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/Restriction
Applicant’s election of Species 2 in the reply filed on 03/03/26 is acknowledged. The election was made without traverse. Examiner notes that Applicant canceled the claims drawn to the unelected species added new claims relating to the elected species (represented by compound of Formula (III)) in the reply. Thus, claims 1, 2, 4, 6–11, 15–17, and 21–29 are being examined.
Priority
Examiner acknowledges Applicant’s domestic-benefit claim to provisional application 63/444,456, filed 02/09/2023, as well as non-provisional filing date of 06/29/2023. After reviewing the provisional, Examiner has found written-description support for the compound of Formula (III) (reflected in claims 21–29) but not its uses within an electrode, battery, article of manufacture, or composition as understood by one of ordinary skill in the art (reflected in claims 1, 2, 4, 6–11, 15–17, and 24–29), so it appears that Applicant is not entitled to the earlier effective filing date (EFD) for the subject matter of claims 1, 2, 4, 6–11, 15–17, and 24–29. Thus, claims 21–23, based on the scope of a compound of Formula (III), are afforded an EFD of 02/09/2023, while claims 1, 2, 4, 6–11, 15–17, and 24–29 are afforded an EFD of 02/29/2023.
Claim Objections
Applicant is recommended to amend the claims as follows:
In claim 24, “a compound of Formula (III) of claim 21” should read “[[a]] the compound of Formula (III) of claim 21” for proper antecedence.
In claim 27, “a compound of Formula (III) of claim 21” should read “[[a]] the compound of Formula (III) of claim 21” for proper antecedence
Appropriate correction is required.
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, 6–9, 15, and 24–29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meng et al. (Cyclotetrabenzil Derivatives for Electrochemical Lithium-Ion Storage, from 01/23/2024 IDS and published 04/17/2023) (Meng) as evidenced by Supporting Information for Cyclotetrabenzil Derivatives for Electrochemical Lithium-Ion Storage, from same IDS).
Examiner notes that Meng was published within a year of the instant application and shares the common inventors Robles, Yao, Miljanic, and Wu. However, the reference names additional inventors Meng, Jalife, Ren, Zhang, Zhao, and Liang, meaning it is not immediately clear that this subject matter is by the instant inventive entity and, thus, appears to remain available as prior art under 35 U.S.C. 102(a)(1) (see MPEP 2153.01(a) and 2153.02).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Regarding claims 1, 2, 4, 6–9, 15, and 24–29, Meng discloses a cathode electrode for a lithium ion battery (p .4, left and right cols.)—further reading on an article of manufacture (claim 24) because such is manufactured (implied in, e.g., p. 4, left and right cols.) and a composition (claim 27) given that the cathode is used alongside a LiTFSI electrolyte in the battery (p. 4, left col.) so that these components together broadly constitute a composition—comprising a lithium ion (see Li+ complex formed with compound 2 upon cycling, fig. 3A and further implied from eight-electron reduction on p. 4, right col., 1st full ¶) and a compound of Formula (III), where p = 1, q = r = 0, and R2a and R2b are each absent because q and r are each 0, respectively (see compound 2 from fig. 3A (reproduced below), where only hydrogens (neither electron-donating nor withdrawing) are bound to the bridging aromatic groups so that the compound meets claims 1, 2, 4, 25, 26, 28, and 29’s respective formulae).
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Claim(s) 10, 11, 16, and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meng et al. (Cyclotetrabenzil Derivatives for Electrochemical Lithium-Ion Storage) (Meng), as applied to claim 1, as evidenced by Supporting Information for Cyclotetrabenzil Derivatives for Electrochemical Lithium-Ion Storage, from same IDS).
Regarding claims 10, 11, 16, and 17, Meng discloses a lithium-ion battery (implied from cycling with cell including LiTFSI electrolyte, fig. 4 caption) comprising an anode electrode (counter electrode necessarily present to be able to cycle; see also Li metal counter electrode on S9 of Supporting Information as evidence), a separator (holding the electrolyte (see S9 of Supporting Information as evidence)), an electrolyte comprising a lithium salt (LiTFSI, fig. 4 caption), and the cathode electrode of claim 6 or 15 (Meng’s p. 4, left and right cols.).
Allowable Subject Matter
Claim(s) 21–23 is/are allowed.
The following is an examiner’s statement of reasons for allowance:
The present invention relates to, inter alia, a compound of Formula (III).
Meng et al. (Cyclotetrabenzil Derivatives for Electrochemical Lithium-Ion Storage, available 05/08/23 (from 01/23/24 IDS)) (Meng) is considered the closest art to independent claim(s) 21. As established above, Meng discloses the compound of formula (III) (compound 2 of fig. 3A) as well as accompanying article of manufacture (e.g., cathode, p. 4, left and right cols.) and composition (e.g., compound 2 with any combination of compounds (e.g., LiTFSI electrolyte) in battery of fig. 4 caption).
However, as also established above, the provisional application provides support for the compound of Formula (III) of claim 21, and, thus, Meng would be disqualified as prior art based on these claims’ EFD of 02/09/23.
Robles (Cyclobenzoins as Materials for Energy Industries: Iodine Capture and Lithium-Ion Batteries, University of Houston, Miljanic Research Group, presented on 12/29/22 (from 01/23/24 IDS)) is additionally relevant. Robles discloses the compound of formula (III) (see compound 2 of figure on p. 17; see also pp. 20–25).
However, as this reference was published within the one-year grace period of the instant application’s EFD of 02/09/23 and lists Robles as the sole inventor, the subject matter is undoubtedly attributable to Robles, meaning this reference fails to qualify as prior art under 102(a)(1).
Additionally Relevant Prior Art:
Yoo et al. (Tetradiketone Macrocycle for Divalent Aluminium Ion Batteries, available 04/22/21) (Yoo): Yoo discloses a tetradiketone/cylcotetrabenzil structure similar to instant claim 1/21’s formula (III), where the compound is used for metal-ion energy storage (fig. 1a, reproduced below).
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However, Yoo, in merely disclosing bridging phenyl groups between the diketones, clearly fails to disclose Formula (III)’s napthalenic bridging moieties, and there is simply no apparent suggestion in Yoo to modify the structure to include such groups given Yoo’s inventiveness centers around this compound.
Eisterhold et al. (Expanded Cyclotetrabenzoins (from 10/15/23 IDS), available 01/07/21) (Eisterhold): Eisterhold discloses the below compound as an acetylated cylcotetrabenzoin (see product 5d in Scheme 1, where R = Ac), which is substantially similar to Formula (III).
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However, as alluded to above, Eisterhold clearly requires C–O single bonds next to each carbonyl to form the acetylated derivatives, where the acetylate is specifically formed to more easily purify the compound compared to prior purification issues due to low solubility and high polarity (p. 781, ¶ 2). Thus, there appears to be reason for the skilled artisan to arbitrarily oxidize each C–OR to C=O to arrive at Formula (III).
Further, even if, arguendo, Eisterhold may appear to recognize the phenyl and napthalenic moieties as equivalent linkers, there still appears to be no reason to substitute Yoo’s phenyl groups for naphthalene groups given Eisterhold’s disparate focus of generally preparing cyclotetrabenzoins for applications as supramolecular hosts and porous molecular crystals, whereas Yoo is solely focused on tetradiketones for Al-ion energy storage and seems to possess no desire for any possible benefit from Eisterhold’s napthalenic groups and already tailors the synthesis to improve the target compound’s purity and double the yield (Yoo, end of p. 2/start of p. 3).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record but not relied upon is considered pertinent to Applicant’s disclosure:
US 20180050974 A1: cyclobenzoin macrocycles including a tetrabenzil product (compound 2, fig. 4) similar to formula (III).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S MEDLEY whose telephone number is (703)756-4600. The examiner can normally be reached 8:00-5:00 EST M-Th, 9:00-1:00 EST F.
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/J.S.M./Examiner, Art Unit 1751
/Haroon S. Sheikh/Primary Examiner, Art Unit 1751
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