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 filed on 05/05/2026. Claims 1-25 are pending in the current Office action. Claims 1-3, 8-9, 13, and 20 were amended by Applicant. Claims 23-25 are new claims.
Status of the Rejection
Certain objections to the specification are withdrawn in view of Applicant’s amendments. The objection to the abstract is maintained.
Certain grounds of rejection of claims 1-22 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
Certain grounds of rejection of claim 9 under 35 U.S.C. § 112(b) are maintained.
The rejections of claims 1-5 and 7-9 under 35 U.S.C. § 102(a)(1) are withdrawn in view of Applicant’s amendments.
The rejections of claims 6 and 10-12 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments.
The rejections of claims 13-22 under 35 U.S.C. § 103 are substantially maintained and modified only as necessitated by Applicant’s amendments.
Specification
The abstract of the disclosure is objected to because it includes the implied phraseology “The presently disclosed concepts relate to” (MPEP § 608.01(b)(I)(C)). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 25 is objected to under 37 CFR 1.75 as being a duplicate of claim 21. When two claims in an application are duplicates, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 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. 112(a) as failing to comply with the written description requirement due to the inclusion of new matter. The claim 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, at the time the application was filed, had possession of the claimed invention.
Regarding claim 12, claim 12 recites the combined limitations “at least one active material for the cathode includes a Ga-In-Sn alloy” (claim 1 lines 6-7), “the at least one active material at the cathode includes a liquid metal” (claim 9 lines 1-2) and “the liquid metal includes one of: Ga, Ga-In, Na-K alloys, Na-K-Cs alloys, or Ga-In alloys” (claim 12 line 1-2). Support for this combination of limitations could not be identified in the specification as originally filed.
Specifically, no support for a cathode active material comprising a “Ga-In-Sn alloy” in addition to “Na-K alloys” or “Na-K-Cs alloys” could be identified in the specification. Rather, paras. 37 and 360 of the specification recites the Ga-based and Na-based alloys only in the alternative i.e., “one of: …”, and it is not clear that a system comprising both of these classes of materials in contact with the cathode would function as described.
It is therefore considered that the combination of these features, as claimed in claim 12, represents new matter not present in the specification as originally filed. Claim 12 is therefore rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement.
Claims 1-12 and 23-24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1, claim 1 recites the limitation “the at least one active material for the cathode …” in line 6. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 1 recites “at least one active material”, but does not recite “at least one active material for the cathode”. It is therefore unclear whether the limitation “the at least one active material for the cathode” is intended to refer to the “at least one active material”, or whether the limitation is intended to limit the “at least one active material” such that it comprises at least one cathode active material.
Furthermore, the meaning of the limitation “for the cathode” is unclear. Specifically, it is unclear whether this limitation is intended to limit:
a) the cathode, such that it comprises a Ga-In-Sn alloy;
b) catholyte, such that it comprises a Ga-In-Sn alloy;
c) at least one of a or b; or
d) some other meaning.
Claim 1 is therefore indefinite.
Examiner recommends amending claim 1 to recite “wherein the active material comprises at least one cathode active material in contact with the cathode, the at least one cathode active material including a Ga-In-Sn alloy …”.
Regarding claims 2-8 and 23-24, claims 2-8 and 23-24 depend from claim 1, and therefore inherit the indefinite language of claim 1. Claims 2-8 and 23-24 are therefore indefinite.
Regarding claim 9, claim 9 recites the limitation “the at least one active material at the cathode” in lines 1-2. There is insufficient antecedent basis for this limitation in the claims.
Specifically, claim 1, from which claim 9 depends, recites “at least one active material”, but does not recite “at least one active material at the cathode”. It is therefore unclear to what this limitation refers.
Furthermore, it is unclear whether the “the at least one active material at the cathode” in claim 9 is intended to refer to the same or a different component as the “the at least one active material for the cathode” recited in claim 1.
Furthermore, claim 9 depends from claim 1, and therefore inherits the indefinite language of claim 1.
Claim 9 is therefore indefinite.
Regarding claims 10-12, claims 10-12 depend from claims 1 and 9, and therefore inherit the indefinite language of those claims. Claims 10-12 are therefore indefinite.
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.
Claims 1-12 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Joshi (US Pat. Pub. 2013/0183546 A1) in view of Surmann and Zeyat (“Voltammetric analysis using a self-renewable non-mercury electrode” Anal. Bioanal. Chem. (2005) 383 1009–1013) and Hsieh (US Pat. Pub. 2013/0319876 A1) and as evidenced by Deiseroth et al. (“Sodium amalgams: phase diagram, structural chemistry and data, a summary of recent developments” Journal of Alloys and Compounds 246 (1997) 80-90).
Regarding claim 1, claim 1 has been interpreted as “at least one active material, wherein the at least one active material includes a Ga-In-Sn alloy at the cathode, the Ga-In-Sn alloy configured to form a molten alloy with the predetermined metal ion”.
Joshi teaches an alkali metal production system (see e.g., para. 22), comprising:
an anode (“anode electrode 218” Fig. 6 and para. 37);
a cathode (“cathode electrode 220” Id.);
an ion-selective solid electrolyte membrane (“alkali ion-conductive electrolyte material 216” para. 61 and Fig. 6) selectively permeable to a predetermined metal ion (i.e., NaSICON, LiSICON, or KSICON e.g., paras. 12, 52);
at least one active material, wherein the at least one active material includes an active material at the cathode (“alkali compound 222 may be exposed to the catholyte side of the electrochemical cell” para. 61 and Fig. 6), the at least one active material at the cathode configured to form a molten alloy with the predetermined metal ion (“an amalgam of mercury and the alkali metal” para. 59 and see below);
a first solution comprising an aqueous electrolyte, wherein the aqueous electrolyte includes the predetermined metal ion (“the anolyte comprises an alkali-salt solution, including, but not limited to, an aqueous alkali-salt solution” para. 52); and
a second solution comprising a metal atom based on the migrated predetermined (see below) metal ion, wherein the second solution is at least partially disposed in a liquid state of the metal atom (“the catholyte solution comprises, but is not limited to … and [sic] alkali metal (molten or solid)” para. 53).
Regarding the limitation “configured to form a molten alloy with the predetermined metal ion”, Joshi teaches the active material forms an alloy with the metal ion transferred (“This current reduces alkali metal ions according to the reaction M+e- [Wingdings font/0xE0] M. The alkali metal M can enter and pass through the compound 222” para. 60 and Fig. 4). Joshi further teaches that when the active material is mercury and the predetermined metal ion is sodium, the alloy formed by the active material is a molten alloy (“a sodium/mercury amalgam … the concentration of the alkali metal in the amalgam or alloy is between about 0.01 molar percent and about 0.5 molar percent” para. 45, as evidenced by e.g., Deiseroth Fig. 1, sodium mercury amalgams are molten at room temperature up to about 5 mol. % sodium).
Regarding the limitation “a metal atom based on the migrated predetermined metal ion”, Joshi teaches the alkali metal ion transfers from the anolyte to the catholyte (e.g., para. 47 and Fig. 6), and the catholyte comprises a molten metal (“the catholyte solution comprises, but is not limited to … and [sic] alkali metal (molten or solid)” para. 53). It is therefore considered that the second solution i.e., the catholyte, comprises at least some metal atoms based on the migrated predetermined ion.
Joshi does not teach the at least one active material at the cathode configured to form a molten alloy with the predetermined metal ion includes a Ga-In-Sn alloy. Joshi instead teaches the at least one active material at the cathode includes Hg (see e.g., Fig. 4).
However, Surmann teaches that Galinstan™, a Ga-In-Sn alloy, is a suitable liquid electrode material for use in place of mercury (abstract), and provides the predictable benefit of being significantly less toxic (abstract and para. 1 of § titled “conclusion and outlook”).
Furthermore, Hsieh teaches that alloys of gallium, indium, tin, and bismuth are suitable substitutes for mercury in the electrochemical production of alkali metals (abstract and para. 34, see also para. 8-9).
As Joshi teaches a system for producing alkali metals via electrodialysis, Joshi is analogous art to the instant invention. As Surmann teaches a material suitable for use as a liquid electrode, Surmann is analogous art to the instant invention. As Hsieh teaches a system for the production of alkali metals via electrolysis, Hsieh is 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 at least one active material in contact with the cathode of Joshi, such that it comprises a Ga-In-Sn alloy rather than Hg, as taught by Surmann. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of reducing the toxicity of the at least one active material in contact with the cathode, as taught by Surmann. A person having ordinary skill in the art would have had a reasonable expectation of success making this modification, because Surmann teaches Galinstan™ is suitable as a molten electrode material for replacing Hg, and Hsieh teaches Ga-In-Sn alloys are suitable molten materials for replacing Hg in the electrolytic production of alkali metals. Furthermore, use of a material known in the art as suitable for a purpose (i.e., Ga-In-Sn eutectic alloys as molten active materials for alkali metal production, as taught by Hsieh) establishes a prima facie case of obviousness (MPEP § 2144.07).
Regarding claim 2, Joshi further teaches the at least one active material includes a hydroxyl group at the anode (“an aqueous alkali-salt solution” para. 52, note aqueous solutions necessarily comprise hydroxyl groups).
Regarding claim 3, modified Joshi renders the limitations of claim 1 obvious, as described above.
Joshi further teaches the at least one active material includes lithium metal at the cathode (“an amalgam of mercury and the alkali metal” para. 59, “when the alkali metal is lithium …” para. 44, and see Fig. 6, see also para. 45).
Regarding claim 4, modified Joshi renders the limitations of claim 1 obvious, as described above.
Joshi further teaches the liquid state is a molten solution of the metal atom (“the catholyte solution comprises, but is not limited to … alkali metal (molten or solid)” para. 53).
Regarding claim 5, modified Joshi renders the limitations of claim 1 obvious, as described above.
Joshi further teaches the anode is a carbon rod (“suitable anode materials comprise … graphite” para. 50 and Fig. 2 shows the anode is a rod).
Regarding claim 6, modified Joshi renders the limitations of claim 1 obvious, as described above.
Joshi does not teach the carbon rod includes a Pt catalyst.
However, Joshi further teaches that the anode preferably comprises a material that enables the oxidation of water or hydroxide (“a material that allows the anode to evolve protons (H+) when the anode contacts an aqueous anolyte solution and as the cell functions” para. 50), and indicates platinized titanium is suitable as the anode (“Some non-limiting examples of suitable anode materials comprise … platinized titanium …” Id.).
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 carbon rod anode of Joshi, by adding a Pt catalyst. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of enhancing the ability of the anode to oxidize water or hydroxide, and because Joshi teaches a platinized anode is suitable for use in the system. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 7, modified Joshi renders the limitations of claim 1 obvious, as described above.
Joshi further teaches the cathode comprises a carbon or metal rod (“of suitable materials that can be used in the cathode include nickel, stainless steel alloys, graphite, titanium, a nickel-cobalt-ferrous alloy (e.g., a KOVAR® alloy) …” para. 51 and Fig. 2 shows the cathode is a rod).
Regarding claim 8, modified Joshi renders the limitations of claim 1 obvious, as described above.
Joshi further teaches an active material at the anode includes at least one of OH- or Cl- (“an aqueous alkali-salt solution” para. 52 and “an alkali metal chloride (MCI)” para. 56).
Regarding claim 9, modified Joshi renders the limitations of claim 1 obvious, as described above.
Modified Joshi further teaches, via Surmann and/or Hsieh, an active material at the cathode includes Gallinstan™, which the instant specification indicates is a liquid metal.
Regarding claim 10, the limitation “the liquid metal is within the temperature range of 25 °C to 250 °C”, 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 Joshi teaches, via Surmann and/or Hsieh, the liquid metal is Gallinstan™, which the instant specification indicates is liquid in a temperature range of 25 °C to 250 °C. It is therefore considered that the system of modified Joshi is capable of operating when the liquid metal is within the temperature range of 25 °C to 250 °C. Modified Joshi therefore renders the limitation “the liquid metal is within the temperature range of 25 °C to 250 °C” obvious.
Regarding claim 11, modified Joshi renders the limitations of claim 9 obvious, as described above.
Joshi further teaches the liquid metal is configured to form a molten alloy with lithium (“an amalgam of mercury and the alkali metal” para. 59, “when the alkali metal is lithium …” para. 44, and see Fig. 6, see also para. 45).
Regarding claim 12, modified Joshi renders the limitations of claim 9 obvious, as described above.
Modified Joshi further teaches, via Surmann and/or Hsieh, the liquid metal is Gallinstan™, a Ga-In alloy.
Regarding claim 23, modified Joshi renders the limitations of claim 1 obvious, as described above.
The limitation “the Ga-In-Sn alloy is within the temperature range of 25 °C to 250 °C”, 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 Joshi teaches, via Surmann and/or Hsieh, the liquid metal is Gallinstan™, which the instant specification indicates is liquid in a temperature range of 25 °C to 250 °C. It is therefore considered that the system of modified Joshi is capable of operating when the Ga-In-Sn alloy is within the temperature range of 25 °C to 250 °C. Modified Joshi therefore renders the limitation “the Ga-In-Sn alloy is within the temperature range of 25 °C to 250 °C” obvious.
Regarding claim 24, modified Joshi renders the limitations of claim 1 obvious, as described above.
Joshi further teaches the predetermined metal ion is Li+ (“when the alkali metal is lithium…” para. 44).
Allowable Subject Matter
Claims 13-22 are allowed.
Furthermore, claim 25 is allowable, but is identical to claim 21.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 13, the prior art of record, alone or in combination, does not reasonably teach or render obvious the cumulative limitations of claim 13, with a particular emphasis on the combination “a second electrode, wherein when a current is passed from the first electrode to the second electrode, the current causes migration of an alkali metal ion of the alkali metal salt”, “a second solution comprising an alkali metal atom based on the migrated alkali metal ion and a Ga-In-Sn alloy, wherein the Ga-In-Sn alloy is configured to form a molten alloy with the alkali metal ion” and “a third electrode, wherein when a second current passed from the second electrode to the third electrode, the second current causes second migration of the alkali metal atom of the second solution”.
The closest prior art is considered to be Joshi (US Pat. Pub. 2013/0183546 A1), Surmann and Zeyat (“Voltammetric analysis using a self-renewable non-mercury electrode” Anal. Bioanal. Chem. (2005) 383 1009–1013), Hsieh (US Pat. Pub. 2013/0319876 A1), and De Jonghe (US Pat. Pub. 2005/0100793 A1).
Joshi teaches a system for alkali metal production (e.g., para. 22), the system comprising:
a first electrode (“anode electrode 218” Fig. 3 and para. 37);
a first electrolyte comprising an alkali metal salt (“the anolyte comprises an alkali-salt solution, including, but not limited to, an aqueous alkali-salt solution.” para. 52), wherein the first electrolyte is configured to be in contact with the first electrode (see Fig. 3);
a second electrode (“alkali compound 222 may function as a secondary cathode” para. 60 and Fig. 5, see also Fig. 3 and see below), wherein when a current is passed from the first electrode to the second electrode, the current causes migration of an alkali metal ion of the alkali metal salt (Fig. 3 and see below);
an ion-selective solid electrolyte membrane configured to selectively allow the alkali metal ion to migrate (“cation conductor layer 226 … that is conductive to alkali cations” para. 48 and Fig. 3);
a second solution comprising an alkali metal atom based on the alkali metal ion (“alkali compound 222” para. 41, “the alkali compound comprises an alkali metal amalgam or alloy …” para. 44, and Fig. 3), wherein the second solution is configured to form a molten alloy with the alkali metal ion (“an amalgam of mercury and the alkali metal” para. 59 and Fig. 4 and “the concentration of the alkali metal in the amalgam or alloy is between about 0.01 molar percent and about 0.5 molar percent” para. 45);
a third electrode (“cathode 220” Fig. 3 and para. 38);
a second ion-selective solid electrolyte membrane configured to selectively allow the alkali metal atom to migrate (“alkali ion-conductive electrolyte material 216 …” para. 39, “alkali metal ion (M+) is selectively transported through the composite alkali ion-conductive electrolyte membrane 215” para. 56, and Fig. 3 shows “216” is a component of “215”); and
a third solution comprising the second migrated alkali metal atom (“catholyte compartment 214, where it can be collected” para. 56 and Fig. 3).
While Joshi does not teach the second solution comprises a Ga-In-Sn alloy, it is considered that a person having ordinary skill in the art would have found it obvious to substitute a Ga-In-Sn alloy in place of Hg as the second solution based on the teachings of Hsieh and/or Surmann, for the same reasons enumerated in the rejection of claim 1 above, mutandis mutatis.
However, the system of Joshi is not capable of causing a second migration of the alkali metal atom of the second solution when a current is passed from the second electrode to the third electrode.
Specifically, as depicted in Fig. 5 and described in para. 60, the second and third electrode are electrically connected in parallel. I.e., they configured to have identical charge, to allow the second electrode to electrolytically reduce the alkali metal ions. Thus, the system of Joshi, without modification, is not capable of passing a second current from the second electrode to the third electrode.
Neither Surmann nor Hsieh provide a motivation to make such a modification.
De Jonghe teaches a system for the electrolytic production of lithium (abstract), comprising a first and second electrode disposed on opposite sides of a lithium selective membrane (Fig. 1). However, De Jonghe does not teach the use of a third electrode.
De Jonghe therefore does not provide a motivation to modify the electrode arrangement in the system of Joshi.
No motivation to modify the system of Joshi such that it would be capable of applying a current between the second and third electrodes could be identified in the prior art of record.
Thus, the prior art of record, alone or in combination, does not reasonably teach or disclose the cumulative limitations of claim 13. It is therefore considered that claim 13 is patentably distinguished over the prior art of record.
Regarding claims 14-22, claims 14-22 depend from claim 13, and therefore incorporate the patentably distinct subject matter of claim 13. Claims 14-22 are therefore patentably distinguished over the prior art for at least the reasons enumerated for claim 13, above.
Regarding claim 25, claim 25 is allowable, but is identical to claim 21. Claims 21 and 25 therefore cannot be allowed simultaneously (MPEP § 608.01(m)).
Response to Arguments
Applicant’s arguments, see Remarks p. 5, filed 05/05/2026, with respect to the objections to the specification have been fully considered and are persuasive in part. Certain of the objections to the specification have therefore been withdrawn.
Applicant’s arguments, see Remarks p. 5, filed 05/05/2026, with respect to the rejections of claims 1-22 under 35 U.S.C. § 112(b) have been fully considered and are persuasive in part. Certain rejections under 35 U.S.C. § 112(b) have therefore been withdrawn.
Applicant’s arguments, see Remarks p. 5-8, filed 05/05/2026, with respect to the rejections of claims 1-5 and 7-9 under 35 U.S.C. § 102(a)(1) 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. 9-14, filed 05/05/2026, with respect to the rejections of claims 13-22 under 35 U.S.C. § 103 have been fully considered, and are persuasive. The rejections of claims 13-22 under 35 U.S.C. § 103 have therefore been withdrawn.
Applicant's arguments, see Remarks p. 8-9, filed 05/05/2026, with respect to the rejections of claims 6 and 10-12 under 35 U.S.C. § 103 have been fully considered, and are persuasive. The rejections of claims 6 and 10-12 under 35 U.S.C. § 103 have therefore been withdrawn. However, new grounds of rejection are established as necessitated by Applicant’s amendments.
Applicant’s Argument #1
Applicant argues on p. 5 that the amendments to the specification filed 05/05/2026 overcome the objections established in the Office action mailed 03/11/2026.
Examiner’s Response #1
Examiner respectfully disagrees. As noted above, no amendments to the abstract of the specification were received with Applicant’s submission on 05/05/2026. Therefore, the objection to the abstract of the specification is maintained.
Applicant’s Argument #2
Applicant argues on p. 5 that the claim amendments overcome each of the rejections under 35 U.S.C. § 112(b) set forth in the Office action mailed 03/11/2026.
Examiner’s Response #2
Examiner respectfully disagrees. While Applicant’s amendments address most of the grounds of rejection established under 35 U.S.C. § 112(b), the amendments did not address the lack of antecedent basis in claim 9.
Furthermore, Applicant’s amendment to claim 1 uses the same indefinite language previously found in e.g., claims 2-3.
Applicant’s arguments are 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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