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 .
Response to Arguments
Applicant's arguments filed 09/24/2025 have been fully considered but they are not persuasive.
Applicant argues that the previous response detailed the ubiquitous nature of the teachings within Matviya that direct one skilled in the art away from the claimed invention, including away from use of the claimed binder. In the interest of compact prosecution Examiner contacted Applicant for an interview to discuss Matviya. Applicant and Examiner concluded that citations providing the composition and starch content of the binders from Table 2 as evidence of a statement of fact would help overcome the impasse of whether Matviya teaches the claimed binder. Therefore in the interest of compact prosecution the Office provides the following articles as evidence the flours taught by Matviya are in fact comprised of starch: Bian et al. (Bulk and Surface Chemical Composition of Wheat Flour Particles of Different Sizes; Journal of Chemistry, Article ID 5101684, 11 pages; 2019) teaches the major components of wheat flour are protein (approximately 10%–12%) and starch (approximately 70–75%), and the minor components are polysaccharides (approximately 2-3%) and lipids (approximately 2%) (page 1, paragraph 2). Wang et al. (Nutritional composition and physicochemical properties of oat flour sieving fractions with different particle size; LWT, Volume 154, 112757, 15 January 2022) teaches the total starch content of oat flour particles (Fig. 2). Gilbert et al. (The adsorption of α-amylase on barley proteins affects the in vitro digestion of starch in barley flour; Volume 241, Pages 493-501, 15 February 2018) teaches starch is the main component in barley endosperm, being 62–77% of total grain weight (page 493, paragraph 2).
It is therefore the position of the Office that Matviya does indeed teach material that is comprised of starch as suitable binder material. Claim 8 of Matviya specifically states wherein said cereal grain flour is wheat flour. It is not clear to the Office why Applicant takes the position that Matviya teaches away from cereal grains that are comprised of starch when Matviya clearly claims a cereal flour in the dependent claim. In other words, Matviya clearly teaches using starch, as cereal flour is largely comprised of starch (Wang et al. supra).
Applicant then argues “the cited binders of rice flour, potato flour, and spelt flour are each ground forms of rice, potato, and spelt. For example, rice flour is typically prepared by simply grinding rice into a suitable powder form. Even assuming, arguendo, that the Examiner's position regarding what is known in the art is correct, the mere listing of these flours in Matviya would not have provided one skilled in the art with any direction to seek to obtain a claimed saccharide component from the flour and utilize that as the binder. Matviya makes clear, as discussed above, that polysaccharides are not suitable binders.” Applicant’s argument is not persuasive because as stated by Bian et al. the major components of wheat flour are protein (approximately 10%–12%) and starch (approximately 70–75%), and the minor components are polysaccharides (approximately 2-3%) and lipids (approximately 2%) (page 1, paragraph 2).
Applicant further argues there is not sufficient motivation or disclosure in Matviya such that one skilled in the art would arrive at the claimed saccharide or water soluble binder. There is certainly no motivation or disclosure in Matviya to simultaneously select both the claimed saccharide and water soluble polymer and combine them with Schmitt as suggested. Applicant’s argument is not persuasive because as a statement of fact the major components of wheat flour are protein (approximately 10%–12%) and starch (approximately 70–75%), and the minor components are polysaccharides (approximately 2-3%) and lipids (approximately 2%) (page 1, paragraph 2). And therefore the issue is not whether one of ordinary skill in the art would combine a saccharide and water soluble polymer because wheat flour us comprised of both but whether one of ordinary skill in the art would combine Schmitt with Matviya. It is the position of the Office that MAtviya provides a clear motivation to use the binders taught in Table 2 of Matviya. Matviya teaches the properties used to choose the optimal binder. Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
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.
Claim(s) 1-11, 13, 14, 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmitt (U.S. Pat. No. 4,031,137) in view of Matviya (U.S. Pat. No. 6,682,667)
Regarding claim 1, Schmitt teaches a catalyst porous carbon particulate composition comprising carbon black spheres, a carbon binder and activator which meets the limitation of a shaped porous carbon product comprising a carbonaceous material selected from the group consisting of activated carbon, carbon black, graphite, and combinations thereof and a carbonized binder comprising a carbonization product of an organic binder and a catalytically active component or precursor (column 1, lines 5-15). Schmitt teaches extrudate surface area 150, 275, 400 which is encompassed by a BET specific surface area from about 5 m2/g to about 500 m2/g (Table III). Schmitt teaches a pore volume of at least 0.2 cc/g which meets the limitation a specific pore volume greater than about 0.1 cm?/g (column 2, lines 15-25). Schmitt teaches pore size distribution exhibiting peaks at a pore radius in excess of 10 angstrom units which encompasses a mean pore diameter greater than about 10 nm (column 2, lines 15-25). Schmitt teaches composition was extruded through a hole of 1/16 inch which meets a broad and reasonable interpretation of wherein the shaped porous carbon product has a diameter of at least about 50 um (column 7, lines 25-35). Schmitt does not teach a radial piece crush strength greater than about 4.4 N/mm (1 Ibs/mm). Schmitt does not teach wherein the binder comprises: (i) a saccharide selected from the group consisting of a monosaccharide, a disaccharide, an oligosaccharide, a derivative thereof, and any combination thereof and/or (ii) a water-soluble polymer selected from the group consisting of polymeric carbohydrates, derivatives of polymeric carbohydrates and combinations thereof.
Matviya teaches a method for producing self-supporting activated carbon structure comprising mixing a granular activated carbon, a binder material, a carbonization agent, and a liquid to produce a semi-plastic mixture; compacting the mixture using compacting pressures of or greater than about 100 pounds per square inch to form a three-dimensional structure; and heating the structure to an elevated temperature of or greater than about 300 ̊C to produce a self-supporting activated carbon structure (abstract). Matviya teaches binders that have been used for forming activated carbon structures include epoxies, polyvinyl alcohol, starches, chemically modified celluloses, monosaccharides, disaccharides, polysaccharides, various fluoropolymers, and the like, alone or in combination with other binders (column 3, lines 45-60; column 6, lies 65-67; column 7, lines 1-5). Matviya teaches an object of the present invention to provide an improved method for producing self-supporting activated carbon structures that provides cost and performance advantages through the use of relatively inexpensive, readily available starting materials and short production times (column 6, lines 5-25). Matviya teaches it is an object of the invention to use inexpensive granular activated carbon in combination with novel, non-toxic binders, and carbonization agents which can be of relatively low toxicity (column 6, lines 5-25). Matviya teaches the novel use of such carbonization agents in the practice of the present invention provides for an increase in the char yield and strength of the SSACS from a given amount of binder without any corresponding significant increase in char volume (column 10, 45-60). Matviya teaches a crush strength of 40, 178, 206 and 263 lbs which is encompassed by greater than 1lbs/mm (column 20, Table 2). It would have been obvious to one of ordinary skill in the art at the time of filing to use starches, chemically modified celluloses, monosaccharides, disaccharides, polysaccharides for the binder taught by Schmitt because it is inexpensive, non-toxic and increase strength of the structure.
Furthermore, Schmitt in view of Matviya teaches a catalyst comparable to that instantly claimed, with respect to (1) a porous carbonaceous support comprising carbon black and a carbonized binder and (2) an activator/catalyst component, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ inventions to reasonably expect Applicant’s catalyst to exhibit the properties of a radial piece crush strength in values comparable to that instantly claimed, absent the showing of convincing evidence to the contrary. A newly discovered property does not render a compound unobvious, if (1) the claimed compound is structurally obvious from a prior art compound, (2) the claimed compound possesses the same property for which the prior art compounds were useful, and (3) the prior art compound in fact possesses the newly discovered property of the claimed compound. Monsanto Co. v. Rohm & Haas Co. (DC ED Pa 1970) 420 F2d 950, 164 U.S.P.Q 556.
Regarding claim 2, Schmitt teaches normal ratio of carbon black spheres to binder will be from about 10:1 to 0.1:1 which meets the limitation wherein the carbonaceous material content of the shaped porous carbon product is from about 35 wt.% to about 80 wt.% (column 4, lines 15-25).
Regarding claims 3-11, Schmitt teaches activators include platinum metals (e.g., ruthenium, rhodium, palladium, osmium, iridium, platinum) and , molybdenum, tungsten, cobalt, nickel; exemplary effective amounts range from about 1/1000 to about 10 (column 5, lines 25-40; column 6; lines 30-40). Regarding claim 12, Schmitt teaches composition was extruded through a hole of 1/16 inch which meets a broad and reasonable interpretation of wherein the shaped porous carbon product has a diameter of at least about 50 um (column 7, lines 25-35). Regarding claims 13 and 14, Schmitt teaches carbon particulates comprising carbon black and carbonized binder (Examples 1-7). The catalyst composition of claim 1, wherein the shaped porous carbon product comprises a combination of at least two of activated carbon, carbon black, and graphite. 14. The catalyst composition of claim 1, wherein the shaped porous carbon product comprises carbon black and at least one of activated carbon or graphite.
Regarding claims 13 and 14, Schmitt teaches carbon particulates comprising carbon black and carbonized binder (Examples 1-7). The catalyst composition of claim 1, wherein the shaped porous carbon product comprises a combination of at least two of activated carbon, carbon black, and graphite. 14. The catalyst composition of claim 1, wherein the shaped porous carbon product comprises carbon black and at least one of activated carbon or graphite.
Regarding claims 22 and 23, Matviya teaches binders that have been used for forming activated carbon structures include epoxies, polyvinyl alcohol, starches, chemically modified celluloses, monosaccharides, disaccharides, polysaccharides, various fluoropolymers, and the like, alone or in combination with other binders (column 3, lines 45-60; column 6, lies 65-67; column 7, lines 1-5). Matviya teaches an object of the present invention to provide an improved method for producing self-supporting activated carbon structures that provides cost and performance advantages through the use of relatively inexpensive, readily available starting materials and short production times (column 6, lines 5-25). Matviya teaches it is an object of the invention to use inexpensive granular activated carbon in combination with novel, non-toxic binders, and carbonization agents which can be of relatively low toxicity (column 6, lines 5-25). Matviya teaches the novel use of such carbonization agents in the practice of the present invention provides for an increase in the char yield and strength of the SSACS from a given amount of binder without any corresponding significant increase in char volume (column 10, 45-60). Matviya teaches a crush strength of 40, 178, 206 and 263 lbs which is encompassed by greater than 1lbs/mm (column 20, Table 2). It would have been obvious to one of ordinary skill in the art at the time of filing to use starches, chemically modified celluloses, monosaccharides, disaccharides, polysaccharides for the binder taught by Schmitt because it is inexpensive, non-toxic and increase strength of the structure.
Regarding claims 24-26, Matviya teaches wheat flour, rice flour, potato flour, spelt flour, etc which is known in the art to contain saccharides comprising glucose, fructose and galactose (column 6, lies 65-67; column 7, lines 1-5; Table 2). As stated supra, Bian et al. the major components of wheat flour are protein (approximately 10%–12%) and starch (approximately 70–75%), and the minor components are polysaccharides (approximately 2-3%) and lipids (approximately 2%) (page 1, paragraph 2).
It would have been obvious to one of ordinary skill in the art at the time of filing to use starches obtained from wheat flour, rice flour, potato flour, spelt flour, etc for the binder taught by Schmitt because it is inexpensive, non-toxic and increase strength of the structure.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUINEVER S GREGORIO whose telephone number is (571)270-5827. The examiner can normally be reached M-W 11 am - 9 pm.
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 12/23/2025