DETAILED ACTION
Claim(s) 1-3 were rejected in Office Action mailed on 04/22/2026.
Applicant filed a response, amended claim(s) 1-2, and added claim(s) 5-13 on 07/22/2026.
Claim(s) 1-13 are pending, and claim 4 is withdrawn.
Claim(s) 1-3 and 5-13 are rejected.
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 .
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.
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 1-3, 5-7 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bozheyev et al., Properties of copper and molybdenum sulfide powders produced by self-propagating high-temperature synthesis, Advanced Materials Research, 2013 (Bozheyev), in view of Wright et al., Controlling the surface hydroxyl concentration by thermal treatment of layered double hydroxides, Inorganic Chem., 2017 (Wright).
Regarding claims 1, 3, 6-7 and 9-13, Bozheyev teaches molybdenum sulfide (i.e., MoS2) nanopowders was prepared by self-propagating high-temperature synthesis in argon; the average particle size of molybdenum disulfide was about 80 nm (Bozheyev, Abstract).
Bozheyev further teaches molybdenum disulfide is used for the production of non-aqueous lithium batteries, catalytic hydrodesulfurization material and anti-wear products (Bozheyev, page 1, 3rd paragraph of Introduction).
Bozheyev does not require adding functional groups to surface of the molybdenum disulfide.
Further regarding claims 1, 3, 7 and 9-13, Bozheyev does not explicitly disclose having number of functional groups per unit area on the surface of the molybdenum disulfide of 100 per nm2 or less, or 80 per nm2 or less, or wherein the functional groups are hydroxy groups.
With respect to the difference, Wright teaches controlling surface hydroxyl concentration by thermal treatment (Wright, Title, Abstract). Wright specifically teaches the hydroxyl number refers to the concentration of surface hydroxyls, given as the number of OH groups per square nanometer (OH nm-2); as the treatment temperature is increased, the degree of surface hydroxylation falls following an exponential decay pattern (Wright, page 6, left column, 2nd paragraph); material treated at 300˚C has a hydroxyl number of 3.7 OH nm-2 (Wright, page 6, Table 2).
As Wright expressly teaches, these materials (i.e., treated at elevated temperature and with reduced number of OH groups per square nanometer) can be used for air and moisture sensitive applications (Wright, page 7848, Conclustion).
Wright is analogous art as Wright is drawn to controlling surface hydroxyl concentration by thermal treatment.
In light of the motivation of controlling surface hydroxyl concentration by thermal treatment, as taught by Wright, it therefore would have been obvious to a person of ordinary skill in the art to use thermal treatment to reduce the surface hydroxyl concentration on the molybdenum disulfide of Bozheyev, and produce a molybdenum disulfide with a hydroxyl number of 3.7 OH nm-2, in order for the molybdenum disulfide to be used for air and moisture sensitive applications.
Further regarding claim 10, although Bozheyev in view of Wright does not explicitly teach produced from a molybdenum trioxide precursor having a β crystal structure, as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Bozheyev in view of Wright meets the requirements of the claimed product, Bozheyev in view of Wright clearly meets the requirements of the present claim.
Regarding claims 2 and 11, as applied to claim 1, the claims further limit when X is the Group 14 element in the general formula MoXa, which is an optional embodiment of claim 1 and therefore not required. As such, claim 2 is rejected based on identical/substantially identical reasons as claim 1.
Regarding claims 5 and 12, as applied to claim 1, the claims further limit when X is the Group 15 element in the general formula MoXa, which is an optional embodiment of claim 1 and therefore not required. As such, claim 5 is rejected based on identical/substantially identical reasons as claim 1.
Claim(s) 1-3 and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yi et al., The synthesis of MoS2 particles with different morphologies for tribological applications, Tribology International, 2017 (Yi) in view of Wright.
Regarding claim 1, 3, and 6-9, Yi teaches molybdenum disulfide (MoS2) particles as lubricating additives of the paraffin, nanosheets MoS2 presented more excellent friction and wear reduction (Yi, Abstract);
the nanosheets MoS2 are composed of ultrathin nanosheets wit size of about 300 nm in length (Yi, page 288, left column, 1st paragraph).
Further regarding claims 1, 3 and 7-9, Yi does not explicitly disclose having number of functional groups per unit area on the surface of the molybdenum disulfide of 100 per nm2 or less, or 80 per nm2 or less, or wherein the functional groups are hydroxy groups.
With respect to the difference, Wright teaches controlling surface hydroxyl concentration by thermal treatment (Wright, Title, Abstract). Wright specifically teaches the hydroxyl number refers to the concentration of surface hydroxyls, given as the number of OH groups per square nanometer (OH nm-2); as the treatment temperature is increased, the degree of surface hydroxylation falls following an exponential decay pattern (Wright, page 6, left column, 2nd paragraph); material treated at 300˚C has a hydroxyl number of 3.7 OH nm-2 (Wright, page 6, Table 2).
As Wright expressly teaches, these materials (i.e., treated at elevated temperature and with reduced number of OH groups per square nanometer) can be used for air and moisture sensitive applications (Wright, page 7848, Conclustion).
Wright is analogous art as Wright is drawn to controlling surface hydroxyl concentration by thermal treatment.
In light of the motivation of controlling surface hydroxyl concentration by thermal treatment, as taught by Wright, it therefore would have been obvious to a person of ordinary skill in the art to use thermal treatment to reduce the surface hydroxyl concentration on the molybdenum disulfide of Yi, and produce a molybdenum disulfide with a hydroxyl number of 3.7 OH nm-2, in order for the molybdenum disulfide to be used for air and moisture sensitive applications.
Further regarding claim 10, although Li in view of Wright does not explicitly teach produced from a molybdenum trioxide precursor having a β crystal structure, as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Li in view of Wright meets the requirements of the claimed product, Li in view of Wright clearly meets the requirements of the present claim.
Regarding claims 2 and 11, as applied to claim 1, the claims further limit when X is the Group 14 element in the general formula MoXa, which is an optional embodiment of claim 1 and therefore not required. As such, claim 2 is rejected based on identical/substantially identical reasons as claim 1.
Regarding claims 5 and 12, as applied to claim 1, the claims further limit when X is the Group 15 element in the general formula MoXa, which is an optional embodiment of claim 1 and therefore not required. As such, claim 5 is rejected based on identical/substantially identical reasons as claim 1.
Response to Arguments
Applicant primarily argues:
“However, Wright only experimented on two examples of layered double hydroxides.
The Office has not shown that the experiment performed in Wright will have the same effect if performed on the molybdenum precursors of the present application or if used on the final molybdenum compound recited in claim 1. Instead, the rejection appears to take the teachings of Wright to apply very generally, wherein heating any compound will result in a reduction of the surface hydroxyls.
In Wright, the reduction of OH groups is accompanied by structural change and dehydroxylation of LDHs. Thus the teaching of Wright cannot be suitable applied to the reduction of surface OH groups on MoS2 as would be suggested by the combination of Wright and Bozheyev. When MoS2 is heated under atmospheric conditions, it tends to change into oxides or oxysulfides such as MoOx or MoOxSy, and is unlikely to remain as MoS2. Such MoOx species actually tend to form OH groups under atmospheric conditions, thus the amount of surface OH groups would rather increase over time, rather than decrease with heat application as suggested by Wright.”
Remarks, p. 6
The Examiner respectfully traverses as follows:
Bozheyev and Wright are drawn to molybdenum sulfide powder synthesis and controlling surface hydroxyl concentration on thermal treatment in inorganic compound, respectively. Wright provides proper motivation to combine, namely materials (i.e., treated at elevated temperatures and with reduced number of OH groups per square nanometer) can be used for air and moisture applications. See page 4 set forth above. Therefore, it is the Examiner’s position that there would be a reasonable expectation of success by combining Bozheyev and Wright.
Further, it is noted that it is well settled that obviousness does not require absolute predictability of success; all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). See MPEP 2143E.
Applicant further argues:
“Additionally, Wright's treatment at 250-450°C is directed to controlling the surface OH concentration of LDHs. However, the molybdenum compound as recited in claim 1 is formed using calcination at 700°C or higher. Therefore, the thermal treatment conditions are materially different than in Wright and produce a materially different end product. In view of this, it is respectfully submitted that the Office has not shown that heating the MoS2 of Bozheyev to a temperature of 250°-450°C as suggested by Wright would in fact reduce surface hydroxyls of MoS2 of Bozheyev at all, let alone without adversely affecting other desirable properties of the MoXa compound, and without materially changing the structure of the MoS2.”
Remarks, p. 6-7
The Examiner respectfully traverses as follows:
Wright is only used as teaching reference in order to teach controlling surface hydroxy concentration by thermal treatment. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference Wright. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Furthermore, in view of Wright’s teaching, it would have been obvious to a person of ordinary skill in the art choose appropriate heat temperature to achieve desired surface hydroxy concentration.
Applicant further argues:
“Rather, to arrive at the claimed invention with the teachings of Bozheyev and Wright, a secondary heating step would need to be involved, i.e., the MoS2 of Bozheyev would need to be subjected to a heating step after it was already produced. One advantage of the claimed compound, however, is that it achieves low functional groups without the additional heating step and through the production conditions themselves, including for example, particle size, calcination temperature, and crystallinity of the Mo precursor. This is not contemplated by the cited references, and is not disclosed by Bozheyev and Wright, even when combined.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
The present claims are drawn to product claims. In addition, the heating steps used to prepare the molybdenum compound are not required in the present claims.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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 KELING ZHANG whose telephone number is (571)272-8043. The examiner can normally be reached Monday - Friday: 9:00am-5:00pm EST.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
