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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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.
Claims 1-5, 7, and 10-13 are rejected under 35 U.S.C. 103 as obvious over Zhang et al. (WO 2019/078965).
Regarding claims 1-5, and 11, Zhang discloses a lithium-sulfur battery comprising an electrolyte including a first solvent containing a fluorine-based ether compound with the materials as claimed (pg. 2, lines 3-7), solvent A containing a flame retardant and glyme compound with the materials as claimed (pg. 1, lines 31), and lithium salt with the materials and concentration as claimed (pg. 2, lines 20-37), a positive electrode comprising active materials including sulfur and carbon material (pg. 3, line 17-32 and pg. 20, lines 19-30; emphasis added). The examiner is taking the position that glyme compound alone within solvent A would corresponds to the claimed second solvent (emphasis added). It is noted that the claims are open to multiple unrecited solvents.
Zhang discloses that the molar ratio of the lithium salt to solvent A is 0.33-1.5 and a molar ratio of the solvent A to the first solvent is 0.2-5 (pg. 2, lines 15-17), thus all values within the ranges appears to be functionally equivalent, as well as overlaps the claimed range. However, Zhang discloses that the ratio is based upon flame retardant and glyme compound (solvent A), not in relations with glyme compound itself. However, Zhang’s glyme compound must be within the range of solvent A in the molar ratio, thereby all values within the range appears to be functionally equivalent.
It would have been obvious to choose any molar concentration from lithium salt, first solvent, and glyme compound to produce the claimed molar concentration ratio based on the desired electrolyte properties/stabilities and that choosing molar concentration values would have rendered the claimed relationship between molar concentration in lithium salt, first solvent, and glyme compound obvious in the absence of showing criticality. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
A person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the glyme content since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the glyme concentration dependent on the specific functionality of the electrolyte.
Furthermore, Zhang fails to explicitly disclose a utilization rate of sulfur included in the positive electrode is 90% or higher, or 94-100% per claim 11, based on a theoretical discharge capacity as presently claimed.
However, it is the examiner's position that the reference to Zhang teaches the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed utilization rate of sulfur included in the positive electrode is 90% or higher, or 94-100% per claim 11, based on a theoretical discharge capacity as presently claimed.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
However, alternative to anticipation, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to optimize utilization rate of sulfur since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the utilization rate of sulfur in order to increase capacity and improve cycle characteristics.
Regarding claim 7, Zhang discloses an example wherein the electrolyte does not include a nitrile-based solvent.
Regarding claim 10, please see (pg. 3, line 17-32 and pg. 20, lines 19-30).
Regarding claims 12-13, Zhang teaches the lithium-sulfur battery described above with high energy density. However, Zhang does not specifically disclose the energy density of the lithium-sulfur battery. Since Zhang teaches the same materials for the lithium-sulfur battery, it is inherent that an energy density of the lithium-sulfur battery is equal to or greater than 600 Wh/kg. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Claims 8-9 are rejected under 35 U.S.C. 103 as obvious over Zhang et al. (WO 2019/078965) in view of Usuki et al. (JP 2018-039685).
Zhang discloses a lithium sulfur battery comprises sulfur in the positive electrode, however, fails to disclose the sulfur content as well as the carbon material comprises a plurality of pores, wherein a pore volume is 0.7-3 cm3/g as present claimed.
Usuki discloses a lithium sulfur battery comprising the sulfur content as claimed (Table 3, Ex. 2, claim 6) and discloses the carbon material comprises a plurality of pores with the pore volume as claimed [0051-0052].
It would have been obvious to one of ordinary skill in the art to modify Zhang’s lithium sulfur battery to have the sulfur content and the pores with the pore volume as claimed, as suggested by Usuki, in order to obtain a battery with high capacity, excellent cycle characteristics and Coulomb efficiency and that these features are known in the lithium sulfur battery art.
Claims 1-5, 7, and 10-13 are rejected under 35 U.S.C. 103 as obvious over Zhang et al. (WO 2019/078965) in view of Chu (US 5,814,420).
Regarding claims 1-5, and 11, Zhang discloses a lithium-sulfur battery comprising an electrolyte including a first solvent containing a fluorine-based ether compound with the materials as claimed (pg. 2, lines 3-7), solvent A containing a flame retardant and glyme compound with the materials as claimed (pg. 1, lines 31), and lithium salt with the materials and concentration as claimed (pg. 2, lines 20-37), a positive electrode comprising active materials including sulfur and carbon material (pg. 3, line 17-32 and pg. 20, lines 19-30; emphasis added). The examiner is taking the position that glyme compound alone within solvent A would corresponds to the claimed second solvent (emphasis added). It is noted that the claims are open to multiple unrecited solvents.
Zhang discloses that the molar ratio of the lithium salt to solvent A is 0.33-1.5 and a molar ratio of the solvent A to the first solvent is 0.2-5 (pg. 2, lines 15-17), thus all values within the ranges appears to be functionally equivalent, as well as overlaps the claimed range. However, Zhang discloses that the ratio is based upon flame retardant and glyme compound (solvent A), not in relations with glyme compound itself. However, Zhang’s glyme compound must be within the range of solvent A in the molar ratio, thereby all values within the range appears to be functionally equivalent.
It would have been obvious to choose any molar concentration from lithium salt, first solvent, and glyme compound to produce the claimed molar concentration ratio based on the desired electrolyte properties/stabilities and that choosing molar concentration values would have rendered the claimed relationship between molar concentration in lithium salt, first solvent, and glyme compound obvious in the absence of showing criticality. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
A person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the glyme content since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the glyme concentration dependent on the specific functionality of the electrolyte.
Furthermore, Zhang fails to explicitly disclose a utilization rate of sulfur included in the positive electrode is 90% or higher, or 94-100% per claim 11, based on a theoretical discharge capacity as presently claimed.
Chu discloses lithium battery comprising a positive electrode comprising sulfur (col. 7, lines 26-63) and carbon materials (col. 8, lines 12-20). Chu discloses that the total discharge capacity is excess of 1500 mAh/gm of sulfur, thereby a utilization rate of sulfur is greater than 90% of theoretical discharge capacity (Example 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhang’s utilization rate of sulfur is 90% or higher of a theoretical discharge capacity, as suggested by Chu, in order to obtain a battery with high specific energy and power (col. 6, lines 29-34).
Regarding claim 7, Zhang discloses an example wherein the electrolyte does not include a nitrile-based solvent.
Regarding claim 10, please see (pg. 3, line 17-32 and pg. 20, lines 19-30).
Regarding claims 12-13, Zhang teaches the lithium-sulfur battery described above with high energy density. However, Zhang does not specifically disclose the energy density of the lithium-sulfur battery. Since Zhang teaches the same materials for the lithium-sulfur battery, it is inherent that an energy density of the lithium-sulfur battery is equal to or greater than 600 Wh/kg. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Claims 8-9 are rejected under 35 U.S.C. 103 as obvious over Zhang et al. (WO 2019/078965) in view of Chu (US 5,814,420) and in view of Usuki et al. (JP 2018-039685).
Zhang discloses a lithium sulfur battery comprises sulfur in the positive electrode, however, fails to disclose the sulfur content as well as the carbon material comprises a plurality of pores, wherein a pore volume is 0.7-3 cm3/g as present claimed.
Usuki discloses a lithium sulfur battery comprising the sulfur content as claimed (Table 3, Ex. 2, claim 6) and discloses the carbon material comprises a plurality of pores with the pore volume as claimed [0051-0052].
It would have been obvious to one of ordinary skill in the art to modify Zhang’s lithium sulfur battery to have the sulfur content and the pores with the pore volume as claimed, as suggested by Usuki, in order to obtain a battery with high capacity, excellent cycle characteristics and Coulomb efficiency and that these features are known in the lithium sulfur battery art.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Zhang fails to disclose second solvent consisting of a glyme compound with the amount as presently claimed. Applicant argues that Zhang discloses that solvent A is directed to a flame retardant compound, thereby, does not correspond to the claimed glyme compound. This has been found unpersuasive.
Claim 1 recites “an electrolyte including a first solvent…, a second solvent consisting of a glyme compound, and a lithium salt”. Therefore, the instant invention is open to unrecited materials, such as a flame retardant compound as an additional solvent, in the electrolyte.
Although Zhang discloses “solvent A comprises, consists essentially of, or consist of a flame retardant compound”, Zhang discloses that solvent A can additionally comprise of a cosolvent, which includes a glyme compound (emphasis added). In other words, Zhang’s solvent A is defined as flame retardant and glyme-based compound. Therefore, the examiner is taking the position that glyme compound alone within solvent A would corresponds to the claimed second solvent (emphasis added). Nomenclature of “first” or “second” solvent does not give patentable weight. As set forth above, the claims are open to multiple unrecited solvents.
As to applicant’s arguments directed to dependent claims as being patentable due to their dependency to claim 1, Applicants have not separately argued the patentability of the dependent claims. Thus, dependent claims are also being rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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