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 .
Response to Amendment
This is a final Office action in response to Applicant’s remarks and amendments filed on
05/26/2026. Claims 1 & 2 are amended, claims 1-5 are pending in the current Office action.
The 35 U.S.C. 102 & 103 rejections set forth in the previous Office action are maintained.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HIASA (WO2020218456 provided in the IDS filed 08/20/2024, see English equivalent US 2022/0045369 for citations)
Regarding claim 1: Hiasa discloses a positive electrode active material ([0052]) for an aqueous potassium ion battery ([0016-0017]), which is represented by the formula LiMn2O4 ([0053], Line 5-6).
The limitation "for an aqueous potassium ion battery" represents an intended use of the claimed positive electrode active material and does not imply any additional structure to the claim beyond the claimed general formula as evidenced by the instant specification at [0058] which describes LiMn2O4, within the claim scope, as the structure capable of performing the claimed intended use.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUYAMA. (US 2019/0386346)
Regarding claims 2 & 3, Suyama discloses an aqueous potassium ion secondary battery (Fig. 1 & [0046-0047]), a positive electrode active material [0054] for an aqueous potassium ion battery (Fig. 1 & [0046-0047]).
Suyama also teaches that any cathode active material for an aqueous potassium-ion battery can be employed for the cathode active material and that the cathode active material should have a higher potential than an anode active material (Paragraph 0054, Line 1-3). In Paragraph 0054, Line 8-9 explains that any cathode active material containing a K element is preferable. Many examples are shown for a cathode active material, specifically the potassium-manganese composite oxides which mentions KMnO2 and KMn2O4 (Paragraph 0054, Line 15-17). Suyama is not limited to the cathode active material containing a K element and in other embodiments also lists Li as a viable element ([0054]).
While Suyama does not explicitly teach a specific embodiment using LiMn2O4, since Suyama disclosed KMn2O4, suggested being open to Li as an alternative metal, and due to the compositional structural similarity between the disclosed KMn2O4, and the claimed LiMn2O4, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized LiMn2O4 instead of KMn2O4, with a reasonable expectation that such would provide substantially similar properties and ultimately perform successfully as the positive electrode active material (MPEP 2144.09).
Suyama further discloses an aqueous electrolyte solution, wherein the aqueous electrolyte solution has a pH of preferably 7.0 to 13 ([0045], Line 6-11) and comprises an aqueous solvent ([0029 – [0030]) and a potassium salt dissolved in the aqueous solvent. (potassium pyrophosphate, [0033-0034]), which reads on claim 3.
Regarding claims 4 & 5, modified Suyama discloses all of the limitations as set forth above. Suyama further discloses the potassium pyrophosphate is dissolved in the aqueous solvent at a concentration of 5.0 mol/kg or greater ([0034]) which is within the claimed range of 2.0 mol/kg or greater of claim 4 and reads on claim 5.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Specifically, the applicant argues (see pgs. 3 & 4), the limitation “for a potassium ion battery”, is a recitation for functional capability and not intended use (See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)).
Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) "For an Aqueous Potassium Ion Battery" Is Not Merely an Intended Use Limitation - It Reflects a Functional Capability That Distinguishes the Claimed Material. When reading the preamble in the context of the entire claim, the recitation, "For an Aqueous Potassium Ion Battery" , is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
In response to applicant's argument that "For an Aqueous Potassium Ion Battery" Is Not Merely an Intended Use Limitation - It Reflects a Functional Capability That Distinguishes the Claimed Material, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant's argument regarding the limitation “for a potassium ion battery”, the examiner notes that the limitation is within the preamble of the claim and per MPEP 2111.02(II), “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”, and further recites "statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not 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. If so, the recitation serves to limit the claim".
As written, the claimed invention is a positive electrode material represented by the formula LiMn2O4, and as established in the previous Office action, Hiasa teaches LiMn2O4 as a cathode material in a secondary battery which can include a lithium ion, a sodium ion, and a potassium ion which is to be inserted/extracted; allowing charging and discharging reactions to proceed ([0016]-[0017]).
The examiner acknowledges Hiasa exemplifies LiMn2O4 in a lithium-ion secondary battery (Table 2, Experimental example 11; [0052]-[0053]). However, MPEP 2123 recites "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." and “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. Therefore, while the examples do not show LiMn2O4 in a potassium-ion secondary battery, Hiasa does show combinations of different positive active materials with different electrolytic solutions. These examples show that various cathodes can be used in different alkali metal ion secondary battery which include potassium-ion.
Applicant further argues (see pgs. 4 & 5), Hiasa Does not disclose LiMn2O4 as a positive electrode active material for an aqueous potassium ion battery and the use of KOH or other potassium salts in Hiasa’s examples does not establish LiMn2O4 as a potassium-ion electrode material.
Examiner further recites the limitation "For an Aqueous Potassium Ion Battery" is within the preamble of the claim. When reading the preamble in the context of the entire claim, the recitation, "For an Aqueous Potassium Ion Battery", is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The applicant argues (see pgs. 6 - 8), Structural Similarity Under MPEP 2144.09 Does Not Establish a Reasonable Expectation of Success in an Unpredictable Art and Suyama Does Not Teach or Suggest LiMn204 as a Positive Electrode Active Material for an Aqueous Potassium-Ion Battery. The applicant further argues this point using the comparative examples in the application. While the examples used do include lithium as a cation, the compounds also include other elements like nickel, iron, and phosphorous. These compounds are not as similar structured to LiMn2O4 as KMn2O4 is. While MPEP 2144.09 mostly relates to organic compounds, examiner agrees with applicants’ argument. But Suyama teaches that one of the alternatives compounds for the positive active material includes a compound containing lithium (LiTi2 (PO4)3; [0054]). This shows that lithium-containing compounds can be used in potassium ion secondary batteries. MPEP 2144.06(II) recites “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents”.
Hiasa can further be used as evidentiary evidence that lithium-containing compounds can be used in potassium ion secondary battery ([0016]-[0017]). Thus would be obvious to substitute to LiMn2O4 of the cathode of Suyama and still possessing the property of showing a nobler charge/discharge potential compared to an anode active material (Suyama: [0054]).
Applicant further argues (see pgs. 8), Suyama's Remaining Disclosures Regarding the Electrolyte Do Not Cure the Absence of Any Teaching of LiMn2O4 Positive Electrode Active Material. Examiner acknowledges that while LiMn2O4 is not disclosed in Suyama, the responses to the arguments above show that LiMn2O4 can be used in a potassium ion secondary battery prior to the effective filling date of the claimed invention.
Therefore, in light of the above discussion, applicants’ arguments are rendered unpersuasive
and the rejections set forth in the previous Office action are maintained.
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 ERIK L TILLMAN-SMITH whose telephone number is (571)272-8848. The examiner can normally be reached Mon-Fri. 7am-4pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Leong can be reached at (571) 270-1292. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELTS/Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 7/21/2026
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