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
Claim 30 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II drawn a sulfur based cathode, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/09/2026.
Applicant’s election without traverse of Group I drawn to claims 1-15 and 26-29 and a sulfur based electrode in the reply filed on 07/09/2026 is acknowledged.
Claim Objections
Claim 11 is objected to because of the following informalities: the claim limitation of “PVDF, PEO, PTFE, and LA133” are abbreviations. Please indicate in the claim what the abbreviation stands for at least for the first instance it is presented. Appropriate correction is required.
Claim 29 recites “from about 0.2 mg cm-2” it is unclear why the word “from” is present since the limitation is not a range. Further clarification and/or 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.
Claims 12-15 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 12 recites “ one more conductivity enhancing agents” which is unclear because it is unclear if the limitation should be “one or more” since the claim is dependent on claim 1 and no other conductivity enhancing agents are recited in claim 1. Further clarification and/or appropriate correction is required.
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.
Claim(s) 1, 2, and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (US 20190372148 A1) in view of Kim (US 20220166108 A1).
Regarding claims 1, 2, and 11, He discloses a sulfur (S) based electrode ([0058][0088][0125]-[0128]) for an energy storage device (see Fig. 1 anode and/or cathode can have protective layer which is the composite [0055][0059][0088]) having a film of a composite of boron nitride ([0041][0029][0030]) and that the boron nitride can be provided in the form of nanotubes ([0074]) and at least one polymeric binder ([0033]-[0036][0029][0030]).
He discloses first or second inorganic material can be boron nitride and also can be form of nanotubes ([0074][0041]) and discloses that the first and second inorganic material and also that the protective layer which comprises these materials are heat resistant.
Kim discloses that boron nitride nanotubes provide excellent thermal stability, mechanical strength, and reduced weight when used in combination with a polymeric binder ([0002]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the first and/or second inorganic material by using boron nitride nanotube preferably over the other types of inorganic materials listed in the protective layer of He because Kim discloses that boron nitride nanotubes provide excellent thermal stability, mechanical strength, and reduced weight when used in combination with a polymeric binder.
It is noted that Applicant’s specification (please see USPGPub of instant application for mapping US 20240186513 A1) indicates that the porous mesh composite intimately contacting the S electrode is formed by “casting a solvent-based slurry of the BNNTs and binder onto the electrode surface and evaporating the solvent to form the composite BNNT/binder porous network/deposit. Thus in some embodiments the network/deposit is a solvent cast network/mesh which has an excellent interfacial contact between the components with gaps/spaces between the component at the nano level only.” See para [0068].
He discloses that the protective film is formed by dispersion or dissolution of particles of inorganic species and a lithium ion-conducting polymer in a solvent to form a solution or suspension, followed by casting or coating into a preferably film or sheet form, and solvent removal ([0078][0120]). Since the protective film of He is formed in substantially same method as disclosed by the instant specification the protective film of He will also have the same “porous mesh” structure. In addition He discloses the same materials used to form the porous network namely BNNT (see modification above) and a polymeric binder which can comprise PVDF, PEO, (see [0072]).
With regards to the property of “wherein the film of the composite intimately contacts at least one surface of the S electrode as a porous network which is selectively permeable to transport metal ions and electrolyte used in the energy storage device but impermeable to polysulfides” modified He discloses the same structure and the same method of forming the electrode as set forth above and therefore will also have the above property.
Regarding claim 8, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses that volume of the binder in the protective layer can be in an amount of 5-20% [0037].
He does not disclose wherein the film of composite comprises the polymeric binder at a concentration of about 15 wt% or less of the composite weight.
It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding claim 9, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses wherein the film of composite is physically and/or chemically bonded to the surface of the electrode ([0061][0063]).
Regarding claim 10, modified He discloses all of the claim limitations as set forth above.
It is noted that Applicant’s specification (please see USPGPub of instant application for mapping US 20240186513 A1) indicates that the porous mesh composite intimately contacting the S electrode is formed by “casting a solvent-based slurry of the BNNTs and binder onto the electrode surface and evaporating the solvent to form the composite BNNT/binder porous network/deposit. Thus in some embodiments the network/deposit is a solvent cast network/mesh which has an excellent interfacial contact between the components with gaps/spaces between the component at the nano level only.” See para [0068].
He discloses that the protective film is formed by dispersion or dissolution of particles of inorganic species and a lithium ion-conducting polymer in a solvent to form a solution or suspension, followed by casting or coating into a preferably film or sheet form, and solvent removal ([0078][0120]). Since the protective film of He is formed in substantially same method as disclosed by the instant specification the protective film of He will also have the same “porous mesh” structure. In addition He discloses the same materials used to form the porous network namely BNNT (see modification above) and a polymeric binder which can comprise PVDF, PEO, (see [0072]).
With regards to the property of “wherein the film of composite has tunnels, pathways, or channels therethrough dimensioned to allow selective passage of the transport metal ions through the porous network while reversibly trapping polysulfide in the porous network” since this method of formation of the mesh and the material of the mesh is substantially the same as noted in above rejection of claim 1.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 12, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses that the electrode comprises conductivity agents (graphene [0126][0127]).
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (US 20190372148 A1) in view of Kim (US 20220166108 A1) as applied to claims 1, 2, and 8-12 above and in further view of Ikeda (US 20110189546 A1).
Regarding claims 3 and 4, modified He discloses all of the claim limitations as set forth above.
However He does not disclose:
wherein at least a portion of the polymer binder is present in the composite as solid particulates which fix or adhere strands of BNNTs in the composite together to form the porous network
wherein strands of BNNTs in the film of composite are not completely conformally coated with the polymeric binder
Ikeda discloses a method of forming a protective layer on an electrode layer wherein the protective layer is a mixture of thermally conductive filler and polymeric binder, the binder can be provided in powdered form and heated to adhere binder particles to filler ([0078]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the formation of the protective layer of modified He by providing the polymeric binder in powder form as disclosed by Ikeda because Ikeda discloses that this an appropriate method for forming a protective layer on an electrode layer which comprises a mixture of thermally conductive filler and polymeric binder.
Since the method of Ikeda is heated enough to fix insulating filler the following structure “wherein at least a portion of the polymer binder is present in the composite as solid particulates which fix or adhere strands of BNNTs in the composite together to form the porous network” is present in modified He.
Claim(s) 5, 6, and 26-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (US 20190372148 A1) in view of Kim (US 20220166108 A1) as applied to claims 1, 2, and 8-12 above and in further view of Yun (US 20200058942 A1).
Regarding claims 5, 26, and 27, modified He discloses all of the claim limitations as set forth above.
However, He does not disclose:
wherein the film of composite has an average thickness of from about 0.9 microns to about 5 microns (claim 5)
wherein the film of composite has an average thickness of from about 1.5 microns to about 3.5 microns (claim 26)
wherein the film of composite has an average thickness of about 2.5 microns (claim 27)
He discloses that the composite thickness can be in the range of 10 nm to 100 microns ([0024][0026]).
Yun discloses that thermally conductive particles in a protective layer should be optimized for limiting dendrite growth due to heat distribution [0052] and the thermally conductive particles can comprise boron nitride ([0023]) and the thickness of the protective layer should have a range of approximately 1 to 5 microns ([0055]) to optimize inhibiting lithium dendrite growth and also not result in battery deterioration.
It would have been obvious to one of ordinary skill in the art at the time of the filing to modify the thickness of the protective layer of modified He to be within the claimed range because He discloses an overlapping range and because Yun discloses that having the claimed range will be lead to an optimally inhibiting lithium dendrite growth and also not result in battery deterioration.
Regarding claims 6, 28, and 29, modified He discloses all of the claim limitation as set forth above.
He discloses that the binder amount is preferably in the range of 1%-80% volume ([0037]) and therefore the remainder 99%-20% volume is the first or second inorganic particles.
However, He does not disclose the following:
wherein the film of composite has an areal density or BNNT loading of from about 0.05 mg cm-2 to about 3.5 mg cm-2 (claim 6)
wherein the film of composite has an areal density or BNNT loading of from about 0.05 to about 0.5 mg cm-2 (claim 28)
wherein the film of composite has an areal density or BNNT loading of from about 0.2 mg cm-2 (claim 29)
Yun discloses that the amount of thermally conductive particles in a protective layer should be optimized for limiting dendrite growth due to heat distribution [0052] and the amount contained is related to improving battery life [0101].
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the amount of loading of the thermally conductive BNNT in the protective layer of He to have the above claimed areal density because Yun discloses that the amount of loading can be optimized for limiting dendrite growth due to heat improving battery life.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (US 20190372148 A1) in view of Kim (US 20220166108 A1) as applied to claims 1, 2, and 8-12 above and in further view of Yang (US 20190123377 A1).
Regarding claim 7, modified He discloses all of the claim limitations as set forth above.
However, He does not disclose wherein the S in the electrode is present at a loading of about 1 mg cm-2 to about 8 mg cm-2 but does disclose that the sulfur is on a porous graphene structure ([0126][0127], graphene is a conductivity enhancing agent).
Yang discloses that the sulfur loading on a carbon structure can be in the range of 1 mg cm-2 to about 7 mg cm-2.
It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (US 20190372148 A1) in view of Kim (US 20220166108 A1) as applied to claims 1, 2, and 8-12 above and in further view of Sun (US 20240313194 A1).
Regarding claim 13, modified He discloses all of the claim limitations as set forth above.
However, He does not disclose wherein conductivity enhancing agent is one or more graphene present in an amount of from about 0.2 mg cm-2 to about 0.6 mg cm-2.
Sun discloses that the amount of carbon containing network such as a graphene network should be included in a weight between 20-60 parts of weight to balance electrical conductivity and energy density ([0069]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the amount of graphene present in the S-graphene cathode of modified He to be within the claimed range because one would optimize the balance electrical conductivity and energy density.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (US 20190372148 A1) in view of Kim (US 20220166108 A1) as applied to claims 1, 2, and 8-12 above and in further view of Fang (Binary graphene-based cathode structure for high-performance lithium-sulfur batteries).
Regarding claims 14 and 15, modified He discloses all of the claim limitations as set forth above.
He does disclose that the sulfur is on a porous graphene structure ([0126][0127]).
However, He does not disclose the following:
wherein the electrode is a sulfur- graphene based electrode material, wherein the graphene is a mixture of high porosity graphene and high surface area graphene (claim 14)
wherein the electrode has a ratio of from 1:9 to 9:1 of high porosity graphene and high surface area graphene (claim 15)
Fang discloses a sulfur cathode (See section 2.2 and 2.3) for a lithium sulfur battery (See section 2.2-2.5) where the sulfur cathode is a sulfur graphene based cathode where the sulfur loading is on a binary graphene foam that comprises high porosity graphene and high surface area graphene and the ratio of high porosity graphene to high surface area graphene is 1:1 (See section 2:2) which is within the claimed range and the lithium-sulfur battery which has high specific areal capacity and ultralow capacity decay (Conclusion).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the graphene network of modified He to have the binary graphene foam network as disclosed by Fang because it results in lithium-sulfur battery which has high specific areal capacity and ultralow capacity decay.
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 1-15 and 26-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 27-33 of copending Application No. 18/550764 in view of He (US 20190372148 A1). Claims 1-13 and 27-33 of copending Application No. 18/550764 recite the substantially the same electrode as recited in claims 1-13 and 27-33 with the exception of that the electrode comprises sulfur on a graphene network. He discloses a sulfur electrode on a graphene network ([0125]-[0127]) or lithium ([0106]) in a battery which comprises a protective layer ([0024]-[0029]) as recited in the claim 1-13 and 27-33 of copending Application No. 18/550764. It would have been obvious to one of ordinary skill in the art at the time of filing to modify the electrode material of claims 1-13 and 27-33 of copending Application No. 18/550764 so that it is a sulfur electrode disposed on a graphene network as disclosed by He because He discloses that this type of electrode is appropriate for a battery where the electrode is protected by a protective layer.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVINA PILLAY whose telephone number is (571)270-1180. The examiner can normally be reached Monday-Friday 9:30-6:00.
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DEVINA PILLAY
Primary Examiner
Art Unit 1726
/DEVINA PILLAY/ Primary Examiner, Art Unit 1726
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