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 .
Election/Restrictions
Claims 2 and 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/14/2026.
Information Disclosure Statement
The IDS’s filed 4/24/2023 and 11/15/2024 have been considered by examiner.
Claim Rejections - 35 USC § 102
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5, and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hideo et al. (JP 2020161288, referring to English translation thereof provided with office action, hereinafter "Hideo").
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”].
Further regarding claim 3, 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].
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 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].
Claim 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wang et al. (US 2021/0028440, hereinafter "Wang").
Regarding claim 1, Wang teaches a solid-state composite cathode (“positive electrode material”) for use in batteries (“electric device”) [Abstract]. Wang teaches that the composite cathode includes a composition comprising an ordered mesoporous carbon which comprises channels (“pores”), A3PS4, wherein A is Na+ or Li+, and X2S, wherein X is Na+ or Li+ [0146-0149]. Wang teaches that the mesoporous carbon is a conductive material in powder, or particle, form [0122, “Mesoporous carbon is a hydrophobic material with highly specific surface area and pore density and possesses excellent electrical conductivity”, “Mesoporous carbon is available as a powder or as a nano-powder”]. Wang teaches that Na3PS4 or Li3PS4 is a solid electrolyte [0134]. Wang teaches that the cathode composite is contained in a cathode active material layer [0167]. Since the A3PS4 and mesoporous carbon are not active material, this leaves the X2S as the cathode active material comprising sulfur. Wang also teaches that A3PS4 and X2S are placed inside the mesoporous carbon channels [0156, “wherein at least 30% of the channels in the ordered mesoporous carbon comprise X2S and A3PS4”]. Wang further discloses in a specific example of a cathode composite comprising Na2S, Na3PS4, and CMK-3 (mesoporous carbon) that close contacts among all three components are obtained, meaning the solid electrolyte and active material are in contact with each other [0196, “close contacts among the three components are obtained in the cast-annealed Na2S—Na3PS4-CMK-3 composite].
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hideo (JP 2020161288).
Regarding claim 6, Hideo teaches the positive electrode material of claim 1 as described in the rejection of instant claim 1. Hideo further 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)].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2021/0028440).
Regarding claim 4, Wang teaches the positive electrode material of claim 1, as described in the rejection of instant claim 1. Wang further teaches that between about 30% and 100% of the channels in the mesoporous carbon comprise A3PS4, and that the percentage of channels that are filled with A3PS4 can be determined using energy dispersive spectroscopy (EDS). This range provides a finite upper and lower limit for the amount of solid electrolyte in the mesoporous carbon channels. Wang also teaches that interfacial resistance is reduced when the solid electrolyte, active material, and conductive material are all in contact with each other [0108, “The casting-annealing process guarantees close contact between the Na.sub.3PS.sub.4 solid electrolyte and the CMK-3 mesoporous carbon in a mixed ionic/electronic conductive matrix, while the in situ precipitated Na.sub.2S active species generated from the solid electrolyte during the annealing process guarantees the interfacial contact among these three sub-components without residential stress, which greatly reduces the interfacial resistance, and enhances the electrochemical performance”]. By increasing the amount of solid electrolyte in the channels, the contact between the solid electrolyte, active material, and conductive material increases. 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 discover the optimum range of a ratio of count elements derived only from the solid electrolyte to a count number of all elements of 0.10 or more in a cross-sectional image of the conductive material observed by TEM-EDX through routine experimentation within the finite range taught by Wang [MPEP 2144.05 (II)(A) "[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]. It would have been obvious to try to do so in order to reduce interfacial resistance in the cathode.
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 11 of copending Application No. 18/557,566 in view of Hideo (JP 2020161288). Claim 11 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. Claim 11 of ‘884 is silent regarding the conductive material being in particle form.
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 11 of ‘884 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.
This is a provisional nonstatutory double patenting rejection.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/688,560 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both instant claim 1 and claim 3 of '560 recite a positive electrode material for an electric device comprising a porous conductive material in particulate form, a positive electrode active material containing sulfur in the pores of the porous conductive material, and a solid electrolyte in the pores of the porous conductive material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/688,573 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both instant claim 1 and claim 5 of '573 recite a positive electrode material for an electric device comprising a porous conductive material in particulate form, a positive electrode active material containing sulfur in the pores of the porous conductive material, and a solid electrolyte in the pores of the porous conductive material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729