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 .
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.
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Claims 1–4 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/706,459 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, Application No. 18/706,459 recites a method for producing lithium sulfide (18/706,459, Claim 1),
wherein, the firing step comprises firing lithium carbonate in an atmosphere containing sulfur gas and hydrogen (18/706,459, Claim 1),
wherein, in an X-ray diffraction pattern of the lithium sulfide has, as measured using CuKα1 rays, a value of lb to la of 0.024 or less, wherein peak B being a diffraction peak at the position of 2θ = 21.3° ± 1.2° and, the peak A being a diffraction peak at the position of 2θ = 31.2° ± 1.0°. (18/706,459, Claim 7) (i.e. using an X-ray diffraction apparatus using Cu-Kα
1
rays, as a diffraction peak A at the position of 2θ = 31.2° ± 1.0° and a diffraction peak B at the position of 2θ = 22.2 ± 1.0° and has a value of lb to la of 0.04 or more).
wherein, in an X-ray diffraction pattern of the lithium sulfide has, as measured using CuKα1 rays, a value of lc to la of 0.19 or less, wherein peak C being a diffraction peak at the position of 2θ = 22.2° ± 1.0° and, the peak A being a diffraction peak at the position of 2θ = 31.2° ± 1.0°. (18/706,459, Claim 8) (i.e. using an X-ray diffraction apparatus using Cu-Kα
1
rays, as a diffraction peak A at the position of 2θ = 31.2° ± 1.0° and a diffraction peak B at the position of 2θ = 22.2 ± 1.0° and has a value of lb to la of 0.04 or more).
As set forth in the MPEP 2144.05, in the case where claimed range “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 (CPA 1976); In re Woodruff, 919 F.2D 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, Application No. 18/706,459 recites firing lithium carbonate (i.e. the reaction step) while circulating a mixed gas containing hydrogen gas inside a heating furnace (18/706,459, Claim 3).
Regarding claim 3, Application No. 18/706,459 recites circulating a mixed gas containing sulfur gas and hydrogen gas that is diluted with an inert gas (18/706,459, Claim 4).
Regarding claim 4, Application No. 18/706,459 recites the mixed gas is circulated inside the heating furnace after a temperature in the heating furnace reaches 650 °C or higher (18/706,459, Claim 5) (i.e. the reaction step comprises heating the furnace to 800 °C or higher)
As set forth in the MPEP 2144.05, in the case where claimed range “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 (CPA 1976); In re Woodruff, 919 F.2D 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1–4 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–3 of copending Application No. 18/706,483 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, Application No. 18/706,483 recites a method for producing the lithium sulfide (18/706,483, Claim 3),
wherein, a step of firing lithium carbonate in an atmosphere containing sulfur gas and hydrogen gas (i.e. a preparation step) (18/706,483, Claim 3)
wherein, a diffraction peak A at position of 2θ = 31.2° ± 1.0° and a diffraction peak B at the position of 2θ = 23.0° ± 1.0° and value of Ib to Ia of 0.012 to 0.045, wherein the Ia is an intensity of the diffraction peak A, and the Ib is an intensity of diffraction peak B (18/706,483, Claim 1) (i.e. using an X-ray diffraction apparatus using Cu-Kα
1
rays, as a diffraction peak A at the position of 2θ = 31.2° ± 1.0° and a diffraction peak B at the position of 2θ = 22.2 ± 1.0° and has a value of lb to la of 0.04 or more).
wherein, a diffraction peak A at position of 2θ = 31.2° ± 1.0° and a diffraction peak C at the position of 2θ = 21.3° ± 1.0° and value of Ic to Ia of 0.024 or less, wherein the Ia is an intensity of the diffraction peak A, and the Ic is an intensity of diffraction peak C (18/706,483, Claim 2) (i.e. using an X-ray diffraction apparatus using Cu-Kα
1
rays, as a diffraction peak A at the position of 2θ = 31.2° ± 1.0° and a diffraction peak B at the position of 2θ = 22.2 ± 1.0° and has a value of lb to la of 0.04 or more).
As set forth in the MPEP 2144.05, in the case where claimed range “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 (CPA 1976); In re Woodruff, 919 F.2D 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, Application No. 18/706,483 recites a step of firing lithium carbonate in an atmosphere containing sulfur gas and hydrogen gas in a tube furnace, and the gas is circulated inside of the tube furnace (18/706,483, claim 3).
Regarding claim 3, Application No. 18/706,483 recites preparation of a mixed gas containing hydrogen gas, and diluted in nitrogen gas (i.e. the hydrogen gas is diluted with an inert gas) (18/706,483, Claim 3).
Regarding claim 4, Application No. 18/706,483 recites a step of firing lithium carbonate in an atmosphere containing sulfur gas and hydrogen gas (i.e. a reaction step) between 650-1310 °C (18/706,483, Claim 3).
As set forth in the MPEP 2144.05, in the case where claimed range “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 (CPA 1976); In re Woodruff, 919 F.2D 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 4 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 4 recites the limitation "the furnace" in line 2. There is only reference to a furnace in claim 2, however, claim 4 does not depend upon claim 2, therefore there is insufficient antecedent basis for this limitation in the claim. The examiner reads claim 4 as dependent upon claim 2 instead of claim 1 to clarify the lacking of antecedent basis for the purpose of this action. Clarification is requested.
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.
Claims 1 – 4 are rejected under 35 U.S.C. 103 as being unpatentable over Barker et al. (US 2011/0206600) (Barker) in view of Kato et al. (JP2014/193799A) (Kato‘799).
The Examiner has provided a machine translation of JP2014/193799A. The citation of the prior art in this rejection refer to the machine translation.
Regarding claim 1, Barker teaches a process for making lithium sulfide (Barker, Abstract) (i.e. a method for producing lithium sulfide),
wherein a heating step is performed using one or more lithium-containing compounds and sulfur at a temperature of 600 to 1500 °C (Barker, claim 1, [0009] – [0012]) (i.e. preparation step; Specification, [0041] – [0045]). Wherein the lithium-containing compound is lithium carbonate in the solid-state (Barker, claim 1, [0009], [0012]) (i.e. a powder of lithium carbonate; Specification, [0043]). Wherein the sulfur used is flowers of sulfur (Barker claim 5, [0012]) (i.e. solid sulfur; Specification, [0042]),
wherein the process is carried out under reducing conditions provided by one or more reducing gases. The reducing gases are selected from hydrogen or reforming gas (mixture of hydrogen and nitrogen), (Barker, claim 4, [0011]). (i.e. a reaction step of reacting the composition with hydrogen gas; Specification, [0046]).
Barker further teaches that the reaction time varies according to temperature and choice of lithium-containing compound (Barker, [0010]).
However, Barker does not teach (I) the molar ratios of the lithium carbonate to sulfur used, and (II) a composition that, in an X-ray diffraction pattern as measured using an X-ray diffraction apparatus using Cu-Kα
1
rays, as a diffraction peak A at the position of 2θ = 31.2° ± 1.0° and a diffraction peak B at the position of 2θ = 22.2 ± 1.0° and has a value of lb to la of 0.04 or more, wherein the la is an intensity of the diffraction peak A and the lb is an intensity of the diffraction peak B.
With respect to difference (I), Kato‘799 teaches a method for producing high-purity metal sulfides, wherein the metal is lithium (Kato‘799, [0002], [0018]), synthesized from lithium carbonate and hydrogen sulfide, wherein the hydrogen sulfide is generated within the system by heating sulfur vapor and hydrogen (Kato‘799, [0035] – [0038]).
As Kato‘799 explicitly teaches, the amount of hydrogen sulfide supplied to the metal carbonate is preferably 1 to 15 times because it shortens reaction times and loss of hydrogen sulfide making it more economical (Kato‘799, [0039]). Kato‘799 further teaches that the generation of hydrogen sulfide within the system is preferred because it ensures the purity of it, allowing the reaction to proceed rapidly, and reduce impurities in the resulting metal sulfide Kato‘799, [0035] – [0039]).
Kato‘799 and Barker are analogous art as Kato‘799 is drawn to the production of high purity lithium sulfide for batteries and other chemical manufacturing (Kato‘799, [0001]).
In light of the motivation of producing high purity lithium sulfide, as taught by Kato‘799, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to use a molar ratio of sulfur of 1 to 15, in the method of Barker, in order to have fast reaction times, reduce impurities and increase the efficiency of the system, and thereby arrive at the claimed invention.
Regarding (II), preparing a composition with ratios of its components quantified by X-ray diffraction, the preparation step of the instant application is substantially identical to the heating step of Barker in view of Kato‘799, because it uses substantially identical conditions. The reagents are the same: solid lithium carbonate (Barker, claim 1, [0009] – [0012]; Specification, [0041] – [0045]), flowers of sulfur (Barker claim 5, [0012]; (i.e. solid sulfur) Specification, [0042]), and hydrogen (Barker, claim 4, [0011]; Specification, [0046])) at the same temperature, 650 – 1500 °C (Barker, claim 1, [0009]; Specification [0049], [0050]), in the same ratio taught by Kato‘799 (Kato‘799, [0035]–[0038]). Thus, while not measured, the composition produced by Barker is substantially identical to the present invention and would satisfy the condition a composition that, in an X-ray diffraction pattern as measured using an X-ray diffraction apparatus using Cu-Kα
1
rays, as a diffraction peak A at the position of 2θ = 31.2° ± 1.0° and a diffraction peak B at the position of 2θ = 22.2 ± 1.0° and has a value of lb to la of 0.04 or more, wherein the la is an intensity of the diffraction peak A and the lb is an intensity of the diffraction peak B.
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). See MPEP 2112.01 (I).
Regarding claim 2 – 4, Barker in view of Kato‘799 teaches, a heating step (i.e. (A) a reaction step) is performed using lithium carbonate and sulfur at a temperature of 600 to 1500 °C under a reducing atmosphere of hydrogen, or reforming gas (mixture of hydrogen and nitrogen (i.e. an inert gas)) (Barker, abstract, claims 1 – 6, [0009] – [0012]) (i.e. circulating hydrogen gas inside of a furnace in which the composition is placed, (B) wherein the hydrogen gas is diluted with an inert gas, (C) wherein the reaction step comprises heating the furnace to 800 °C or higher).
As set forth in the MPEP 2144.05, in the case where claimed range “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 (CPA 1976); In re Woodruff, 919 F.2D 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cited by applicant in IDS filed 5/01/2024 – Kato (JP 2015/003843A) (Kato’843) teaches a method of manufacturing highly purified metal sulfide, such as lithium sulfide, safely without carrying out a purification or the removal of a solvent (Kato‘843, Abstract, [0014] – [0032]) using lithium carbonate (Kato‘843, [0022]), sulfur vapor and hydrogen, wherein hydrogen and sulfur vapor are heated to form hydrogen sulfide (Kato‘843, [0026]), and the reaction is performed at 200 – 725°C (Kato’843, [0032]; Kato’843 examples 1–3: [0053] – [0055]).
The Applicant has provided a machine translation of Kato (JP 2015/003843A) (Kato’843). The citation of the prior art in this section refer to the machine translation.
Miyashita (US2014/0037535) teaches a method for producing lithium sulfide based upon a dry method (Miyashita, Abstract), wherein the reagents are lithium carbonate (Miyashita, [0019]), gas containing sulfur, (e.g. vaporized solid sulfur), (Miyashita, [0026]), wherein the gas containing sulfur is 10-100% vol %, wherein it is mixed with hydrogen, wherein the gas is mixed inert gas (Miyashita, [0037]), wherein the reaction is performed at temperatures >500 °C (Miyashita, [0034]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ritchie E Hernandez whose telephone number is (571)270-1711. The examiner can normally be reached M-Th 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.E.H./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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