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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/15/2025 has been entered.
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 1 and 13-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9, and 11 of U.S. Patent No. 12221348 B2 (Yang’348) in view of Kim (KR20190125935A)
In regards to claim 1 of the instant application, Yang’348 discloses A positive electrode active material having for a lithium secondary battery [claim 11], comprising: a sulfur-carbon composite [claim 11]; wherein the sulfur-carbon composite comprises thermally expanded-reduced graphene oxide [claim 1], wherein sulfur is present on at least a part of a surface of the thermally expanded-reduced graphene oxide and inside of the thermally expanded-reduced graphene oxide [claim 11], and wherein the thermally expanded-reduced graphene oxide has a crumbled paper structure [claim 2], wherein a specific surface area of the thermally expanded-reduced graphene oxide is 700 m2/g to 1200 m2/g [claim 1 and 9; see col 4 lines 38-43 for additional support]. wherein a pore volume of the thermally expanded-reduced graphene oxide is 4 cm3/g to 7 cm3/g [claim 1 and 9; see col 4 lines 38-43 for additional support].
While not claimed, Yang’348’s specification teaches against using a thermally expanded-reduced graphene oxide with a stacked structure [col 5 line 24-53], along with using a powdered graphene oxide over a film-type graphene oxide in order to avoid a stacked structure [col 6 line 9-13].
Yang ‘348 is silent to 1) the positive electrode having a core/shell structure wherein the shell comprises carbon nanotubes on a surface of the core.
However, Kim discloses a positive electrode active material having a core/shell structure for a lithium secondary battery, comprising [abstract], a core containing sulfur-carbon composites [0023]: and a shell containing carbon nanotubes positioned on the surface of the core [0023, 0053-0054, 0109].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to modify Yang’384 such that the sulfur-carbon composite comprised carbon nanotubes on a surface. Doing so may allow for the absorption of generated lithium polysulfide into the carbon shell and allowing for lithium polysulfide to be reused [0042, Kim].
Regarding claims 13, Yang’348 discloses a lithium secondary battery [claim 12], comprising a positive electrode [claim 12], a negative electrode [claim 12], a separator interposed between the positive electrode and the negative electrode [claim 12]; and an electrolyte solution [claim 12].
Regarding claim 14, Yang’348 discloses a lithium secondary battery wherein a loading amount of sulfur in the positive electrode is 2-15 mg/cm2 [claim 13].
Regarding claim 15, Yang’348 discloses the lithium secondary battery as a lithium-sulfur battery [claim 14].
Examiner Interpretation
Claim 1 line 14-15 recites:
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The examiner is interpreting a “stacked structure” to be any structure in which two or more objects and/or layers are in a form of direct contact with one another. A “stacked structure” would include both organized and unorganized piles. A form of direct contact would range from an entire surface of a first object being in direct contact with another surface of a second object to a single point of an object being in direct contact with another point of a separate object. For clarity of the record the examiner has provided examples of “stacked structures” and notes that other examples may exist but are not listed here.
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Some examples of “stacked structures”, additional examples exists but are not listed.
The examiner is interpreting the “thermally expanded-reduced graphene oxide does not have a stacked structure” to be a single-layer thermally expanded-reduced graphene oxide that is isolated from any additional thermally expanded-reduced graphene oxide.
Allowable Subject Matter
Claim 1 is objected to as being rejected over a nonstatutory double patenting rejection of claims 1, 2, 9, and 11 of U.S. Patent No. 12221348 B2 (Yang’348) in view of Kim (KR20190125935A). Claim 1 would be allowable upon filing a terminal disclaimer to overcome the double patenting rejection.
Regarding claim 1, Kim (KR 20190125935 A) and in view of Nianwu (High rate lithium sulfur batteries promoted by reduced graphene oxide coating) teaches of a positive electrode active material having a core/shell structure for a lithium secondary battery comprising a sulfur-carbon composite comprising thermally expanded reduced graphene oxide (TERGO). Wherein sulfur is present on at least a part of a surface and inside of the TERGO and wherein the thermally expanded-reduced graphene oxide has a crumbled paper structure.
However, they are silent to 1) the TERGO having a surface area that is 700-1200 m2/g , 2) wherein a pore volume of the thermally expanded-reduced graphene oxide is 4-7 cm3 and 3) wherein the TERGO does not have a stacked structure.
The examiners current stance is that one of ordinary skill within the arts would not find it obvious for a thermally-expanded reduced graphene oxide of instant claim 1 to have all three features listed above.
The examiner would like to note that Pauzauskie (US 20150175425 A1) teaches of a graphene aerogel comprising highly exfoliated graphene oxide with specific examples of a surface area (762 m2/g and 1199 m2/g) and pore volume (3.3 cm3/g and 6.4 cm3/g) within the applicant’s disclosed range [abstract, 0018-0019, 0140, table 1]. However, Pauzauskie is silent to the nature of the materials being in a stacked structure.
Response to Arguments
Applicant's arguments filed 08/15/25 have been fully considered.
The applicant’s arguments noted on pages 4 -6 are not persuasive as they are arguing the specification for reasons why the presences of carbon nanotubes on the shell are critical. However, this is insufficient for overcoming the teachings of the primary reference noted in the rejection of claim 1, see MPEP 2111.01.II and 2145.VI.
The examiner notes that the applicant does not provide reasons or arguments for why the cited reference’s are not suitable for this limitation.
The applicant’s arguments for allowability in response to the newly presented amendments are persuasive. Allowability is possible upon resolving the double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Pauzauskie (US 20150175425 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUINTIN DALE ELLIOTT whose telephone number is (703)756-5423. The examiner can normally be reached M-F 8:30-6pm (MST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached on 5712705256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724 /BRIAN R OHARA/Examiner, Art Unit 1724
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