obvious the combination of aromatics with branched-chain substituents of different classes. Therefore, as Applicant has not compared the results to the closest prior art to determine that the prior art cannot achieve such results, this argument is unpersuasive (MPEP 716.02(c)). By extension, Applicant’s data appear incommensurate with claim 10 at least as follows:
Claim 10 allows any concentration of the alkanes-branched-chain aromatic and the ethers-branched-chain/halogens-branched-chain aromatic, whereas, e.g., spec.’s ¶ 0125 appears to indicate that the molar proportions influence the results given the halogen-substituted aromatic’s higher potential than the alkyl- or ether-substituted aromatics; it is unclear whether Applicant’s results would occur for any combination of the recited aromatics at any respective concentration.
Claim 10 allows any negative electrode material, whereas the results appear tailored to Si/C-based materials (see also spec.’s ¶ 0142, which notes a particular preference for SiO@C due to its specific interaction with the aromatic and the Li source to improve battery efficiency); it is unclear if the results would occur for any negative electrode material.
Claim 10’s scope is to producing a negative active material, whereas the results stem from incorporating the material into a negative electrode alongside a positive electrode, separator, and electrolyte in a lithium battery (e.g., ¶ 0229).
Thus, per MPEP 716.02(d), this argument is further unpersuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOHN S MEDLEY whose telephone number is (703)756-4600. The examiner can normally be reached 8:00–5:00 EST M–Th and 8:00–12:00 EST F.
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, Jonathan Leong, can be reached on 571-270-192. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.S.M./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 12/29/2025
Prosecution Insights