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Claims 8-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups II-X, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 26 March 2026.
Applicant’s election without traverse of group I, claims 1 and 3-7 in the reply filed on 26 March 2026 is acknowledged.
Information Disclosure Statement
The Information Disclosure Statements filed 8 September 2023, 19 December 2025, and 26 March 2026 have been considered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitations are:
Claim 1, lines 4-5, “measured by means of a laser diffraction/scattering particle-size distribution analyzer”.
Claim 1, line 9, “measured by means of a scanning electron microscope”.
Claim 4, lines 4-5, “measuring by means of a Coulter counter-type particle-size distribution analyzer”.
Because these claim limitations are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claims 1 and 3-7 are 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 1, line 3, recites "a particle size". It is unclear if this is referring to the particle size of the secondary particle or the primary particle. This limitation is interpreted as requiring the particle size of the bismuth sulfide particle (the agglomerated secondary particle) per [0017] of the Specification of the present application.
Claim 4, lines 3-4, refer to “a cumulative…particle size”. It is unclear if this is referring to the particle size of the secondary particle or the primary particle. This limitation is interpreted as requiring the particle size of the bismuth sulfide particle (the agglomerated secondary particle) per [0014] of the Specification of the present application.
Claim 7, line 2, recites "a bismuth sulfide particle". It is unclear if the bismuth sulfide particle of claim 7 is the bismuth sulfide particle of claim 1. This limitation is interpreted as requiring a shape of the bismuth sulfide particle of claim 1.
Claim 7, lines 3-4, recite "a shape of assembling one ends of 10 or more needle-like components". It is unclear what is meant by this. This limitation is interpreted as requiring a shape having 10 or more needle-like components.
Claims 3 and 5-6 are indefinite as they depend from an indefinite base and fail to cure the deficiencies of the base claim.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1, 3-4, and 7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as being obvious over Yin (CN 103480395).
Regarding Claim 1, Yin discloses a core-shell structured bismuth sulfide-bismuth oxide composite microsphere [0002]. Figure 1 of Yin is substantially similar to Figure 1 of the present application and shows a hedgehog shaped bismuth sulfide particle (an agglomerated secondary particle) comprising an agglomeration of needle-like primary particles forming a spherical particle with a diameter of approximately 1 µm (Figure 1, [0024]). A particle diameter is necessarily substantially similar to a cumulative 50% particle size, such that a particle diameter of approximately 1 µm for the bismuth sulfide particle of Yin, observed by SEM, in the alternative, meets the limitation of a cumulative 50% particle size (D1) from 0.2 µm or more to 10 µm or less.
Although there is no disclosure that the test method is conformity with volume-based cumulative particle-size distribution measured by means of a laser diffraction/scattering particle-size distribution analyzer, given that Yin discloses particle size as is presently claimed and absent evidence of criticality in how particle size is measured, it is the Examiner's position that the particle size disclosed by Yin meets the claim limitation.
Additionally, Yin further discloses a method for producing a bismuth sulfide particle comprising heating bismuth nitrate pentahydrate (a bismuth compound) and a water-soluble sulfide (a sulfur compound) at 60-160°C (60-160°C overlaps the present application range of 30-100°C such that the range taught by Yin obviates the claimed range; see MPEP 2144.05 (I)) in the presence of lysine and ethylene glycol (a protective agent) in solution (a dispersion medium), such that the method for producing a bismuth sulfide particle of Yin is substantially similar to that of the present application (see claim 17 of the present application).
The bismuth sulfide particles of Yin are produced by a substantially similar process to that of the present application, such that the characteristics of the bismuth sulfide particles of Yin are substantially similar to that of the claim, and therefore, the bismuth sulfide particles of Yin meet the limitation wherein a cumulative 50% particle size (D1) in volume-based cumulative particle-size distribution measured by means of a laser diffraction/scattering particle-size distribution analyzer is a range from 0.2 µm or more to 10 µm or less and a ratio of the cumulative 50% particle size (D1) in volume-based cumulative particle-size distribution to a cumulative 50% particle diameter (D2) in number-based cumulative particle-size distribution of the primary particles measured by means of a scanning electron microscope, namely the ratio represented as "D1/D2" is a range from more than 1 to 6 or less.
One basis of rejection for claim 1 was made under 35 U.S.C. 102/103 on the basis that when the
reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§2112 - 2112.02. In the current case, Yin discloses all of the limitations of the claim except 1) the cumulative 50% particle size in volume-based cumulative particle-size distribution measured by means of a laser diffraction/scattering particle-size distribution analyzer, and 2) the cumulative 50% particle diameter in number-based cumulative particle-size distribution measured by means of a scanning electron microscope, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention.
Regarding Claim 3, the bismuth sulfide particles of Yin are produced by a substantially similar process to that of the present application, such that the characteristics of the bismuth sulfide particles of Yin are substantially similar to that of the claim, and therefore, the bismuth sulfide particles of Yin meet the limitation wherein the cumulative 50% particle diameter (D2) is a range from 0.2 µm or more to 3 µm or less.
Regarding Claim 4, the bismuth sulfide particles of Yin are produced by a substantially similar process to that of the present application, such that the characteristics of the bismuth sulfide particles of Yin are substantially similar to that of the claim, and therefore, the bismuth sulfide particles of Yin meet the limitation wherein a ratio (D3) of a difference between a cumulative 90% particle size (D90) and a cumulative 10% particle size (D10) to a cumulative 50% particle size (D50) in number-based cumulative particle-size distribution measured by means of a Coulter counter-type particle-size distribution analyzer, namely the ratio calculated by "D3 = (D90 - D10)/D50" is 3.0 or less.
Regarding Claim 7, Yin discloses a shape of the bismuth sulfide particle observed with a scanning electron microscope is a hedgehog shape ([0024], Fig. 1). The hedgehog-shaped bismuth sulfide of Yin appears to have a shape of 10 or more needle-like components and a shape of having two or more protrusions of plate-like and needle-like pieces on a surface of a substantially spherical body (see Fig. 1 of Yin).
Claims 1, 3-4, and 7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as being obvious over Zhang (“Facile synthesis of dandelion-like Bi2S3 microspheres and their electrochemical properties for lithium-ion batteries”).
An alternative rejection of claim 1 is provided in case the process of Yin does not necessarily produce a substantially similar bismuth sulfide particle to the present claim.
Regarding Claim 1, Zhang discloses a dandelion-like bismuth sulfide (Bi2S3) microsphere (bismuth sulfide microsphere meets the limitation of a bismuth sulfide particle) with a diameter of about 2-4 µm composed of tens of cuboid nanorods with a length of 1-1.5 µm (pg. 101, Col. 1, par. 4-Col. 2, par. 1; Fig. 1(a)), such that the bismuth sulfide particle of Zhang is an agglomerated secondary particle in which cuboid nanorod primary particles are agglomerated (see Fig. 1). Zhang further discloses the dandelion-like bismuth sulfide microspheres are uniform (pg. 101, Col. 1, par. 4), meaning the microspheres are consistent in size and shape within a sample, such that the bismuth sulfide microsphere diameter of Zhang is necessarily substantially similar to a cumulative 50% particle size (D1) in volume-based cumulative particle-size distribution, such that a microsphere diameter of 2-4 µm for the bismuth sulfide particle of Zhang, observed by SEM, in the alternative, meets the limitation of a cumulative 50% particle size (D1) from 0.2 µm or more to 10 µm or less.
Although there is no disclosure that the test method is conformity with volume-based cumulative particle-size distribution measured by means of a laser diffraction/scattering particle-size distribution analyzer, given that Zhang discloses particle size as is presently claimed and absent evidence of criticality in how particle size is measured, it is the Examiner's position that the particle size disclosed by Zhang meets the claim limitation.
Additionally, the particle diameter (meaning the longest straight portion; see [0110] of the Specification of the present application) of the primary particles of Zhang is necessarily substantially similar to a cumulative 50% particle size (D2) in number-based cumulative particle-size distribution.
Although there is no disclosure that the test method is conformity with number-based cumulative particle-size distribution measured by means of a scanning electron microscope, given that Zhang discloses cuboid nanorod length (aka primary particle diameter) as is presently claimed and absent evidence of criticality in how particle diameter is measured, it is the Examiner's position that the particle diameter disclosed by Zhang meets the claim limitation.
Therefore, regarding the ratio D1/D2, Zhang discloses a secondary particle size of 2-4 µm (aka D1) and a primary particle size of 1-1.5 µm (aka D2) (pg. 101, Col. 1, par. 4-Col. 2, par. 1), such that the ratio D1/D2 is 1.3 to 4 (1.3 to 4 meets the limitation of more than 1 to 6 or less).
One basis of rejection for claim 1 was made under 35 U.S.C. 102/103 on the basis that when the
reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§2112 - 2112.02. In the current case, Yin discloses all of the limitations of the claim except 1) the cumulative 50% particle size in volume-based cumulative particle-size distribution measured by means of a laser diffraction/scattering particle-size distribution analyzer, and 2) the cumulative 50% particle diameter in number-based cumulative particle-size distribution measured by means of a scanning electron microscope, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention.
Regarding Claim 3, Zhang discloses uniform dandelion-like bismuth sulfide (Bi2S3) microsphere composed of tens of cuboid nanorods with a length of 1-1.5 µm (pg. 101, Col. 1, par. 4-Col. 2, par. 1; Fig. 1(a)), such that the particle diameter (meaning the longest straight portion; see [0110] of the Specification of the present application) of the primary particles of Zhang is necessarily substantially similar to a cumulative 50% particle size (D2) in number-based cumulative particle-size distribution, such that a length of 1-1.5 µm for the cuboid nanorods of Zhang, observed by SEM, in the alternative, meets the limitation of a cumulative 50% particle diameter (D2) from 0.2 µm or more to 3 µm or less.
Regarding Claim 4, Zhang further discloses the dandelion-like bismuth sulfide microspheres are uniform (pg. 101, Col. 1, par. 4), such that a difference between a cumulative 90% particle size (D90) and a cumulative 10% particle size (D10) is necessarily close to zero, such that the ratio D3 calculated by D3 = (D90 – D10)/D50 is necessarily close to zero and therefore meets the limitation, or in the alternative, is close to the claimed range of 3.0 or less.
Although there is no disclosure that the test method is conformity with Coulter counter-type particle-size distribution analyzer, given that Zhang discloses particle size is presently claimed and absent evidence of criticality in how particle size is measured, it is the Examiner's position that the particle size disclosed by Zhang meets the claim limitation.
Regarding Claim 7, Zhang discloses a dandelion-like bismuth sulfide (Bi2S3) microsphere (microsphere meets the broad limitation of substantially spherical body) composed of tens of cuboid nanorods (cuboid nanorods meet the broad limitation of needle-like components and/or plate-like pieces; tens of cuboid nanorods meets the limitation of 10 or more needle-like components and/or having two or more protrusions of plate-like pieces and/or needle-like pieces; pg. 101, Col. 1, par. 4-Col. 2, par. 1; Fig. 1(a)).
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.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (“Facile synthesis of dandelion-like Bi2S3 microspheres and their electrochemical properties for lithium-ion batteries”) in view of Huang (“When Al-Doped Cobalt Sulfide Nanosheets Meet Nickel Nanotube Arrays: A Highly Efficient and Stable Cathode for Asymmetric Supercapacitors”).
Regarding Claim 5, Zhang teaches the elements as described above with regards to claim 1.
Zhang discloses the electrochemical performance of Bi2S3 was investigated (pg. 100, Col. 2, par. 2).
Zhang is silent to the bismuth sulfide particle comprising at least one element selected from the group consisting of Al, Ce, La, Fe, and Y and represented as "X", wherein a ratio of the mole number of an atom of the element "X" to the mole number of an atom of bismuth, namely the ratio represented as a "X/Bi" molar ratio is a range from more than 0 to 0.15 or less.
Huang discloses the electrochemical activity of cobalt sulfide could be significantly improved by Al doping (Abstract). Huang further discloses electric conductivity of cobalt sulfide could be improved when doped with an appropriate amount of Al (pg. 3035, Col. 1, par. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhang to incorporate the teachings of Huang wherein the bismuth sulfide particle comprises Al, because the electrochemical activity of a metal sulfide could be significantly improved by Al doping, as recognized by Huang (Abstract), and Zhang recognizes investigating the bismuth sulfide for electrochemical performance (pg. 100, Col. 2, par. 2).
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhang to incorporate the teachings of Huang wherein a ratio of the mole number of an atom of Al to the mole number of an atom of bismuth, namely the ratio represented as a "Al/Bi" molar ratio is a range from more than 0 to 0.15 or less, because electric conductivity of a metal sulfide could be improved when doped with an appropriate amount of Al, as recognized by Huang (pg. 3035, Col. 1, par. 3). As the electrical conductivity is a variable that can be modified, among others, by adjusting the amount of Al, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of Al in bismuth sulfide particles to obtain the desired electric conductivity, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 6, Huang discloses the electrochemical activity of cobalt sulfide could be significantly improved by Al doping (Abstract). Huang further discloses electric conductivity of cobalt sulfide could be improved when doped with an appropriate amount of Al (pg. 3035, Col. 1, par. 3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SLONE ELZABETH SIMKINS whose telephone number is (571)272-3214. The examiner can normally be reached Monday - Friday 8:30AM-4:30PM.
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/S.E.S./Examiner, Art Unit 1735
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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