Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 November 2025 has been entered.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. Specifically, applicant’s continued attempts to delete options in the claims that are explicitly taught by the prior art are appreciated. However, as noted in previous office actions, the interchangeability of the materials explicitly listed in the prior art and those required by the claims would have been obvious modifications to the prior art as noted below. The prior art still teaches materials embraced by the claims. Applicant is encouraged consider all options disclosed by the prior art and allowed by the claims when making amendments to advance prosecution in a meaningful way.
Therefore, the rejection based on the prior art of record is maintained. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
Per applicant’s request, this rejection will be held in abeyance until the discovery of allowable subject matter: 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-7, 9, 10 and 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,394,058, claims 1-12 of U.S. Patent No. 11,258,059, claims 1-38 of U.S. Patent No. 10,026,995; claims 1-17 of U.S. Patent No. 10,707,535, claims 1-38 of U.S. Patent No. 9,960,451; claims 1-43 of U.S. Patent No. 10,170,789; claims 1-24 of U.S. Patent No. 10,388,983; claims 1-30 or US Patent No. 9,564,656 and/or claims 1-24 of U.S. Patent No. 9,741,499. Although the claims at issue are not identical, they are not patentably distinct from each other because while the claims are not identical, all of the limitations from the pending claims can be found within the patented claims in some form of overlapping scope.
Claim Rejections - 35 USC § 103
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.
The following is a section from the MPEP 2144.05 concerning the obviousness of ranges: In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Claims 1, 3-7, 9, 10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hosoe et al. (US Pub 2013/0040196 cited in IDS).
In regard to independent claim 1, Hosoe et al. teach a process for producing an alkali metal-sulfur battery (figure 5, including a sulfide electrolyte - paragraph [0109-0112]), wherein said alkali metal is selected from lithium (Li) and/or sodium (Na) (i.e. an alkali metal molten salt battery - paragraph [0056]), said process comprising:
(A) Assembling a porous cell framework composed of a first conductive porous structure as a cathode current collector (carbon coated porous aluminum body), an anode current collector (paragraph [0121]), and a porous separator (porous polymer film - paragraph [0103]; porous sulfide electrolyte - paragraph [0109-0112], other separators discussed as well) disposed between said anode and cathode current collectors (figure 5);
wherein said first conductive porous structure has a thickness (a resultant overall electrode thickness, which is electrode material injected into the porous structure) such as several millimeters (paragraph [0046]) and a volume of pores such as 98% (formed from a resin molded body with a porosity of 80 to 98% - paragraph [0061]) and said anode current collector has two opposed primary surfaces and at least one of the two primary surfaces contains a layer of lithium metal (i.e. 100% lithium - see paragraph [0093] - a lithium metal foil onto the porous body nickel anode current collector);
(B) Preparing a first suspension of a cathode active material dispersed in a first liquid electrolyte (forming a cathode slurry with an liquid organic solvent such as various carbonates and ethers - paragraph [0116-0118] – taken to obviate the carbonate and ether options allowed by claim 7; and explicit options still listed such as allyl ethyl carbonate, i.e. vinylene carbonate or vinyl ethene carbonate),
wherein said cathode active material is selected from lithium metal sulfide (such as those containing various metals etc. - considered to read on the claimed metal sulfide - [0108]), or sulfur bonded to a graphite material (bound with conductive carbon - paragraph [0114]) or a combination thereof (see paragraphs [0105-0117] - sulfur containing cathode material mixed with sulfide solid electrolyte, carbon conduction aid and an organic solvent which is reasonably considered a sulfur-graphene compound as claimed); and
(C) Injecting said first suspension into pores of said first conductive porous structure to form a cathode electrode (paragraphs [0098-0120]).
While no active material loading amount is disclosed by the prior art, loading a desired amount of active material to achieve a desired energy density would have been obvious to one of ordinary skill in the art at the time the instant application was filed as one of ordinary skill in the art would appreciate that the active material loading directly affects the amount of energy able to be stored in the battery. Further, as the prior art teaches cathode thicknesses up to 10mm (paragraph [0043]) the amount per area (i.e. not considering thickness) may vary greatly.
Finally, while the prior art does not particularly describe “said anode, said separator, and said cathode are assembled in a protective housing before or after said injecting step is conducted” such would have been obvious to one of ordinary skill in the art at the time the instant application was filed as one of ordinary skill in the art would appreciate that materials such as the lithium film or sulfide materials described by the prior art are highly reactive to oxygen and need to be contained within a protective housing during assembly.
In regard to independent claim 3, the prior art teaches the method as applied to claim 1 above, and said conductive porous structure comprises carbon coated foam (see paragraphs [0060-0069] - carbon is coated on the resin molded body and metal foam structure) which is taken to obviate claimed options such as the various other claimed carbon foams such as graphite fiber foam, graphene foam etc. as substantially requiring the same materials and the carbon of the prior art may exist in many potential forms.
In regard to claim 4, a cathode thickness-to-cathode current collector thickness ratio is close to 1 (see paragraph [0105] - the cathode material is inserted into the current collector, i.e. the two are the same thickness), and/or said cathode active material constitutes an electrode active material loading and thickness as obviated as described in regard to claim 1 above.
In regard to independent claim 5, the prior art teaches the method as applied to claim 1 above, and said cathode active material is supported by a functional material or nano-structured material such as a soft carbon, hard carbon, carbon black, carbon nanotubes or carbon nano-fiber (paragraph [0114]).
In regard to claim 6, said anode active material contains an alkali ion source selected from an alkali metal, an alkali metal alloy, a mixture of alkali metal or alkali metal alloy with an alkali intercalation compound, an alkali element-containing compound, or a combination thereof (paragraph [0121]).
In regard to claim 7, said anode active material contains an alkali intercalation compound selected from carbon black, amorphous carbon, activated carbon, hard carbon, soft carbon, templated carbon, hollow carbon nanowires, hollow carbon sphere, natural graphite, artificial graphite, or a combination thereof (paragraphs [0114, 0121]).
In regard to claims 9, 10 and 12-14, said first liquid is selected from aqueous electrolyte, an organic electrolyte, ionic liquid electrolyte, mixture of an organic electrolyte and an ionic electrolyte, or a mixture thereof with a polymer (paragraphs [0103, 0141-0144]). The prior art teaches a specific examples of an organic electrolyte solvents of VC, EC, DEC, DMC etc. with a lithium salt such as lithium hexafluorophosphate (LiPF6) (see paragraph [0124]), therefore, the other options (while many are embraced by the prior art) are not positively required so long as one of the options (such as the organic electrolyte described supra) is present.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure - US Pub 2014/0248533 teaches sulfur batteries which include carbon aerogel substrates (see abstract). Applicant’s own work (USP 11,791,450) teach a method of forming electrodes comprising sulfur and porous carbon relevant to other claimed species. Newly cited US Pub 2017/0256798 teaches similar lithium sulfur cathode materials.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas P D'Aniello whose telephone number is (571)270-3635. The examiner can normally be reached on Monday to Friday 9am to 5pm EST.
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, Tong Guo can be reached on 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723