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
In response to the amendment received March 9, 2026:
Claims 1-9 are pending. Claims 3-9 have been withdrawn.
The core of the previous rejection is maintained with slight changes made in light of the amendment. All changes to the rejection are necessitated by the amendment.
Claim Rejections - 35 USC § 103
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Kakiage et al. (JP2017/218584A), cited in the Information Disclosure Statement received June 4, 2024. The English machine translation of Kakiage et al. was provided in a prior Office action and is referenced below.
Regarding Claim 1, Kakiage et al. teaches an electrode comprising a sulfur-modified polyacrylonitrile as an electrode active material (Para. [0052]) comprising 30 to 55% by mass% sulfur (i.e. total content of sulfur overlapping with the claimed range of 42.2 mass% to 55 mass%) (Para. [0052] – pg. 25, lines 6-7) and 0.5% by mass sulfur solid content (i.e. free sulfur within the claimed range of from 0.05 ppm by mass to 4 mass%) (Para. [0094]). In the case where the claimed ranges “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).” See MPEP §2144.05(I).
Regarding the limitation describing how the content of free sulfur is measured, “by a solvent extraction method”, the content of free sulfur is a property of the structure/composition of the sulfur-modified polyacrylonitrile. Any sulfur-modified polyacrylonitrile with the same structure/composition will have the same free sulfur content as the claimed sulfur-modified polyacrylonitrile if measured with the same process as claimed. The process in which the free sulfur content is measured does not change the underlying properties of the sulfur-modified polyacrylonitrile.
Regarding Claim 2, Kakiage et al. teaches all of the elements of the current invention in claim 1 as explained above.
Kakiage et al. teaches the sulfur-modified polyacrylonitrile as an electrode active material (Para. [0052]) comprising 30 to 55% by mass% sulfur (i.e. total content of sulfur overlapping with the claimed range of 42.2 mass% to 55 mass%) (Para. [0052] – pg. 25, lines 6-7) and 0.5% by mass sulfur solid content (i.e. free sulfur within the claimed range of from 0.05 ppm by mass to 4 mass%) (Para. [0094]) (i.e. substantially identical structure/composition as required by the instant claim).
Accordingly, the mass loss heat rate on heating in a range of from 150 degrees Celsius to 350 degrees Celsius of Kakiage et al. would either (a) be expected to satisfy the claimed mass loss heat rate of from 0.2 mass% to 15 mass% determined by thermogravimetric analysis or (b) differences in the mass loss heat rate would be slight differences in ranges that would be obvious. With respect to (a): The reasons regarding expectedness are that the composition is substantially identical to that of the instant claim, therefore it is expected that the sulfur-modified polyacrylonitrile of Kakiage et al. would satisfy these conditions. 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. "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." See MPEP 2112.01. With respect to (b): If it is shown that such characteristics are not present, then any differences (regarding the mass loss heat rate) would be small and obvious. In the case where the claimed ranges “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).” See MPEP §2144.05(I).
Response to Arguments
Applicant's arguments filed March 9, 2026 have been fully considered but they are not persuasive.
Applicant argues the method in the instant specification differs from the production method of Kakiage and fails to teach 42.2 mass% to 55 mass% sulfur as claimed which achieve superior results.
Examiner respectfully disagrees. The claims are directed toward a product an applicant is arguing the method is different. The applicant’s argument does not provide evidence/proof as to why the method of the instant application and that of the prior art does not either (a) form the same product as claimed, or (b) form a similar product as that claimed (such that obliviousness is met). Regarding the newly claimed range, Kakiage et al. teaches the sulfur-modified polyacrylonitrile as an electrode active material (Para. [0052]) comprising 30 to 55% by mass% sulfur (i.e. total content of sulfur overlapping with the claimed range of 42.2 mass% to 55 mass%) (Para. [0052] – pg. 25, line 6-7). In the case where the claimed ranges “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).” See MPEP §2144.05(I). In response to applicant's argument that Kakiage does not suggest a relationship between sulfur and capacity or power storage while the claimed invention provides superior results, the fact that the inventor 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). Thus, the argument is not persuasive and the rejection of record is maintained.
Applicant argues that the dependent claim is distinct from the prior art of record for the same reason as the independent claim.
Examiner respectfully disagrees. The rejection with respect to the independent claim has been maintained, and thus the rejections to the dependent claim is maintained as well.
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 ARMINDO CARVALHO JR. whose telephone number is (571)272-5292. The examiner can normally be reached Monday-Thursday 7:30a.m.-5p.m..
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/ARMINDO CARVALHO JR./Primary Examiner, Art Unit 1729