DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/30/26 has been entered.
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.
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.
Claims 1-4, 6, 7-8, and 10-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 7-13 of copending Application No. 18/696,995 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of application ‘995 and/or obvious variant of one another with slight optimization of ranges.
Regarding the limitation(s) of the specific materials of fluorine-based ether compound, glyme-based compound, and lithium salt, the Examiner notes that the disclosure of US ‘995 teach(es) that the claimed invention is an obvious variation of the disclosed invention. Applicants are reminded that while it is generally prohibited from using the disclosure of a potentially conflicting patent or application in a Double Patenting analysis, there are two exceptions permitted by the MPEP. Specifically, “those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent”. In the instant case, the relied upon paragraph sections provide support for the patent claims, since fluorine-based ether compound, glyme-based compound, and lithium salt (claims 2-4) must possess a specific material, the specific materials are disclosed as described in the ‘995 specification (fluorine-based ether compound: pg. 6, glyme-based compound: pg. 6-7 lithium salt: pg. 7). MPEP 804(II)(B)(2)(a).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 10-14 are rejected under 35 U.S.C. 103 as obvious over Zhang et al. (WO 2019/078965).
Regarding claims 1-5, 11, and 14, 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), a second solvent containing a glyme-based compound with the materials as claimed (pg. 1, lines 31), or consisting of a glyme-based compound, 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).
Further, Zhang discloses that the molar ratio of the lithium salt to the second solvent is 0.33-1.5 and a molar ratio of the second solvent 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. It would have been obvious to choose any molar concentration from lithium salt, first solvent, and second solvent 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 second solvent 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.
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)
Regarding claim 14, 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), a second solvent containing a glyme-based 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).
Further, Zhang discloses that the molar ratio of the lithium salt to the second solvent is 0.33-1.5 and a molar ratio of the second solvent to the first solvent is 0.2-5 (pg. 2, lines 15-17).
However, Zhang discloses that the second solvent additionally comprise of a flame retardant. Thereby, the molar ratio of the second solvent includes flame retardant and glyme (emphasis added). Zhang discloses that the amount of flame retardant can be determined by those of ordinary skill in the art which also depends upon the cosolvent (glyme) (pg. 16, first sentence). Therefore, the amount between flame retardant and glyme in the second solvent is a result effective variable and that all values within the range appears to be functionally equivalent as long as there is a degree of flame retardant presence. It would have been obvious to choose a molar ratio between the flame retardant and glyme to achieve the claimed glyme concentration based on the desired properties and that choosing the concentration values between flame retardant and glyme would have rendered the claimed glyme concentration obvious in the absence of showing criticality.
Therefore, all values within the concentration ranges appears to be functionally equivalent, as well as overlaps the claimed range. It would have been obvious to choose any molar concentration from lithium salt, first solvent, and glyme-based compound solvent 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-based compound solvent 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.
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.
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 10-14 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, 11, and 14, 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), a second solvent containing a glyme-based compound with the materials as claimed (pg. 1, lines 31), or consisting of a glyme-based compound, 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).
Further, Zhang discloses that the molar ratio of the lithium salt to the second solvent is 0.33-1.5 and a molar ratio of the second solvent 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. It would have been obvious to choose any molar concentration from lithium salt, first solvent, and second solvent 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 second solvent 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.
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)
Regarding claim 14, 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), a second solvent containing a glyme-based 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).
Further, Zhang discloses that the molar ratio of the lithium salt to the second solvent is 0.33-1.5 and a molar ratio of the second solvent to the first solvent is 0.2-5 (pg. 2, lines 15-17).
However, Zhang discloses that the second solvent additionally comprise of a flame retardant. Thereby, the molar ratio of the second solvent includes flame retardant and glyme (emphasis added). Zhang discloses that the amount of flame retardant can be determined by those of ordinary skill in the art which also depends upon the cosolvent (glyme) (pg. 16, first sentence). Therefore, the amount between flame retardant and glyme in the second solvent is a result effective variable and that all values within the range appears to be functionally equivalent as long as there is a degree of flame retardant presence. It would have been obvious to choose a molar ratio between the flame retardant and glyme to achieve the claimed glyme concentration based on the desired properties and that choosing the concentration values between flame retardant and glyme would have rendered the claimed glyme concentration obvious in the absence of showing criticality.
Therefore, all values within the concentration ranges appears to be functionally equivalent, as well as overlaps the claimed range. It would have been obvious to choose any molar concentration from lithium salt, first solvent, and glyme-based compound solvent 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-based compound solvent 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.
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).
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 claims 1 and 14 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 containing a glyme-based compound per claim 1 or consisting of a glyme-based compound per claim 14 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-based compound. This has been found unpersuasive.
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-based compound (emphasis added). In other words, Zhang’s solvent A is defined as flame retardant and glyme-based compound. Therefore, solvent A of flame retardant and glyme-based compound would corresponds to Zhang’s second solvent containing a glyme-based compound (emphasis added).
With regards to the claim 14 wherein second solvent consisting of a glyme-based compound, the examiner contends that Zhang’s solvent A of flame retardant and glyme would corresponds to the claimed glyme-based compound (emphasis added), as based compound is open to unrecited materials as long as glyme is present. Alternatively, new grounds of rejection has been applied as set forth above.
Conclusion
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.
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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