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 arguments, filed 06/04/26, have been fully considered. Claim(s) 1–3, 8–12, and 16–20 stand(s) as originally or previously presented; claim(s) 4–7 remain(s) withdrawn; and claim(s) 13–15 is/are canceled.
Upon considering said arguments, the previous 35 U.S.C. 103 rejection set forth in the Office Action dated 02/04/26 has been maintained, as set forth below.
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) 1–3, 8–12, and 16–20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (WO 2020113539 A1; citations to English equivalent US 20240213533 A1) in view of Choi et al. (US 20160064773 A1, from 08/18/25 PTO-892) (Choi).
Regarding claims 1–3, 16, and 19, Chen discloses an electrochemical device (lithium battery, e.g., Abstract and Ex. 1, ¶ 0040, further meeting claim 19) comprising a non-aqueous electrolytic solution (e.g., Abstract and Ex. 1, ¶ 0039), wherein the non-aqueous electrolytic solution contains a metal-organic framework containing an azole-based organic molecule having a hydrophobic group, and a metal atom (MOF comprising ZIF-8, i.e., zinc bound to 2-methylimidazole, Ex. 1, ¶ 0039, further reading on claims 2 and 3).
Chen further discloses that such MOFs are advantageous for, e.g., adsorption due to their controllable pore size (e.g., ¶ 0003, 0005) but fails to explicitly articulate a pore diameter of 2–5 Å (claim 1) or 2–3 Å (claim 16).
Choi, in teaching an analogous electrolyte including an IL disposed in pores of a MOF (Abstract), where the MOF may include an imidazole-based compound (¶ 0050, 0052), teaches a spherical pore diameter of preferably 0.1~10 nm (¶ 0083), i.e., 1~100 Å.
It would have been obvious to one of ordinary skill in the art, before the claimed invention's effective filing date, that Chen's porous MOF must necessarily be incorporated with some pore diameter, and, as demonstrated by Choi, the skilled artisan would find it obvious to employ, e.g., a 1~100 Å spherical pore diameter and reasonably expect to produce a suitable MOF with appropriate pore size.
Importantly, even if Choi fails to explicitly teach this pore diameter as “a diameter of the largest sphere in which each atom in a crystal can be included when the atom is assumed to be a rigid sphere with a van der Waals radius" (as in instant spec.’s special definition in ¶ 0071), the skilled artisan would reasonably recognize that the pores must possess some minimum size/diameter for the MOF to exist—as a MOF is a 3-D structure with a metal coordinated to organic ligands, where the spaces between the ligands create the pores (as seen in Chen’s ¶ 0003)—as well as impart the high specific surface area that Chen desires (e.g., ¶ 0062). Conversely, the artisan would also presumably realize that making the pores too large would necessarily weaken the MOF’s mechanical characteristics (as seen in Choi’s ¶ 0090 and 0336). To balance these effects, then, it would have been obvious to arrive at the instant 2–5 Å (claim 1) or 2–3 Å (claim 16) by routinely optimizing the pore diameter, including within Choi’s apparent overlap (MPEP 2144.05 (II)).
Regarding claims 8–12, modified Chen discloses the electrochemical device according to claims 1 and 2, wherein the azole-based organic molecule has the hydrophobic group, which is an alkyl group (methyl in Chen’s 2-methylimidazole above), and the metal atom is zinc (per above); the azole-based organic molecule is a molecule represented by the recited formula (1), where R1 is an alkyl group, and R2 and R3 are each hydrogen (Chen’s 2-methylimidazole).
Regarding claim 17, modified Chen discloses the electrochemical device according to claim 1, wherein the non-aqueous electrolytic solution contains the metal-organic framework in an amount of 3 wt% with respect to a total amount of the non-aqueous electrolytic solution (Chen’s Ex. 1, ¶ 0039), which falls within 0.1–50 wt%.
Regarding claim 18, modified Chen discloses the electrochemical device according to claim 1, wherein the non-aqueous electrolytic solution further comprises an organic solvent and an electrolyte salt (propylene carbonate/ethylene carbonate/dimethyl carbonate/methyl acetate and LiPF4/LiBOB, respectively, Chen’s ¶ 0039).
Regarding claim 20, modified Chen discloses the electrochemical device according to claim 1, wherein the electrochemical device is a lithium ion secondary battery (Chen, e.g., ¶ 0040), the lithium ion secondary battery further contains a positive electrode and a negative electrode (Chen, e.g., ¶ 0016 and 0040), and each of the positive electrode and the negative electrode has a layer capable of occluding and releasing a lithium ion (necessarily via each electrode’s active material layer for lithium battery to function, as seen in Chen’s ¶ 0002 and implied at least in NMC523 positive electrode material in ¶ 0040).
Response to Arguments
Applicant’s arguments, as well as 1.132 declaration filed 06/04/26, with respect to claim 1 have been fully considered but are unpersuasive.
Applicant argues (point A.) that neither Chen nor Choi suggests a pore diameter of 2–5 Å because Chen’s disclosure is qualitative without providing a range, and Choi’s range of 0.1~10 nm, i.e., 1~100 Å, is inapplicable given the preferred range of 1~6 nm, or 10~60 Å. For the argument against Chen, refer to the below response regarding motivation to optimize. For the argument against Choi, Examiner respectfully disagrees that the preferred range directs one skilled in the art away from 0.1~10 nm. Rather, a reference is good for all it would have reasonably suggested to one of ordinary skill, and preferred embodiments do not teach away from the broader disclosure without actively discrediting the broader disclosure (MPEP 2123).
Here, the skilled artisan would have realized that the MOF, being intrinsically porous, must necessarily include some pore diameter and, thus, would have turned to Choi’s 1~100 Å and, specifically, would have routinely selected 2–5 Å from this overlap and reasonably expected to achieve a successful MOF given that Choi does not actively discredit this broader range. The premise of MPEP 2144.05 (I) is that the skilled artisan would have reasonably expected success from selecting any value within the broader overlap, even values at or near the range’s extremes, absent demonstrated criticality. Examiner responds to such alleged criticality below.
Although Applicant argues that Choi’s diameter is for storing bigger molecules like ILs compared to merely trapping gas and water, as in the instant disclosure, Examiner again respectfully submits that Choi explicitly allows 1~100 Å, which plainly overlaps 2–5 Å to create a prima facie case of obviousness, as established above, making this argument unpersuasive.
Applicant further argues (point B.) that the Office’s position of routine optimization of the pore diameter is improper because such diameter was not recognized as a result-effective variable. Examiner respectfully disagrees because MPEP 2144.05 (II) states that, post-KSR, the presence of a known result-effective variable would be one but not the only motivation for a person of ordinary skill to optimize given that there is an articulated rationale for such.
Here, Chen recognizes that MOFs, as porous materials, display adsorption properties (¶ 0004) and enhance electrolyte solubility and Li+ conductivity (¶ 0006), being advantageous for their high specific surface area (¶ 0062), so the skilled artisan would understand that the pores must be large enough to carry out such functions and impart the desired surface area. Meanwhile, the artisan would further recognize that making the pores too large would necessarily weaken the MOF’s mechanical properties because the pore, by definition, is an absence of material, as seen in Choi’s ¶ 0090 and 0336. The skilled artisan, then, would have arrived at the claimed range by routinely optimizing the pore size, including within Choi’s suggested 1~100 Å, to balance these considerations.
Though Applicant further alleges that Choi’s cautioning against making the diameter too large does not lead the skilled artisan toward the narrow 2–5 Å, again, Choi recognizes utility with any value within 1~100 Å, so Examiner respectfully maintains that the artisan would have arrived at the instant range by balancing surface area with mechanical integrity without demonstrated criticality.
Although Applicant further argues that Choi’s recognizing pore size as affecting ion conductivity or mechanical strength does not make obvious selecting the instant range for the unexpected effects of gas suction, Examiner respectfully submits that 1) it is unclear that such gas capture is entirely unexpected given that MOFs are well known for their adsorption properties (as Chen notes in ¶ 0004)—which the skilled artisan would recognize is dictated by the pore size as the cavity for occluding the adsorbate—and 2) even if the prior art may not have recognized it, it is unclear that this gas capture is not simply a latent property from Chen’s MOF (MPEP 2145 (II)). That the skilled artisan would have been motivated to optimize to reach the instant pore diameter for other reasons (surface area, mechanical stability) does not negate the obviousness of optimizing.
Applicant further argues (point C.) that combining Chen and Choi uses impermissible hindsight. Applicant specifically submits that Chen’s MOF-functionalized, low-temperature additive functionalized with an azole MOF like ZIF-8 for carbonate-based liquid electrolytes is different than Choi’s carboxylate MOFs as fillers for solid polymer electrolytes, so Choi’s 1~100 Å diameter would not apply to Chen’s disclosure. It is unclear, however, what disqualifies Choi’s disclosure from applying in light of the above response that Chen’s MOF must necessarily possess some pore size regardless of application, so the skilled artisan would have looked to other sources like Choi and reasonably expected success. Every case of obviousness involves hindsight to a degree, but as long as the modification employs only the knowledge of one skilled in the art before the claimed invention’s effective filing date, the modification is proper (MPEP 2143 (X.)(A.)). Regarding Applicant’s auxiliary argument repeating that Choi’s preferred range is > 5 Å, Examiner respectfully echoes that such does not teach away from 1~100 Å without actively discouraging the broader range, and the skilled artisan would have reasonably expected success from choosing any value within 1~100 Å, including 2–5 Å.
Applicant finally argues (point D.) that the 1.132 declaration establishes unexpected results. Applicant specifically argues that Table 1’s Comp. Ex. A, with pore size 1.9 Å, and Comp. Ex. B, with pore size 7.5 Å, yields inferior gas suction. Examiner respectfully disagrees. Rather, CE A and B vary pore size outside the recited range as well as change MOF type (see ZIF-72 and ZIF-302 with different ligands than ZIF-8), so it is unclear if the poorer performance is isolated to the pore size. As unexpected results must compare to the closest prior art—Chen’s ZIF-8—it is unclear that the pore size in itself is truly critical (MPEP 716.02(d) and (e)).
Assuming, arguendo, that the results were unexpectedly superior, the results appear incommensurate with claim 1 at least as follows:
Claim 1 allows any concentration of the MOF in the solution. It is unclear if the results would occur at, e.g., 1 ppb MOF.
Claim 1 is generic to any azole-based MOF, whereas the results are tailored to ZIF MOFs as well as an Fe-imidazole MOF. It is unclear if the results would occur using any azole-based MOF.
Claim 1 allows any type of non-aqueous solvent in the solution. As solvent identity is a well known parameter for tailoring gas generation, it is unclear if the results would occur using any non-aqueous solvent.
Claim 1 allows any electrolytic salt at any concentration in the solution. It is unclear that the same degree of gas generation would occur using any salt at any concentration (see decomposition of Li salt to produce gas in instant spec.’s ¶ 0014).
Claim 1 allows any electrochemical device. It is unclear if the results would occur using, e.g., a Mg-ion battery.
As MPEP 716.02(d) requires unexpected results to be commensurate with the claimed scope, absent additional recitation or explanation resolving such discrepancies, this argument is further unpersuasive.
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 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
/Haroon S. Sheikh/Primary Examiner, Art Unit 1751
Prosecution Insights