DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
The preliminary amendment dated 7/9/2024 has been received and will be entered.
Claim(s) 1-15 is/are pending.
Claim(s) 8 is/are currently amended.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 7/9/2024, 3/10/2026 in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
I. Claims 1, 2, 3, 12, 14, and 15 – or as stated below – is/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.
Narrow and Broader Ranges in the Same Claim.
MPEP 2173.05(c) states: “Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible. Description of examples and preferences is properly set forth in the specification rather than in a single claim.” These issues are present in:
Claim 1: “equal to or more than 1.2 times, preferably equal to or more than 1.5 times.”
Claim 2: “equal to or more than 1.2 times, preferably equal to or more than 1.5 times.”
Claim 3: “is 0.1-6 wt. %, preferably 0.5-3 wt. %.”
Claim 12: “is 10-40° C, preferably 20-30° C, particularly preferably room temperature (25° C).” The “preferably 2-4 hours” language is indefinite when read in view of Claim 8, from which Claim 12 depends.
Any other “range within a range” inadvertently overlooked is similarly rejected.
Use Claims.
MPEP 2173.05(q) addresses “use" claims. The MPEP states:
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: “[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon” was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Other decisions suggest that a more appropriate basis for this type of rejection is 35 U.S.C. 101. In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: “The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.” In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: “The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.”
Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
I. A “USE” CLAIM SHOULD BE REJECTED UNDER ALTERNATIVE GROUNDS BASED ON 35 U.S.C 101 AND 112
In view of the split of authority as discussed above, the most appropriate course of action would be to reject a “use” claim under alternative grounds based on 35 U.S.C. 101 and 112 .
II. BOARD HELD STEP OF “UTILIZING” WAS NOT INDEFINITE
It is often difficult to draw a fine line between what is permissible, and what is objectionable from the perspective of whether a claim is definite. In the case of Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992), the Board held that a claim which clearly recited the step of “utilizing” was not indefinite under 35 U.S.C. 112, second paragraph. (Claim was to “A method for unloading nonpacked, nonbridging and packed, bridging flowable particle catalyst and bead material from the opened end of a reactor tube which comprises utilizing the nozzle of claim 7.”).
MPEP 2173.05(q). This passage forms the basis of this rejection.
Claim(s) 14-15 provides for the use of sulfur-modified carbon material, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim(s) 14-15 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Trademarks
Claim 5 contains the trademark/trade name: “EC-300J, EC-600JD, ECP600JD, VXC72, VXC72R, Black pearls 2000, PRINTEX XE2-B, PRINTEX L6 and HIBLAXK 40B2.” Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe conductive carbon black and, accordingly, the identification/description is indefinite.
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.
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.
I. Claim(s) 1-7 and 14-15 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Li, et al., Sulfur/activated-conductive carbon black composites as cathode materials for lithium/sulfur battery, Journal of Power Sources 2013; 240: 598-605 (hereinafter “Li at __”).
With respect to Claim 1, this claim recites in the preamble “[a] sulfur-modified carbon material, comprising conductive carbon black and sulfur elements distributed therein.” Li teaches a sulfur/activated-conductive carbon black. (Li Title; passim).
Claim 1 further requires “the total sulfur content in the sulfur-modified carbon material is equal to or more than 1.2 times, preferably equal to or more than 1.5 times, the surface sulfur content.” Notwithstanding the ambiguities above, Li teaches that heating the carbon black causes surface sulfur to vaporize. (Li at 599 – 2.2 Preparation and characterization of sulfur/carbon composites). As such, the sulfur content of the bulk material is understood to be greater than the surface, in an amount that would read on the claim.
As to Claim 2, as to the sulfur content, Li teaches sulfur content affects a number of variables, for example aggregation (Li at 600, col. 2), discharge capacity (Li at 603, col. 1-1), rate capabilities (Li at 604, Fig. 9). Sulfur is a result-effective variable, optimization of which does not impart patentability. MPEP 2144.05.
As to Claim 3, notwithstanding the ambiguities above, Li teaches that heating the carbon black causes surface sulfur to vaporize. (Li at 599 – 2.2 Preparation and characterization of sulfur/carbon composites). As such, the sulfur content of the bulk material is understood to be greater than the surface, in an amount that would read on the claim.
As to Claim 4, the surface areas are taught. (Li at 600, col. 1).
As to Claim 5, notwithstanding the issues above, Black Pearls 2000 is taught. (Li at 599, col. 1).
As to Claim 6, this is a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent the process suggests structure or composition. MPEP 2113. Here, the process suggests the presence of sulfur and carbon black. This is taught. (Li, entire reference).
As to Claim 7, this is a product-by-process claim. The discussion of Claim 6 is rlied upon. Note however the discussion of sublimed sulfur suggests elemental sulfur. (Li at 599 – 2.2 Preparation and characterization of sulfur/carbon composites).
With respect to Claim 14, and notwithstanding the ambiguities above, this claim is interpreted as reciting nothing more than an intended use. No actual process steps are present. The discussion above is relied upon.
As to Claim 15, and notwithstanding the ambiguities above, this claim is interpreted as reciting nothing more than an intended use. No actual process steps are present. The discussion above is relied upon.
II. Claim(s) 8, 10, 11, 12, and 13 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang, et al., In situ sulfur deposition route to obtain sulfur-carbon composite cathodes for lithium-sulfur batteries, J. Mater. Chem. A 2014; 2: 4316-4323 (hereinafter “Wang at __”) in view of:
(i) Li, et al., Sulfur/activated-conductive carbon black composites as cathode materials for lithium/sulfur battery, Journal of Power Sources 2013; 240: 598-605 (hereinafter “Li at __”) to show a state of fact.
With respect to Claim 8, this claim requires “[a] process for preparing the sulfur-modified carbon material according to claim 1.” The limitations of Claim 1 are discussed below.
Claim 8 further requires “A) impregnation step: impregnating the conductive carbon black with a solution containing sulfur at 10-80 °C for 1-5h.” Conductive carbon black is impregnated. (Wang at 4317 – Experimental). A temperature of 60 C is taught. Id. Wang stirs “to dry,” but does not state how long this takes. It stands to reason that the length of time it takes to dry depends upon the amount of solution present: for example, 1 mL of solvent would take less time to dry/evaporate than a swimming pool of solvent. Optimizing this drying time is an obvious expedient based on the amount of solution employed.
Claim 8 further requires “B) drying step: drying the impregnated product obtained in step A).” The product is dried in a vacuum oven. (Wang at 4317 – Experimental).
As to the product limitations of Claim 1 recited in the preamble of Claim 8, note that Wang teaches heating at 300 C. (Wang at 4317 – Experimental). This is the same temperature that Li teaches as causing surface sulfur to vaporize. (Li at 599 – 2.2 Preparation and characterization of sulfur/carbon composites). As such, the sulfur content of the bulk material is understood to be greater than the surface, in an amount that would read on the claim.
As to Claim 10, Wang teaches adding “various amounts of Na2S4.” (Wang at 4317 – Experimental). Tailoring the concentration is an obvious expedient. Note Wang teaches different amounts of sulfur affect any number of variables. (Want at 4318 – Results and discussion). Sulfur is a result-effective variable, optimization of which does not impart patentability. MPEP 2144.05.
As to Claim 11, Wang teaches adding “various amounts of Na2S4.” (Wang at 4317 – Experimental). Tailoring the concentration is an obvious expedient. Note Wang teaches different amounts of sulfur affect any number of variables. (Want at 4318 – Results and discussion). Sulfur is a result-effective variable, optimization of which does not impart patentability. MPEP 2144.05.
As to Claim 12, notwithstanding the ambiguities above, the discussion of Claim 8 is relied upon.
As to Claim 13, drying in a vacuum oven is taught. (Wang at 4317 – Experimental). Optimizing the time is an obvious expedient based on the amount of material to be dried.
III. Claim(s) 9 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang, et al., In situ sulfur deposition route to obtain sulfur-carbon composite cathodes for lithium-sulfur batteries, J. Mater. Chem. A 2014; 2: 4316-4323 (hereinafter “Wang at __”) in view of:
(i) Li, et al., Sulfur/activated-conductive carbon black composites as cathode materials for lithium/sulfur battery, Journal of Power Sources 2013; 240: 598-605 (hereinafter “Li at __”) to show a state of fact, and further in view of:
(ii) Oh, et al., Enhanced Li-S battery performance based on solution-impregnation-assisted sulfur/mesoporous carbon cathodes and a carbon-coated separator, J. Mater. Chem. A 2017; 5: 5750-5760 (hereinafter “Oh at __”).
The discussion accompanying “Rejection II” above is incorporated herein by reference.
As to Claim 9, to the extent Wang may not teach the solvent, in a similar process, Oh teaches dispersing sulfur in carbon disulfide for deposition on carbons. (Oh at 5761, col. 2). Substituting one solvent for another an obvious expedient, reflecting substituting one solvent for another to achieve predictable results. This does not impart patentability. MPEP 2143; KSR.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony J. Zimmer can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
Prosecution Insights