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 .
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-5, 8, 9, 18-22, 24 and 26, drawn to a lithium-sulfur cell.
Group II, claims 10-15, drawn to a method of preparing a lithium-sulfur cell.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group I and II lack unity of invention because even though the inventions of these groups require the technical feature of the sulfur cell of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of the lithium sulfur cell of claim 1, this does not make a contribution over the prior art in view of Zheng et al. (WO 2018/226158 cited in IDS) who teach a lithium sulfur cell (see background art discussion, page 1, Example 4) comprising a working electrode (cathode), a counter electrode (anode), and an electrolyte (see Example 4, page 17 – “A pouch cell was assembled in Argon-filled glove box by using the glassy carbon plate loaded with MoS2@S composite as working electrode and Li foil as counter electrode (Fig. 11 A)”, wherein the working electrode comprises a film comprising: stacked layers of a metallic phase transition metal dichalcogenide (TMD) of formula MoS2 and sulfur (see pages 4-6 for description of exfoliated MoS2@S composite particles formed from a slurry into a cathode film).
During a telephone conversation with Rudy Ng on 7 September 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-5, 8, 9, 18-22, 24 and 26. Affirmation of this election must be made by applicant in replying to this Office action.
Claims 10-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim 26 is 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 26 recites the limitation "the proportion of lithiated transition metal dichalcogenide". There is insufficient antecedent basis for this limitation in the claim. The independent claim does not specify a proportion or a “lithiated transition metal dichalcogenide” specifically. For the purpose of examination, this is assumed to read “a proportion of the transition metal dichalcogenide” to be consistent with the specification.
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.
(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.
Claims 1-5, 8, 9, 18-22, 24 and 26 are rejected under 35 U.S.C. 102(a)(1 or 2) as being anticipated by Zheng et al. (WO 2018/226158 cited in IDS).
In regard to claim 1, Zheng et al. teach a lithium sulfur cell (see background art discussion, page 1, Example 4) comprising a working electrode (cathode), a counter electrode (anode), and an electrolyte (see Example 4, page 17 – “A pouch cell was assembled in Argon-filled glove box by using the glassy carbon plate loaded with MoS2@S composite as working electrode and Li foil as counter electrode - Fig. 11 A)”, wherein the working electrode comprises a film comprising: stacked layers of a metallic phase transition metal dichalcogenide (TMD) of formula such as MoS2 (which may be lithiated, however the independent claim 1 allows for the amount of lithium x to be 0) and sulfur (see pages 4-6 for description of exfoliated MoS2@S composite particles formed from a slurry into a cathode film).
In regard to claim 2, Zheng et al. teach the lithium sulfur cell of claim 1, wherein the TMD is a two-dimensional TMD, and wherein the working electrode comprises stacked nanolayers or monolayers of the TMD (page 5 – “The transition metal chalcogenide may have at least one layer sheet. Where the transition metal chalcogenide has at least two layers sheet, such transition metal chalcogenide may adopt a layered structure and may therefore be termed as a layered transition metal chalcogenide. Accordingly, the transition metal monochalcogenide, transition metal dichalcogenide and transition metal trichalcogenide may be in the form of layered transition metal monochalcogenide, layered transition metal dichalcogenide and layered transition metal trichalcogenide, respectively.”).
In regard to claim 3, Zheng et al. teach the lithium sulfur cell of claim 1, wherein the TMD is an exfoliated TMD (page 7 - “The transition metal chalcogenide used in the above method may be an exfoliated transition metal chalcogenide.”).
In regard to claims 4 and 5, Zheng et al. teach the lithium sulfur cell of claim where lithium is absorbed to MoS2 flakes in various degrees (see Example 1 page 13) such that the formula may be represented by LixMoS2 (page 9) or simply MoS2@S (i.e. x may be 0-2) which encompasses the claimed composition with sufficient specificity in a manner which anticipates the claimed range (MPEP 2131.03)..
In regard to claim 8, Zheng et al. teach the lithium sulfur cell of claim 1, wherein the mass loading of the non-metal particles (i.e. the sulfur) may be preferably about 60 weight percent (top of page 6 – i.e. the 40:60 MoS2:S).
In regard to claim 9, Zheng et al. teach the lithium sulfur cell of claim 1, wherein the working electrode comprises some conductive carbon (VGCF) and binder (PVDF) (see Example 3, page 16) or contains no carbon or binder (Example 4 – i.e. 0wt% which is a value which anticipates the claimed range of 1wt% or less) which encompasses the claimed composition with sufficient specificity in a manner which anticipates the claimed range (MPEP 2131.03).
In regard to claims 18 and 19, Zheng et al. teach a lithium sulfur cell, wherein the cell has a sulfur utilization rate of 80% or more and cell has a capacity retention of 80% or more over 200 cycles (see figure 10d – page 17 – see also MPEP 2112.01 below).
In regard to claim 20, Zheng et al. teach the lithium sulfur cell of claim 1, wherein the working electrode has a MoS2@S composite areal loading of 10 mg cm−2 (page 10, wherein sulfur may account for 60-90 mass% of the composite – page 6; i.e. sulfur loading of 6-9 mg cm−2) which encompasses the claimed composition with sufficient specificity in a manner which anticipates the claimed range (MPEP 2131.03).
In regard to claims 18, 21, 22 and 26, Zheng et al. teach the lithium sulfur cell of claim 1, the Examiner notes MPEP 2112.01 relating to Composition, Product, and Apparatus Claims: 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). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the claimed and prior art products are identical or substantially identical in structure or composition and are produced by identical or substantially identical processes, therefore the product of the prior art is reasonably presumed to have a high sulfur utilization, gravimetric energy density of 350 Wh kg−1 or more and a volumetric energy density of 650 Wh L−1 or more and the proportion of lithiated transition metal dichalcogenide in the metallic phase from 60% to 100% in a manner which anticipates the claimed lithium sulfur cell.
In regard to claim 24, Zheng et al. teach a method of charging and/or discharging the lithium sulfur cell of claim 1 (see Example 4 and related charge/discharge plots in Figure 10)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yao et al. (US Pub 2014/0335407 newly cited) teaches similar exfoliated MoS2 composite for battery electrode materials (paragraph [0042]).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723
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