DETAILED ACTION
Status of the Claims
Applicant’s amendment filed 23 June 2026 is acknowledged. Claim 1 has been amended, claim 3 has been canceled, claims 8-12 remain withdrawn, and claims 1, 2, and 4-12 remain pending.
Applicant’s argument regarding the replacement of Yoon’s hexagonal boron nitride with Arslan’s reduced graphene oxide is persuasive. However, a new ground of rejection is presented below, which is NOT necessitated by amendment, and so this action is made NON-FINAL.
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 .
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.
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.
Claim(s) 1, 2, and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoon et al. (US 2021/0013514; hereinafter “Yoon”; listed in the IDS filed 23 December 2022), in view of Yang et al. (PIM-1 as an artificial solid electrolyte interphase for stable lithium metal anode in high-performance batteries”, Journal of Energy Chemistry 42 (2020) 83-90; hereinafter “Yang”; listed in the IDS filed 23 December 2022) and Arsalan et al. (US 2019/0214634; hereinafter “Arsalan”).
Regarding claim 1, Yoon teaches a lithium electrode comprising:
a lithium metal layer (negative electrode may be lithium metal attached to a negative electrode current collector; see [0024] and [0052]);
and a protective layer formed on a surface of the lithium metal layer (see [0026]),
wherein the protective layer comprises a two-dimensional material (hexagonal boron nitride (BN) flakes, see [0026]).
Yoon teaches wherein the protective layer inhibits growth of dendrites that may occur on the surface of a negative electrode and may be a porous polymer layer (see [0034]), but is silent to wherein the protective layer comprises a polymer of intrinsic microporosity.
Yang teaches a polymer of intrinsic microporosity (PIM-1) layer fabricated as a protective membrane on the surface of an electrode to facilitate the uniform flux of Li ions and act as a stable interface for the lithium plating/stripping process (see abstract). Compared to a bare Cu|Li coin cell, a Cu|Li coin cell with a PIM-1 membrane resulted in obtaining a dendrite-free structure of lithium (see p. 84, “2.4 Fabrication of batteries” and p. 85-87 “Results and discussion”). Similarly, with LiFePO4|Li cells, the PIM-1 coating also resulted in a dendrite-free morphology and isolation of lithium from the electrolyte (see p. 84, “2.4 Fabrication of batteries” and p. 85-87 “Results and discussion”).
In view of Yang’s teachings, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the polymer of the protective layer of Yoon to include wherein the protective layer comprises a polymer of intrinsic microporosity, as taught by Yang, because the substitution of a known element (the polymer of the protective layer of Yoon) for another known element (the PIM-1 layer of Yang) would have been obvious with predictable results (i.e., both layers are used for suppressing dendrite grown to protect the negative electrode) to one of ordinary skill in the art at the time the invention was filed.
The combination of Yoon and Yang teaches wherein the two-dimensional material comprises hexagonal boron nitride (BN) flakes (Yoon: see [0026]) but is silent to wherein the two-dimensional material comprises one or more selected from the group consisting of graphene oxide and graphitic carbon nitride.
Arsalan teaches a recognition of the synergistic effects of combining two different two-dimensional (2D) materials with a plurality of transition metal oxide nanoparticles. For example, a nanocomposite that includes a plurality of hexagonal boron nitride sheets, a plurality of reduced graphene oxide sheets, and a plurality of Co3O4 nanoparticles may provide improved thermal properties and improved electrochemical properties when used as an electrode material in a rechargeable battery (see [0091]).
In view of Arsalan’s teachings, it would have been obvious to one of ordinary skill in the art to modify the two-dimensional material of the combination of Yoon and Yang to include graphene oxide and a plurality of transition metal oxide nanoparticles, because it may provide improved thermal properties and improved electrochemical properties when used as an electrode material in a rechargeable battery.
Regarding claim 2, the combination of Yoon, Yang, and Arsalan teaches wherein the two-dimensional material comprises one or more selected from the group consisting of graphene, graphene oxide, molybdenum disulfide, hexagonal boron nitride (Yoon: hexagonal boron nitride (BN) flakes, see [0026]), and graphitic carbon nitride.
Regarding claim 4, the combination of Yoon, Yang, and Arsalan teaches wherein the polymer of intrinsic microporosity comprises a repeating unit of Formula 1 (Yang: see Fig. 1):
PNG
media_image1.png
276
500
media_image1.png
Greyscale
Regarding claim 5, the combination of Yoon, Yang, and Arsalan is silent to wherein a weight ratio of the two-dimensional material and the polymer of intrinsic microporosity is 1:1 to 1:20. However, absent persuasive evidence to the contrary, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to do so as one would perform routine experimentation to find the optimum weight ratio of the two-dimensional material and the polymer of intrinsic microporosity to maximize lithium ion transfer.
Regarding claim 6, the combination of Yoon, Yang, and Arsalan teaches wherein a thickness of the protective layer is from 0.1 μm to less than 5 μm (Yoon: 0.1 μm to 10 μm, see [0040]). 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(I).
Regarding claim 7, the combination of Yoon, Yang, and Arsalan teaches wherein a thickness of the lithium metal layer is from 20 μm to 200 μm (Yoon: lithium metal foil having a thickness of 20 μm, see [0078]). 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(I).
Response to Arguments
Applicant's arguments filed 23 June 2026 have been fully considered but they are not persuasive.
On pages 5-6 of the remarks, Applicant argues, with respect to amended claim 1, that the prior art substitution of the graphene oxide of Arsalan for the hexagonal boron nitride of the combination of Yoon and Yang is improper.
Applicant’s arguments with respect to the rejection of previous claim 3, the contents of which have been incorporated into amended claim 1, under Yoon, Yang, and Arsalan have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of the combination of Yoon, Yang, and Arsalan (see rejection for claim 1 above).
On pages 6-7 of the remarks, Applicant argues that the experimental results disclosed in the instant invention demonstrate that, when graphene oxide or graphitic carbon nitride is used as the two-dimensional material in combination with a polymer of intrinsic microporosity, the capacity of the battery can be further improved.
The Examiner finds this argument unpersuasive as the new rejection in view of Yoon, Yang, and Arsalan also results in an electrode with a two-dimensional material that comprises a polymer of intrinsic microporosity and graphene oxide. As the combination of the prior art results in a structure that is materially identical to that of the claimed invention, any benefits which the Applicant attributes to the presence of the combination of a polymer of intrinsic microporosity and graphene oxide must also be present for the combination of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN HA whose telephone number is (571)270-5934. The examiner can normally be reached M-F 8:00-5:00 EST.
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, Keith Walker can be reached at 571-272-3458 . 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.
/S.S.H/Examiner, Art Unit 1735 14 September 2026
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
Prosecution Insights