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 the Claims
This is a final Office action in response to Applicant’s amendments and remarks filed on 04/09/2026. Claims 1-20 are pending in the current Office action. Claims 1-2, 7-8, 14, and 18 were amended by Applicant.
Status of the Rejection
The objections to the specification are withdrawn in view of Applicant’s amendments.
The objections to claims 2 and 14 are withdrawn in view of Applicant’s amendments.
The rejections of claims 1-20 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejections of claims 1-5, 8, and 13-17 under 35 U.S.C. § 102(a)(1) are withdrawn in view of Applicant’s amendments.
The rejections of claims 1-11 and 13-17 under 35 U.S.C. § 102(a)(2) are withdrawn in view of Applicant’s amendments.
The rejections of claims 12 and 18-20 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments.
New rejections are necessitated by Applicant’s amendments.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-11 and 13-17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hying (WO 2024/170316 A1).
Regarding claim 1, Hying teaches an alkali metal salt precipitation system (abstract), comprising:
an anode (“anode 1” para. 84 and Fig. 3);
a cathode (“cathode 2” Id.), wherein
a first ion-selective solid electrolyte membrane selectively permeable to a first predetermined alkali metal ion (“the cation conductivity of the cathode separator 4 is selective: The conductivity for Li cations (Li+) must be greater than for other cations” para. 85 and Fig. 3);
a second ion-selective solid electrolyte membrane selectively permeable to a second ion different from the first predetermine alkali metal ion (“anode separator 3” and “The cationic functional group enables intrinsic transport of the anions, especially hydroxide ions (OH-), through the anode separator 3” para. 85 and Fig. 3 i.e., the “anode separator 3” is selectively permeable to OH- and other anions, ions different from Li+);
at least one active material associated with the anode (“water” and “acidic water splitting process according to equation (2) in the anolyte” para. 102 and Fig. 4 and/or “IrTi mixed oxide” para. 136) and at least one active material associated with the cathode (“water” and “basic water splitting process according to equation (1) in the catholyte” para. 102 and Fig. 4 and/or “IrTi mixed oxide” para. 136);
a precursor solution comprising the first predetermined alkali metal ion (“Central electrolyte 13” para. 88 and Fig. 3, and “The anolyte and electrolyte in the middle chamber are lithium salt solutions in different concentrations and with different lithium salts” para. 140), wherein the precursor solution is at a first solubility of an alkali metal salt (as the precursor solution comprises lithium salts, it is by definition at a first solubility of an alkali metal salt); and
a second solution comprising first the predetermined alkali metal ion (“Li is enriched in the catholyte 12” para. 95 and Fig. 3), wherein the second solution is at a second solubility of the alkali metal salt which causes the migrated first predetermined alkali metal ion to precipitate (“the LiOH precipitates either in the cathodic compartment …” para. 132).
Regarding claim 2, Hying further teaches the precursor solution includes LiCl, LiOH, and Li2CO3 (“The anions contained in the central electrolyte are specifically sulfate, hydrogen sulfate, carbonate, hydrogen carbonate, hydroxide, chloride, or fluoride.” para. 41).
Regarding claim 3, Hying further teaches the LiOH is insoluble in the second solution (“the LiOH precipitates either in the cathodic compartment …” para. 132).
Regarding claim 4, Hying anticipates the limitations of claim 1, as described above. Hying further teaches the first solubility is higher than the second solubility (“the LiOH precipitates either in the cathodic compartment …” para. 132; as the lithium ions are solubilized in the first solution and precipitate in the second solution, the first solubility is necessarily higher than the second solubility).
Regarding claim 5, Hying anticipates the limitations of claim 1, as described above. Hying further teaches the precursor solution includes one or more buffers (“The anions contained in the central electrolyte are specifically … carbonate, hydrogen carbonate, …” para. 41).
Regarding claim 6, Hying further teaches the one or more buffers include HCO3- and CO32- (“The anions contained in the central electrolyte are specifically … carbonate, hydrogen carbonate, …” para. 41).
Regarding claim 7, Hying anticipates the limitations of claim 5, as described above. Hying further teaches the one or more buffers are used to protect the first ion-selective solid electrolyte membrane (see below).
The limitation “the one or more buffers are used to protect the first ion-selective solid electrolyte membrane”, as currently drafted, is a functional recitation i.e., it defines the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, Hying teaches the one or more buffers comprise HCO3- and CO32- (“The anions contained in the central electrolyte are specifically … carbonate, hydrogen carbonate, …” para. 41), and the membrane comprises LiSICON (para. 47). The instant specification indicates that carbonate buffers are suitable for protecting LiSICON membranes.
The buffers used in the system of Hying are therefore capable of protecting the ion-selective solid electrolyte membrane. Hying therefore anticipates the limitation “the one or more buffers are used to protect the ion-selective solid electrolyte membrane”.
Regarding claim 8, Hying anticipates the limitations of claim 1, as described above. Hying further teaches the migrated first predetermined alkali metal ion is Li+ (e.g., abstract).
Regarding claim 9, Hying further teaches the second solution comprises at least one LiOH precipitate (“the LiOH precipitates either in the cathodic compartment …” para. 132).
Regarding claim 10, Hying further teaches the second solution comprises H2O, wherein the H2O is configured to facilitate the LiOH precipitate formation (see paras. 36 and 132).
Regarding claim 11, Hying anticipates the limitations of claim 9, as described above. Hying further teaches the H2O functions as a reagent (see paras. 36 and 132).
Regarding claim 13, Hying anticipates the limitations of claim 1, as described above. Hying further teaches the precursor solution includes an electroactive solute (“The cationic impurities also contained in the central electrolyte are specifically cations of the following elements: … Mn, Fe, Co, Ni, Cu, C …” para. 42).
Regarding claim 14, Hying anticipates the limitations of claim 1, as described above. Hying further teaches the cathode and the anode each include an electronically conductive substrate made of Ti (“A round disc with a diameter of 19.5 mm and a thickness of 1 mm was used as both the anode and cathode. The material in each case was a titanium expanded sheet, …” para. 136).
Regarding claim 15, Hying anticipates the limitations of claim 1, as described above. Hying further teaches the at least one active material comprises an electrode slurry casted on a current collector (“IrTi mixed oxide” para. 136).
Regarding claim 16, Hying anticipates the limitations of claim 1, as described above. Hying further teaches the cathode includes a catalyst electrically coupled with an electrically conductive substrate of the cathode (“A round disc with a diameter of 19.5 mm and a thickness of 1 mm was used as both the anode and cathode. The material in each case was a titanium expanded sheet, coated on both sides with IrTi mixed oxide” para. 136).
Regarding claim 17, Hying anticipates the limitations of claim 1, as described above. Hying further teaches the anode includes a catalyst electrically coupled with an electrically conductive substrate of the anode (“A round disc with a diameter of 19.5 mm and a thickness of 1 mm was used as both the anode and cathode. The material in each case was a titanium expanded sheet, coated on both sides with IrTi mixed oxide” para. 136).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hying (WO 2024/170316 A1) in view of Gordon (US Pat. Pub. 2014/0197040 A1).
Regarding claim 12, Hying anticipates the limitations of claim 1, as described above in the rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
Hying does not teach the second solution comprises at least one ether.
However, Gordon teaches an alkali metal recovery system (title), comprising an electrolytic cell (“electrolytic cell 300” para. 61 and Fig. 3) comprising an anode (“anode 326” Id.) and a cathode (“cathode 324” Id.) separated by an ion-elective solid electrolyte membrane selectively permeable to a first predetermined alkali metal ion (“cation conductive membrane 312” and “substantially only alkali ions (M+), such as sodium ions or lithium ions, can pass from the anolyte compartment 316 to the catholyte compartment 314.” para. 64 and Fig. 3), wherein the catholyte i.e., the second solution, comprises at least one ether (“Within the catholyte compartment 314 is an alkali ion conductive liquid which may include a polar solvent. Non-limiting examples of suitable polar solvents are as tetraethylene glycol dimethyl ether (tetraglyme), diglyme, …, dimethoxy ether, … and such.” para. 67).
As Hying and Gordon each teach systems for the recovery of alkali metal ions via ion-selective membrane electrodialysis, Hying and Gordon are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Hying, by adding at least one ether to the catholyte i.e., the second solution, as taught by Gordon. A person having ordinary skill in the art would have been motivated to make this modification because Gordon teaches ethers are suitable as polar solvents in the catholyte of a system for the ion-selective membrane electrodialysis of alkali metals. Use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hying (WO 2024/170316 A1) in view of Bodoin (US Pat. Pub. 2022/0069278 A1).
Regarding claim 18, Hying anticipates the limitations of claim 1, as described above in the rejection under 35 U.S.C. § 102(a)(2), incorporated herein by reference.
The limitation “wherein input energy used to migrate the first predetermined alkali metal ion is saved and recovered, at least in part, as electrochemical energy of the migrated first predetermined alkali metal ion at the cathode”, as currently drafted, is a functional recitation i.e., it defines the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, Hying does not teach the system is capable of saving and recovering the input energy used to migrate the Li+ as electrochemical energy of the Li+ at the cathode.
However, Bodoin teaches a system for the production of Li-ion batteries (title), the system comprising:
an anode (“positive electrode 20” para. 103 and Fig. 2) and a cathode (“conductive substrate 10” Id.), wherein an ion-selective solid electrolyte membrane selectively permeable to Li+ cations is disposed between the anode and cathode (“a lithium ion-selective membrane” para. 103 and Fig. 2);
a precursor solution comprising Li+ ions (“aqueous lithium salt solution 40” para. 103 and Fig. 2), wherein
the Li+ ions precipitate as lithium metal at the surface of the cathode (para. 103), allowing energy used to migrate the Li+ to be saved, in part, as electrochemical energy of the migrated Li+ at the cathode (“The conductive substrate 10 and the layer of lithium metal 60 together comprise the single-sided lithium metal electrode 15, suitable for use as a fully charged working anode in a LMB [lithium metal battery].” para. 101 and Fig. 2).
As Hying and Bodoin each teach electrochemical systems configured to transfer Li+ ions across a lithium ion-selective membrane and form a precipitate from said Li+ ions in the cathode chamber, Hying and Bodoin are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Hying, such that Li metal precipitates on the cathode i.e., such that input energy used to migrate the first predetermined alkali metal ion is saved, in part, as electrochemical energy of the migrated first predetermined alkali metal ion at the cathode, as taught by Bodoin. A person having ordinary skill in the art would have had a reasonable expectation of success making this modification because Bodoin teaches electrodialysis through a lithium ion-selective membrane is suitable for forming Li metal deposits having a sufficient purity to be used as LMB anodes. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of forming charged LMB anodes as products, as taught by Bodoin. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
As the input energy in the system of modified Hying is stored as electrochemical energy in a charged LMB anode, it is capable of being recovered by discharging the LMB anode.
Modified Hying therefore reads on the limitation “wherein input energy used to migrate the first predetermined alkali metal ion is saved and recovered, at least in part, as electrochemical energy of the migrated first predetermined alkali metal ion at the cathode”.
Regarding claim 19, the limitation “wherein the input energy corresponds with an electric charge process and the electrochemical energy corresponds with an electric discharge process”, as currently drafted, is a functional recitation i.e., it defines the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, modified Hying teaches, via Bodoin, the input energy corresponds to an electric charge process (“variable voltage is applied … each lithium ion gains an electron, thereby causing the layer of elemental lithium 60 to be electrodeposited” para. 103), and the and the electrochemical energy is capable of corresponding to an electric discharge process (“The conductive substrate 10 and the layer of lithium metal 60 together comprise the single-sided lithium metal electrode 15, suitable for use as a fully charged working anode in a LMB” para. 101 and Fig. 2).
The system of modified Hying therefore reads on the limitation “wherein the input energy corresponds with an electric charge process and the electrochemical energy corresponds with an electric discharge process”.
Regarding claim 20, modified Hying renders the limitations of claim 18 obvious, as described above.
The limitation “wherein the recovery of the input energy reduces a carbon footprint of a manufacturing facility”, as currently drafted, is a functional recitation i.e., it defines the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, modified Hying teaches, via Bodoin, the system is capable of recovering energy during the production of LMBs at a manufacturing facility (see e.g., abstract and paras. 138-140). The input energy recovered in the system of modified Hying is therefore capable of reducing a carbon footprint of a manufacturing facility.
Modified Hying therefore reads on the limitation “wherein the recovery of the input energy reduces a carbon footprint of a manufacturing facility”.
Response to Arguments
Applicant’s arguments, see Remarks p. 6, filed 04/09/2026, regarding the objections to the specification, have been fully considered and are persuasive. Therefore, the objections to the specification have been withdrawn.
Applicant’s arguments, see Remarks p. 6, filed 04/09/2026, regarding the rejections under 35 U.S.C. § 112(b) have been fully considered and are persuasive. Therefore, the rejections under 35 U.S.C. § 112(b) have been withdrawn.
Applicant’s arguments, see Remarks p. 6-9, filed 04/09/2026, regarding the rejections under 35 U.S.C. § 102(a)(1) for anticipation by Diaz have been fully considered and are persuasive. The rejections under 35 U.S.C. § 102(a)(1) have therefore been withdrawn.
Applicant’s arguments, see Remarks p. 12-13, filed 04/09/2026, regarding the rejections under 35 U.S.C. § 103 have been fully considered and are persuasive. The rejections under 35 U.S.C. § 103 have therefore been withdrawn.
Applicant’s arguments, see Remarks p. 9-12, filed 04/09/2026, regarding the rejections under 35 U.S.C. § 102(a)(2) for anticipation by Hying have been fully considered, but they are not persuasive.
Applicant’s argument #1
Applicant argues on p. 8 that the bipolar membrane disclosed by Diaz cannot reasonably read on “a second ion-selective solid electrolyte membrane selectively permeable to a second ion different from the first predetermined alkali metal ion” as recited in amended claim 1.
Examiner’s response #1
Examiner agrees. As a bipolar membrane is designed to prevent both anions and cations from passing, bipolar membranes cannot reasonably read on an “ion-selective solid electrolyte membrane”. The rejections reliant on Diaz have therefore been withdrawn.
Applicant’s argument #2
Applicant argues on p. 10-11 that the anion exchange membrane disclosed by Hying cannot reasonably read on “a second ion-selective solid electrolyte membrane selectively permeable to a second ion different from the first predetermined alkali metal ion” as recited in amended claim 1.
Examiner’s response #2
Examiner respectfully disagrees. At issue is whether an anion exchange membrane reasonably reads on the limitation “a second ion-selective solid electrolyte membrane selectively permeable to a second ion different from the first predetermined alkali metal ion” as currently drafted.
As described in the rejection of claim 1, above, the “first predetermined alkali metal ion” in Hying is either Li+ or Na+. As further described by Hying, the anion exchange membrane is selectively permeable for anions e.g., -OH, relative to cations, such as the Li+ or Na+ ions. Thus, the anion exchange membrane of Hying is selectively permeable to second ions different from the first predetermined alkali metal ions, and therefore reads on the limitation “a second ion-selective solid electrolyte membrane selectively permeable to a second ion different from the first predetermined alkali metal ion” as currently drafted.
While applicant refers to the meaning of the limitation “within the context claimed”, during prosecution claims are interpreted according to their “Broadest Reasonable Interpretation” (BRI) (MPEP § 2111), which is their plain language meaning unless such meaning is “inconsistent” with the specification (MPEP § 2111.01(I)). Thus, while the claim language may imply a certain meaning, unless said meaning is explicit, it does not limit the interpretation of the claim during prosecution. See also (MPEP § 2111.01(II)).
Applicant’s argument is therefore not persuasive.
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.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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