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 Amendment
The amendment filed on 30 June 2026 fails to place the application in condition for allowance.
Claims 1-12 are currently pending.
Claims 1-10 are currently under examination.
Claims 11 and 12 are currently withdrawn.
Status of Rejections
The rejection of claims 1-10 under 35 U.S.C. 112 are herein maintained.
The rejection of claims 1-10 under 35 U.S.C. 102 and 103 are herein withdrawn due to Applicant’s Amendment filed 30 June 2026.
New rejections are provided herein.
Response to Arguments
Applicant's arguments filed 30 June 2026 have been fully considered but they are not persuasive.
Applicant presents arguments on pgs. 5-7 of the response that the specification presents representative species which thereby supports the entirety of the claimed genus of the as amended claim limitations of Groups 2A, 3A, and 4A in forming the lithophilic metal fluoride, nitride, phosphide, sulfide, chloride, bromide, iodide, or hydride and a polymer as part of the functional layer precursor. As conceded by Applicant, the instant specification provides specific species of PVDF-HFP-SrF2, PVDF-HFP-GaN, and Sn-PVDF-HFP-SrF2 as outlined in Table 1.
It is noted the Examiner does not contend that the scope of the claim is indefinite or the like. Applicant argues that the instant claims rely upon “common electrochemical conversion mechanism disclosed throughout the specification” Applicant further argues that the claims are directed to “a reasonably predictable genus”.
The claims are drawn towards a method of stabilizing an electrode using a functional layer, with explicit method steps being generic “providing” steps, an “attaching” step in which the functional layer precursor is provided to the surface of a negative electrode with a particular composition of the precursor, and then generic charging and discharging steps. The charging and discharging steps are drafted in such as way so to provide a specific result. The charging step results in “…forming a metal alloy layer on the surface of the negative electrode corresponding to the component A of the functional layer precursor and simultaneously forming an electrolyte interface layer on the surface of the metal alloy layer, wherein the electrolyte interface layer comprises a compound derived from the component B, of the functional layer precursor…”. The discharging step provides a result “so that the metal alloy layer is transformed into a functional layer and the electrolyte interface layer, and obtains the electrode that is stabilized by using the functional layer.”
The instant specification is silent as to the particular process of charging/discharging that results in the changes of the functional layer upon the charge/discharge cycle. Applicant’s arguments thus amount to the use of “a common electrochemical transformation mechanism in which a lithophilic precursor undergoes electrochemical charging/discharging” where the use of the particular materials are “elemental groups…well known in the art to exhibit predictable lithium interaction characteristics”. Applicant further argues that “Once the electrochemical transformation mechanism is disclosed in the present application is understood, selection of additional members…would constitute only routine optimization”.
Therefore, the claims recite materials that one of ordinary skill in the art would recognize their intrinsic electrochemical transformations based on the mere fact they are lithophilic metal without using any particular process outside of a generic charging/discharging process, whether or not even the compositions encompassed by the scope of the claims are recognized for their use in a battery architecture.
An argument by the applicant is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) See MPEP 2145 I. There is no evidence of record showing the electrochemical transformation is common to generic lithophilic precursors which would end up with the claimed layers as a result of a generic charging/discharging.
While Applicant addresses the use of the lithiophilic metal compound of (i), Applicant does not address the use of a polymer as now required of the functional layer precursor material nor how the polymer itself may affect the formation of the functional layer and electrolyte interface layer. The instant claims are not just the result of the lithiophilic metal undergoing an electrochemical transformation, but the lithiophilic metal with a polymer composition undergoing the electrochemical transformation.
Applicant’s further arguments are drawn towards the as-amended claim limitations towards rejections over prior art withdrawn as a result of those amendments, and thus moot with respect to the rejections of record below.
In response to Applicant’s arguments on pg. 10 paragraph 2, Applicant is directed towards MPEP 2131.02 I. It is noted prior art need not anticipate every possible option when a species is disclosed in the prior art. Hence, the use of prior art with different material systems disclosing a species of the instant claims anticipates the instant claims as afforded by the MPEP.
No further arguments presented.
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 following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the specific compounds formed from functional precursor layers outlined in Table 1, does not reasonably provide enablement for any lithophilic metal/inorganic material and/or polymer encompassed within the scope of instant claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Addressing now the "Wands" factors (MPEP 2164.01 (a)).
(A) The breadth of the claims:
The claims are drawn towards the formation of a functional layer and electrolyte interface layer via a precursor formed from a lithiophilic metal fluoride, nitride, phosphide, sulfide, chloride, bromide, iodide, or hydride together with a polymer which is converted into a functional layer and electrolyte interface layer through a charging/discharging process. The claims are also silent as to the specific process or chemicals used for the charging/discharging process. For example, the plating process used in Table 1 is a lithium plating/stripping process. The claims are generic to any mode of charge transport within a battery, i.e. sodium battery or the like, but the specification is silent as to any other process outside of lithium, process parameters to that allow for the formation of the claimed layer, or the like.
(B) The nature of the invention:
The nature of the invention is drawn towards stabilizing electrodes of anode-free battery and solid state batteries.
(C) The state of the prior art:
With respect to the instant claims, the state of the prior art is deemed to be the references cited below with respect to the rejections under 35 U.S.C. 102 and/or 103. Their disclosures are not repeated herein for brevity.
(D) The level of one of ordinary skill:
One of ordinary skill in the art would have an understanding of prevailing battery technology and material used therein.
(E) The level of predictability in the art:
There does not appear to be any predictability for the ability of the claimed precursor compositions of a lithiophilic metal compound and polymer as claimed to form into a functional layer and electrolyte interface layer through the process as claimed.
(F) and (G) The amount of direction provided by the inventor and the existence of working examples:
The specification provides a small list of working examples in Table 1, specifically with SrF2 and GaN as the lithiophilic metal precursor with PVDF and HFP as possible polymers to be used. The specifics of the charging/discharging method to form the functional layer with respect to Table 1 is not disclosed. The use of these materials is also only disclosed on a copper negative electrode.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
A quantity of experimentation cannot be adequately calculated via the possible combination of all lithiophilic metal compounds, polymers, electrolytes, charging/discharging profiles, or the like.
Claim Interpretation
As to claim 1, the instant limitations “charging…and forming a metal alloy layer on the surface of the negative electrode corresponding to the component A of the functional layer precursor and simultaneously forming an electrolyte interface layer on the surface of the metal alloy layer, wherein the electrolyte interface layer comprises a compound derived from the component B of the functional layer precursor” and “discharging…so that the metal alloy layer is transformed into a functional layer and the electrolyte interface layer” (emphasis added), the italicized portions are deemed to be the physical result of the claimed process. As conceded by Applicant in the response dated 30 June 2026, “These elemental groups are well known in the art to exhibit predictable lithium interaction characteristics, including lithium alloy formation, lithium adsorption, lithium nucleation promotion, and electrochemically induced interfacial layer formation.” Thus, when the prior art discloses the use of components of the functional layer precursor that satisfy the instant claim limitations, the result of using those precursor materials during charging and discharging, i.e. formation of a metal alloy layer, functional layer, and electrolyte interface layer, are deemed inherent to the use of said materials. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
The italicized portion described the actual result of the method step of the instant claim, describing the result of performing the process of charging. In other words, where the prior art discloses a method of charging an positive electrode and negative electrode with the same material as those claimed, the resultant layers will be deemed a result of the process even in not enumerated within the prior art. See MPEP 2112.01 I “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)” As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claim Rejections - 35 USC § 102
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 1-3 and 5-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al (Yang, J., Lin, Yh., Guo, Bs. et al. Enhanced electrochemical performance of Si/C electrode through surface modification using SrF2 particle. Int J Miner Metall Mater 28, 1621–1628 (2021). https://doi.org/10.1007/s12613-021-2270-x).
As to claim 1, Yang discloses a method for stabilizing an electrode using a functional layer (Title “Enhanced performance…electrode…surface modification using SrF2 particle”). comprising the steps of:
providing a battery comprising at least a positive electrode and a negative electrode in current/voltage communication (Section 2.3 “The cell contains a cathode (Si/C or SrF2@Si/C with diameter of 14 mm and active loading of 1.6 mg·cm–2) and a Li metal anode (diameter of 16 mm with the thickness of 0.6 mm.” It is noted the SrF2@Si/C is referred to throughout the paper as the “anode” except for this passage. The Examiner believes this was in error since the negative electrode performs as the anode in the battery cell where and the particular materials are referred to as the anode – see for example Abstract “the SrF2@Si/C anode” among a plethora of other passages);
attaching a functional layer precursor to at least a portion of a surface of the negative electrode, the functional layer precursor comprising a material with composition of
(i) a lithiophilic metal fluoride, nitride, phosphide, sulfide, chloride, bromide, iodide, or hydride having a composition of AxBy, where x and y are positive integers, A is selected from Group 2A, Group 3A, Group 4A elements, or combinations thereof that capable of lithium alloy formation or lithium adsorption; and B is an inorganic element capable of forming a lithium-ion conductive electrolyte interphase layer during charging and discharging (Section 2.1 “…The Si/C anode was coated with a suspension of SrF2 and…”; and
(ii) a polymer (Section 2.1 “The Si/C anode was coated with a suspension of SrF2 and polyvinylidene difluoride (PVDF)…”);
charging the positive electrode and the negative electrode of the battery and forming a metal alloy layer on the surface of the negative electrode corresponding to the composition component A of the functional layer precursor and simultaneously forming an electrolyte interface layer on the surface of the metal alloy layer, wherein the electrolyte interface layer comprises a compound derived from the component B of the functional layer precursor (Fig. 1 disclosing charging where the resulting layers are inherently provided via carrying out the method as claimed. See MPEP 2112); and
discharging the positive electrode and the negative electrode of the battery so that the metal alloy layer is transformed into a functional layer and the electrolyte interface layer, and obtains the electrode that is stabilized by using the functional layer (Fig. 1 disclosing discharging where the resulting layers are inherently provided via carrying out the method as claimed. See MPEP 2112).
As to claim 2, Yang discloses wherein the negative electrode is a current collector containing a conductive metal (Section 2.1 “Si/C composite”) and the positive electrode contains a positive electrode material (Section 2.1 lithium).
As to claim 3, Yang discloses the use of PVDF (Section 2.1).
As to claim 5, Yang discloses using Sr (Title).
As to claim 6, Yang discloses using the same materials as those discloses which form a lithium metal alloy with the lithiophilic metal, i.e. Sr, thus providing the specific layer would have been inherent to the process.
As to claims 7 and 8, Yang discloses using the same materials as those discloses which form an interface layer with lithium and the B component, i.e. F, thus providing the specific layer of LiF would have been inherent to the process.
As to claims 9 and 10, Yang discloses using the same materials in the same manner as claimed via a charging/discharging process wherein the functional layer is a metallic layer and the electrolyte interface layer formed by the lithiophilic metal (See Fig. 6 and Fig. 3 C showing the Sr layer at the bottom).
Claims 1-3 and 5-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al (CN113659149 A with citations drawn towards the translation provided via Espacnet).
As to claims 1, 3, and 5, Chen discloses a method for stabilizing an electrode using a functional layer ([0009]) comprising the steps of:
providing a battery comprising at least a positive electrode ([0050]) and a negative electrode ([0021]) in current/voltage communication ([0053]);
attaching a functional layer precursor to at least a portion of a surface of the negative electrode ([0010] “a lithiophilic coating attached to the surface of the current collector”), the functional layer precursor comprising a material with composition of
(i) a lithiophilic metal fluoride, nitride, phosphide, sulfide, chloride, bromide, iodide, or hydride having a composition of AxBy, where x and y are positive integers, A is selected from Group 2A, Group 3A, Group 4A elements, or combinations thereof that capable of lithium alloy formation or lithium adsorption; and B is an inorganic element capable of forming a lithium-ion conductive electrolyte interphase layer during charging and discharging ([0011] specific examples of GeS, In2O3, and SnS2 Specific Example 4 [0079] which read on lithiophilic metal sulfides which reads on the group of instant claim 5); and
(ii) a polymer ([0016] polyvinylidene fluoride, polyacrylonitrile, polyacrylic acid which reads on the group of instant claim 3);
charging the positive electrode and the negative electrode of the battery and forming a metal alloy layer on the surface of the negative electrode corresponding to the composition component A of the functional layer precursor and simultaneously forming an electrolyte interface layer on the surface of the metal alloy layer, wherein the electrolyte interface layer comprises a compound derived from the component B of the functional layer precursor ([0138] disclosing charging where the resulting layers are inherently provided via carrying out the method as claimed. See MPEP 2112); and
discharging the positive electrode and the negative electrode of the battery so that the metal alloy layer is transformed into a functional layer and the electrolyte interface layer, and obtains the electrode that is stabilized by using the functional layer ([0138] disclosing discharging where the resulting layers are inherently provided via carrying out the method as claimed. See MPEP 2112).
As to claim 2, Chen discloses wherein the negative electrode is a current collector containing a conductive metal ([0021]) and the positive electrode contains a positive electrode material ([0051]).
As to claim 6, Chen discloses using the same materials as those discloses which form a lithium metal alloy with the lithiophilic metal, i.e. Ge, In, or Sn, thus providing the specific layer would have been inherent to the process.
As to claims 7 and 8, Chen discloses using the same materials as those discloses which form an interface layer with lithium and the B component, i.e. S, thus providing the specific layer of Li2S would have been inherent to the process.
As to claims 9 and 10, Chen discloses using the same materials in the same manner as claimed via a charging/discharging process wherein the functional layer is a metallic layer and the electrolyte interface layer formed by the lithiophilic metal would have been inherent to the process.
Claims 1-3 and 5-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Song et al (US 2024/0194889 A1).
As to claims 1-3, and 5, Song discloses a method for stabilizing an electrode using a functional layer ([0024]) comprising the steps of:
providing a battery comprising at least a positive electrode ([0152]) and a negative electrode ( [0160] current collector which is a conductive metal thus reading on instant claim 2) in current/voltage communication ([0130, [0201]]);
attaching a functional layer precursor to at least a portion of a surface of the negative electrode (layer 62 and/or layer 6, generically process parameters discloses of depositing the functional layer precursor at [0116]-[0128]), the functional layer precursor comprising a material with composition of
(i) a lithiophilic metal fluoride, nitride, phosphide, sulfide, chloride, bromide, iodide, or hydride having a composition of AxBy, where x and y are positive integers, A is selected from Group 2A, Group 3A, Group 4A elements, or combinations thereof that capable of lithium alloy formation or lithium adsorption; and B is an inorganic element capable of forming a lithium-ion conductive electrolyte interphase layer during charging and discharging ([0093] specific disclosure of Si, Ga, Sn, In, Ge, as sulfides, fluorides, nitrides, and chlorides which reads on the listing of instant claim 3); and
(ii) a polymer ([0164] polymethacrylic acid, polyacrylonitrile, polyacrylic acid, PVA which reads on the group of instant claim 3);
charging the positive electrode and the negative electrode of the battery and forming a metal alloy layer on the surface of the negative electrode corresponding to the composition component A of the functional layer precursor and simultaneously forming an electrolyte interface layer on the surface of the metal alloy layer, wherein the electrolyte interface layer comprises a compound derived from the component B of the functional layer precursor ([0098] [0099]disclosing charging where the resulting layers are inherently provided via carrying out the method as claimed. See MPEP 2112); and
discharging the positive electrode and the negative electrode of the battery so that the metal alloy layer is transformed into a functional layer and the electrolyte interface layer, and obtains the electrode that is stabilized by using the functional layer ([0098], [0099] disclosing discharging where the resulting layers are inherently provided via carrying out the method as claimed. See MPEP 2112).
As to claim 6, Song discloses using the same materials as those discloses which form a lithium metal alloy with the lithiophilic metal, i.e. Si, Ga, Sn, In, Ge, as sulfides, fluorides, nitrides, and chlorides, thus providing the specific layer would have been inherent to the process.
As to claims 7 and 8, Song discloses using the same materials as those discloses which form an interface layer with lithium and the B component, i.e. sulfides, fluorides, nitrides, and chlorides, thus providing the specific layer of Li2S would have been inherent to the process.
As to claims 9 and 10, Song discloses using the same materials in the same manner as claimed via a charging/discharging process wherein the functional layer is a metallic layer and the electrolyte interface layer formed by the lithiophilic metal would have been inherent to the process.
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 LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795
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