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
Applicant’s election without traverse of Invention II, drawn to an electrode structure, in the reply filed on 9 June 2026 is acknowledged.
Claims 1-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9 June 2026.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14 refers to “The method of claim 13” and should instead read “The electrode structure of claim 13”.
Claim 14 refers to “the plurality of fibers” and should instead read “the plurality of fibrillated fibers” to be consistent with claim 13.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 13-17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al. (US 20190309426 A1), hereinafter Jin.
Regarding claim 13, Jin teaches an electrode structure [0006], wherein the electrode structure comprises a membrane, in this case a film [0028], in which a plurality of fibrillated fibers formed of a compound of a transition metal, phosphorus, and sulfur form a network, in this case nanowire nanostructures [0030-0031] comprising a ternary pyrite-phase transition metal phosphochalcogenide, where the chalcogen may be S [0025]. Examiner respectfully notes that the fibers being fibrillated is considered to be a product-by-process claim. "[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). Fibrillation refers to the process of separating fibers into finer fibrils or fibers of smaller diameter. The instant application is silent as to a diameter of the final fibrillated fibers. However, other measurements are made on the order of nanometers, such as the lattice spacing of the fibers (instant pg. 29, ¶ 2), and someone of ordinary skill in the art would expect the fibers themselves to also be on the order of nanometers. It would have been obvious to someone of ordinary skill in the art that wires, which are synonymous to fibers, on a nanometer scale, as taught by Jin, would be equivalent to the end product fibrillated fibers. Therefore, the nanowire nanostructures [0030-0031] comprising a ternary pyrite-phase transition metal phosphochalcogenide, where the chalcogen may be S [0025], are considered to meet the limitation.
Regarding claim 14, Jin teaches the electrode structure of claim 13. Jin further teaches the inclusion of branched nanostructures [0033], which are considered to be equivalent to the plurality of fibers formed of a compound of a transition metal, phosphorus, and sulfur comprising a plurality of stems, and a plurality of branches branched off from the plurality of stems. Jin further teaches the membrane of the electrode structure having a sponge structure, in this case a porous pumice-like structure [0032]. Jin is silent as to the membrane being flexible. However, Jin teaches a membrane that is substantially identical to the claimed membrane. Therefore, one of ordinary skill in the art would expect the membrane of Jin to also be flexible. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Further, "products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 15, Jin teaches an electrode structure [0006], wherein the electrode structure comprises a compound of a transition metal, sulfur, and phosphorus, in this case a ternary pyrite-phase transition metal phosphochalcogenide, where the chalcogen may be S [0025].
Regarding claim 16, Jin teaches the electrode structure of claim 15, wherein the transition metal of the electrode structure comprises at least one of copper, magnesium, manganese, cobalt, iron, nickel, titanium, zinc, aluminum, or tin, in this case manganese, cobalt, iron, and nickel [0025].
Regarding claim 17, Jin teaches the electrode structure of claim 15, wherein the electrode structure comprises a membrane, in this case a film [0028], in which a plurality of fibers which are fibrillated by a plurality of stems and a plurality of branches branched off from the plurality of stems form a network, in this case nanostructures [0030] comprising nanowires [0031] and branched nanostructures [0033]. Examiner respectfully notes that the fibers being fibrillated is considered to be a product-by-process claim. "[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). Fibrillation refers to the process of separating fibers into finer fibrils or fibers of smaller diameter. The instant application is silent as to a diameter of the final fibrillated fibers. However, other measurements are made on the order of nanometers, such as the lattice spacing of the fibers (instant pg. 29, ¶ 2), and someone of ordinary skill in the art would expect the fibers themselves to also be on the order of nanometers. It would have been obvious to someone of ordinary skill in the art that wires, which are synonymous to fibers, on a nanometer scale, as taught by Jin, would be equivalent to the end product fibrillated fibers. Therefore, the nanostructures [0030] comprising nanowires [0031] and branched nanostructures [0033], are considered to meet the limitation.
Regarding claim 19, Jin teaches the electrode structure of claim 15. Jin further teaches the membrane of the electrode structure having a sponge structure, in this case a porous pumice-like structure [0032]. Jin is silent as to the membrane being flexible. However, Jin teaches a membrane that is substantially identical to the claimed membrane. Therefore, one of ordinary skill in the art would expect the membrane of Jin to also be flexible. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Further, "products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 15-16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (US 20180159130 A1), hereinafter Zhang.
Regarding claim 15, Zhang teaches an electrode structure [0008], wherein the electrode structure comprises a compound of a transition metal, sulfur, and phosphorus (formula (I)) [0005].
Regarding claim 16, Zhang teaches the electrode structure of claim 15, wherein the transition metal of the electrode structure comprises at least one of copper, magnesium, manganese, cobalt, iron, nickel, titanium, zinc, aluminum, or tin, in this case copper, magnesium, manganese, cobalt, iron, or nickel [0005].
Regarding claim 20, Zhang teaches a reversible (abstract) lithium battery [0062] comprising a positive electrode including the electrode structure of claim 15 and a negative electrode on the positive electrode [0015] and an electrolyte between the positive electrode and the negative electrode [0065].
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang.
Zhang teaches the electrode structure of claim 15, wherein the transition metal of the electrode structure comprises copper [0005]. Zhang is silent as to the electrode structure being specifically represented by the formula CuPxSy, wherein x+y=1, 0.3 ≤x≤0.7, and 0.3 ≤y≤0.7. However, Zhang teaches the electrode structure being represented by the formula MxPySz, wherein M may be Cu [0005], x is in the range of 1-10, y is in the range of 1-15, and z is in the range of 1-30 [0048]. Any combination of variables that lie within the parameters of 0.3 ≤ y/x ≤0.7, 0.3 ≤ z/x ≤0.7, and y+z=x would produce a formula that simplifies down to the claimed formula. For example, Cu2PS and Cu3PS2 would respectively simplify down to CuP0.5S0.5 and CuP1/3S2/3, which would lie within the claimed ranges. Therefore, it would have been obvious to someone of ordinary skill in the art to select an electrode structure represented by the claimed formula. 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).
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 13, 15-16, and 18-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 7 of copending Application No. 18/472,629 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 13 is met by the combination of claims 1 and 2 of 18/472,629. Examiner acknowledges that 18/472,629 does not require the fibers to be formed of the specified compound. However, it would have been obvious for one of ordinary skill in the art to combine the limitation of claim 1 requiring an “electrode structure formed of a compound containing copper (Cu) as a transition metal, sulfur (S) as a chalcogen element, and phosphorus (P)” with the limitation of claim 2 requiring “the electrode structure compris[ing] a membrane in which a plurality of fibrillated fibers form a network” so that the network is formed of a plurality of fibrillated fibers that are formed of a transition metal, sulfur, and phosphorus.
Instant claims 15 and 16 are met by claim 1 of 18/472,629.
Instant claim 18 is met by claim 7 of 18/472,629.
Instant claim 19 is met by claim 2 of 18/472,629, with the flexible fiber network of 18/472,629 being considered equivalent to the claimed flexible sponge structure of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUSTIN KENWOOD VAN KIRK whose telephone number is (703)756-4717. The examiner can normally be reached Monday-Friday 9am-5pm EST.
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/DUSTIN VAN KIRK/Examiner, Art Unit 1722
/ANCA EOFF/Primary Examiner, Art Unit 1722
