DETAILED ACTION
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 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 Claims
Claims 1-5, 7-11, 15 and 28 are currently under examination. Claims 18-27 are withdrawn from consideration. Claims 6, 12-14 and 16-17 have been cancelled. Claims 1 and 28 are amended.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/07/2025 has been entered.
Priority
Certified English translation for the foreign priority documents have not been submitted yet.
Once applicants submit certified English translations for the foreign priority documents, the effective filing date will be 12/20/2005 and 03/09/2006.
Previous Grounds of Rejection
Regarding claims 1-11, 15 and 28, in the ligand of the amendments, the rejection under 35 U.S.C. 103 as being obvious over Von Blucher et al. PCT/EP01/04615 (herein referred to under the equivalent of US 2003/0092560) in view of Podszun et al. (US 2006/0094812) is amended as set forth below. Among them, claim 6 has been cancelled.
Amended Grounds of Rejections
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 1-5, 7-11, 15 and 28 are rejected under 35 U.S.C. 103 as being obvious over Von Blucher et al. PCT/EP01/04615 (herein referred to under the equivalent of US 2003/0092560) in view of Podszun et al. (US 2006/0094812).
Regarding claim 1, Von Blucher et al. teach a process for producing activated carbon in spherical form by carbonization and activation of polymer spherules based on styrene and divinylbenzene (Abstract). The polymer spherules contain chemical groups (particularly sulfonic acid, Abstract) leading to the formation of free radicals and thus to cross-linkages by their thermal decomposition (Abstract, [0011]-[0070], claims 1-16).
Polymeric starting material in which the functional chemical groups leading to cross-linkages during the carbonization or pyrolysis steps, particularly sulfonic acid groups, are already present in the actual starting material, can be contaminated with metal ions which are them present in the final product as a catalytic metal impregnation ([0026]).
The catalytically active metal including silver is used in impregnation and the activated carbon product obtained comprises the silver ([0060]).
During the carbonization the organic polymer spherules based on styrene and divinylbenzene and containing functional chemical groups (particularly sulfonic acid groups, are destroyed and free radicals are formed that cause strong cross-linkages--in the absence of which there would not exist a pyrolysis residue (i. e. carbon) after all. In general, pyrolysis is conducted in an inert atmosphere (e. g. nitrogen) at a temperature ranges from about 5000C to 6500C which is encompassed by the instant claimed carbonization temperature range ([0015]).
The activation is carried out with a mixture of steam (water-vapor) and N2 (applicant’s an inert atmosphere) and particularly at temperatures of from about 8500C to 9600C ([0037]) which is encompassed the instant claimed activation step temperature ranges, particularly with a residence time of about 2 hours ([0021] and claim 11).
However, Von Blucher et al. do not specifically disclose the use of interpolymer as per applicant claim 1.
Podszun et al. teach a method for preparing silver-containing polymer beads by polymerization of a mixture of styrene, divinylbenzene, crosslinkers, silver behenate (corresponding to applicant’s metal), dibenzoyl peroxide (free radical initiator).
The organic silver salt is partly or completely soluble in the mixture of monomer (i.e., styrene) and crosslinker (divinylbenzene). The activated silver-containing monomer mixture is dispersed by means of a dispersant in a water phase. The produced uniform beads having an average particle size of 380 um and silver content 0.1%wt (abstract, [0006]-[0034]). Therefore, the silver metal would expect be integrated into the polymerization mixture.
Silver behenate taught by Podszun et al. is dispersed in polymerization mixture including styrene and divinylbenzene as the instant claims ([0014]-[0015] and [0018]). The produced uniform beads having an average particle size of 380 um and silver content 0.1%wt (abstract, [0006]-[0034]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute polymer of Von Blucher et al. with a mixture of styrene, divinylbenzene, crosslinkers, silver behenate (corresponding to applicant’s metal) and dibenzoyl peroxide (free radical initiator) of Podszun et al. to obtain the invention as specified in the claim 1, motivated by the fact that resulting polymer beads are outstandingly suitable for producing spherical activated carbon by carbonization reaction ([0030]).
Since both Von Blucher et al. and Podszun et al. teach ion-exchange resin use for carbonization reactions (Von Blucher [0026], and Podszun et al. [0005] and [0030]), one would have a reasonable expectation of success.
Although neither Von Blucher et al. nor Podszun et al. specific disclose a shortened to a reduced duration time for activation of carbonaceous organic polymers thus forming a fully activated carbon loaded with metal Ag compared with not comprising Ag metal as per applicant claim 1, the shortened duration in activation step is due to the interpolymerization of metal such as organic silver salt into carbonaceous organic polymers.
Von Blucher et al. teach the presence of silver in the carbon material and Podszun et al. teach silver in polymer beads that can be used for forming spherical activated carbon, and provides a basis for obviousness.
The reduced activation duration would naturally flow from the combination because the same materials are formed and subsequently activated. The claim does not require any particular degree of reduction in the duration, so any reduction will read on the claim. It is reasonable to expect that the addition of metal during interpolymerization to have the same result of reducing, to at least some degree, the duration of the activation step.
Since the combined references of Von Blucher et al. and Podszun et al. teach all of the claimed reagents, composition and method of making an activated carbon, the time for activation step (i.e., less activation time to forming a fully activated carbon loaded with Ag, etc.) would necessarily follow as set forth in MPEP 2112.01(II).[1]
The substantially similar process would expect to achieve the substantially similar advantages including shorten activation time.
Regarding claim 2, as discussed above, Podszun et al teach the use of silver salt as per applicant claim 2 (abstract).
Regarding claim 3, the polymers used by Von Blucher et al. are in spherical form and have diameters up to approx. 1.5 mm. It meets the claimed limitations ([0024]).
Regarding claim 4, the polymers taught by Von Blucher et al. is selected from polystyrene polymer and divinylbenzene crosslinked polymers (claim 1).
Regarding claim 5, the polymers taught by Von Blucher et al. has up to 20% divinylbenzene, which meets the claimed limitations ([0022]).
Regarding claims 10-11, as discussed above, silver behenate taught by Podszun et al. is dispersed in polymerization mixture as the instant claims. The produced uniform beads having an average particle size of 380 um and silver content 0.1%wt (abstract, [0006]-[0034]).
Regarding claims 7-8, silver behenate taught by Podszun et al. is about 5%wt by weight based on the polymer ([0033]).
Regarding claim 9 the polymer taught by Podszun et al. is formed by free radical polymerization ([0033]).
Regarding claim 15, the carbonization and the activation taught by Von Blucher et al. is carried out in a rotary tube as per applicant claim 15 ([0042]).
Regarding claim 28, Since the combined references of Von Blucher et al. and Podszun et al. teach all of the claimed reagents (Ag metal, polystyrene-divinylbenzene copolymer having sulphonic acid groups, etc.) composition and method of making an activated carbon, the time for activation step (i.e., less activation time up to 57% comparing without metal, etc.) would necessarily follow as set forth in MPEP 2112.01(II).
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments and Declaration under 37 C.F.R. 1.130 submitted by Dr. Bohringer filed on 07/07/2025 and Declaration under 37 C.F.R. 1.132 signed by Dr. Ernest De Ruiter on 11/28/2011 with respect to claims 1-5, 7-11, 15 and 28 have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Applicant argued the claim element directed to an activation step having a shortened duration compared to the duration of the same carbonaceous organic polymer not comprising a metal was discussed in terms of the requirements for finding inherency in rejections based on lack of novelty and rejections based on obviousness (Remarks, page 1).
Dr. Bohringer stated the subject matter found in paragraph of the Podszun et al. obtained directly from De Ruiter, DeRuiter was “sole inventor” (See Declaration pages 1-3).
The Declarations under 37 C.F.R. 1.130 and 37. C.F.R. 1.132 have been considered but are not persuasive. The Office would like to take this opportunity to address the applicant’s arguments.
As discussed in the previous office action dated on 04/09/2025, there are no reasonable explanation of the other inventor’s role in the Podszun PGPUB.
How did Dr. Bertram Kurt Bohringer know that the others (Wolfgang Podszun, Reinhold Klipper, Olaf Hale, Rudolf Wagner) named on the prior art of Podszun et al. who did not also contribute to the idea of using the invention for producing spherical activated carbon? There are five inventors in the prior art of Podszun et al.
In addition, as set forth in the previous office actions, the rejection relies on Podszun et al. for more than just paragraph [0030]. Podszun teach a method for preparing silver-containing polymer beads by polymerization of a mixture of styrene, divinylbenzene, crosslinkers, silver behenate (corresponding to applicant’s metal), dibenzoyl peroxide (free radical initiator). The organic silver salt is partly or completely soluble in the mixture of monomer (i.e. styrene) and crosslinker (divinylbenzene). The activated silver-containing monomer mixture is dispersed by means of a dispersant in a water phase. The produced uniform beads having an average particle size of 380 um and silver content 0.1%wt (abstract, [0006]-[0034]).
Even if paragraph [0030] of Podszun et al. is attributable to de Ruiter, what about the rest of the relevant Podszun et al. disclosure?
Did De Ruiter invent only what is in [0030] and the other inventors invented everything else? The affidavits state that the inventors of Podszun obtained the subject matter from De Ruiter while De Ruiter was employed by Blucher GmbH. But the affidavit also states that the Podszun inventor/employees were former Bayer AG employees who became employed by Lanxess. The Podszun PGPUB lists De Ruiter as an inventor so it is presumed that De Ruiter was also an inventor/employee of Lanxess. The Podszun application claims priority to 2004 and De Ruiter’s employment with timeframe with Blucher does not appear to be established in the affidavit, only his retirement in 2005.
Declaration under 37 C.F.R. 1.130 submitted by Dr. Bohringer on 07/07/2025 and Declaration under 37 C.F.R. 1.132 signed by Dr. Ernest De Ruiter did not address these concerns.
As set forth in the previous office actions and the discussion above, Von Blucher et al. teach a process for producing activated carbon in spherical form by carbonization and activation of polymer spherules based on styrene and divinylbenzene (Abstract). The polymer spherules contain chemical groups (particularly sulfonic acid, Abstract) leading to the formation of free radicals and thus to cross-linkages by their thermal decomposition (Abstract, [0011]-[0070], claims 1-16).
Polymeric starting material in which the functional chemical groups leading to cross-linkages during the carbonization or pyrolysis steps, particularly sulfonic acid groups, are already present in the actual starting material, can be contaminated with metal ions which are them present in the final product as a catalytic metal impregnation ([0026]).
The catalytically active metal including silver is used in impregnation and the activated carbon product obtained comprises the silver ([0060]).
During the carbonization the organic polymer spherules based on styrene and divinylbenzene and containing functional chemical groups (particularly sulfonic acid groups, are destroyed and free radicals are formed that cause strong cross-linkages--in the absence of which there would not exist a pyrolysis residue (e.g. carbon) after all. In general, pyrolysis is conducted in an inert atmosphere (e. g. nitrogen) at a temperature ranges from about 5000C to 6500C which is encompassed by the instant claimed carbonization temperature range ([0015]).
The activation is carried out with a mixture of steam (water-vapor) and N2 (applicant’s an inert atmosphere) and particularly at temperatures of from about 8500C to 9600C ([0037]) which is encompassed the instant claimed activation step temperature ranges, particularly with a residence time of about 2 hours ([0021] and claim 11).
However, Von Blucher et al. do not specifically disclose the use of interpolymer as per applicant claim 1.
Podszun et al. teach a method for preparing silver-containing polymer beads by polymerization of a mixture of styrene, divinylbenzene, crosslinkers, silver behenate (corresponding to applicant’s metal), dibenzoyl peroxide (free radical initiator).
The organic silver salt is partly or completely soluble in the mixture of monomer (i.e., styrene) and crosslinker (divinylbenzene). The activated silver-containing monomer mixture is dispersed by means of a dispersant in a water phase. The produced uniform beads having an average particle size of 380 um and silver content 0.1%wt (abstract, [0006]-[0034]). Therefore, the silver metal would expect be integrated into the polymerization mixture.
Silver behenate taught by Podszun et al. is dispersed in polymerization mixture including styrene and divinylbenzene as the instant claims ([0014]-[0015] and [0018]). The produced uniform beads having an average particle size of 380 um and silver content 0.1%wt (abstract, [0006]-[0034]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute polymer of Von Blucher et al. with a mixture of styrene, divinylbenzene, crosslinkers, silver behenate (corresponding to applicant’s metal) and dibenzoyl peroxide (free radical initiator) of Podszun et al. to obtain the invention as specified in the claim 1, motivated by the fact that resulting polymer beads are outstandingly suitable for producing spherical activated carbon by carbonization reaction ([0030]).
Since both Von Blucher et al. and Podszun et al. teach ion-exchange resin use for carbonization reactions (Von Blucher [0026], and Podszun et al. [0005] and [0030]), one would have a reasonable expectation of success.
Although neither Von Blucher et al. nor Podszun et al. specific disclose a shortened to a reduced duration time for activation of carbonaceous organic polymers thus forming a fully activated carbon loaded with metal Ag compared with not comprising Ag metal as per applicant claim 1, the shortened duration in activation step is due to the interpolymerization of metal such as organic silver salt into carbonaceous organic polymers.
Von Blucher et al. teach the presence of silver in the carbon material and Podszun et al. teach silver in polymer beads that can be used for forming spherical activated carbon, and provides a basis for obviousness.
The reduced activation duration would naturally flow from the combination because the same materials are formed and subsequently activated. The claim does not require any particular degree of reduction in the duration, so any reduction will read on the claim. It is reasonable to expect that the addition of metal during interpolymerization to have the same result of reducing, to at least some degree, the duration of the activation step.
Since the combined references of Von Blucher et al. and Podszun et al. teach all of the claimed reagents, composition and method of making an activated carbon, the time for activation step (i.e., less activation time to forming a fully activated carbon loaded with Ag, etc.) would necessarily follow as set forth in MPEP 2112.01(II).[1]
The substantially similar process would expect to achieve the substantially similar advantages including shorten activation time.
As such, the rejection of claim 1 as set forth above, is proper and stands.
The rejection for the remaining claims 2-5, 7-11, 15 and 28, were either directly or indirectly dependent thereon stands.
Conclusion
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).