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
Applicant’s amendments, filed 7/1/2025, in combination with those filed 9/9/2025, have been entered and noted. The examiner notes the applicant’s improperly amended non-entered claims 7/1/2025 in the filing dated 9/9/2025. As such, the filing 9/9/2025 fails to include the proper claim markings. In other words, as claims filed 7/1/2025 where not entered as being non-compliant, the applicant’s amendment dated 9/9/2025 should more reasonably start from the original filed claim set. The examiner has cross referenced the two claim sets for the sake of compact prosecution.
Claim 1, 7 are amended (claim 1 amended on both 7/1/2025 and 9/9/2025 and claim 7 amended on 7/1/2025), with claims 2, 8, 15-21 canceled (claim 21 was presented on 7/1/2025 and cancelled on 9/9/2025). Claims 1, 3-7, 9-14 are pending.
Response to Arguments
Applicant's arguments filed 9/9/2025 have been fully considered but they are not persuasive. Applicant’s arguments relative to the benefits of the “about 5 mol%” are noted, specifically relying on 0098 and Figure 4E related to the 5 mol%. Here, the examiner notes the claimed limitation and the disclosure of 0098 and 4D and 4E; however, the examiner notes that the evidence relied on by the applicant does not appear to be related to mol % as instantly claimed, but rather a ratio of Cu:Zn, see “Cu:Zn ratios are investigated with 5%, 10%, and 50% Zn ratios”. There is no disclosure that this is related to the mol % as argued by the applicant and the applicant has not directed the examiner to any specific disclosure that links the Cu:Zn ratio as described by the applicant’s original disclosure to equate to the instantly claimed mol%. In the event that such evidence is supplied, it will be considered on the record.
Applicant’s arguments relative to the individual references, such an argument is noted, but not persuasive as the rejection is based on the combination of references and what those references suggest to one of ordinary skill in the art. Here, while Zhao does not disclose the forming of the copper based MOF and further treating such in a Zn salt, the examiner notes that such is explicitly taught by CN 919, wherein the Cu salt and BTC are added and crystallized to form the Cu-BTC (which reads on HKUST-1 MOF as claimed, dissolving the Copper salt and BTC and heating in the range as claimed, which is the same process as taught by the instant application to achieve the HKUST-1). CN 919 further adds Zn salt to the Cu-BTC as claimed and mixes uniformly and thereafter thermal decomposition at a temperature to decompose the MOF to carbon and form CuZn@C. Zhao discloses the formation of Zn/Cu MOF precursor for thermal decomposition and CN 919 discloses formation of the Zn/Cu MOF precursors for thermal decomposition including the use of BTC as the MOF and heating to 100C via the claimed sequence it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Zhao to provide Cu nitrate and BTC precursor, followed by annealing at 100C, followed by addition of the zinc nitrate to the Cu=BTC precursor will lead a thermally decomposable Cu-Zn MOF to form the active material (here Zhao discloses the thermal decomposing the Zn-Cu-MOF will be decomposed to ZnCuO when decomposed in air (versus nitrogen).
Applicant arguments relative to the Zn in the pore of the MOF lead to uniform mixture of the oxides in the final ZnCuO nanoparticles are noted. However, the examiner initially notes that such a requirement is not claimed nor supported by factual evidence. Additionally, a fully review of the specification illustrates that such is merely a result of the mixing of Zn salt with the Cu-BTC and the examiners notes that the prior art CN 919 discloses the formation sequence as claimed and mixing uniformly the Zn salt and the Cu-BTC and therefore would include a more uniform. While the reference fails to recognize that Zn nitrate would be in the pores of the Cu-BTC, the examiner notes that based on the record and the factual evidence, the prior art will have at least some degree of Zn in the pores of the Cu-BTC by the mere unformly mixing the Cu-BTC with the Zn nitrate (the same process used by the applicant to achieve the recognized results).
As for the requirement of about 500C and about 5 mol%, the examiner notes the specific figures that reference these values. It is unclear if the applicant is alleging unexpected results for the values as claimed or merely recognizing properties (examiner notes the applicant has not asserted unexpected results). Additionally, the optimum results, if alleged to be unexpected, appear to be attributed to a single embodiment of various materials (Cu salt, Zn Salt, relative amounts of Cu and BTC) and thus the evidence is not persuasive as to the broad claim language. If the applicant can provide a commensurate showing of factual evidence that the results of the claimed process provide unexpected results, the examiner will reconsider this position in face of the specifically claimed values. Here the examiner notes the evidence of the cited figures relies specific forming examples, specifically 100 mg CuCl2 with 200 mg BTC and mixing the crystal with 20 mg Zn acetate and it is unclear if the results as alleged and evidenced is a representative showing of all cu salts, zn salts and proportional amounts of the materials.
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, 3-7, 9-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 requires ZnCuO nanoparticles comprising “about 5 mol% Zn, relative to a total amount of Zn and Cu in the ZnCuO nanoparticles”; however, a full and complete review of the specification fails to support the claimed range as instantly claimed “about” 5 mol% broadens the disclosure to include an amount of Zn that was not previously disclosed by the original disclosure. Original disclosure merely states “the ZnCuO nanoparticles comprise 5 mol percentage (mol%) to 50 mol% Zn, relative to a total number of Zn and Cu moles in the ZnCuO nanoparticles.” See also “the ZnCuO nanoparticles include 5-50 mol% Zn, preferably 10-45
mol% Zn, 15-40 mol% Zn, 20-35 mol% Zn, or 25-30 mol% Zn relative to a total number of Zn and Cu moles in the ZnCuO nanoparticles.”
Note the absence of “about” which is defined by the applicant to include a margin of 20% around the value and thus the new requirement “about 5 mol%” reads on the range “4 to 6 mol%” which is not disclosed by the applicant’s specification.
If the applicant can provide implicit or explicitly support for this requirement, the examiner will withdraw the rejection.
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.
Claim(s) 1, 3-7, 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (Dual Carbon-Supported ZnO/CuO Nanocomposites as an Anode with Improved Performance for Li-Ion Batteries) taken in view of CN 108404919, hereinafter CN 919 and CN 104269535, hereinafter CN 535 alone or further with US Patent 10844502 by Khaled et al., hereinafter Khaled.
Claim 1: Zhao discloses a method of making an electrode, comprising:
dissolving a copper salt in a solvent and heating to a temperature to form a framework;
mixing a zinc salt and the framework to form a zinc doped framework;
heating the zinc doped framework to a temperature of 300 °C to 600C (overlapping claim 500) under air to form ZnCuO nanoparticles (experimental, see heating Zu-Cu-MOF in air at 450C to form ZnOCuO);
mixing the ZnCuO nanoparticles, a binding compound, and a conductive carbon compound to form a suspension (Section 2.3); and coating a substrate with the suspension and drying to form the electrode (ZnO/CuO/C/G electrode was prepared by mixing the active material, acetylene black, PVDF and coating on copper foil)
Zhao generally discloses MOFs; however, fails to disclose the specifics of the claimed Zn-Cu-MOF. However, CN 919, also in the art of forming Zn-Cu-MOF based materials, using similar metal salt materials as that of Zhao (both using Zinc nitrate and Copper nitrate) and CN 919 discloses forming a Cu-MOF by mixing copper nitrate with BTC and heating to a temperature of (100-140C, overlapping the claimed range) to form the Cu-BTC precursor and then mixing such with zinc nitrate and thermally decomposing the formed material at e.g. 350-500C for 2-10 hrs to decompose the MOF into a carbon (see pages 2-3). Therefore, as Zhao discloses the formation of Zn/Cu MOF precursor for thermal decomposition and CN 919 discloses formation of the Zn/Cu MOF precursors for thermal decomposition including the use of BTC as the MOF and heating to 100C via the claimed sequence it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Zhao to provide Cu nitrate and BTC precursor, followed by annealing at 100C, followed by addition of the zinc nitrate to the Cu=BTC precursor will lead a thermally decomposable Cu-Zn MOF to form the active material (here Zhao discloses the thermal decomposing the Zn-Cu-MOF will be decomposed to ZnCuO when decomposed in air (versus nitrogen).
As the for requirement the electrode in a solvent and drying as claimed, CN 535 discloses a similar coating for electrodes (CuO/C/G, acetylene black and PVDF onto copper foil) and discloses including a solvent (NMP solvent) and therefore taking the references collectively, it would have been obvious to one of ordinary skill in the art to include the solvent during the coating process as suggested by CN 535 as such would have been recognized by one of ordinary skill in the art at the time of the invention to have been a predictable method for electrode coatings.
As for drying, the claims fail to quantify the scope of this term and the prior art coating process will necessarily include some degree of drying within the scope of the broadly drafted claim, i.e. coating will be “dried” to form the film. Alternatively, the examiner cites here Khaled, also in the art of a ZnO, CuO carbon nanomaterial (abstract) as an electrode material and discloses depositing the electrode material (active material, carbon material, nafion and a solvent) onto a copper foil (see column 10, lines 1-30, Example 2) and discloses after coating the conductive substrate with the coating material, the deposition is followed by a drying step to form the electrode. Therefore, at the very least, drying after depositing the electrode coating material onto to the copper foil would have been obvious as a predictable method for forming the electrode layer onto the copper foil.
As for the requirement that the formed ZnCuO nanoparticles have an oval shape with an average size of 50 nm to 200 nm. Zhao discloses that the particles are about 200 nm in size (see page 5486 stating “the size of the single particle is about 200 nm”) and thus overlaps and makes obvious the claimed size. Additionally, the SEM image of Figure 4 appears to illustrate that the process would include nanoparticles that can reasonably be considered “an oval shape” as instantly claimed (see Figure 4). Additionally, the examiner notes that the prior art formation of the ZnCuO particles is made obvious by the prior art and the shape of the formed nanoparticles is merely a function of the formation process and as such, since the prior art makes obvious the formation process, the prior art must necessarily meet the claimed “oval shaped” unless the applicant is performing additional process steps or limitations that are not claimed nor disclosed as required to form the claimed oval shape.
As for the requirement of 500oC, CN 919 explicitly discloses thermally decomposition of the Zn salt, Cu-BTC material at 500C (examples).
As for the requirement of “about 5 mol % Zn”, CN 919 discloses a Zn amount within the range as claimed (see e.g. examples). At the very least, the amount of the Zn and Cu relative to each other will directly affect the properties of the electrode active material and therefore it would have been obvious to have determined the optimum amount of Zn relative to Cu to reap the benefits as outline by Zhao (see e.g. introduction, ZnO provides high theoretical specific capacity, CuO improves the electrical conductivity)
Claim 3: Zhao discloses the heat treatment will convert the MOFS into carbon with the Cn and Zn converted to metal oxide and thus forming a thin carbon layer onto the metal oxide, thus resulting in the ZnCuO nanoparticles comprise Cu, C, Zn, and O (see introduction, experimental).
Claim 4: Zhao discloses the amount of the ZnO and CuO and carbon relative to each other will directly affect the properties of the electrode active material and therefore it would have been obvious to have determined the optimum amount of Zn, Cu, O, and C to reap the benefits as outline by Zhao (see e.g. introduction, ZnO provides high theoretical specific capacity, CuO improves the electrical conductivity, introducing carbon buffers the volume expansion)
Claim 5: Zhao discloses the ZnCuO nanoparticles comprise CuO and ZnO; however, fails to disclose the crystal structure of the CuO and ZnO; however a full review of the instant claims and the specification illustrates that such structure is merely a function of the process steps and and wherein the CuO has a monoclinic crystal structure and the ZnO has a hexagonal crystal structure. the prior art formation of the ZnCuO particles is made obvious by the prior art and the crystal structure of the formed ZnO and CuO is merely a function of the formation process and as such, since the prior art makes obvious the formation process, the prior art must necessarily meet the claimed crystal structure unless the applicant is performing additional process steps or limitations that are not claimed nor disclosed as required to form the claimed crystal structure.
Claim 6: The formed nanoparticle includes the CuO and ZnO and would reasonably be considered to be uniformly dispersed giving the term its broadest reasonable interpretation. Additionally, the prior art formation of the ZnCuO particles is made obvious by the prior art and the dispersion of the ZnO and CuO of the formed nanoparticles is merely a function of the formation process and as such, since the prior art makes obvious the formation process, the prior art must necessarily meet the claimed uniformly dispersed unless the applicant is performing additional process steps or limitations that are not claimed nor disclosed as required to form the claimed uniformly dispersed.
Claim 7: CN 919 discloses mixing the Zn salt into the Cu-BTC precursors and mixing well and stirring to form ZnCu-BTC precursor and Zhao discloses using the MOFs to provide adjustable porosity (introduction) however, fails to explicitly disclose the Zn is homogeneously dispersed in pores of the framework without distortion of the framework. However, fair reading of the specification and the claims as drafted illustrates that this feature is merely a function of the mixing “on mixing the zinc salt, Zn is homogenously dispersed in pores of the framework without distortion of the framework” and therefore as the prior art discloses mixing the zinc salt into the Cu-BTC framework, the prior art will necessarily have the results of homogenously dispersed without distortion of the framework unless the applicant is performing specific process steps or specific variables that are not disclosed nor claimed as being required to achieve these results.
Claim 9-10: Zhao and CN 919 each individually discloses copper nitrate and Zinc nitrate (see Zhao at experimental, CN 919 at page 2).
Claim 11: Zhao and CN 535 each individually discloses carbon black (acetylene black), see Zhao at section 2.3, CN 535 at 0079.
Claim 12: Zhao and CN 535 each individually discloses PVDF, a fluorinated polymer, see Zhao at section 2.3, CN 535 at 0079.
Claim 13: Zhao and CN 535 each individually discloses copper foil, see Zhao at section 2.3, CN 535 at 0079).
Claim 14: Zhao discloses 70% active material and 20% acetylene black (section 2.3) and thus discloses an active material and conductive carbon compound within the range as claimed and thus makes obvious such. Additionally, the amount of each component would have been recognized as one of ordinary skill to directly affect the properties of the electrode (as evidenced by Zhoa disclosure). Therefore it would have been obvious to have determined the optimum amount of active material and conductive carbon as outline by Zhao.
Conclusion
Pertinent art to the instant claims is cited on the PTO 892.
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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718