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
The amendment filed on 02/16/2026 has been entered. Claims 1, 12, 14, 16 and 21 have been amended and claims 22-47 have been canceled. Thus claims 1-21 are currently pending and under examination.
Withdrawn Rejection
The objections to the specification and claims 1 and 16 have been withdrawn in view of the amendments.
Claim 1 has been amended to now recite the formation electrolyte in aqueous solution. Patent application publication number US2006/0044736A1 (US’736; cited in PTO-892 11/18/2025) teaches a solid electrolyte comprising phytic acid but fails to teach the electrolyte in the aqueous solution. Thus the 102(a)(1) as being anticipated by US’736 has been withdrawn.
Claim Objections
Claims 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16 stands rejected and claim 14 is newly rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “derivatives” in the limitation “derivatives of ononitol,…” of claim 16 renders the claim vague and indefinite because the term does not limit the claims to the species recited in the claims and is unclear as to how much variation of the recited species are tolerated by the use of term “derivatives”.
Claim 14 recites the limitation "C(O)10" in line 1. There is insufficient antecedent basis for this limitation in the claim.
The group C(O)10 renders claim 14 indefinite because a clear structure cannot be deciphered. For purpose of applying art and in view of the original disclosure, the group is interpreted as C(O)R10.
Claim 15 is also rendered indefinite for its dependency on claim 14.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-9 and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patent application publication number US2022/0262569A1 (US’569; cited in IDS 03/28/2025).
Regarding claims 1-9 and 16-17, US’569 teaches an electrolyte comprising phytic acid and water (inorganic solvent of claim 17) (Examples 1-2 and [0018]), in which the formula is as follows:
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In the above, the corresponding claimed R1-R6 groups are -P=O(OH)2, which falls under the claimed -PO3R7R8, and wherein R7 and R8 are H.
Regarding claims 18-20, the scope of the claims is not given patentable weight as the metal salts, salts of inorganic acids, salts of organic acids, organic and inorganic acids, and organometallic compounds are recited as alternatives within the Markush claim 17. As such, the inorganic solvent of US’565 would still read on claims 18-20 that encompass limitations with no patentable weight.
NOTE: Claims 1-21 recite “A formation electrolyte suitable for formation of an oxide on a valve metal anode” in the preamble. MPEP § 2111.02 indicates that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. In this instance, the intended use of the claimed derivative of inositol as defined by Formula 1 is of no significance to the structure of the compound. Accordingly, the intended use in the preamble is not considered to be a limitation of the claim and thus is not given weight.
Claims 1-9 and 16-20 are newly rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (Wang, H. et al. “Water-based phytic acid-crosslinked supramolecular binders for lithium-sulfur batteries” Chem. Eng. J. 395 (2020) 124981).
Regarding claims 1-9 and 16-17, Wang teaches an electrolyte comprising phytic acid and water (inorganic solvent of claim 17), in which the formula of phytic acid is as follows:
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In the above, the corresponding claimed R1-R6 groups are -P=O(OH)2, which falls under the claimed -PO3R7R8, and wherein R7 and R8 are H.
Regarding claims 18-20, the scope of the claims is not given patentable weight as the metal salts, salts of inorganic acids, salts of organic acids, organic and inorganic acids, and organometallic compounds are recited as alternatives within the Markush claim 17. As such, the inorganic solvent of US’565 would still read on claims 18-20 that encompass limitations with no patentable weight.
NOTE: Claims 1-21 recite “A formation electrolyte suitable for formation of an oxide on a valve metal anode” in the preamble. MPEP § 2111.02 indicates that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. In this instance, the intended use of the claimed derivative of inositol as defined by Formula 1 is of no significance to the structure of the compound. Accordingly, the intended use in the preamble is not considered to be a limitation of the claim and thus is not given weight.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2022/0262569A1 (US’569; cited in IDS 03/28/2025).
The teachings of US’569 have been set forth above.
Regarding claims 10-11, while US’569 exemplifies electrolyte comprising phytic acid, the reference fails to exemplify wherein at least one R7 or R8 is a cation. However, the non-exemplified embodiment of the reference teaches electrolyte comprising a generic formula A:
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wherein:
each of R1-R6 is independently selected from H and -PO(OR7)2 wherein each R7 (equivalent to the claimed R7 and R8) is independently selected from H, substituted or unsubstituted alkyl of 1-20 carbons (equivalent to the claimed cation), substituted or unsubstituted aryl of 6-20 carbons or an alkylaryl of 7-21 carbons; with the proviso that at least one of R1-R6 is —PO(OH)2.
As such, using the above compound of formula A, in which R7 of -PO(OR7)2 is substituted or unsubstituted alkyl of 1-20 carbons, in place of the exemplified phytic acid, a skilled artisan has a reasonable expectation of success in arriving at the instantly claimed electrolyte of claims 10-11.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to obtain an electrolyte of formula 1 in aqueous solution, wherein each of R1-R6 is -PO3R7R8 and wherein at least one R7 or R8 is a cation in view of US’569.
Claim 21 is newly rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2022/0262569A1 (US’569; cited in IDS 03/28/2025) in view of Ataman (“Phytic acid” Sep. 20, 2022; pages 1-7).
The teachings of US’569 have been set forth above.
Regarding claim 21, the reference further teaches that the solvent for the mordant layer (electrolyte) comprising formula A (with phytic acid as an example) is not particularly limiting with water ([0018]), but fails to teach the electrolyte as further comprising at least one solvent selected from the group consisting of alcohol, ethylene glycol, polyethylene glycol, tetraglyme, propylene glycol, glycol ether and alkanolamines. The deficiencies are cured by Ataman as it teaches that phytic acid is soluble in ethanol and acetone in addition to water (pg. 5). Thus, since US’569 does not limit water as the solvent of phytic acid, using ethanol in addition to water would yield nothing more than the predictable electrolyte.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to obtain an electrolyte of formula 1 in aqueous solution, wherein the electrolyte further comprises at least one solvent selected from the group consisting of alcohol, ethylene glycol, polyethylene glycol, tetraglyme, propylene glycol, glycol ether and alkanolamines in view of US’569 and Ataman.
Allowable Subject Matter
The subject matter of claims 12-15 are free of prior art references (note: C(O)10 of claim 14 is interpreted as C(O)R10). The closest prior art references have been set forth above but fail to teach or suggest the electrolyte as claimed. Furthermore, neither US’569 nor Wang suggests or provides a guidance to modify the electrolyte species to arrive at the instantly claimed electrolyte of formula 1 wherein at least one of R1-R6 is SiR93 or wherein at least one of R1-R6 is C(O)R10. Thus claims 12-15 are deemed novel and unobvious.
Conclusion
Claims 1-11 and 14-21 are rejected and no claims are allowed.
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 MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692
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