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 . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
The rejection of claims 1-19 under 35 U.S.C. § 102(a)(1) as being anticipated by In Situ Study of Electrolyte Reactions in Secondary Lithium Cells, Fong et al. 1987 J. Electrochem. Soc. 134 516, available at: https://iopscience.iop.org/article/10.1149/1.2100501/pdf, last visited November 25, 2025, hereinafter “Fong,” is withdrawn because Applicant amended claim 1.
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.
Claims 1-19 are rejected under 35 U.S.C. § 103 as being unpatentable over Fong in view of Suzuki et al. (US 2017/0057825 A1), hereinafter “Suzuki.”
Regarding claims 1-12, Fong discloses a nonaqueous secondary battery with a lithium-free transition metal sulfide as a cathode active material, in this case MoS2 (p. 517),
wherein the nonaqueous secondary battery electrolyte is 100 vol% of a cyclic carbonate compound, in this case propylene carbonate (PC) or sulfolane.
Fong does not disclose that the lithium-free transition metal sulfide is vanadium sulfide. However, Suzuki teaches that vanadium sulfide, specifically V2S5 and VS-2, may be used in lieu of molybdenum sulfide, MoS2, as a cathode active material (¶ [0084]). One having ordinary skill in the art would have understood that substituting vanadium sulfide for molybdenum sulfide would have yielded the predictable result of a functioning cathode for a nonaqueous secondary battery. See M.P.E.P. § 2143 I. B. Therefore, it would have been obvious to have substituted vanadium sulfide for molybdenum sulfide in order to yield the predictable result of a functioning cathode.
“‘A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.’ The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989) (Gosteli claimed a genus of 21 specific chemical species of bicyclic thia-aza compounds in Markush claims. The prior art reference applied against the claims disclosed two of the chemical species. The parties agreed that the prior art species would anticipate the claims unless applicant was entitled to his foreign priority date.).” M.P.E.P. § 2131.02 I. Furthermore, “[a] claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.” M.P.E.P. § 608.01(n) III.
Here, Applicant has claimed a two-member Markush group consisting of species (A) and (B) as set forth in claim 1. Each claim ultimately depending from claim 1 necessarily incorporates this Markush group. Species (A) recites yet another Markush group, with one member of 100 vol% of a cyclic carbonate compound and no chain carbonate. Fong and Suzuki render the claims obvious because they clearly teach one member of each of the recited Markush groups, even if the dependent claims further limit the non-disclosed member.
Regarding 13, Fong further discloses that the cyclic carbonate compound is PC (p. 517).
Regarding claim 14, Fong further discloses that the lithium-free metal sulfide is molybdenum sulfide, in this case MoS2 (p. 517).
Regarding claims 15 and 17, Fong further discloses that the electrolyte solution comprises a lithium salt, in this case LiAsF6 (p. 517).
Regarding claim 16, Fong further discloses that the lithium salt is an inorganic lithium salt, in this case LiAsF6 (p. 517).
Regarding claim 18, Fong further discloses that the lithium salt is LiAsF6 (p. 517).
Regarding claim 19, Fong further discloses that the lithium salt concentration is 0.3 to 2.5 mol/L, in this case 1 M (p. 517). “If the prior art discloses a point within the claimed range, the prior art anticipates the claim.” UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023); M.P.E.P. § 2131.03 I.
Response to Arguments
Applicant’s arguments with respect to claims 1-19 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT J CHMIELECKI whose telephone number is (571)272-7641. The examiner can normally be reached M-F 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT J. CHMIELECKI/Primary Examiner, Art Unit 1729
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