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 .
Response to Arguments
Applicant's arguments filed 28 January 2026 have been fully considered but they are not persuasive. Specifically, the interchangeability of solvents is taken to be obvious in view of the new combination of prior art cited below.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., drying at the drying temperature and time to volatize the solvent) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The prior art of record teaches drying at the claimed temperature as noted, and the claim does not positively require the drying to be a temperature which will volatize the solvent.
Further, the double patenting rejections are maintained below and are not provisional and should be addressed in the next response.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2 and 4-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,611,066 in view of Nui et al. (US Pub 2016/0190558 newly cited). The patented claims include a method for preparing a sulfur-carbon composite comprising the following steps of: (a) stirring a porous carbon material in a solvent mixture comprising a carbonate compound and a volatile solvent, and then drying; and (b) mixing the porous carbon material produced in (a) with sulfur, and then depositing the sulfur on a portion of a surface of and inside a portion of pores of the porous carbon material by subjecting the mixture to a heat melting method. While the patented claims do not necessarily require manufacturing a positive electrode by (ii) mixing the sulfur-carbon composite with a conductive material and a binder to form a slurry; (iii) coating the slurry on a current collector to form a coated current collector; and (iv) drying the coated current collector to obtain the positive electrode for the lithium-sulfur battery, the use of the carbon-sulfur composite in a lithium-sulfur cathode would have been obvious to one of ordinary skill in the art at the before the effective filing date of the claimed invention as Niu et al. teach similar methods of forming carbon-sulfur composites and the ability form the materials into cathodes by mixing the sulfur-carbon composite with a conductive material and a binder to form a slurry; coating the slurry on a current collector to form a coated current collector; and drying the coated current collector to obtain the positive electrode for the lithium-sulfur battery (paragraphs [0032-0033]).
Claims 1, 2 and 4-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,652,208 in view of Nui et al. (US Pub 2016/0190558 newly cited). The patented claims include a method for preparing a sulfur-carbon composite comprising the steps of: (a) preparing a porous carbon material; (b) mixing a carbonate compound with a volatile solvent to prepare a doping composition; (c) mixing the porous carbon material of step (a) with the doping composition of step (b), and then drying the resulting mixture to prepare a porous carbon material doped with the carbonate compound; and (d) mixing sulfur in the porous carbon material doped with the carbonate compound, and heat-treating the resulting mixture to prepare the sulfur-carbon composite; wherein the sulfur-carbon composite comprises the porous carbon material; wherein the sulfur-carbon composite is doped with the carbonate compound; wherein the carbonate compound is at least one selected from the group consisting of propylene carbonate, and butylene carbonate, and wherein a content of the carbonate compound is from 0.5 to 5.0 wt. % based on a total weight of the sulfur-carbon composite.
While the patented claims do not necessarily require manufacturing a positive electrode by (ii) mixing the sulfur-carbon composite with a conductive material and a binder to form a slurry; (iii) coating the slurry on a current collector to form a coated current collector; and (iv) drying the coated current collector to obtain the positive electrode for the lithium-sulfur battery, the use of the carbon-sulfur composite in a lithium-sulfur cathode would have been obvious to one of ordinary skill in the art at the before the effective filing date of the claimed invention as Niu et al. teach similar methods of forming carbon-sulfur composites and the ability form the materials into cathodes by mixing the sulfur-carbon composite with a conductive material and a binder to form a slurry; coating the slurry on a current collector to form a coated current collector; and drying the coated current collector to obtain the positive electrode for the lithium-sulfur battery (paragraphs [0032-0033]).
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, 2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 107768644, a copy and machine translation of which are of record) in view of Gong et al. (US Pub 2015/0133569 cited in IDS).
In regard to claim 1, Zhang et al. teach a method for manufacturing a positive electrode for a lithium-sulfur battery, comprising steps of:(i) forming a sulfur-carbon composite comprising the steps of: providing a porous carbon material (such as graphene); mixing a carbonate compound with a volatile solvent to prepare a doping composition; mixing the porous carbon material with the doping composition (see step 1, mixing carbonate, graphene, additive and organic solvent – page 2 of machine translation, Example 1-3 on page 6 of machine translation), and then drying the resulting mixture at a temperature such as 80°C (see step 4, page 7 of machine translation) to prepare a porous carbon material doped with the carbonate compound; and mixing sulfur in the porous carbon material doped with the carbonate compound, and heat-treating (such as 1000 degrees centigrade – see page 5) the resulting mixture to prepare the sulfur-carbon composite (see steps 2-4 – heat treatment, mixing and drying), followed by:
mixing the sulfur-carbon composite with a conductive material and a binder to form a slurry; coating the slurry on a current collector to form a coated current collector; and drying the coated current collector to obtain the positive electrode for the lithium-sulfur battery (see page 7 of machine translation, embodiments 1 to 3 of the sulfur doped graphite composite made into electrode for button cell by adding PP or PAN binder, Super P conductive agent and solvent, following by stirring and rolling onto copper foil).
While the prior art is not specific to the order of addition of the elements in first step such as required by steps a-c of the claims, the order of adding ingredients is taken to be an obvious modification to the prior art depending on the reactivity of the reactants, dopants and solvents used in the process (see MPEP 2144.04 Part IV Part C).
In regard to the amendment, Zhang et al. teach the volatile solvent is N-methyl pyrrolidone (i.e. NMP see page 4). However, selecting an additional or alternate solvent such as ethanol and/or THF would have been obvious to one of ordinary skill in the art as Gong et al. teach a similar method of forming a doped carbon-sulfur composite and the ability to use various solvents for the carbon material and dopant mixture including both NMP, THF, ethanol and carbonates, and further the desirability to specifically use ethanol based solvent as such are more environmentally friendly and have a lower boiling point while maintaining electrical conductivity and mechanical strength in the carbon composite (paragraphs [0031-0036]).
Therefore, it would have been obvious to one of ordinary skill in the art at the before the effective filing date of the claimed invention filed to use an ethanol-based solvent which can be dried at the claimed times and temperatures in the mixture of Zhang et al. as such is more environmentally friendly without sacrificing the properties of the carbon composite as taught by Gong et al. Further, the time and temperatures of the drying step in the prior art may be optimized through routine experimentation (See MPEP 2144.05 Part II below).
II. ROUTINE OPTIMIZATION
A. OPTIMIZATION WITHIN PRIOR ART CONDITIONS OR THROUGH ROUTINE EXPERIMENTATION
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
In regard to claim 4, Zhang et al. teach the carbonate compound may be selected from a variety of carbonates (see middle of page 4 of machine translation), while the prior art does not specify propylene carbonate and butylene carbonate, the ability to select from a variety of carbonate materials in the prior art obviates the ability to select the claimed carbonates as such represent a common economically efficient form of carbonate materials.
In regard to claims 5-6, Zhang et al. teach an amount of the carbonate compound is 5 wt. % based on a total weight of the sulfur-carbon composite (see bottom of page 4 of machine translation). 5wt% as described by the prior art is taken to be close enough to 3wt% to establish a prima facie case of obviousness for the claimed range (see MPEP 2144.05).
In regard to claim 7, Zhang et al. teach the conductive material is carbon black (Super P carbon – page 7 of machine translation).
In regard to claim 8, Zhang et al. teach the binder is at least one selected from the group consisting of polypropylene and acrylate-based copolymer binder (PP and PAN – page 7 of machine translation).
In regard to claim 9, Zhang et al. teach in step (d), when mixing the sulfur and the porous carbon material, the weight ratio of sulfur and the porous carbon material overlaps the claimed range (bottom of page 4 of machine translation – such as approximately equal parts sulfide and conductive agent).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kim et al. (US Pub 2024/0178381 newly cited) is applicant’s own work which teaches a similar carbon sulfur composite.
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 Nicholas P D'Aniello whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723