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 .
Response to Amendment
The Amendment filed on 10/14/2025 has been entered. Claims 2-4 and 6 are cancelled. Claims 1, 5, and 7-13 remain pending in the application.
Claim Objections
Claim 1 is objected to because of the following informalities: "NO3-" in line 8 of the claim should be "NO3-". Appropriate correction is required.
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 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, 5, 7-9, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (WO 2016107564, referring to previously provided English translation thereof, hereinafter "Zhou") in view of Meng et al. (CN 108520958, referring to Examiner-provided English translation thereof, hereinafter "Meng").
Regarding claim 1, Zhou teaches a positive electrode for a lithium-sulfur secondary battery [page 1, “A composite positive electrode material for a high-rate performance lithium-sulfur battery”], comprising a positive electrode active material, or electrochemically active substance, and an electrically conductive material, or conductive agent [page 3, “A composite positive electrode material for a high-rate performance lithium-sulfur battery, composed of a conductive agent, an electrochemically active substance and a modifier”]. Zhou also teaches a binder in the positive electrode [page 4, “the composite positive electrode material and a binder are evenly mixed”]. Zhou teaches that the binder may be polyethylene oxide, which has a functional group containing oxygen [page 4, “the binder is one of polyvinylidene fluoride, polyethylene oxide and cyclodextrin”]. Zhou further discloses a modifier, which may be a multivalent metal salt such as Al(OH)3 or Fe(OH)3, in the positive electrode [page 3, “the modifier is connected to the pores of the mesoporous carbon material”, page 4, “the oxides in the modifier include … and the hydroxides include Zn(OH)4, Fe(OH)3, Mn(OH)4, Al(OH)3, Ca(OH)2, Cu(OH)2, etc”]. Zhou does not specifically teach the multivalent metal salt comprising a cation immobilized by electrical attraction with the binder, nor the multivalent metal salt being contained in the positive electrode in an amount of 30 mol% to 100 mol% based on the number of moles of all monomers having the functional group containing oxygen or nitrogen in the polymer compound of the binder.
Meng teaches analogous art of an electrode for a lithium-ion battery comprising a modified polymer binder [0002; entire disclosure relied upon]. Meng teaches that the modified polymer binder comprises a polymer formed from acrylic monomers containing carboxyl groups (“functional group containing oxygen or nitrogen”), which exist in the form of metal ion carboxylate groups [0024, 0026]. Meng discloses that the metal ion (“cation”) of the metal ion carboxylate group may be magnesium [0028, “In another embodiment, the metal ion in the metal ion carboxylate group includes at least one of Group I metal ions and Group II metal ions. In a specific embodiment, the metal ion includes at least one selected from sodium, lithium, potassium, calcium, and magnesium”]. The metal ion may be added to the binder as a metal ion base or carbonate, which reacts with the carboxyl groups in the polymer to generate the metal ion carboxylate groups to neutralize them (“cation immobilized by electrical attraction with the binder”) [0034, “by adjusting and controlling the concentration ratio of the polymer to the metal ion base or metal ion carbonate, the metal ion base or metal ion carbonate neutralizes some of the carboxyl groups contained in the polymer, thereby making the carboxyl group contained in the polymer exist in the form of metal ion carboxylate groups]. Meng teaches that the molar concentration of the polymer to the metal ion base or carbonate is controlled such that the ratio of the molar number of metal ion carboxylate groups to the total number of moles of metal ion carboxylate groups and carboxyl groups is 0.40-0.90:1, or 40 mol% - 90 mol% of moles of metal ion carboxylate groups based on the number of moles of all monomers having the carboxyl group [0034]. Meng discusses a specific example (Example 13) wherein poly(3-butenoic acid) is mixed with magnesium hydroxide at a molar mass ratio of 1:0.45 of the 3-butenoic acid monomer to magnesium hydroxide, which is within the recited range [0065, “The poly(3-butenoic acid) aqueous solution and the magnesium hydroxide aqueous solution are then thoroughly mixed at a molar mass ratio of 1:0.45 of the converted 3- butenoic acid monomer to magnesium hydroxide”]. Meng teaches that this modified polymer binder is included in an electrode slurry [0036], which may be a positive electrode slurry [0038, “When the active material is a positive electrode material, the electrode slurry is a positive electrode slurry”].
Meng teaches that the modified polymer binder has excellent bonding strength, a high elastic modulus, and high solubility, which improves the dispersion uniformity of the electrode slurry [0026]. Meng also teaches that by optimizing the ratio between the metal ion carboxylate groups and carboxyl groups, the bonding strength of the modified polymer binder can be further improved [0027].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the positive electrode taught by Zhou to include the modified polymer binder comprising a metal ion base such as magnesium hydroxide and monomers with carboxyl groups in the molar ratio taught by Meng, in order to improve the dispersion uniformity and bonding strength of the binder.
Regarding claim 5, modified Zhou teaches the positive electrode of claim 1, as described in the rejection of instant claim 1. Zhou is silent regarding the binder being selected from the group consisting of polyacrylic acid, polyvinyl alcohol, polyacrylonitrile, and combination thereof.
Meng teaches that the modified polymer binder may comprise a polymer formed by polymerizing at least one monomer selected from acrylic monomers and acrylic monomer derivatives [0010]. Meng also teaches that the monomer contained in the polymer can be a single acrylic acid monomer, which would form polyacrylic acid when polymerized [0033, “Therefore, the monomer contained in the polymer formed by polymerization can be a single acrylic acid monomer”].
As disclosed above, Meng teaches that the modified polymer binder has excellent bonding strength, a high elastic modulus, and high solubility, leading to an improved dispersion uniformity of the electrode slurry [0026]. Meng also teaches that by optimizing the ratio between the metal ion carboxylate groups and carboxyl groups, the bonding strength of the modified polymer binder can be further improved [0027].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the positive electrode taught by modified Zhou to include a polyacrylic acid polymer as taught by Meng, in order to improve the dispersion uniformity and bonding strength of the binder.
Regarding claim 7, Zhou teaches that the positive electrode active material may be elemental sulfur [page 3, “the electrochemically active substance is sulfur”].
Regarding claim 8, Zhou teaches the positive electrode for the lithium-sulfur secondary battery as described in the rejection for instant claim 1. Zhou further teaches that the positive electrode contains the composite positive electrode material (or the positive electrode active material, electrically conductive material, and multivalent metal salt) and the binder in a mass ratio of 9:1 [page 4, “the composite positive electrode material and a binder are evenly mixed in a mass ratio of 9:1”]. Zhou also discloses that the positive electrode active material may be 30-60 wt% of the composite positive electrode active material [page 3, “in the composite positive electrode material of the high-rate performance lithium-sulfur battery, the amount of each component is calculated by mass percentage: 30-60wt% of conductive agent, 30-60wt% of electrochemical active material, and 0.01-4wt% of modifier”]. When the positive electrode active material is 30 wt% of the composite positive electrode active material, the mass ratio of the positive electrode active material is 2.7:1 or 37% by weight of the binder based on the total weight of the positive electrode active material. When the positive electrode active material is 60 wt% of the composite positive electrode active material, the mass ratio of the positive electrode active material is 5.4:1 or 18.5% by weight of the binder based on the total weight of the positive electrode active material. The range of the amount of binder in the positive electrode taught by Zhou overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Regarding claim 9, Zhou teaches that the electrically conductive material may be an electrically conductive fiber, such as carbon nanofibers [page 3, “The mesoporous carbon material is prepared by activating the carbon material … the carbon material includes but is not limited to carbon nanotubes, carbon nanofibers”].
Regarding claim 11, Zhou teaches the positive electrode for the lithium sulfur battery of claim 1, as described in the rejection for instant claim 1. Zhou is silent regarding a cation of the multivalent metal salt being fixed to the binder.
As described previously, Meng teaches that the modified polymer binder comprises a polymer formed from acrylic monomers containing carboxyl groups (“functional group containing oxygen or nitrogen”), which exist in the form of metal ion carboxylate groups [0024, 0026]. Meng discloses that the metal ion (“cation”) of the metal ion carboxylate group may be magnesium [0028, “In another embodiment, the metal ion in the metal ion carboxylate group includes at least one of Group I metal ions and Group II metal ions. In a specific embodiment, the metal ion includes at least one selected from sodium, lithium, potassium, calcium, and magnesium”]. The metal ion may be added to the binder as a metal ion base or carbonate, which reacts with the carboxyl groups in the polymer to generate the metal ion carboxylate groups to neutralize them (“cation of the multivalent metal salt is fixed to the binder”) [0034].
Meng teaches that the modified polymer binder has excellent bonding strength, a high elastic modulus, and high solubility, leading to an improved dispersion uniformity of the electrode slurry [0026]. Meng also teaches that by optimizing the ratio between the metal ion carboxylate groups and carboxyl groups, the bonding strength of the modified polymer binder can be further improved [0027].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the positive electrode taught by modified Zhou to include the modified polymer binder with a cation such as magnesium fixed to it as taught by Meng, in order to improve the dispersion uniformity and bonding strength of the binder.
Furthermore, the limitation recited in the instant claim that “the multivalent metal salt is added in a state of aqueous solution and then dried” is a product-by-process limitation, wherein the courts have held:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113).
There is no evidence that the product-by-process language as recited imparts specific structural characteristics to the product. As such, the positive electrode containing a cation of the multivalent metal salt being fixed to the binder taught by Zhou and modified by Meng appears to meet the structure set forth.
Further regarding claim 12, modified Zhou teaches the positive electrode for the lithium-sulfur secondary battery of claim 11, as described in the rejection for instant claim 11.
Claim 12 is entirely a product-by-process limitation, wherein the courts have held:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113).
There is no evidence that the product-by-process language as recited imparts specific structural characteristics to the product. As such, the positive electrode containing a cation of the multivalent metal salt being fixed to the binder taught by Zhou and modified by Meng appears to meet the structure set forth in claim 12.
Regarding claim 13, modified Zhou teaches the positive electrode of claim 1 as described in the rejection for instant claim 1. Zhou also teaches a lithium-sulfur secondary battery comprising the positive electrode [page 4, “The positive electrode sheet prepared by the above composite positive electrode material is used to assemble a lithium-sulfur battery”].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou (WO 2016107564) in view of Meng (CN 108520958) as applied to claim 1 above, and further in view of Wakada et al. (US 2014/0079995, hereinafter "Wakada").
Regarding claim 10, modified Zhou teaches the positive electrode for the lithium-sulfur battery of claim 1 as described in the rejection for instant claim 1. Zhou does not specifically teach the amount of electrically conductive material contained in the positive electrode in an amount of 5% to 20% by weight based on the total weight of the positive electrode active material.
Wakada teaches analogous art of a lithium secondary battery positive electrode comprising an electrically conductive material, or conducting agent [Abstract]. Wakada teaches the electrically conductive material in the positive electrode in an amount of 0.01 parts by weight or more and 20 parts by weight or less, based on 100 parts by weight of the positive electrode active material [0270, “The amount of the conducting agent in the coated active material particles with respect to 100 parts by weight of the positive electrode active material particles is usually 0.01 parts by weight or more and preferably 1 part by weight or more and is usually 20 parts by weight or less and preferably 10 parts by weight or less”] or 0.01% to 20% by weight based on the total weight of the positive electrode active material, which overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Wakada teaches that when the amount of the electrically conductive material is within the range taught, the stability of the slurry composition of the electrode and the plate density of the positive electrode are improved, a conducting path is stably formed, and the output property of the battery is improved [0270].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the positive electrode taught by modified Zhou to include the electrically conductive material in an amount within the range taught by Wakada, in order to improve the stability of the positive electrode slurry, the plate density of the positive electrode, and the output property of the battery as well as to stably form a conducting path.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claim 1 regarding Zhou not teaching the molar amount of the multivalent metal salt based on the molar amount of all monomers having a functional group containing oxygen or nitrogen and the multivalent metal salt not being electrostatically bound to the binder 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.
Further regarding claim 1, applicant alleges that Zhou only discloses the use of ZrO2 as the modifier in its examples and does not disclose any multivalent metal salt comprising a cation selected from M2+ and Al3+ and an anion selected from CO32-, NO3-, and SO42- [Remarks, page 6]. However, Zhou does disclose that the modifier can be a hydroxide such as Al(OH)3, which is recited in claim 1. Furthermore, "[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)) (examiner emphasis added) [MPEP 2123(I)]. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)) [MPEP 2123(II)]. Therefore, Zhou teaching alternatives for the modifier other than the claimed multivalent metal salts does not constitute a teaching away from the use of only Al(OH)3 as a modifier.
Regarding claim 10, Applicant alleges that since Wakada does not use a sulfur-carbon composite as the positive electrode active material and does not encounter issues related to polysulfide precipitation, it would not have been obvious for a person skilled in the art to combine Wakada with Zhou to address the problem of polysulfide absorption [Remarks, page 9]. However, as described in the rejection of claim 10, the motivation for combining Wakada with Zhou is the improvement to the stability of the positive electrode slurry, the plate density of the positive electrode, and the output property of the battery and the ability to stably form a conducting path resulting from the electrically conductive material amount taught by Wakada [270], not to address the problem of polysulfide absorption. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) [MPEP 2144(IV)]. See also the case law found in MPEP 2144(IV):
In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972): The claimed invention was a laundry composition consisting essentially of a dispersant, cationic fabric softener, sugar, sequestering phosphate, and brightener in specified proportions. The claims were rejected over the combination of a primary reference which taught all the claim limitations except for the presence of sugar, and secondary references which taught the addition of sugar as a filler or weighting agent in compositions containing cationic fabric softeners. Appellant argued that in the claimed invention, the sugar is responsible for the compatibility of the cationic softener with the other detergent components. The court sustained the rejection, stating "The fact that appellant uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be [sic, would have been] prima facie obvious from the purpose disclosed in the references." 173 USPQ at 562.
In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991): Applicant claimed a composition comprising a hydrocarbon fuel and a sufficient amount of a tetra-orthoester of a specified formula to reduce the particulate emissions from the combustion of the fuel. The claims were rejected as obvious over a reference which taught hydrocarbon fuel compositions containing tri-orthoesters for dewatering fuels, in combination with a reference teaching the equivalence of tri-orthoesters and tetra-orthoesters as water scavengers in hydraulic (nonhydrocarbon) fluids. The Board affirmed the rejection finding "there was a ‘reasonable expectation’ that the tri- and tetra-orthoester fuel compositions would have similar properties based on ‘close structural and chemical similarity’ between the tri- and tetra-orthoesters and the fact that both the prior art and Dillon use these compounds ‘as fuel additives’." 919 F.2d at 692, 16 USPQ2d at 1900. The court held "it is not necessary in order to establish a prima facie case of obviousness . . . that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by applicant," and concluded that here a prima facie case was established because "[t]he art provided the motivation to make the claimed compositions in the expectation that they would have similar properties." 919 F.2d at 693, 16 USPQ2d at 1901 (emphasis in original).
Therefore, the fact that the motivation for combining Wakada and Zhou is not related to the issues of polysulfide absorption does not mean that it would not have been obvious to combine Wakada and Zhou.
Applicant’s arguments with respect to claims 5 and 11-12 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.
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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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729