DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
3. Information disclosure statements (IDS), submitted August 17, 2023, March 4, 2025 (two IDS), and June 2, 2025, have been received and considered by the examiner.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Objections
5. Claim 9 is objected to because of the following informalities: Claim 9 recites “wherein sulfur is positioned inside of the pores of the porous carbonaceous material, outer surface of the porous carbonaceous material, and is present in a region corresponding to less than 100% of the whole of the inside of the pores and the outer surface of the porous carbonaceous material” but this is grammatically incorrect. If Applicant intends to claim that sulfur is inside the outer surface, then the limitation should read “wherein sulfur is positioned inside of the pores of the porous carbonaceous material, inside the outer surface of the porous carbonaceous material, and is present in a region corresponding to less than 100% of the whole of the inside of the pores and the outer surface of the porous carbonaceous material”. If the claim is meant to recite that the sulfur is on the outer surface of the material, then please correct accordingly. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
6. Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 9 recites “wherein sulfur is positioned inside of the pores of the porous carbonaceous material, outer surface of the porous carbonaceous material, and is present in a region corresponding to less than 100% of the whole of the inside of the pores and the outer surface of the porous carbonaceous material” but it is unclear if Applicant intends to claim that sulfur is inside the outer surface of the porous carbonaceous material or on the outer surface.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
7. Claims 1-2, 5-7, and 9-10 are rejected under 35 U.S.C. 103 as being obvious over Guo WO2017/028301.
Regarding Claims 1-2, Guo discloses a positive electrode (cathode) for a lithium-sulfur battery comprising a positive electrode active material comprising a sulfur-carbon composite “G@MC-S”, wherein the sulfur-carbon composite comprises a porous carbonaceous material “G@MC” and sulfur (highlighted portion/2nd full paragraph of p. 4), wherein the porous carbonaceous material has a BET specific surface area of larger than 3,000 m2/g (Guo discloses a preferable BET specific surface area range of 2000 to 3600 m2/g, which overlaps the claimed range, see highlighted portion/5th full paragraph of p. 4), wherein the porous carbonaceous material has a pore size less than 3 nm and from 1 to 3 nm (Guo discloses a preferable pore size range of 0.4 to 2.0 nm which overlaps the claimed range, see highlighted portion/4th full paragraph of p. 4), and wherein the porous carbonaceous material has a pore volume larger than 2.0 cm3/g and equal to or less than 4.5 cm3/g (meeting Claim 2) (Guo discloses a preferable pore volume 1-3 cm3/g, which overlaps the claimed range, see highlighted portion/last full paragraph of p. 4). Although Guo does not specifically discuss the ratio of pores having a diameter of less than 3 nm of 95 vol% and a ratio of pores having a diameter of 1 to 3 nm of 35 vol% or more, the skilled artisan would expect the ratio of pores of Guo having a diameter between 1 nm and 3 nm to at least overlap the claimed ratios.
Guo teaches overlapping ranges for all claimed numerical values of the properties claimed in Claim 1, and 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claim 5 and 6, Guo teaches wherein the positive electrode active material comprises the sulfur-carbon composite formed through mixing of sulfur with the porous carbonaceous material and included in the positive active material in an amount of 75 wt% based on 100 wt% of the positive electrode active material (see first full paragraph of p. 8, highlighted), which meets the claimed range of 70 wt% or more.
Regarding Claim 7, Guo teaches that the positive electrode active material further comprises a binder resin (PVDF) and a conductive material (Ketjen black) (see first full paragraph of p. 8, highlighted).
Regarding Claim 9, Fig. 2 of Guo discloses wherein sulfur is positioned inside of the porous carbonaceous material and that sulfur fills less than 100% of the insides of pores and the outer surface of the porous carbonaceous material, separately and/or combined (white space is still present in the pores after sulfur is loaded therein).
Regarding Claim 10, Guo teaches that the positive electrode of Claim 1 is part of a lithium-sulfur battery also comprising a negative electrode (lithium metal), separator between the electrodes, and an electrolyte such as a cyclic ether (1,3-dioxalane) and a linear ether (1,2-dimethoxyethane, a linear diether) (see first full paragraph of p. 8, highlighted).
8. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Guo WO2017/028301, as applied to Claim 1, and further in view of Lee WO2020/105980.
Regarding Claim 3, Guo discloses the positive electrode as described in Claim 1, the rejection of which is incorporated herein in its entirety. Guo fails to specifically disclose wherein the sulfur-carbon composite has an SCP value of 0.7-0.95, as defined by the following Formula 2:[Formula 2] SCP = Sulfur content ratio (A) + Pore volume ratio of carbonaceous material (B) In Formula 2, A represents a ratio of the weight of sulfur based on the weight of the carbon-sulfur composite, and B represents a ratio of pore volume in the carbonaceous material based on the total volume (apparent volume) of the carbonaceous material. However, in the same field of endeavor of sulfur-carbon composites including sulfur in microporous carbon materials, Lee teaches that the relationship between the mass of sulfur (sulfur content, L) and the porosity of the active material (p) (porosity being understood by the skilled artisan to be equivalent to the claimed ratio of pore volume of the porous carbonaceous material to total volume of the porous carbonaceous material) is important to optimize (para 0077) and teaches a formula as follows:
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Greyscale
and that such a relationship is optimized to be above 0.45 in order to improve energy density of the battery and performance is maintained without deterioration during operation (see para 0125). Although the formula of Lee uses a factor alpha, the skilled artisan would understand that the ratio of sulfur content/loading of the porous carbonaceous material to the porosity of the porous carbonaceous material is optimized to obtain the benefit taught by Lee. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the positive electrode of Guo such that the sulfur-carbon composite has an SCP value of 0.7-0.95, as defined by the following Formula 2:[Formula 2] SCP = Sulfur content ratio (A) + Pore volume ratio of carbonaceous material (B) In Formula 2, A represents a ratio of the weight of sulfur based on the weight of the carbon-sulfur composite, and B represents a ratio of pore volume in the carbonaceous material based on the total volume (apparent volume) of the carbonaceous material because Lee teaches that this optimization will result in a clear benefit in performance.
9. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Guo WO2017/028301, as applied to Claim 1, and further in view of Sato JP2013-143297.
Regarding Claim 4, Guo discloses the positive electrode as described in Claim 1, the rejection of which is incorporated herein in its entirety. Guo fails to specifically disclose the type of porous carbonaceous material and only refers to it as “microporous carbon layers… generally known in the art” (see second full paragraph of p. 2, highlighted), and so fails to specifically disclose wherein the porous carbonaceous material comprises activated carbon in an amount of 95 wt% or more based on 100 wt% of the porous carbonaceous material. However, in the same field of endeavor of sulfur-carbon composite design for lithium sulfur batteries, Sato teaches that porous carbon useful for impregnation of sulfur into pores to form sulfur-carbon composite active material includes materials such as activated carbon, which has large pore volume, large surface area, and high electrical conductivity (see e.g. paras 0026- 0031). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use activated carbon as the porous carbonaceous material of Guo because Sato teaches that this material has large pore volume, large surface area, and high electrical conductivity. Guo discloses wherein the precursor to the porous carbonaceous material is one material (sucrose) and so the skilled artisan would understand that the porous carbonaceous material of Guo would be one material (100 wt%). Accordingly, when using the activated carbon of Sato as the porous carbonaceous material in the G@MC of Guo, the skilled artisan would find it obvious to use only activated carbon (i.e. 100 wt%) as the porous carbonaceous material of Guo modified by Sato since the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
10. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Guo WO2017/028301, as applied to Claim 1, and further in view of Sugimoto US PG Publication 2024/0304788.
Regarding Claim 8, Guo discloses the positive electrode as described in Claim 1, the rejection of which is incorporated herein in its entirety. Guo fails to specifically disclose the circularity of the porous carbonaceous material such that it is 50% or more. However, in the same field of endeavor of porous carbon composite active materials, Sugimoto discloses wherein porous carbon particles with sulfur active material deposited in the pores advantageously has an average circularity of 0.83 or more and 1 or less, with higher circularity improving uniformity of the porous carbonaceous material which reduces unevenness of the functional components’ action over time and stabilizes action of the functional component over time (paras 0017, 0053). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the positive electrode of Guo such that the porous carbonaceous material has a circularity of 50% or more because Sugimoto teaches that in a similar material, average circularity of the material is 0.83 or more and 1 or less, with higher circularity improving uniformity of the porous carbonaceous material which reduces unevenness of the functional components’ action over time and stabilizes action of the functional component over time.
Conclusion
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/LISA S PARK/Primary Examiner, Art Unit 1729