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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16 June 2026 has been entered.
New Examiner
This application has been transferred to a new examiner, Nicholas Piro of Art Unit 1738, who can be reached at 571-272-6344.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kitazono et al. (US 2015/0259216 A1, applicant submitted in IDS).
Regarding claim 1, Kitazono teaches a method of producing antimony trisulfide (abstract) comprising mixing antimony trioxide powder and sulfur power to provide a mixture and heating the mixture ([0011]), wherein the heating involves a maximum attainable temperature of 580 °C (the temperature inside the reaction vessel rapidly increased to about 580 °C; [0038]) and wherein the antimony trioxide powder preferably has an average particle diameter of 2 μm or less ([0016]), which lies within the claimed range of 8 μm or less.
Kitazono also teaches another reaction for making antimony trisulfide comprising mixing metal antimony powder and sulfur powder, and then heating the mixture. Kitazono also teaches that the metal antimony powder normally has an average particle diameter of 20 μm to 30 μm, and that while more expensive to produce, particles of 10 μm or less are more reactive ([0007]).
As set forth in MPEP 2144.06, the combination of equivalents known for the same purpose is prima facie obvious in the absence of new and unexpected results. Here, Kitazono teaches that antimony metal is a composition that reacts with sulfur for the purpose of producing antimony trisulfide and that antimony trioxide is also a composition that reacts with sulfur powder for the purpose of producing antimony trisulfide.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine antimony metal powder with an average particle diameter of 30 μm or less with antimony trioxide powder of 2 μm or less to form a mixed composition, and to combine this mixture with sulfur powder and to heat the mixture to produce antimony trisulfide, wherein the heating is performed to a maximum attainable temperature 580 °C, as taught by Kitazono. One of ordinary skill in the art would have been motivated to do so because Kitazono teaches that each of antimony metal and antimony trioxide as capable of forming the desired product under these conditions and “the idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06(I).
It is additionally noted that Kitazono teaches that antimony metal powder may settle out and prevent complete reaction ([0014]), a clear disadvantage of using this reactant. However, Kitazono also teaches that the use of antimony trioxide will cause bubbles of sulfurous acid gas to form, which will serve to perturb the raw materials ([0015]). One of ordinary skill in the art would recognize that such bubbles would also disturb the antimony metal powder of the combined composition and thereby help to prevent settling and possibly remove the identified disadvantage associated with antimony metal powder.
Regarding claim 6, Kitazono teaches the method of claim 1, but does not specifically teach performing the method wherein the mixture has a total mass of 1 kg or more.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the reaction on whatever scale is required to produce a desired amount of product, including on the kilogram scale. One of ordinary skill in the art would have been motivated to do so in order to produce the desired amount of product in one step rather than many in order to reduce costs and time associated with multiple small scale reactions.
It is additionally noted that the courts have held that the "mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976). MPEP 2144.04 (IV)(A).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kitazono et al. (US 2015/0259216 A1, applicant submitted in IDS), as applied to claim 1, and further in view of Dicks et al. (Green Chemistry Metrics: A Guide to Determining and Evaluating Process Greenness, Springer, 2015).
Regarding claim 2, Kitazono teaches the method of claim 1, but does not teach any mass ratio MO:MM of the mixture.
However, Kitazono does teach that antimony metal powder may settle out and prevent complete reaction ([0014]), a clear disadvantage of using this reactant alone. Kitazono also teaches that the use of antimony trioxide will cause bubbles of sulfurous acid gas to form, which will serve to perturb the raw materials ([0015]). One of ordinary skill in the art would recognize that such bubbles would also disturb the antimony metal powder of the combined composition and thereby help to prevent settling and possibly remove the disadvantage associated with antimony metal powder.
Additionally, Dicks teaches that one goal for chemists from a “greenness” perspective is to utilize reactions with high atom economy, i.e. those in which most of the mass of the reactants is incorporated into the desired product (p. 18, ¶ 1). Based upon the balanced reactions for the two methods to form antimony trisulfide taught by Kitazono,
PNG
media_image1.png
62
587
media_image1.png
Greyscale
,
it can be seen that the reaction using antimony metal has an atom economy of 100% where all atoms end up in the product with no byproducts. In comparison, the atom economy of the reaction using antimony trioxide is calculated to be only 78%, due to the production of SO2, a toxic gas, as a byproduct.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize by routine experimentation the mass ratio of the amount of antimony trioxide powder and antimony metal powder, including into the instantly claimed range. One of ordinary skill in the art would have been motivated to do so in order to balance the benefits of using antimony metal powder, including the ability to produce products atom economically and without making a toxic gas, with the benefits of using antimony trioxide, including the ability to generate gas bubbles which agitate the reaction and thereby reduce the amount of unreacted starting materials.
It is also noted that the courts have found that “where 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). See MPEP 2144.05 II. Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the method taught by the cited prior art.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kitazono et al. (US 2015/0259216 A1, applicant submitted in IDS) in view of Dicks et al. (Green Chemistry Metrics: A Guide to Determining and Evaluating Process Greenness, Springer, 2015).
Regarding claim 7, Kitazono teaches a method of producing antimony trisulfide (abstract) comprising mixing antimony trioxide powder and sulfur power to provide a mixture and heating the mixture ([0011]), wherein the heating involves a maximum attainable temperature of 580 °C (the temperature inside the reaction vessel rapidly increased to about 580 °C; [0038]) and wherein the antimony trioxide powder preferably has an average particle diameter of 2 μm or less ([0016]), which lies within the claimed range of 8 μm or less.
Kitazono also teaches another reaction for making antimony trisulfide comprising mixing metal antimony powder and sulfur powder, and then heating the mixture. Kitazono also teaches that the metal antimony powder normally has an average particle diameter of 20 μm to 30 μm, and that while more expensive to produce, particles of 10 μm or less are more reactive ([0007]). Each of these sizes falls within the claimed range of 120 μm or less.
As set forth in MPEP 2144.06, the combination of equivalents known for the same purpose is prima facie obvious in the absence of new and unexpected results. Here, Kitazono teaches that antimony metal is a composition that reacts with sulfur for the purpose of producing antimony trisulfide and that antimony trioxide is also a composition that reacts with sulfur powder for the purpose of producing antimony trisulfide.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine antimony metal powder with an average particle diameter of 30 μm or less with antimony trioxide powder of 2 μm or less to form a mixed composition, and to combine this mixture with sulfur powder and to heat the mixture to produce antimony trisulfide, wherein the heating is performed to a maximum attainable temperature 580 °C, as taught by Kitazono. One of ordinary skill in the art would have been motivated to do so because Kitazono teaches each of antimony metal and antimony trioxide as capable of forming the desired product under these conditions and “the idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06(I).
Kitazono further teaches that antimony metal powder may settle out and prevent complete reaction ([0014]), a clear disadvantage of using this reactant alone. Kitazono also teaches that the use of antimony trioxide will cause bubbles of sulfurous acid gas to form, which will serve to perturb the raw materials ([0015]). One of ordinary skill in the art would recognize that such bubbles would also disturb the antimony metal powder of the combined composition and thereby help to prevent settling and possibly remove the disadvantage associated with antimony metal powder.
Regarding the mass ratio MO:MM of the mixture, Kitazono does not teach any mass ratio MO:MM of the mixture.
However, Dicks teaches that one goal for chemists from a “greenness” perspective is to utilize reactions with high atom economy, i.e. those in which most of the mass of the reactants is incorporated into the desired product (p. 18, ¶ 1). Based upon the balanced reactions for the two methods to form antimony trisulfide taught by Kitazono,
PNG
media_image1.png
62
587
media_image1.png
Greyscale
,
it can be seen that the reaction using antimony metal has an atom economy of 100% where all atoms end up in the product with no byproducts. In comparison, the atom economy of the reaction using antimony trioxide is calculated to be only 78%, due to the production of SO2, a toxic gas, as a byproduct.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize by routine experimentation the relative amounts of antimony trioxide powder and antimony metal powder, including into the instantly claimed range. One of ordinary skill in the art would have been motivated to do so in order to balance the benefits of using antimony metal powder, including the ability to produce products atom economically and without making a toxic gas, with the benefits of using antimony trioxide, including the ability to generate gas bubbles which agitate the reaction and thereby reduce the amount of unreacted starting materials, as taught by Kitazono.
It is also noted that the courts have found that “where 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). See MPEP 2144.05 II. Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the method taught by the cited prior art.
Response to Arguments
Applicant's arguments filed 16 June 2026 have been fully considered but they are not persuasive.
In particular, Applicant argues on page 5 that Kitazono teaches away from the use of antimony metal because Kitazono teaches that unreacted antimony metal settles to the bottom of the reaction vessel. However, Kitazono also teaches that the use of antimony trioxide will cause bubbles of sulfurous acid gas to form, which will serve to perturb the raw materials ([0015]). One of ordinary skill in the art would recognize that such bubbles would also disturb the antimony metal powder of the combined composition and thereby help to prevent settling and possibly remove the disadvantage associated with antimony metal powder. So, while Kitazono may teach away from using antimony powder alone, Kitazono cannot be considered as teaching away from the combination of antimony metal and antimony trioxide.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
Prosecution Insights