DETAILED ACTION
Claims 1 and 3-15 are pending, of which claims 7-15 have been withdrawn.
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 Arguments
Applicant's arguments filed November 5, 2025 have been fully considered but they are not persuasive.
On page 5, Applicant argues that the amendments to claim 1 to recite that the weight ratio of polysulfide to thiosulfate of 6/1 – 1.5/1 is fully consistent with the recited limitations of at least 30% by weight polysulfide and between 0.5% to 5% by weight thiosulfate. Examiner disagrees. The two ranges are almost different. At a minimum amount of 30% polysulfide and a maximum amount of 5% thiosulfate, the lowest possible ratio is 6/1. The entire range from 1.5/1 up to 6/1, exclusive, cannot possibly meet both limitations. The two ranges are nearly entirely different, and can only both be met when the solution is exactly 30% by weight polysulfide and exactly 5% by weight thiosulfate. As such, it remains unclear which of the two ranges should be followed. Examiner believes that Applicant intended to amend the weight ratio, which previously recited 55/1 to 1.5/1, to read 55/1 to 6/1, and suggests amendment claim 1 accordingly.
On page 6 of the response, Applicant argues that the prior office action relies on speculation about what “would” exist at an unspecified intermediate point during degradation rather than what is actually disclosed by Licht. Applicant argues that the statement that the thiosulfate “would be far below 5%” and “would have necessarily been within the ranges claimed” constitute impermissible speculation about transient, undisclosed compositions that are not actually described in Licht.
Examiner notes that the statement that the amount of thiosulfate would be far below 5% is not at all speculation. Licht does not start with any thiosulfate, and as such, would have below 5% thiosulfate. Further, Licht teaches that the polysulfide degrades over time at a predictable rate, reaching 50% degradation after 48 days. This is not speculation, but rather the express teachings of Licht (see e.g. page 2139, second column, second full paragraph, starting “Hence, upon substitution…”). As described in the prior actions, in order to get from 0% thiosulfate to 50% thiosulfate, the solution must be within the claimed ranges as the degradation reaction proceeds. Applicant has provided no arguments or reasoning as to how the solution can go from 0-50% thiosulfate without at any point in time being within 0.5-5% thiosulfate. As such, the claimed solution is prima facie anticipated or obvious over Licht. Per MPEP 2113(V), once a reference teaching a product that is substantially identical to the claimed product is made the basis of a rejection and the examiner presents evidence or reasoning to show inherency, the burden shifts to the applicant. Logical reasoning shows that the composition of Licht would have met the claim limitations. As such, the burden to show otherwise rests with the Applicant. Applicant has provided no arguments or evidence that the composition as described by Licht would somehow not meet the claim limitations. Accordingly, the arguments are unpersuasive.
Applicants arguments that the prior actions have not established that the concentration of thiosulfate is inherently present amount to no more than a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
On page 6, Applicant argues that the prior action fails to meet the burden of establishing that Licht’s composition would be inherently capable of capturing metals and/or scavenging of cyanide. However, 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.
Applicant appears to admit in the last paragraph of page 6 that the composition of Licht would be capable of capturing metals and scavenging cyanide, but states that the action fails to provide evidence from Licht itself demonstrating that Licht’s composition would be capable of performing the function. Examiner notes that it is immaterial whether Licht discloses the recited function. As noted in MPEP 2112(I), something old does not become patentable upon the discovery of a new property. The composition of Licht appears to be substantially identical to the claimed composition. The fact that Applicant has allegedly discovered that this composition can be used to capture metals and/or scavenge cyanide does not make the composition itself patentable.
On page 7, Applicant argues that it is a legal error to recreate a hypothetical composition that is identical to what is claimed, and then determine that a claimed property is inherent therein. However, the prior office action did not such thing. Licht clearly describes the claimed composition, and as such, the composition is not a hypothetical composition that has somehow been created.
Also on page 7, Applicant argues with respect to claim 6 that the hydrated sodium sulfide product described in Janz is from a different composition than that of claim 1, and therefore Janz does not teach preparing “a hydrated solid polysulfide based product that is prepared from the aqueous polysulfide composition of claim 1.” This argument is unpersuasive because claim 6 does not claim a process. Claim 6 merely claims a hydrated solid polysulfide. Janz teaches the hydrated solid polysulfide, and Applicant does not appear to argue otherwise. The method of obtaining the hydrated solid polysulfide is immaterial to the question of patentability. Applicant does not argue at all that the hydrated sodium polysulfide product of Janz is structurally different from one that would be prepared using the recited method.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim recites two different ranges for the relative weight % of polysulfide and thiosulfate in the solution. The claim recites that the weight ratio of polysulfides to thiosulfates is between 6/1 and 1.5/1, and the claim also recites that the amount of polysulfide is at least 30% by weight and the amount of thiosulfate is between 0.5-5% by weight. As noted above, these two ranges are nearly mutually exclusive, overlapping only when the weight percent of polysulfide is exactly 30% and the weight % of thiosulfate is exactly 5%. As such, it is unclear which of these ranges is intended. Examiner notes that solutions having greater than 30% polysulfide are described as “preferred” in the specification, and all examples provided have greater than 30% polysulfide (see e.g. paragraph [0010] and Table 1). As such, for the purposes of examination, claim 1 is interpreted as requiring that the solution is at least 30% by weight polysulfide and between 0.5-5% by weight thiosulfate.
Claims 3-5 each depend from claim 1, and therefore inherit the lack of clarity of claim 1.
Claim Rejections - 35 USC § 102/103
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 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.
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 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Licht, "An energetic medium for electrochemical storage utilizing the high aqueous solubility of potassium polysulfide." Journal of the Electrochemical Society 134.9 (1987): 2137 (“Licht”).
Regarding claim 1, Licht teaches various aqueous solutions of K2S4, which is an aqueous polysulfide composition containing inorganic polysulfides (see e.g. page 2137, second column, last paragraph, starting “K2S4 aqueous solubility”). Licht teaches that the amount of K2S4 reaches over twenty moles per kilogram of water, corresponding to a weight percent of more than 80% K2S4 (see e.g. FIG. 1). Licht further teaches that, over time, the polysulfide is degraded to thiosulfate and hydrosulfide (see e.g. page 2139, second column, first full paragraph, starting “Rate of electrolyte degradation”). However, the rate of degradation to thiosulfate is low, taking 48 days for an 8.8 m solution of K2S4 to undergo 50% degradation (Id.). Accordingly, one of ordinary skill in the art would understand that in the early days of use, the amount of thiosulfate would be far below 5%, with a polysulfide to thiosulfate molar ratio of much greater than 1.5/1. That is, before reaching 50% degradation at 48 days, the amount of thiosulfate in solution would have necessarily been within the ranges claimed.
Alternatively, Licht teaches repeated cycling of the cell, generating the potassium polysulfide solution multiple times, with no significant changes in cycling characteristics (see e.g. page 2140, first full paragraph, starting “Cycling characterization…”). Given this teaching, it would have been obvious to a person of ordinary skill in the art to reuse the cell over time. Based on the Licht’s teaching that the polysulfide slowly degrades to thiosulfate ions over time, one of ordinary skill in the art would understand that, as the cell is reused over the course of days or weeks, an amount of thiosulfate would be generated within the range of 55-1.5/1 with respect to the potassium polysulfide, considering that the amount of polysulfide initially present is 0 and the amount of polysulfide present would be present in a ratio of 1:1 after 48 days.
Although Licht does not specifically teach using the composition for capturing metals and/or scavenging cyanide, this limitation is merely an intended use. Claim 1 recites a composition. The claim covers the composition itself, not how the composition is used. So long as the prior art composition is capable of performing the intended use, the claim is anticipated. The instant application makes clear that the polysulfide solutions that meet the limitations of claim 1 will be capable of capturing metals or scavenging cyanide (see e.g. Specification at paragraphs [0062] and [0066]). No modification of the compositions appears to be necessary to perform these functions. Accordingly, the compositions taught by Licht, which include the same pH and polysulfide concentration as the instant invention, would likewise be capable of capturing metals or scavenging cyanide.
Regarding claims 3-4, Licht teaches that the polysulfides comprise potassium polysulfides, which are alkali metal polysulfides (see e.g. page 2137, second column, last paragraph, starting “K2S4 aqueous solubility”).
Regarding claim 5, in one embodiment, Licht teaches using an electrolytic cell to generate a polysulfide composition that is 2.2 molal K2S4 when fully oxidized, or approximately 32% by mass K2S4, which is within the claimed range (see e.g. FIG. 2A). In the fully oxidized state, the H+ concentration in the cell is 1.7*10-13 mol/kg H2O, or approximately at a pH of 12.7, which is within the claimed range (see e.g. Table 1, third column).
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Janz, et al. "Raman studies of sulfur-containing anions in inorganic polysulfides. Sodium polysulfides." Inorganic Chemistry 15.8 (1976): 1759-1763 (“Janz”).
Regarding claim 6, Examiner notes that the claim is directed to a product-by-process. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113. Janz teaches making various types of sodium polysulfides (see e.g. page 1759, first column, first paragraph, starting “In the Na2S-S…”). Specifically, Janz teaches the isolation of solid Na2S3, which appears to be the trihydrate form (see e.g. page 1762, paragraph bridging first and second columns, starting “Na2S3. The Raman…”). Although Janz does not teach generating the solid material from the composition of claim 1, the resulting hydrated sodium polysulfide is the same material regardless of the method by which it is made.
Conclusion
THIS ACTION IS MADE FINAL. 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 ERIC S SHERMAN whose telephone number is (703)756-4784. The examiner can normally be reached Monday-Friday 8:30-5:00 ET.
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, Anthony Zimmer can be reached at (571)270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736