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 .
Status
Claims 1 and 3 are amended. Claims 13-20 are new. The oversight of including claim 3 under 35USC102 in the non-final action is corrected in this second non-final action. Claims 1-20 are examined.
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.
Claim(s) 1-13, 15-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Garsuch (US20130017418 previously cited).
With respect to claim 1, Garsuch teaches a positive electrode comprising ([0081]): sulfur
(1.4g), a carbon material including a carbon black with first specific surface area (BET) (1g of
Printex at 100m2/g) and a carbon black with a second specific surface area (BET) (1g of Ketgen
at 900 m2/g) where the first specific surface area with lower than the second specific surface
area ([0082]). Garsush teaches that the first specific surface area is SA and that the
second specific surface area is 9 x SA (100 m2/g and 900 m2/g or [9x100 m2/g]) and is therefore silent to a 10xSA. However, Garsuch generally teaches that the carbon black used may have a BET from 20-1500 m2/g ([0031]) where the carbon may differ in BET (as seen in the example above) ([0032]) and that the function of carbon i.e. carbon black (B) is electrical conductivity ([0018]) therefore teaching a maximum relationship of 75xSA where SA is 20 m2/g and the second is 1500 m2/g. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 2, Garsuch teaches that the first specific surface area is 100 m2/g and
the second is 900 m2/g. One of ordinary skill in the art would appreciate that Garsuch suggests two carbon blacks with significantly large differences in BET. Therefore it would have been obvious with a reasonable expectation of similar results to select the first to be in the lower end of the range where the specific example guides us to 20-100 m2/g while the second is in the higher end of the range 900-1500 m2/g ([0031] and [0082]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, barring evidence of criticality and unexpected results.
Regarding claim 3, Garsuch generally teaches that the carbon black used may have a BET from 20-1500 m2/g ([0031]) where the carbon may differ in BET (as seen in the example above) ([0032]) and that the function of carbon i.e. carbon black (B) is electrical conductivity ([0018]) therefore in the specific examples Garsuch establishes 9xSA ([0082]) and teaches a maximum relationship of 75xSA where SA is 20 m2/g and the second is 1500 m2/g. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claims 4-5, Garsuch teaches that the content of carbon black with the second
specific surface area is 50% with respect to the total amount of carbon black (1g of each
therefore 1/2 = 50%) ([0082]). This value falls within the claimed range and therefore
reads on the claims.
Regarding claims 6-7, Garsuch teaches that the content of carbon material (2g total) is
59% with respect to the total amount of sulfur (1.4g) and carbon material (2g) i.e. 3.4g total.
This value falls within the claimed range and therefore reads on the claims.
Regarding claim 8, Garsuch teaches the positive electrode is used in an electrochemical
device ([0090]). The examiner notes while the art teaches the device and is provided for
compact prosecution however the claim is directed to the electrode and merely the intended
use rather than necessarily requiring the device in scope.
Regarding claim 9, Garsuch teaches the positive electrode can be used in a rechargeable
(Garsuch claim 7) Mg-S cell ([0056]). Wherein one would appreciate that the positive electrode
of Garsuch is the sulfur thus when Mg is selected as the anode the result is a Mg-S cell.
Moreover, the instant claim is directed to the electrode and the scope is not limited by its
intended use.
Regarding claim 10, Garsuch teaches an electrochemical cell comprising the electrode of
claim 1 ([0090]).
Regarding claim 11, Garsuch teaches the electrochemical cell comprising an ether based
solvent ([0058]).
Regarding claim 12, Garsuch teaches the positive electrode can be used in a
rechargeable (Garsuch claim 7) Mg-S cell ([0056]). Wherein Garsuch teaches Mg among one of
five possible counter electrodes to the S based inventive electrode (cathode) thereby at once
envisaging the S inventive electrode of claim 1 with each of the limited five recited electrodes
to form the described rechargeable cell (MPEP 2131.02). Garsuch teaches a limited number of
possible cells (Mg-S; Al-S; Zn-S; Na-S and Li-S) and therefore reads on instant claim 12.
Regarding claim 13 and 15, Garsuch teaches that the first specific surface area is 100 m2/g and the second is 900 m2/g [0082] and generally that the BET of carbon blacks used are 20-1500 m2/g ([0032]). One of ordinary skill in the art would appreciate that Garsuch suggests two carbon blacks with significantly large differences in BET. Therefore, it would have been obvious with a reasonable expectation of similar results to select the first to be in the lower end of the range where the specific example guides us to 20-100 m2/g while the second is in the higher end of the range 900-1500 m2/g ([0031] and [0082]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, barring evidence of criticality and unexpected results.
Regarding claim 16, Garsuch generally teaches that the carbon black used may have a BET from 20-1500 m2/g ([0031]) where the carbon may differ in BET (as seen in the example above) ([0032]) and that the function of carbon i.e. carbon black (B) is electrical conductivity ([0018]) therefore in the specific examples Garsuch establishes 9xSA ([0082]) and teaches a maximum relationship of 75xSA where SA is 20 m2/g and the second is 1500 m2/g. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 18, Garsuch teaches the positive electrode comprises sulfur (C), carbon material (B), and binder (D) ([009-13]). Garsuch teaches binders include styrene-butadiene rubber (copolymer) and carboxymethylcellulose ([0043]). While Garsuch is explicitly silent this combination, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose MPEP 2144.06.
Regarding claim 19, Garsuch teaches that the content of carbon material (2g total) is
38% with respect to the total amount of sulfur (3.2g) and carbon material (2g) i.e. 5.2g total ([0084]). This value falls within the claimed range and therefore reads on the claims.
Regarding claim 20, Garsuch teaches that the content of carbon black with the second
specific surface area is 50% with respect to the total amount of carbon black (1g of each
therefore 1/2 = 50%) ([0084]). This value falls within the claimed range and therefore
reads on the claims.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Garsuch (US20130017418) as applied to claim 10 above and further in view of Watahiki (US20150364792).
Regarding claim 14, Garsuch teaches a solvent ([0058]) and magnesium salt (Mg-S cell necessarily having Mg salt [0056]) where the solvent is a double capped ethylene glycol ([0059]) but is explicitly silent to the species of diethylene glycol dimethyl ether and the salts being magnesium chloride and magnesium bis(trifluoromethanesulfonyl)imide.
Watahiki teaches a Mg battery ([0002]) wherein the solvent may be selected from a list including diethylene glycol dimethyl ether as claimed and other art recognized equivalents such as carbonates ([0105]) to those outlined in Garsuch ([0058-70]) as well as salts suitable for use in such batteries include magnesium chloride and magnesium bis(trifluoromethanesulfonyl)imide ([0057]) among the broader teaching of overlapping art recognized equivalents ([0040-57]) to their Li counterparts discussed in Garsuch ([0071]). It would have been obvious to one of ordinary skill in the art the time of filing to look to Watahiki and use the solvent and salts thereof in Garsuch in order to provide a functional electrolyte for the magnesium based battery system as taught by Watahiki.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Garsuch (US20130017418) as applied to claim 1 above and further in view of Saguchi (US20200303726).
Regarding claim 17, Garsuch is explicitly silent to the first carbon black having solid structure and the second having hollow structure. However given that Garsuch teaches 20-1500 m2/g ([0032]) one of ordinary skill would appreciate that lower BET (m2/g) values read on the solid particle as required by the claimed invention as introduction of a hollow cavity would further increase surface area.
Saguchi teaches carbon black for the same function, conductivity, in an electrode ([0008]) wherein the hollow carbon black achieves high BET (1270 m2/g) ([0074]). Given t hat Garsuch teaches BET as high as 3000 m2/g ([0032]) including the range of Saguchi it would have been obvious to one of ordinary skill in the art at the time of filing to use the hollow carbon black of Saguchi in Garusch to arrive at the higher m2/g range taught by Garsuch with a reasonable expectation of similar results i.e. providing conductivity MPEP 2144.06-7. Finally given the limited number of options (solid and hollow) it would have been obvious to try the limited possible variations with a reasonable expectation of similar results; i.e. conductivity in and electrode MPEP 2143.
Response to Arguments
Applicant’s arguments, see amendment, filed 6/9/26, with respect to the rejection(s) of claim(s) 1 and 3 under 35USC102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as detailed above.
Applicant argues that Garsuch has failed to recognize the advantage of high and low specific surface area carbon. The examiner respectfully disagrees. Garsuch teaches use of two carbons with differing BET and overlapping ranges as the claimed invention wherein specific examples provide high and low combinations ([0032 and 82]).
Applicant appears to assert criticality relying on the instant Table 1 and Fig 10 however these results are not commensurate with the scope of claim 1 including additional aspects of the examples such as sulfur, weight ratios, binder, additional battery conditions including electrolyte, anode and so forth. The Table and Example information with respect to the SA is vague – high and low. The instant examples do no provide sufficient data to support the conclusion of criticality and unexpected results. Moreover, the instant specification explains that high is 800-1600 m2/g or above and low is 30-200 m2/g ([0019-24]). Garsuch teaches high and low as described by the instant providing such 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).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIRIAM STAGG whose telephone number is (571)270-5256. The examiner can normally be reached Monday-Friday, 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Srilakshmi Kumar can be reached at (571) 272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
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