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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 5, 2026 has been entered.
Response to Amendment
In response to the amendment received May 5, 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 Claims 3-9 have been withdrawn.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.
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 the content of sulfur solids is less than 5% by mass (i.e. free sulfur overlapping with the claimed range of from 28,000 ppm by mass to 4 mass%) (Para. [0052]). 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 May 5, 2026 have been fully considered but they are not persuasive.
Applicant argues the examples in Kakiage teach away from higher amounts of sulfur solids as they teach 0.5% by mass solid sulfur content as compared to the 1% in the Comparative Examples and Kakiage fails to provide motivation for the claimed ranges.
Examiner respectfully disagrees. 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). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP 2123. As Kakiage et al. teaches the broader disclosure of 5% by mass or less of solid sulfur, the reference teaches an overlapping range, which renders the claim limitation of a content of free sulfur of from 28,000 ppm by mass to 4 mass% 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). Furthermore, para. [0108] of Kakiage et a. does not teach that the lower charge capacity retention rates of Comparative Examples are specifically due to the sulfur solid content being 1% by mass rather than other differences present in the Comparative Examples compared to the Examples of Kakiage. Thus, the argument is not persuasive and the rejection of record above is maintained.
Conclusion
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/ARMINDO CARVALHO JR./Primary Examiner, Art Unit 1729
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