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 .
Response to Amendment
This office action is responsive to the amendment dated 06/24/26. The applicant has not yet overcome the previously stated rejections under Section 103. Refer to the aforementioned amendment for substance of applicant's rebuttal arguments and/or remarks. Thus, the present claims are now finally rejected over the same art as postulated infra on the written record:
Election/Restrictions and Claim Disposition
Claims 1-7 and 10-13 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 19-24 are under examination; of which claims 14-15, 17 and 19-20 are original, claims 21-22 were previously added, and claims 23-24 are new. Claims 16 and 18 had been previously cancelled.
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).
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: a reasonable search for the prior art failed to reveal or fairly suggest what is instantly claimed, in particular: the method of making a composition comprising graphitic carbon nitride material comprising the specific combination of components/materials and method steps satisfying all the limitations recited in dependent claims 23-24, respectively.
Claims 23-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 06/24/26 have been fully considered but they are not persuasive.
As previously argued by the applicant and previously addressed by the examiner in the office action dated 03/25/26, the gist of applicant’s argument is still 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, the examiner contends that independent claim 14 fails to define the specific material composition, nature and/or state of the claimed solvent, for instance, is applicant intending to claim a liquid solvent per se, or a solid solvent per se, or even a gaseous material which may act as a solvent material, or a combination thereof? That said, applicant fails to provide any technical reason as to why “melamine and/or urea” are totally incapable (100 %) of acting as a solvent material, applicant appears to lightly address their melting points but that is still insufficient to technically disqualify “melamine and/or urea” as materials acting as a solvent; and no other scientific reason(s) whatsoever has been provided by the applicant. In this respect, the arguments of counsel cannot take the place of evidence in the record. An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of inherent anticipation or obviousness (See MPEP 716.01 and 2145: Consideration of Applicant's Rebuttal Arguments). Put differently, a statement or argument by the attorney is not factual evidence. (See MPEP 716.01 and 2145 Consideration of Applicant's Rebuttal Arguments). In short, applicant's position on that point rests entirely upon unsupported attorney argument. In re Geisler, 116 F.3d at 1471 (argument of counsel cannot take the place of evidence). Succinctly stated, the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
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., “to form a slurry prior to calcination”) 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). Thus, applicant’s argument is not commensurate in scope with the presently claimed invention. If applicant wishes to have such limitations considered for patentability, the present claims must be amended to include or recite the same.
Furthermore, as previously argued by the applicant in the 04/08/25 amendment and previously addressed by the examiner in the office action dated 03/25/26, 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
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 RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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, Nicholas A. Smith can be reached on (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752
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