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Claims 1 and 3-15 are pending, of which claims 7-15 have been withdrawn.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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/13/26 has been entered.
Response to Arguments
Applicant's arguments filed 5/13/26 have been fully considered.
On page 5 of the response, Applicant argues that the amendments to claim 1 overcome the previous rejections under 35 U.S.C. §112. Examiner agrees, and as such, the rejections have been withdrawn.
However, Applicant’s arguments concerning the rejections under 35 U.S.C. §102 and 103 are not persuasive.
On page 5, Applicant argues that Licht fails to teach any composition containing thiosulfate and only teaches freshly prepared aqueous K2S4 solutions. This is unpersuasive because Licht clearly teaches a solution that would have the recited amounts of both polysulfide and thiosulfate. 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. (see e.g. page 2139, second column, second full paragraph, starting “Hence, upon substitution…”). It is impossible for the solution of Licht to go from 0 thiosulfate to 50% thiosulfate without ever having between 0.5 and 5% thiosulfate.
On pages 5-6, Applicant argues that the position that Licht teaches a solution having between 0.5 and 5% thiosulfate is based on a theory that the composition “would have necessarily been within the ranges claimed.” Applicant argues that this is improper because inherency requires that the missing characteristic necessarily be present, not merely possibly or probably present. Applicant appears to argue that because Licht does not explicitly disclose a composition having a polysulfide to thiosulfate ratio of 55/1 to 6/1, that Licht does not teach the claimed composition. However, as described above, Licht teaches a solution that starts with 0% thiosulfate and can reach up to 50% thiosulfate. It is unclear how this would happen if the claimed ratios are not met at any point during the process. As such, the composition of Licht is properly assumed to have the claimed ratio during the described process.
On page 6, Applicant argues that claim 1 recites that the composition is “for capturing metals and/or for the scavenging of cyanide,” while Licht is directed to a fundamentally different field of use. Examiner notes that claim 1 is directed to a composition rather than a method. In order to be patentable, 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. The fact that Licht does not disclose that the solution could be used to scavenge metals or cyanide is immaterial when the composition itself is identical to the claimed composition.
Also on page 6, Applicant argues that the alternative §103 rejection based on Licht is improper because the repeated cycling of Licht does not generate thiosulfate within the claimed range. Applicant argues that Licht does not teach or suggest a controlled degradation to produce a composition having the recited amount of thiosulfate. Examiner believes that Applicant has misconstrued the reasoning behind this rejection. Licht clearly teaches that the polysulfide composition degrades to thiosulfate over time. The fact that the electrochemical cycling oxidizes and reduces the sulfide between the polysulfide and monosulfide is immaterial. Because thiosulfate is generated over time, between the time the solution is freshly made and 48 days later, the amount of thiosulfate would necessarily be within the claimed range. This process happens naturally, and does not require any type of controlled degradation.
On pages 6-7, Applicant argues that the composition of claim 6 is patentable over Janz because claim 6 incorporates all the limitations of claim 1. Applicant notes that claim 6 recites a hydrated polysulfide that is formed by removing water from the composition of claim 1. Applicant argues that the method of generating the hydrated polysulfide in Janz is different than that recited in claim 6. Applicant argues that the polysulfide of Janz would not contain the thiosulfate residues that would be present in a solid prepared by the aqueous composition of claim 1.
Examiner notes that the instant application describes the method of obtaining solid sodium polysulfide in paragraph [00063]. Water is removed to create a sodium polysulfide solution having 50% or more sodium polysulfide. Upon cooling to room temperature, the hydrated salt is no longer soluble. The hydrated solid forms and is removed by filtration. Examiner notes that this process, which is the only process described in the specification, is not simply evaporating the solution to dryness. Rather, the process is forming a solid precipitate of the hydrated polysulfide and then filtering to isolate it. Given the high solubility of sodium thiosulfate, any sodium thiosulfate in the solution would remain in solution as the polysulfide solid forms, and no evidence is provided that shows that the solid contains any thiosulfate ions. Accordingly, it is unclear what structural difference would exist between the claimed hydrated polysulfide and the hydrated polysulfide of Janz.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 6/1. 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 55-6/1 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
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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