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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-5 in the reply filed on 12/15/25 is acknowledged.
Claims 6-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/15/25.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/325,830, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Specifically, it is noted that the provisional application fails to provide for the following limitations of claim 1: the plate being non-porous and active and stable at the temperature ranges as set forth in claim 1; claim 3: the LCO redox membrane comprises a membrane of sintered packed LCO powder; claim 4: the membrane with a (110) crystalline orientation in a layered R3-m space group; and claim 5: the plate further comprising at least one electrical contact coupled to the plate.
Claim Interpretation
It is noted that claim 1 refers to the electrochemically active lithium transition metal oxide as being “non-porous” (see independent claim 1 at line 3). Please note, the examiner is treating the term “non-porous” as meaning that there are no open pores that would allow for fluid flow from one side of the lithium transition metal oxide material through to the other side of the material. As such, the material could have closed-off pores and still block the flow of solvent as disclosed in the specification (see Specification at ¶18 and ¶49).
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-5 are 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.
Specifically, it is noted that the preamble of claim 1 purports to be directed towards a “polymer free redox membrane composition” (emphasis added) (see claim 1 preamble). Likewise, each of dependent claims 2-5 is directed by the respective preambles to claim the “composition of claim …” with some further limitation (see preambles of claims 2-5). However, some of the limitations of the claims seems directed towards the structure of the membrane, i.e. more directed towards the apparatus, as opposed to the composition of the membrane as set forth in the preamble. Specifically, claim 1’s reference to the membrane composition being a plate (see claim 1 at line 3) and also the limitations of dependent claim 5 requiring the plate to further comprise an electrical contact (see claim 5).
As such, the claim is unclear as to whether a composition is actually being claimed or if the membrane structure itself is being claimed. Please note, for purposes of claim interpretation the examiner will be treating claims 1-5 as directed towards the composition as explicitly recited.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4 and 5 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kiggins et al., (US Pub. No. 2021/0242460) (hereinafter referred to as “KIGGINS”).
Regarding claims 1 and 2, KIGGINS teaches a polymer free redox membrane composition for lithium extractions (see generally KIGGINS at Abstract and ¶73 teaching the electrodeposition of pure (110) LiCoO2 “LCO” which would be polymer free and capable of use in lithium extractions as claimed), comprising:
a plate of non-porous, electrochemically active lithium transition metal oxide, wherein the redox membrane comprises a plate of LiCoO2 (LCO) as the lithium transition metal oxide (see KIGGINS at ¶73 teaching the deposition of a plated layer of LCO on aluminum foil which would be electrochemically active and not allow for the passage of electrolyte therethrough; see also KIGGINS at ¶6 teaching the production of the LCO layer as fully dense; see also KIGGINS at ¶59 teaching fully dense meaning a density of 100%);
wherein said plate is impermeable to solvents (see teachings of KIGGINS cited above as to the LCO layer being fully dense such that it would be impermeable to solvents as claimed);
wherein said plate is configured to preferentially select lithium ions over other ions (see KIGGINS at Abstract teaching the lithium transition metal oxide being LCO with a (110) crystallographic orientation such that it would possess the ability to preferentially select Li ions as claimed); and
wherein the plate is active and stable at room temperature, 20 to 30 °C, but also active and stable at elevated temperatures between 60 to 200 °C (see KIGGINS at Abstract teaching the lithium transition metal oxide being LCO with a (110) crystallographic orientation such that it would possess the activity and stability as claimed).
Regarding claim 4, KIGGINS teaches the composition wherein said LCO redox membrane comprises a membrane with a (110) crystalline orientation in a layered R3-m space group (see KIGGINS at ¶73 teaching an electrochemical plating protocol to produce a pure (110) orientation LCO deposit which would be expected to necessarily have the R3-m spacing as claimed).
Regarding claim 5, KIGGINS teaches the composition wherein said plate further comprising at least one electrical contact coupled to the plate (see KIGGINS at ¶73 teaching an aluminum foil used as the electrode on which the LCO material is deposited such that the aluminum foil could be said to be the electrical contact as claimed).
Furthermore, it is noted that since the claim is directed towards a composition of matter which makes up the polymer free redox membrane composition any other structure elements of features attached to the membrane or otherwise employed with the membrane would not be a part of the composition per se and so would fail to further limit the membrane composition as presently claimed. As such, although the above pointed to teachings sufficient to address the limitations of claim 5, the examiner also wishes to make clear that the claim as presently drafted would appear to be directed solely to the membrane composition and so, consequently, would not be further limited by other elements or structural aspects of components to be used with the membrane composition.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Kim et al., (US Pub. No. 2012/0305392) (hereinafter referred to as “KIM”).
Regarding claims 1 and 2, KIM teaches a polymer free redox membrane composition for lithium extractions (see KIM at Abstract teaching a LiCoO2 “LCO” sintered body formed via a sintering, at temperatures greater than 750 °C, and pressures greater than 10 MPa, i.e. around 1100 °C and about 100 MPa), comprising:
a plate of non-porous, electrochemically active lithium transition metal oxide (see KIM at Abstract teaching the formation of a sintered body of LCO under conditions as disclosed in Applicant’s specification such that the prior art would be expected to have similar properties; see also KIM at ¶20-¶28 teaching the process without a binder or by including a debinding step to remove carbon left over from the binder);
wherein said plate is impermeable to solvents (see teachings of KIM cited above and Applicant’s Specification at ¶52 teaching the LCO membrane formed by sintering LCO powder at temperatures greater than 750 °C with pressures greater than 10 MPa which is done by KIM and so would be expected to provide for the same property);
wherein said plate is configured to preferentially select lithium ions over other ions (see teachings of KIM cited above and Applicant’s Specification at ¶52 teaching the LCO membrane formed by sintering LCO powder at temperatures greater than 750 °C with pressures greater than 10 MPa which is done by KIM and so would be expected to provide for the same property); and
wherein the plate is active and stable at room temperature, 20-30 °C, but also active and stable at elevated temperatures between 60 °C to 200 °C (see teachings of KIM cited above and Applicant’s Specification at ¶52 teaching the LCO membrane formed by sintering LCO powder at temperatures greater than 750 °C with pressures greater than 10 MPa which is done by KIM and so would be expected to provide for the same property at room temperature and at elevated temperatures as set forth).
Regarding claim 3, KIM teaches the composition wherein said LCO redox membrane comprises a membrane of sintered packed LCO powder (see KIM at Abstract teaching the LCO body formed by sintering at temperatures around 1050-1120 °C and at pressures of 1,000 kg/cm2, i.e. about 100 MPa).
Regarding claim 5, KIM teaches the composition with said plate further comprising at least one electrical contact coupled to the plate (see teaching of KIM cited above with respect to claim 1). Additionally, since claim 5 is directed towards the composition of the membrane including the compositional and structural limitations of that composition, the further limitation of claim 5 directed towards components to be attached to or otherwise incorporated with the membrane are directed towards an apparatus that is not being claimed. As such, in accordance with the claim interpretation as set forth previously, the claim is being treated as a composition of matter claim that is, therefore, not further limited by additional structure or components to be added to or with the membrane composition as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794
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