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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/08/25 has been entered.
This office action is responsive to the amendment accompanying the foregoing RCE. The applicant has not yet overcome the previously stated rejection under Section 103. Refer to the aforementioned amendment for substance of applicant's rebuttal arguments and/or remarks. Thus, the present claims are being non-finally rejected over the same art as composed in the written record hereinbelow:
Election/Restrictions and Claim Disposition
Claims 1-13 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/11/23 and 07/03/23.
Claims 14-15, 17 and 19-22 are under examination; of which claims 14-15, 17 and 19-20 are original and claims 21-22 are new. Claims 16 and 18 have been previously cancelled.
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.
Claim 19 is 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.
Claim 19 is indefinite as claim 19 depends from cancelled claim 18. Thus, the ultimate scope of claim 19 is unclear. Appropriate correction is required.
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.
Claims 14-15, 17, 19-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over the publication CN 105810442 (heretofore CN’442) in view of: (a) Fukui et al 2010/0163791 and/or (b) Essaki et al 2013/0337314.
As to claims 14-15, 20:
CN’442 discloses a method of manufacturing a composite material (see Abstract/Claim) including a graphitic carbon nitride and a carbon-based material comprising the step of mixing a nitrogenous material such as melamine and/or urea with a carbon/polymer-based material and/or alcohol-based material to form a composite slurry (i.e., including a solvent) which is heated/calcining/carbonizing and dried to/at a temperature of 550 °C in an inert atmosphere for at least 2 hours to form a layered/coated composite mixture, or obtain a lamellar structure (see Abstract/Claim). CN’442 teaches the use of solvents such as ethanol and acetic acid (see Abstract/Claim). In this case, it is deemed that the teachings of CN’442 are sufficient to read on applicant’s broadly claimed method which fails to define the specific composition and/or materials used as the nitrogenous compound, carbonaceous material, and the solvent.
As to claim 17:
CN’442 teaches the step of grinding the slurry to obtain a homogeneous mixture (see Abstract/Claim).
As to claim 19:
CN’442 teaches the use of solvents such as ethanol and acetic acid (see Abstract/Claim).
CN’442 discloses a method of manufacturing a composite material according to the foregoing aspects. However, the preceding reference does not expressly disclose the specific carbonaceous material and the specific solvents.
As to claims 14, 22:
In this respect,
a) Fukui et al disclose that it is known in the art to use coal-tar pitch as a raw material and/or precursor to make an electrode active material composition as such electrode material is usable for the preparation of a battery having a large capacity, reduced non-reversible capacity, high density and good safe behavior (0012). Fukui et al disclose the use of solvents such as pentane, hexane, benzene, toluene and xylene (0113). Since independent claim 1 fails to define the specific chemical system(s), chemical reaction(s) and/or functional aspect(s) in which the claimed composition would be ultimately used or employed or subject to, or any other related chemical step or chemistry associated therewith (i.e., sodium-ion battery or electrochemical system), it is deemed that the teachings of Fukui et al are sufficient to satisfy applicant’s broadly claimed invention.
b) Essaki et al disclose that it is known in the art to use petroleum pitch or rubber compound (0054), graphite, cokes, low-temperature calcined carbon, carbon pitch (0050) or a polymer (0051) as a raw material and/or precursor to make an electrode active material composition subject to organic material compositization/carbonization as such materials are easily carbonized and heat treatable during a calcination treatment (i.e., easily convertible materials) (0049, 0050-0051; 0054). Essaki disclose the use of solvents such as pentane, hexane, benzene, toluene (0055; 0094) and xylene (0094). Since independent claim 1 fails to define the specific chemical system(s), chemical reaction(s) and/or functional aspect(s) in which the claimed composition would be ultimately used or employed or subject to, or any other related chemical step or chemistry associated therewith (i.e., sodium-ion battery or electrochemical system), it is deemed that the teachings of Essaki et al are sufficient to satisfy applicant’s broadly claimed invention.
In view of the above, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to use the carbonaceous-based material and the specific solvents of Fukui et al and/or Essaki et al as the carbonaceous-based material and solvent(s) in the process of CN’442 as the secondary prior art teaches that coal-tar pitch and/or petroleum pitch, rubber compound, graphite, cokes, low-temperature calcined carbon, carbon pitch or a polymer can be used as a raw material and/or precursor to make an electrode active material composition as such electrode material is beneficial for obtaining a battery having a large capacity, reduced non-reversible capacity, high density and good safe behavior, and/or because such materials are easily carbonized and heat treatable during a calcination treatment (i.e., easily convertible materials); and with respect to the solvents, that the disclosed solvents reduce char yield (Fukui et al: 0112). Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over the publication CN 105810442 (heretofore CN’442) in view of: (a) Fukui et al 2010/0163791 and/or (b) Essaki et al 2013/0337314 as applied to claim 14 above, and further in view of the publication CN 109399586 (heretofore CN’586).
CN’442, Fukui et al and Essaki et al are all applied, argued and incorporated herein for the reasons manifested supra. However, none of the preceding references expressly disclose the specific carbonaceous material being a bitumen-based material.
As to claim 21:
In the same field of endeavor, CN’586 discloses that it is known in the art to make carbon-based nitride materials wherein bitumen is used as the carbonaceous precursor (Abstract; 0011; see Claims 1-4).
In view of the above, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to use the bitumen-based material of CN’586 as the carbonaceous in the process of CN’442, Fukui et al and Essaki et al, as instantly combined, because CN’586 teaches that it is commonplace in the art to use bitumen as a carbonaceous precursor/ for its carbon content when producing carbon-based nitride. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Response to Arguments
Applicant's arguments filed 04/08/25 have been fully considered but they are not persuasive.
The main contention of applicant’s argument is premised on the assertion that “CN’442 does not teach that one of the nitrogenous compound and the carbonaceous material comprise a solvent…this process does not describe any use of a solvent in the preparation of the graphitic carbon nitride” and that “neither Fukui nor Essaki teach or suggest…a carbonaceous material, a nitrogenous material and a solvent being [are] combined to make a slurry that is then dried and carbonized”. In reply, applicant’s arguments are well-taken but they are still deemed insufficient to overcome the teachings of the prior art as a whole in a convincing and unambiguously manner. In this respect, as admitted by the applicant on the page 7 (last paragraph) of the 04/08/25 amendment, it is worthwhile to note that CN’442 teaches the use of solvents such as ethanol and acetic acid, that is indeed a teaching regardless of the intended use of the solvents during the process as it might be asserted that the disclosed solvents are intended to be added at certain stage during the process of producing the composition so that the solvents would physically/directly the carbonizes material, if so is the case. Concerning this matter, a cursory review of independent claim 14 reveals that such claim is wholly silent as to whether the claimed method is a dry method or a wet method, thereby clearly and unambiguously stipulating that either a liquid solution/liquid system or a solid solution/solid system is ultimately intended by the applicant during the process, or at least, at a minimum, at the step of adding the claimed carbonaceous material. As such, in the absence of such description (i.e., dry technique/step or wet technique/step), it is deemed that the teachings of CN’442 are sufficient to satisfy applicant’s broadly claimed method. In this respect, applicant is reminded that the test for obviousness is not whether the features of a reference may be bodily incorporated into the structure of the reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As previously mentioned, in this instance, since CN’442 teaches that a solvent can be used in the disclosed process regardless of its intended use and independent claim 14 fails to clearly define whether the claimed process or the step of adding the carbonaceous material is either a dry process/step or a wet process/step, the examiner is of the opinion that the teachings of CN’442 sufficient and tenable to satisfy applicant’s broadly claimed method. Applicant is encouraged to amend independent claim 14 to clearly and unambiguously define whether the claimed process or the step of adding the carbonaceous material is either a dry process/step or a wet process/step, and/or whether a liquid solution/liquid system or a solid solution/solid system is ultimately intended.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, regardless of the fact that the inventor might recognize another advantage or disadvantage (i.e., the use of solvent at a later step) which would flow naturally from following the suggestion of the prior art, that recognition 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). Further, applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. (emphasis added→) It appears that applicant is relying heavily on the use of a solvent – a well known technique and/or commonplace use of solvents - in an attempt to establish or define patentable subject matter. Further, applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752