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 with traverse of Group I, claims 1-4, drawn to a 3D rigid mesoporous honeycomb boron carbon nitride nanomaterial in the reply filed 04/30/2026 is acknowledged. The traversal is on the grounds that prior art Wu et al. (Three-Dimensional Graphene-Based Macro- and Mesoporous Frameworks for High-Performance Electrochemical Capacitive Energy Storage; copy provided with requirement for restriction filed 03/05/2026) in view of Nehate et al. (“A review of boron carbon nitride thin films and progress in nanomaterials; cited in 07/20/2023 IDS) discloses a graphene aerogel doped through substitution with B and N atoms, while the instant application is directed to use of a covalently bonded boron-carbon-nitrogen network free of graphene or graphene-derived structures (Remarks pp. 6). The examiner acknowledges this argument, but the argument is moot in light of new prior art.
The inventions of Groups I, II, III, IV, and V still lack unity of invention for the following reasons: Hong et al. CN-111969202-A (see attached machine translation) in view of Ye et al. (Stable Nano-Encapsulation of Lithium Through Seed-Free Selective Deposition for High-Performance Li Battery Anodes; cited in IDS filed 04/30/2026) demonstrates a lack of novelty and/or inventive step as set forth on pages 8-10 i.e., rejection of claim 1 of this office action.
Even though the inventions of these groups require the technical feature of a 3D HBCN nanomaterial with a porosity in the range of 300-500 nm and a mesoporosity in the range of 2 to 10 nm, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Hong in view of Ye pages 8-10 i.e., rejection of claim 1 of this office action, which discloses the shared technical feature of the inventions of Groups I, II, III, IV, and V. Hence, a lack of unity exists between the cited claims.
Furthermore, Groups I, III, IV, and V lack unity of invention because even though the inventions of these groups require the technical feature of the 3D rigid HBCN nanomaterial further plated or deposited with an alkali metal, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Hong in view of Ye.
Regarding this technical feature, modified Hong discloses the 3D rigid HBCN nanomaterial further plated or deposited with an alkali metal (lithium metal, Hong [0020-0022]).
Therefore, this shared technical feature as claimed is disclosed by Hong in view of Ye and does not constitute a special technical feature. The inventions of Groups I, III, IV, and V lack unity of invention.
Furthermore, Groups III, IV, and V lack unity of invention because even though the inventions of these groups require the technical feature of an anode material comprising the 3D rigid HBCN nanomaterial plated or deposited with an alkali metal, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Hong in view of Ye.
Regarding this technical feature, modified Hong discloses an anode material comprising the 3D rigid HBCN nanomaterial (“three-dimensional porous lithium metal anode active material”, Hong [0020]) plated or deposited with an alkali metal (lithium metal, [0020]).
Therefore, this shared technical feature as claimed is disclosed by Hong in view of Ye and does not constitute a special technical feature. The inventions of Groups III, IV, and V lack unity of invention.
Furthermore, Groups IV, V lack unity of invention because even though the inventions of these groups require the technical feature of a lithium metal cell comprising the 3D rigid HBCN nanomaterial plated or deposited with lithium as the anode, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Hong in view of Ye.
Regarding this technical feature, modified Hong discloses a lithium metal cell (“full cell”) comprising the 3D rigid HBCN nanomaterial plated or deposited with lithium as the anode (Hong [0054]).
Therefore, this shared technical feature as claimed is disclosed by Hong in view of Ye and does not constitute a special technical feature. The inventions of Groups IV and V lack unity of invention.
Claims 5-10 are thus withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, III, IV, or V, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 04/30/2026.
Furthermore, in Applicant’s remarks traversing the requirement for restriction filed 04/30/2026, Examiner notes that it is not fully clear how Applicant defines the distinction of lithium metal and lithium ions.
Applicant remarks filed 04/30/2026 regarding amended claims 9 and 10 recite “It is generally known in the art that an ion battery contains graphite or other carbon-based material as an anode. In contrast, the metal battery contains a specific metal as the anode (e.g. lithium as anode)” (Remarks pp. 8, emphasis by Examiner).
This appears to conflict with Applicant’s disclosure; as a non-limiting example, page 2, lines 14-15 of the instant specification recites a “3D honeycomb boron carbon nitride (HBCN) nanomaterial as host material to deposit lithium into pores and applied as lithium metal anode in Li-ion battery”. Similarly, the abstract of the specification recites “Said nanomaterial plated/deposited with metal is used as metal anode in alkali metal ion battery”, and pp. 3 lines 28-31 recite “In an aspect, the present invention provides Lithium ion battery with improved stability, long lifecycle comprising [HBCN nanomaterial] plated /deposited with lithium as metal anode”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18856539 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claim 1, Reference claims a “honeycomb boron carbon nitride nanomaterial” which is mesoporous (Ref. claim 1, clause a). While not necessarily claimed as a 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial, Reference indicates the terminology of a “honeycomb boron carbon nitride” is interchangeable with a “3D rigid honeycomb boron carbon nitride (HBCN)” (Ref. specification pp. 6 ln. 3-6), such that the scope of Reference’s claims fully reads on the scope of the 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial of the instant claims.
Reference further claims the HBCN nanomaterial has a porosity in the range of 300 to 500 nm and mesoporosity in the range of 2 to 10 nm (Ref. claim 2) as a host for plating or depositing a metal (sodium metal, claim 1).
Regarding claim 2, conflicting claim 2 of Reference has corresponding limitations that are within the scope of the instant claim.
Regarding claims 3, 4 conflicting claim 1 of Reference has corresponding limitations (“plated or deposited with sodium”, claim 1 clause a); “a sodium ion battery”, claim 1 preamble) that are within the scope of the instant claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Specification
The disclosure is objected to because of the following informalities:
Both the abstract and specification comprise numerous minor grammatical errors (Abstract, “Said nanomaterial plated/deposited with metal is used as metal anode in alkali metal ion battery”; inst. spec. pp. 2, ln. 14-15 “3D honeycomb boron carbon nitride (HBCN) nanomaterial as host material to deposit lithium into pores and applied as lithium metal anode in Li-ion battery”), these portions appearing intended to recite “a metal anode”, “an alkali metal ion battery”, “a Li-ion battery” being non-limiting examples.
Appropriate correction is required.
Claim Objections
Claim 3 objected to because of the following informalities:
This claim recites “where the metal is anode material is for an alkali metal ion battery”. This appears to be a minor typographical error, where this portion of claim 3 is intended to recite “where the metal is anode material
Support for this interpretation is found in pp. 7 ln. 7-10, of the instant specification, reciting “Lithium ion battery comprising 3D honeycomb boron carbon nitride with porosity in the range from 300 to 500 nm and mesoporosity in the range of 2 to 10 nm plated/deposited with lithium as anode material”.
For the purposes of examination, claim 3 is interpreted as reciting the above. Appropriate correction is required.
An objection is further applied to claim 4, being dependent on objected claim 3.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (CN-111969202-A; see attached machine translation) in view of Ye et al. (Stable Nano-Encapsulation of Lithium Through Seed-Free Selective Deposition for High-Performance Li Battery Anodes; cited in 04/30/2026 IDS).
Claim 1 recites the structure of a “3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial”. The instant specification characterizes a honeycomb structure as a 3D architecture comprising spherical pores created uniformly throughout the material (inst. spec. pp. 9 ln. 28-31), depicted in FIGs. 6(a)-6(h); thus, a structure comprising this structure of spherical pores throughout the material is interpreted as a ‘honeycomb’ structure as claimed.
Additionally, claim 1 recites “a 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial […] as a host for plating or depositing a metal”. The HBCN nanomaterial does not itself comprise a plated or deposited metal; thus the emphasized limitation is interpreted as an intended usage of the HBCN nanomaterial.
Regarding claim 1, Hong is directed to a boron-nitrogen co-doped porous carbon sphere material used as a three-dimensional porous lithium metal anode active material (machine translation of Hong, [0007]). The carbon sphere material comprises boron, nitrogen, and carbon ([0022], [0015]) and is thus a boron carbon nitride (HBCN) nanomaterial. The HBCN nanomaterial comprises spherical cavities, i.e., pores, created uniformly throughout the material (i.e., a ‘honeycomb’ structure; see claim interpretation above) ([0020]; FIG. 1) and is thus recognized as a 3D honeycomb material. The HBCN nanomaterial is also stable (i.e., rigid) to resist volumetric effects of lithium metal anode cycling ([0022], FIG. 1), and is thus a rigid material.
Additionally, while considerations of Li nucleation and deposition uniformity to avoid dendrification are pertinent to Hong’s disclosure, ([0022-0024]), and Hong further discloses a surface area of the nanomaterial ranging widely from 50-1000 m2/g ([0008]) which suggests an additional form of porosity or surface structure besides the spherical cavities of the material ([0022]), Hong fails to expressly disclose an additional porosity in the form of mesoporosity in the range of 2 to 10 nm in the 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial of claim 1.
Ye (“Nano-Encapsulation of Lithium…”), directed to a comparable nitrogen-doped hollow porous carbon sphere nanomaterial used analogously in a lithium metal anode (Ye, abstract), teaches treating the nanomaterial with a pore-forming agent to form mesoporous-sized pores in the carbon shell of the nanomaterial (Ye pp. 2 col. 1 ¶2, pp. 9 col. 2 ¶4). These pores comprise a size of about ~2.5 nm (pp. 3 col. 1 ¶1), this size being within the mesoporous range of 2-10 nm recited in claim 1 and are thus recognized as a mesoporosity as claimed. By providing mesoporosity in the carbon shell of the nanomaterial, Ye’s mesoporosity improves the lithiophilicity and Li-ion permeability, thus inhibiting dendrite growth as compared to a nanomaterial material lacking mesoporosity (pp. 6 col. 2 ¶2-3).
As such, in seeking to improve the lithiophilicity and Li-ion permeability to inhibit dendrite growth in Hong’s HBCN nanomaterial, it would be obvious before the effective filing date of the instant application for one having ordinary skill in the art to treat Hong’s HBCN nanomaterial with a pore-forming agent to form mesoporosity in Hong’s HBCN nanomaterial according to Ye’s teaching, thus forming a 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial as claimed in the preamble of claim 1.
Such a modification would be made with a reasonable expectation of success, as Hong and Ye are directed to substantially similar hollow carbon sphere structures as nanomaterials (Hong [0022], Ye pp. 2 col. 1 ¶2) provided for analogous purposes of Li metal nucleation in a lithium anode (Hong [0022], Ye, abstract).
Hong further discloses an experimental example of a HBCN nanomaterial synthesized using a 400nm diameter silica template particle (Example 1, [0035-0036]) which is removed to form the porosity (“internal cavity”); as the porosity is formed around a 400nm template, the porosity would necessarily be about 400 nm, which falls within the porosity size range of 300-500nm claimed in claim 1.
Hong modified in view of Ye discloses forming a mesoporosity of ~2.5nm pores (Ye pp. 3 col. 1 ¶1; see discussion above), such that it would be obvious to select a mesoporosity of 2.5 nm in modified Hong’s HBCN nanomaterial which falls within and renders obvious the “mesoporosity in the range of 2 to 10 nm” claimed in claim 1.
Modified Hong further discloses use of the 3D rigid mesoporous HBCN nanomaterial as a host for plating or depositing (“nucleation and deposition”) a metal (lithium) (Hong [0022]), thus reading on the scope of claim 1; see claim interpretation section above.
Regarding claim 2, modified Hong discloses the 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial as claimed in claim 1. Hong further discloses experimental examples of the HBCN nanomaterial comprising a surface area of 405 m2/g (Example 8, Hong [0074]) to 784 m2/g (Example 9, [0077]), thus disclosing with sufficient specificity the selection of a 3D rigid mesoporous HBCN nanomaterial with these surface areas which fall within the claimed “nanomaterial has the surface area of 400 m2/g to 800 m2/g” of claim 2.
Claim 3 recites “The 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial as claimed in claim 1, wherein the nanomaterial is plated or deposited with metal, where the metal is anode material for an alkali metal ion battery” (see objection to claim 3 above).
The preamble of this claim is directed to a 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial. The HBCN nanomaterial does not itself include the structure of plated or deposited metal. In the context of an alkali metal ion battery, the instant specification and claim 6 indicate that the combination of the HBCN nanomaterial and the plated/deposited metal is recognized as an anode material (inst. spec. pp. 7 ln. 7-12), the HBCN nanomaterial and plated/deposited metal being respective subcombinations used together in the combination of a plated HBCN anode material.
Thus, the limitation “wherein the nanomaterial is plated or deposited with metal, where the metal is anode material [sic] for an alkali metal ion battery” is interpreted as an intended use of the HBCN nanomaterial which does not itself limit the claimed HBCN nanomaterial to a particular structure (MPEP 2111.04 I). In other words, Hong’s disclosure of a prior art structure capable of being plated or deposited with a metal usable as an anode material (e.g., an alkali metal) for an alkali metal ion battery is broadly and reasonably interpreted as reading on this limitation as discussed below.
Regarding claims 3 and 4, modified Hong discloses the 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial as claimed in claim 1, wherein the nanomaterial is capable of being plated or deposited with metal (Hong [0022]; see claim interpretation above), the metal being an anode material (lithium) for an alkali metal ion battery as claimed in claim 3 (Hong [0022]; see claim interpretation above); the metal being lithium as claimed within the group of metals recited in claim 4. Therefore, modified Hong discloses the HBCN nanomaterial claimed in claim 1 wherein the nanomaterial is plated or deposited with metal, where the metal is anode material is for an alkali metal ion battery as claimed in claim 3.
Additionally, although outside the interpretation of claims 3 and 4 applied for purposes of examination, Examiner notes that modified Hong discloses the 3D rigid mesoporous honeycomb boron carbon nitride (HBCN) nanomaterial as claimed in claim 1 wherein the nanomaterial is deposited with lithium metal (Hong [0022]), where lithium is an anode material for an alkali metal ion battery as claimed in claim 3 and further included within the group of metals claimed in claim 4.
Conclusion
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/E.C./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 5/27/2026
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