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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/08/2025 has been entered.
Response to Amendment
The amendment filed on 08/08/2025 has been entered. The amendment filed on 08/08/2025 has been entered. Claims 1-8, 10-12, 14-17, and 19-21 are pending in the application. Applicant’s amendments to the claims have not introduced new matter and are supported in the specification in at least [0061] of the instant specification.
Response to Arguments
Applicant’s arguments, see Pg. 5-8 and Pg. 9 regarding the prior art Gong et al., par. 2-3, filed 08/08/2025, with respect to the rejection of claim 1 under 35 USC § 103 have been fully considered and are persuasive. In particular, the amendment filed 08/08/2025 requiring the activated carbon be “wood-based” changes the scope of the invention such that the material of Gong prepared by the method of Gong, which uses activated carbon derived from coconut shell, walnut shell, or apricot shell, would not necessarily possess the properties of the product of claim 1. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection for claim 1 is made in view of Yushin et al. (US20200091517A1).
Applicant's remaining arguments filed 08/08/2025 have been fully considered but they are not persuasive.
Applicant argues Moreno-Castilla does not supply the necessary claim limitations as recited and there is nothing in Moreno-Castilla that would suggest to a skilled artisan to modify Gong.
However, as repeatedly presented in previous actions, Moreno-Castilla teaches activated carbon materials that are activated via thermal-steam activation, and optionally, via further acid treatment (Pg. 4386-4387, Experimental Section), that display surface areas of 785, 825, 1290, and 1600 m2/g (Table 2). Moreno-Castilla teaches the length of activation under these conditions is a result effective variable directly affecting the surface area of the activated carbon material, with increased activation time resulting in higher surface area (Table 1; Table 2). Advantageously, the surface area of activated carbon materials affect the behavior of activated carbon adsorbents and catalysts. Further, the activation taught by Moreno-Castilla effects the surface acidity and pore volume which can be important variables to control for the behavior of activated carbon supported catalysts (Pg. 4386, Introduction).
Applicant argues Ebner does not provide necessary motivation or suggestion to make the claimed invention.
However, as stated in the action dated 03/03/2025, Ebner teaches a catalyst material comprising a carbon support with a noble metal at its surface, where the ratio of carbon atoms to oxygen atoms at the surface is at least 30:1 as measured by X-ray photoelectron spectroscopy (col. 3, lines 41-47). Put in terms of the instant invention, a surface oxygen atom to surface carbon atom ratio of at least 1:30 meets the limitation required by the claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Ebner (oxygen to carbon ration of at least 1:30) overlaps with the claimed range (oxygen to carbon less than or equal to about 1). Therefore, the range in Ebner renders obvious the claimed range. Advantageously, providing a material with a low amount of oxygen relative to carbon reduces the oxygen-containing functional groups present on the surface that lead to leaching of noble metals grafted thereon, as well as improving catalyst performance by increasing catalyst activity (col. 8, line 41-col. 9, line 24)
Applicant argues Ebner only describes the material as being an oxidizing catalyst but does not describe the catalyst as suitable for dehydration/dehydrogenation.
However, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., catalyst performing dehydration/dehydrogenation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, the carbon based catalyst with metal doping disclosed by Ebner is in the same field of endeavor (i.e. carbon-based catalytic materials with metal doping) and considered relevant to the instant invention. Additionally, Applicant is reminded that a preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. See MPEP 2111.02.
Applicant argues the inventors surprisingly and unexpectedly determined the material of the instant invention.
However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The structure of claim 1 is drawn to a product, which is necessarily limited by the physical properties, which are met by the prior art Yushin et al. (US20200091517A1) as outlined below in the 35 USC § 103 section.
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 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.
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.
Claims 1-7, 17, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US20200091517A1).
Regarding claim 1, Yushin teaches a biomass-derived porous caron particle that can be derived from wood, including waste wood products, and bamboo, that displays a BET surface area from about 400 m2/g to about 5,000 m2/g (Abstract; [0054]-[0055]). Yushin teaches the biomass-derived porous carbon material displays a purity of more than 90 wt.% (e.g., less than 10 wt.% non-carbon species), as determined by X-ray photoelectron spectroscopy (XPS) ([0058]). Yushin teaching the material, interpreted as the whole of the material, including surfaces, has a carbon content of more than 90 wt.% would necessarily require the oxygen to carbon ratio at the surface to be less than or equal to about 1, meeting the limitation “a surface oxygen to carbon ratio of less than or equal to about 1 based on the total number of surface oxygen and surface carbons as determined by X-ray photoelectron spectroscopy (XPS)”. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Yushin (carbon more than 90 wt.% as determined by XPS); surface area about 400 to about 5,000 m2/g) overlaps with the claimed ranges (surface oxygen to carbon ratio of less than or equal to about 1 based on the total number of surface oxygen and surface carbons as determined by X-ray photoelectron spectroscopy (XPS); about 1400 to about 2500 m2/g). Therefore, the range in Yushin renders obvious the claimed range.
Yushin further teaches the biomass-derived carbon/conversion-type active material composite particles may be further (at least partially) enclosed in a functional shelling layer, where the shelling layer may comprise one or more of the following elements: transition, alkali or alkaline-earth metal (such as iron (Fe), manganese (Mn), copper (Cu), yitrium (Y), zirconium (Zr), niobium (Nb), molybdenum (Mo), chromium (Cr), lithium (Li), sodium (Na), magnesium (Mg), potassium (K), calcium (Ca), strontium (Sr), cesium (Cs), barium (Ba), among others), lanthanum or lanthanoids (La, Ce, Gd, Nd, Eu, etc.), beryllium (Be), aluminum (Al), silicon (Si), gallium (Ga), germanium (Ge), phosphorous (P), arsenic (As), tin (Sn), bismuth (Bi), lead (Pb), indium (In), cadmium (Cd), zinc (Zn), fluorine (F), iodine (I), oxygen (0), nitrogen (N), sulfur (S), selenium (Se), tellurium (Te), hydrogen (H) and carbon (C) and may be deposited by vapor deposition techniques such as ALD (i.e. atomic layer deposition) ([0052]; [0088]-[0089]; [0113]).
Regarding claim 2, Yushin teaches the metal is deposited as a layer ([0088]).
Regarding claim 3, Yushin teaches the carbon material is activated using activation techniques including thermal and chemical activation means ([0060]). Yushin teaches the activated carbon may be annealed to provide sites for deposition of active materials (i.e. metals, see [0063]), where annealing can occur before or after activation of the carbon ([0061]). Depositing the metal after activation meets the limitation required by the claim.
Regarding claim 4, Yushin teaches the carbon material can be hydrochar ([0060]; [0096]), and that the bio-derived carbon further include exfoliated carbon, activated carbon, carbon black, etc. ([0062]).
Regarding claim 5, Yushin teaches the porous biomass-derived carbon can be a powder ([0015]; [0116]; Fig. 6).
Regarding claim 6, Yushin teaches the biomass-derived porous caron particle can be derived from wood, including waste wood products, and bamboo (Abstract; [0054]-[0055]).
Regarding claim 7, Yushin teaches the bio-derived carbons can be activated by chemical activation agents including but not limited to KOH, NaOH, ZnCl2 (i.e. a metal chloride), H3PO4 (i.e. phosphoric acid) , K2CO3 , or H2SO4 (i.e. sulfuric acid) ([0060]).
Regarding claim 17, Yushin teaches the active material introduced into the bio-derived carbon can be a metal halide, metal oxide, and metal sulfide ([0034]) as well as an inorganic, metal-organic, or organometallic precursor introduced in the vapor phase ([0053]). Halides, oxides, sulfides, and organometallic compounds all include metals and ligands, meeting the limitation.
Regarding claim 19, Yushin teaches the metal species introduced into the bio-derived carbon can be titanium oxide ([0063]).
Regarding claim 21, Yushin teaches the active metal species can be present from around 20 wt. % to around 98 wt.% relative to the entire composite (i.e. including bio-derived carbon and active species) ([0045]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Yushin (active species from around 20 wt. % to around 98 wt.%) overlaps with the claimed ranges (about 0.5 to about 50 wt.% of the metal species). Therefore, the range in Yushin renders obvious the claimed range.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US20200091517A1), with evidentiary support for claim 8 provided by Zdravkov et al. (Cent. Eur. J. Chem. 2007, 5, 2, 385-395).
Regarding claim 8, Yushin teaches the structure of claim 1 and Yushin further teaches the biomass-derived carbon comprises pores that exhibit characteristic dimensions ( e.g., diameter or width) in the range from about 0.3 nm to around 600 nm ([0046]). Pores with a size ranging from 0.3 to 600 nm meet the limitations “mesoporous pore size and microporous pore size,” as evidenced by Zdravkov who teaches pores are classified into the following groups: macropores > 50 nm, mesopores in the range of 2.0-50 nm, while micropores < 2.0 nm (Table 1; Pg. 389, par. 3).
Claims 10-12, 14-15 is rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US20200091517A1), with evidentiary support for claims 10-12 and 14-15 provided by Gorzalski et al. (J. Mem. Sci. 2017, 522, 31-44; cited in IDS dated 17 December 2024).
Regarding claims 10-12 and 14-15, Yushin teaches the biomass-derived porous carbon to exhibits compositional purity of more than about 90 wt.% (e.g., less than 10 wt.% non-carbon species, where it is preferable in some designs to have a purity of more than 96 wt.% ([0058]). Yushin describes impurities include K, S, Ca, Na, Zn, P, O, etc. ([0058]). The bio-derived carbon of Yushin, exhibiting a purity of more than 96%, would possess about 4% of other elements including oxygen, phosphorous, and nitrogen. Accordingly, an element-to-carbon (E:C) ratio derived from the wt.% taught by Yushin assuming a 4% amount of impurity (the maximum amount of another element in the bio-derived carbon), would be 0.042 (4 wt.% : 96 wt.%), meeting the limitations required by the claims for the ratios of oxygen, bulk phosphorous, and bulk nitrogen relative to carbon.
The claims further require element ratio is “at a depth less than 5 nm.” While Yushin does not explicitly state this limitation, Yushin teaches the element composition of the biomass-derived porous carbon material is determined by techniques including X-ray photoelectron spectroscopy ([0058]). Yushin teaches the elemental composition is more than about 90 wt.% carbon, with less than 10 wt.% non-carbon species ([0058]). Yushin teaches in some cases the purity can be more than about 96% carbon ([0058]). Yushin determining the elemental composition of the material would necessarily include the surface of the material, as Yushin teaches the composition is determined with XPS, in addition to other characterization techniques. As evidenced by Gorzalski, XPS is a surface measurement technique that is known in the art to be a measurement that probes at depths of less than 5 nm (see Gorzalski Pg. 9).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Yushin (about 0.042 ratio of element to carbon) overlaps with the claimed ranges (surface oxygen to carbon less than or equal to about 0.25 (Claim 10); bulk phosphorous to carbon less than or equal to about 0.10 (Claim 11); bulk nitrogen to carbon ratio less than or equal to about 0.15 (Claim 12); surface phosphorous to carbon less than or equal to about 0.33 (Claim 14); surface nitrogen to carbon ratio less than or equal to about 0.5 (Claim 15)). Therefore, the range in Yushin renders obvious the claimed ranges.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US20200091517A1) in view of Hasegawa et al. (Chem. Mater. 2015, 27, 4703−4712), as evidenced by Gorzalski et al. and applied to claim 16 (J. Mem. Sci. 2017, 522, 31-44; cited in IDS dated 17 December 2024).
Regarding claim 16, Yushin teaches the structure of claim 1 and the clam further requires “the wood-based activated carbon adsorbent material has a surface oxygen of oxidized phosphorous to phosphorous ratio of less than or equal to about 1.0, based on the total number of surface phosphorous atoms.” Yushin teaches the amount of phosphorous in the bio-derived carbon is about 4 wt.% or less ([0058]), however Yushin is silent regarding the ratio of oxidized phosphorus to phosphorous.
Hasegawa teaches a phosphorous doped activated carbon monolith that is characterized by XPS and displays a three phosphorous binding domains, denoted by P-1, P-2, and P-3 labels (Table 3; Pg. 4706, 3.2.2., right col.). The phosphorous binding domain P-1 is consistent with non-oxidized phosphorous, while the P-2 and P-3 domains are consistent with oxidized phosphorous species, as depicted in Fig. 2, reproduced below for convenience.
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Figure 1. Reproduced Fig. 2 from Hasegawa depicting the P-1, P-2, and P-3 domains
Hasegawa teaches the P-1 content is 61%, while the P-2 and P-3 contents are 19 and 20%, respectively, which provides a ratio of 0.39 oxidized phosphorous species relative to the total phosphorous species present at the surface as measured by XPS (i.e. 19 + 20% / 100% total phosphorous) (Table 3).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Hasegawa (about 0.39 oxidized phosphorous to total surface phosphorus) overlaps with the claimed ranges (surface oxygen of oxidized phosphorous to phosphorous ratio of less than or equal to about 1.0). Therefore, the range in Hasegawa renders obvious the claimed ranges.
Advantageously, incorporation of P into carbon electrodes not only increase the capacitance but also improves the operational voltage (Pg. 4709, right col.).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate P into the carbon structure with a oxidized P to total P ratio of about 0.39 in the structure of Yushin in order to provide a carbon catalyst material that displays increased capacitance and operational voltage, as taught by Hasegawa.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US20200091517A1) in view of Gong et al. (J. Phys. Chem. C 2015, 119, 11544−11556).
Regarding claim 20, Yushin teaches the structure of claim 1 and the claim further requires “the metal species comprises palladium,” to which Yushin is silent.
Gong teaches a catalyst comprised of Pd on an activated carbon support, where the Pd is deposited on the activated carbon by atomic layer deposition using Pd hexafluoroacetylacetonate and HCOH (i.e. formalin) as the precursors (Abstract; Pg. 11545, right col.). Gong further teaches the activated carbon support was treated with HNO3 at 5 h, washed, and calcined prior to performing atomic layer deposition of Pd via the metal species palladium hexafluoroacetylacetate (Pg. 11545, Experimental Section).
Advantageously, Pd can be well-dispersed in active carbon structures allowing for a relatively low cost catalysts suitable for use in such reactions as hydrogenation, hydrogenolysis, dehydrogenation, partial oxidation, and hydrodechlorination to be obtained (Pg. 11544, left col.).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to utilize Pd as the metal species in the structure of Yushin in order to provide a relatively low cost catalyst suitable for use in reactions such as hydrogenation, hydrogenolysis, dehydrogenation, partial oxidation, and hydrodechlorination, as taught by Gong.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mitlin et al. (US20180277853A1); Mitlin teaches an active carbon with metal doping (Abstract; [0040]). Gadkaree et al. (WO2008143831A2); Gadkaree teaches an activated carbon comprising metal (Abstract; [0037]). Lee et al. (KR20200006762A English); Lee teaches a carbon composite with metal deposited at the surface (Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.W.T./Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738