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 5/26/2026 has been entered. Claims 2-4 are cancelled. Claims 1 and 5-13 remain pending in the application.
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 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hideo et al. (JP 2020161288, referring to previously provided translation thereof provided with office action, hereinafter "Hideo") in view of Yoon et al. (KR 20150055186, referring to examiner-provided translation thereof, hereinafter "Yoon").
Regarding claim 1, Hideo teaches a sulfur positive electrode mixture (“positive electrode material”) for a lithium-sulfur solid-state battery (“electric device”) comprising a carbon replica (“conductive material”) having a three-dimensional honeycomb structure and pores, sulfur (“positive electrode active material comprising sulfur”) and a solid electrolyte [page 4, paragraphs 4-5, “a sulfur positive electrode containing a sulfur positive electrode mixture, and a lithium-sulfur solid-state battery including the sulfur positive electrode”, “a carbon replica having a three-dimensional honeycomb structure and pores having a pore diameter of 5 nm or more and 20 nm or less, and at least sulfur and a solid electrolyte contained in the pores”]. The sulfur is a positive electrode active material [page 2, paragraph 5, “sulfur has been attracting attention as a positive electrode material … Sulfur as a positive electrode active material functions as an electrode”]. The carbon replica is a conductive auxiliary agent [page 5, paragraph 1, “the carbon replica which is a conductive auxiliary agent is used”]. Hideo further discloses that the sulfur and solid electrolyte are placed in the carbon replica pores to be in contact with each other [page 6, paragraph 1, “whereby the sulfur and the solid electrolyte are contained at least in the carbon replica pores … As a result, the contact area between sulfur and the solid electrolyte is increased in the carbon replica pores”]. Hideo also teaches the carbon replica being in particle form [Hideo Fig. 1 shows that the sulfur positive electrode mixture is contained within the carbon replica, page 5, paragraph 8, “Here, the particle size of the sulfur positive electrode mixture 1 is the length of the maximum side of the particles observed by the scanning electron microscope”, page 6, paragraph 4, “Further, the obtained sulfur-carbon replica composite is subjected to ball mill treatment. As a result, the agglomerated sulfur-carbon replica composite is crushed to improve the dispersibility”]. Fig. 1 of Hideo shows the sulfur (12) filling the pores of the carbon replica in a continuous phase. The pores (11a) are shown to contain the sulfur as a continuous body [page 5, paragraph 3, “In the sulfur positive electrode mixture 1, at least the sulfur 12 and the solid electrolyte 13 are contained in the plurality of cells (pores) 11a forming the honeycomb structure of the carbon replica 11”]. Fig. 1 of Hideo also shows the solid electrolyte (13) being in a dispersed phase in the continuous phase. Furthermore, Hideo teaches that the solid electrolyte exists as crystals (i.e. not a continuous phase) in the pores [page 5, paragraph 13]. Hideo is silent regarding a ratio of a count number of elements derived only from the solid electrolyte to a count number of all elements being 0.10 or more in a cross-sectional image of the positive electrode mixture observed by TEM-EDX.
Yoon teaches analogous art of an electrode (“positive electrode material”) comprising a positive electrode active material, a solid electrolyte, and a conductive agent (“conductive material”), wherein the solid electrolyte is supported on the conductive agent [0012]. Yoon teaches that the conductive agent may be a porous carbon-containing material [0008], and that the solid electrolyte can be adsorbed onto the porous conductive agent [0028, pg. 18].
Yoon teaches that when the weight of the solid electrolyte and the conductive agent together is 100%, the solid electrolyte may be included in an amount of 30% by weight to 70% by weight, thereby defining an upper and lower limit for an amount of solid electrolyte supported by a conductive agent [0028, pg. 20]. Yoon teaches that when the solid electrolyte is included in an amount of less than 30% by weight, the effect of improving ion conductivity is negligible, and if the solid electrolyte is included in an amount of more than 70% by weight, the current collection effect may be reduced [0028, pg. 20]. Thus, Yoon teaches that the amount of solid electrolyte supported by a conductive agent, or the amount of solid electrolyte contained within the pores of a conductive material, is a result-effective variable. The ratio of a count number of elements derived only from the solid electrolyte to a count number of all elements in a cross-section of the positive electrode material is directly related to the amount of solid electrolyte contained within the pores of a conductive material, therefore said ratio is also a result effective variable.
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 find the optimal range of a ratio of a count number of elements derived only from the solid electrolyte to a count number of all elements being 0.10 or more in a cross-sectional image of a positive electrode mixture observed by TEM-EDX through routine experimentation, in order to improve the ion conductivity of the positive electrode mixture while preventing a reduction in the current collection effect as taught by Yoon in the positive electrode mixture of Hideo. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05(II)(A)].
Further regarding claim 5, as described in the rejection of instant claim 1, Hideo teaches that the carbon replica is acting as a conductive auxiliary agent [page 5, paragraph 1].
Further regarding claim 6, Hideo discloses that the pore volume of the carbon replica is 0.5 cm3/g or more and 2.5cm3/g or less, which overlaps the recited range of 1.0 mL/g or more (cm3/g and mL/g are equivalent units) [page 5, paragraph 1, “the volume of the pores is 0.5 cm3 / g or more and 2.5 cm3 / g or less”]. 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), see MPEP 2144.05(I)].
Further regarding claim 7, Hideo teaches that the pore diameter (“pore size”) is 5 nm or more and 20 nm or less, which is within the recited range of 50 nm or less [page 4, paragraph 5, “pores having a pore diameter of 5 nm or more and 20 nm or less”].
Further regarding claim 8, Hideo teaches that the solid electrolyte may be Li6PS5Cl, which is a sulfide solid electrolyte [page 4, paragraph 6, “wherein the solid electrolyte is Li6PS5Cl”].
Further regarding claim 9, Hideo teaches that the solid electrolyte may be Li6PS5Cl, which contains an alkali metal atom (Li) and a phosphorus atom [page 4, paragraph 6].
Further regarding claim 10, as described in the rejection of instant claim 9, Hideo teaches the solid electrolyte Li6PS5Cl, which comprises lithium [page 4, paragraph 6].
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/557,566 in view of Hideo (JP 2020161288) and Yoon (KR 20150055186). Claim 12 of ‘566 teaches almost all of the limitations of instant claim 1, such as a positive electrode material for an electric device, the positive electrode material comprising a sulfur-containing positive electrode active material, a solid electrolyte, and a conductive material with pores, wherein at least part of the solid electrolyte and at least part of the positive electrode active material are disposed on inner surfaces of the pores to be in contact with each other, and wherein the positive electrode active material is in a continuous phase and the solid electrolyte is in a dispersed phase in the continuous phase. Claim 12 of ‘566 is silent regarding the conductive material being in particle form and a ratio of a count number of elements derived only from the solid electrolyte to a count number of all elements being 0.10 or more in a cross-sectional image of the positive electrode mixture observed by TEM-EDX.
Hideo teaches analogous art of a sulfur positive electrode mixture (“positive electrode material”) for a lithium-sulfur solid-state battery (“electric device”) comprising a carbon replica (“conductive material”) having a three-dimensional honeycomb structure and pores, sulfur (“positive electrode active material comprising sulfur”) and a solid electrolyte [page 4, paragraphs 4-5]. Hideo also teaches the carbon replica being in particle form [Hideo Fig. 1 shows that the sulfur positive electrode mixture is contained within the carbon replica, page 5, paragraph 8, “Here, the particle size of the sulfur positive electrode mixture 1 is the length of the maximum side of the particles observed by the scanning electron microscope”, page 6, paragraph 4, “Further, the obtained sulfur-carbon replica composite is subjected to ball mill treatment. As a result, the agglomerated sulfur-carbon replica composite is crushed to improve the dispersibility”].
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 conductive material of claim 12 of ‘566 to be in particle form as taught by Hideo, in order to yield the predictable result of a positive electrode material for use in an electric device.
Yoon teaches analogous art of an electrode (“positive electrode material”) comprising a positive electrode active material, a solid electrolyte, and a conductive agent (“conductive material”), wherein the solid electrolyte is supported on the conductive agent [0012]. Yoon teaches that the conductive agent may be a porous carbon-containing material [0008], and that the solid electrolyte can be adsorbed onto the porous conductive agent [0028, pg. 18]. Yoon teaches that when the weight of the solid electrolyte and the conductive agent together is 100%, the solid electrolyte may be included in an amount of 30% by weight to 70% by weight, thereby defining an upper and lower limit for an amount of solid electrolyte supported by a conductive agent [0028, pg. 20]. Yoon teaches that when the solid electrolyte is included in an amount of less than 30% by weight, the effect of improving ion conductivity is negligible, and if the solid electrolyte is included in an amount of more than 70% by weight, the current collection effect may be reduced [0028, pg. 20]. Thus, Yoon teaches that the amount of solid electrolyte supported by a conductive agent, or the amount of solid electrolyte contained within the pores of a conductive material, is a result-effective variable. The ratio of a count number of elements derived only from the solid electrolyte to a count number of all elements in a cross-section of the positive electrode material is directly related to the amount of solid electrolyte contained within the pores of a conductive material, therefore said ratio is also a result effective variable.
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 find the optimal range of a ratio of a count number of elements derived only from the solid electrolyte to a count number of all elements being 0.10 or more in a cross-sectional image of a positive electrode mixture observed by TEM-EDX through routine experimentation, in order to improve the ion conductivity of the positive electrode mixture while preventing a reduction in the current collection effect as taught by Yoon in the positive electrode mixture of claim 12 of ‘566. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05(II)(A)].
This is a provisional nonstatutory double patenting rejection.
The provisional nonstatutory double patenting rejection of claim 1 over claim 3 of copending Application No. 18/688,560 is withdrawn due to the amendment to claim 1.
The provisional nonstatutory double patenting rejection of claim 1 over claim 5 of copending Application No. 18/688,573 is withdrawn due to the amendment to claim 1.
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.
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
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