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 .
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 1-2 and 4 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 recites, “the heating is carried out under an inert atmosphere with a dew point of -60°C in a temperature range of 800°C or higher to 850°C or lower, such that the raw material does not melt, grains of the lithium sulfate does not grow, and the lithium sulfide has a particle shape”. However, there is only support for the grains of lithium sulfate not growing during heating at a temperature of 800°C to 850°C for 5 minutes or longer to 90 minutes or shorter (Specification, p. 7, lines 6-10). There is no support for the grains not growing at that temperature range for any period of time.
Regarding dependent claims 2 and 4, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Naruhashi (JP 2016216312 A).
Regarding claim 1, Naruhashi teaches a method for manufacturing lithium sulfide by burning a raw material mixture containing lithium sulfate and a reductant (Naruhashi, Abstract) (i.e., a method for producing lithium sulfide), the method comprising mixing raw material, which includes lithium sulfate, and a reducing agent, which includes carbon material such as carbon black, carbon fiber, graphite, activated carbon, etc. (Naruhashi, p. 2, Paragraph 7; p. 3, Paragraph 3) (i.e., the reducing agent is a material containing carbon as a main component), putting this mixture into a firing container (i.e., furnace) and firing the mixture to obtain lithium sulfide (Naruhashi, p. 3, Last line), wherein the lithium sulfide preferably has a particle diameter between 10 and 500 μm (Naruhashi, p. 5, Paragraph 4) (i.e., the raw material does not melt and lithium sulfide has a particle shape).
Naruhashi teaches the firing temperature when firing the raw material mixture Is 750 to 1000°C, preferably 800 to 950°C (Naruhashi, p. 4, Paragraph 1), which overlaps with the range of the presently claimed, an in embodiments, the temperature is increased at a rate of 5°C/min in a firing furnace (Naruhashi, p. 8, Paragraph 2) (i.e., a temperature raising process in which the raw material and reducing agent are heated in the furnace to raise the temperature). Additionally, the firing atmosphere is an inert gas atmosphere such as nitrogen, argon, or helium with a dew point of -50°C or lower, and particularly preferably -60°C or lower (Naruhashi, p. 4, Paragraphs 1 and 3).
Further, Naruhashi teaches in embodiments the average particle size of the lithium sulfate is 30 μm (Naruhashi, p. 8, Paragraphs 1 and 10), which falls within the claimed range, and wherein the molar ratio of carbon atoms to the lithium sulfate is 1.00 to 2.10 (Naruhashi, p. 9, Paragraph 13), which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Further, as Naruhashi teaches the lithium sulfate may be lithium sulfate monohydrate (Naruhashi, p. 4, Paragraph 5; p. 8, Paragraphs 1 and 10), and lithium sulfate monohydrate is taught in embodiments of the instant disclosure to have a property of weight loss of 5% or more to 25% or less upon heating to 120°C (Specification, [0037]), it is clear that the lithium sulfate monohydrate of Naruhashi would also have these properties.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Further, while Naruhashi does not explicitly teach the grains of lithium sulfate do not grow in the heating process, Naruhashi teaches the heating time is one hour or more (Naruhashi, p. 6, Paragraph 5), which overlaps with the time period taught in the instant disclosure to result in no grain growth (Specification, p. 7, lines 6-10).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 2, Naruhashi teaches the method for producing lithium sulfide according to claim 1, wherein the molar ratio of carbon atoms tot eh lithium sulfate is 1.00 to 2.10 (Naruhashi, p.9, Paragraph 13), which overlaps with the range of the presently claimed, and wherein the reducing agent is mixed with the lithium sulfate to form the raw material mixture (Naruhashi, p. 3, Last line). Therefore, the lithium sulfate and reducing agent are mixed to be the molar ratio).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 4, Naruhashi teaches the method for producing lithium sulfide according to claim 1, wherein the firing time when the raw material mixture is appropriately selected is as long as unreacted lithium sulfate does not remain and wherein the firing temperature range ensures the generation of heterogeneous phases can be suppressed and lithium sulfide can be obtained efficiently (Naruhashi, p. 4, Paragraph 1).
Although there are no disclosures on the temperature raising rate being 10°C/min or higher as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the temperature rising rate, including over the amounts presently claimed, in order to efficiently heat the furnace to fully react the lithium sulfate to form lithium sulfide without heterogeneous phases, and thereby arrive at the claimed invention.
Response to Arguments
In response to applicant’s amendment to claim 1, the previous 35 U.S.C. 112(a) rejection over claims 1-2 and 4 is withdrawn from the record. However, the amendment necessitates a new 35 U.S.C. 112(a) rejection over claims 1-2 and 4 as set forth above.
Applicant primarily argues:
“Regarding the temperature range, while Naruhashi teaches a broad firing temperature range of 750-1000°C and a preferred range of 800-950°C, Naruhashi's particularly preferred temperature range is 850-900°C. See Naruhashi, paragraph [0029]. In contrast, claim 1 specifically recites a temperature range of 800°C or higher to 850°C or lower.
…
The claimed temperature range is thus specifically selected to remain below the melting point of lithium sulfate, ensuring that the raw material does not melt and the lithium sulfide retains its particle shape. Naruhashi does not teach or suggest this specific temperature range for the purpose of preventing melting, preventing grain growth and retaining particle shape.”
Remarks, p. 4
The examiner respectfully traverses as follows:
The fact remains that Naruhashi teaches a temperature range that overlaps with and includes the entire claimed temperature range. Therefore, Naruhashi teaches firing temperatures that would prevent melting, prevent grain growth, and retain particle shape.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
It is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further argues:
“Regarding the weight loss property, claim 1 recites that the raw material is mainly composed of lithium sulfate having a property of weight loss of 5% or more to 25% or less upon heating to 120°C. This property indicates that the lithium sulfate is in a hydrated state. While Naruhashi states that lithium sulfate may be hydrated or anhydrous, Naruhashi does not teach selecting lithium sulfate having the specific weight loss property of 5-25% upon heating to 120°C. See Naruhashi, paragraph [0015].
…
Naruhashi provides no teaching or suggestion of selecting lithium sulfate based on this weight loss property to achieve these benefits.”
Remarks, p. 5
The examiner respectfully traverses as follows:
The fact remains that Naruhashi teaches lithium sulfate monohydrate in embodiments which is taught in the instant disclosure to have a weight loss of approximately 15% upon heating to 120°C. Therefore, as it is the same material used in Naruhashi, the lithium sulfate monohydrate of Naruhashi would inherently have the same weight loss at 120°C.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
It is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
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.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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