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 .
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.
Status of Application
Claims 1-20 are pending and presented for examination.
Priority
Acknowledgement is made of applicant's request for foreign priority under 35 U.S.C. §119(a)-(d). Certified copies of the priority documents have been received.
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 1-17 and 20 are 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.
As to claim 1 (and those dependent thereon owing to their dependency or for 20 incorporating claim 12), the claim sets forth that the metal and/or metalloid-containing sulifde is neither an alkali metal nor an alkaline earth metal, this is confusing as the dependent claims and the various “Examples” in the Instant Specification set forth that the sulfide has to contain sodium. For the purposes of compact prosecution the claim is being construed as comprising sodium but no other alkali or alkaline metal as this matches Na3BS3 and the claimed matter in claim 12.
As to claim 3, “the second polysulfide” lacks antecedent basis in claim 1, it appears this should be dependent instead upon claim 2.
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 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2020022342 to Hayashi et al. (hereinafter, “Hayashi at __”; cited and provided by Applicants with citations made to the US equivalent, US PG Pub No. 20210296707).
Regarding claim 18, Hayashi discloses a sodium-containing sulfide represented by Na3-da1-dBdS4 of for example Na2.88Sb0.88W0.12S4 (Hayashi at [0015]), d=0.12, a=Sb, and B=W.
As to claim 19, the material of claim 18 is used as a solid-electrolyte in a battery (Id.).
Claims 1-4, 7 and 9-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Crystallization of sulfides from alkali polysulfide fluxes” to Scheel (cited and provided by Applicants).
Regarding claims 1, 2, 4, 12, 13, 15 and 16, Scheel discloses a method for making a metal-containing sulfide wherein the metal does not contain alkali/alkaline earth metals by reacting a self-melting flux of sodium polysulfide (Na2S4 forms from melting Na2S (which also meets the second polysulfide) with elemental sulfur (meeting “simple substance sulfur” per claim 2, 9 L col) and chromium (10 L col) by heating it to 300 C for 2 hours in a covered (so atmospheric pressure at the start and open to air as no inerting is performed for claim 3.
As to claims 3 and 11, as nothing appears to be left over after the process the requirement of a stoichiometric ratio appears to be met and by this since “compound” is not necessary to meet claim 3, claim 11 need not be met by the reference.
As to claim 7, adding a graphite layer would be well within the level of ordinary skill in the art to avoid unwanted side reactions.
Concerning claim 9, a mullite crucible is utilized (“Fig. 1”).
Turning to claim 14, chromium is utilized and it has a native oxide layer.
Claims 1-5, 9, 11, 15 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 3174823 to Kopelman (cited by Applicants).
Regarding claims 1, 9, 15 and 16, Kopelman discloses a method of making zinc sulfide by reacting a self-melting Na2S-> Na2S5 (Kopelman at “Example 1”) with ZnS in an alumina crucible with no added pressure so normal pressure is considered to be met (Id.).
As to claim 2, Na2S and extra S are added (Id.).
As to claims 3 and 11, as nothing appears to be left over after the process the requirement of a stoichiometric ratio appears to be met and by this since “compound” is not necessary to meet claim 3, claim 11 need not be met by the reference.
Turning to claims 4 and 5, open air (4:27-30) or inerting is utilized.
Claims 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Vacancy-Stabilized Superionic State in Na3–xSb1–xWxS4” to Nashimura et al. (hereinafter, “Nashimura at __”; this reference was publicly available on 15 November 2022 which is below the effective filing date of 25 November 2022 but after the unperfected foreign priority date of 26 November 2021, thusly this rejection can be overcome by submission of a certified English machine translation of said foreign priority document).
Regarding claim 18, Nashimura discloses Na3−xSb1−xWxS4 (“Abstract”).
Turning to claim 19, Nashimura discloses the material is a solid-state battery (“Abstract”).
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 20 is rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hayashi.
Turning to claim 20, in Hayashi a sodium ion all-solid-state battery is made by forming an electrolyte layer of NBSWS between two solid electrode layers ([0057]). While the claim requires that the electrolyte be made by the process of claim 12, this is a product-by-process limitation which renders that aspect that of the product, not how it is made. While the product is claimed as dependent upon the process made, there is nothing to suggest that the instant product would have different properties, structure or aspects than that in the prior art, absent evidence to the contrary. Accordingly, at minimal one of ordinary skill in the art would find it obvious that prior art product and the instant product would have the same product aspects as that instantly claimed. "[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) also MPEP 2113, et seq. As shown supra the product is known.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kopelman as applied to claim 1 above.
As to claim 6, Kopelman discloses 300-400 C for the melting conditions which overlaps the instantly claimed range of 400-1000 C which is prima facie obvious (see MPEP 2144.05).
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.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11830985. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 19 permits for either of a solid electrolyte or electrode whereas claim 1 is just a solid electrolyte, and it is noted that claim 1 states a proviso of conductivity versus sodium strontium sulfide which is missing from instant claim 19 but does not appear to be patentably distinct.
Allowable Subject Matter
Claims 8, 10, 14 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to claim 8, none of the cited prior art either alone or in combination, discloses or reasonably suggests, ac cooling rate of 100 C/min or more to yield an amorphous material. Scheel is the closest piece of prior art and it discloses a cooling rate at most 25 C/min.
As to claim 10, none of the cited prior art either alone or in combination discloses the first sodium polysulfide is Na2S1.5-2.5. Scheel and Kopelman both disclose S4.
As to claim 14, none of the cited prior art either alone or in combination, discloses or reasonably suggests oxysulfide as the metal/metalloid containing sulfide. Kopelman is the closest piece of prior art and fails to disclose anything beyond a complex sulfide. Furthermore, Hayashi utilizes ball milling of solid not melted materials to produce their final product.
As to claim 17, none of the cited prior art either alone or in combination disclsoes that the method of claim 1 makes the Na3-da1-dBdS4 material as claimed in claim 1 via the sodium polysulfide source.
Conclusion
Claims 1-20 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
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