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 .
Status of Application
Applicant’s amendments and remarks filed 9/26/2025 have been acknowledged. Claims 1-9, 14-17, and 19-27 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 and 14-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites an “interfacial layer of copper or a copper alloy” in lines 3 and 4. However, the specification describes an interfacial layer of a copper alloy with the catalyst precipitate particles (see for example, paragraph [0059] of the specification), but does not support a copper interfacial layer. The limitation thus constitutes new matter. Claims 2-9 and 14-20 are rejected for depending on claim 1 with the new matter issue.
Claim 26 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The instant claim recites a step of “absorbing the protective layer into the nanotubes during the growing.” The protective layer is not, conventionally, intended to become part of the nanotubes. The specification of the instant application does not describe such step in details to enable one skilled in the art to cause the protective layer to be absorbed into the nanotubes during growth. On Pages 7 and 9 of remarks filed on 9/26/2025, Applicant pointed to paragraph [0069] of the original specification which describes that “some of the aluminum oxide buffer layer may be present at the interface or lifted with the top of the carbon nanotubes carpet as the CNTs grow from the interfacial layer” and Figs. 10, 11, and 13 that depict CNT carpets without a visible buffer layers over the top. Applicant interpreted that to mean that the buffer layer is “evidently absorbed into the nanotubes during the growing process.” The Examiner respectfully disagrees. The highlighted portions of the disclosure does not prove that the buffer layer is absorbed into the nanotubes during growth, as it could have, for example, fallen off during growth or after. A mere insertion of the claim limitation into the specification is insufficient to support that the protective layer is absorbed into the carbon nanotubes during growing.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 and 14-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Growth of high quality, high density single-walled carbon nanotube forests on copper foils” published by Zhong et al. Carbon Volume 98, March 2016, Pages 624-632 (cited and provided by Applicant).
Regarding claim 1, Zhong et al. teaches a structure comprising:
a Cu foil, corresponding to a base layer predominantly of copper at a first concentration;
an interfacial layer on the base layer, the interfacial layer including a copper alloy including copper at a second concentration and a carbon-nanotube catalyst as Fe catalyst is deposited on the Cu foil and diffuses into and alloy with Cu forming the Fe-Al-Cu alloy (Figs. 3(d) and 3(e)); and
carbon nanotubes extending from the interfacial layer (“Experimental”; Fig. 3). The prior art structure reads on the claimed electrode.
Regarding claim 2, Zhong et al. teaches that the Fe catalyst is deposited on the Cu foil and diffuses into and alloy with Cu (“Experimental”; Fig. 3) so the interfacial layer comprises the copper alloy of the copper at the second concentration and iron.
Regarding claim 3, the Fe catalyst of Zhong et al. reads on the claimed precipitates of the iron in the carbon-nanotube catalyst (“Experimental”; Fig. 3).
Regarding claim 4, the carbon nanotubes extend from the precipitates of the iron (Fig. 3; “Experimental”).
Regarding claim 5, the interfacial layer contains an alloy of Fe and Cu (“Experimental”; Fig. 3) so the second concentration of copper is lower than the first concentration of copper in the copper foil or base layer.
Regarding claims 6-8, the interfacial layer including a catalyst layer (the Fe catalyst) opposite the base layer (“Experimental”; Fig. 3).
Regarding claim 14, the carbon-nanotube catalyst (Fe) is of a metal with an interfacial concentration in the interfacial layer and a lower concentration in the base layer which is predominantly copper (“Experimental”; Fig. 3).
Regarding claims 15 and 16, Zhong et al. teaches that the grown CNTs and the Cu base are in Ohmic contact (last paragraph of “Introduction”). Accordingly, the interfacial layer is in ohmic contact with the base layer and with the carbon nanotubes.
Regarding claim 17, since Zhong et al. teaches the claimed structure manufactured by a substantially similar process, most of the carbon nanotubes are bonded to the interfacial layer by at least one metallic bond as the carbon nanotubes grow from the iron catalyst in the interfacial layer (“Experimental”; Fig. 3).
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.
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhong et al. as applied to claim 1 above.
Regarding claim 9, Zhong et al. teaches that the Cu foil is covered with a 5-20 nm Al layer, 0.4-1.0 nm Fe catalyst and 0.5 nm Al top layer sequentially (“Experimental”; Fig. 3).
Although Zhong et al. does not expressly teach that interfacial layer is of a thickness between three and twenty nanometers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed range or one overlapping with the claimed range, because Zhong et al. teaches that the Al and Fe coatings diffuse into and alloy with Cu (“Experimental”; Fig. 3), forming the interfacial layer including at least portions of the Al layer and Fe catalyst layer.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong et al. as applied to claim 1 above, in view of “The effect of temperature on the growth of carbon nanotubes on copper foil using a nickel thin film as catalyst” by Atthipalli et al. published in Thin Solid Films Volume 519, Issue 16, 1 June 2011, Pages 5371-5375.
Regarding claim 19, Zhong et al. teaches a copper foil as the base layer (“Experimental”), but does not expressly teach that the copper base includes a copper-oxide layer.
Atthipalli et al. also relates to carbon nanotubes grown on a copper foil and teaches that copper is known to form a mixture of copper oxides on the surface upon exposure to air (P5373, left, first paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed copper-oxide layer in the structure of Zhong et al., motivated by the fact that Atthipalli et al. points out that copper oxide is known to occur on the surface of the copper foil (P5373, left, first paragraph).
Regarding claim 20, Atthipalli et al. teaches that a mixture of cuprous oxide Cu2O and cupric oxide CuO is known to form on the surface of the copper foil (P5373, left, first paragraph). Oxygen, an element other than the copper on the surface, constitutes from about 11 wt% to 20 wt% based on the molecular formulas of the copper oxides.
Claims 21-25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong et al., in view of “Odako Growth of Dense Arrays of Single-Walled Carbon Nanotubes Attached to Carbon Surfaces” published by Pint et al. Nano Res (2009) 2: 526-534 (cited by Applicant).
Regarding claims 21 and 22, Zhong et al. teaches a method of forming nanotubes on a structure (corresponding to the claimed electrode) comprising a Cu foil or base layer predominantly of copper, a catalyst layer of a nanotube catalyst on the base layer, e.g. Fe catalyst, and a protective layer over the catalyst layer, e.g. an Al top layer (“Experimental”; Fig. 3), the method comprising:
exposing the protective layer to a nanotube source gas, e.g. C2H2;
heating the electrode, the heating producing an interfacial layer on the base layer, the interfacial layer comprising an alloy of the copper and the nanotube catalyst, as the Al and Fe coatings diffuse into and alloy with Cu; and
growing the nanotubes on the coated Cu foil (“Experimental”; Fig. 3).
Zhong et al. does not expressly teach that the carbon nanotubes grow between the interfacial layer and the protective layer per claim 21 or that the nanotubes lifting the protective layer from the interfacial layer in consequence of the growing per claim 22.
Pint et al. also relates to growing carbon nanotubes on a substrate covered with a Fe catalyst and an alumina overlayer and teaches that growth of the carbon nanotubes is catalyzed while alumina flakes of the overlayer are lifted off (abstract; Fig. 1; P527-528 from the last paragraph of “Introduction” to “Experimental”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed steps in the method of Zhong et al., as Pint et al. explains that the alumina layer will crack into small flakes upon rapid insertion into the hot furnace in the presence of atomic hydrogen and carbon growth will be catalyzed from the exposed edges, the carbon nanotubes growing between the catalyst-substrate interface and the overlayer while lifting off of the alumina flake (abstract; Fig. 1; P527-528 from the last paragraph of “Introduction” to “Experimental”). One skilled in the art would have observed the nanotubes of Zhong et al. grow between the interfacial layer containing the catalyst and the protective AlOx layer, lifting the protective layer in consequence of the growing as suggested by Pint et al.
Regarding claim 23, Zhong et al. teaches forming the catalyst layer over the base layer and forming the protective layer over the catalyst layer (“Experimental”; Fig. 3).
Regarding claim 24, Zhong et al. teaches that the catalyst layer comprises iron or Fe (“Experimental”; Fig. 3).
Regarding claim 25, Zhong et al. teaches that the protective layer comprises an oxide of aluminum (“Experimental”; Fig. 3).
Regarding claim 27, Zhong et al. teaches that the nanotubes are carbon nanotubes (“Experimental”; Fig. 3).
Response to Arguments
Applicant's arguments filed 9/26/2025 have been fully considered but they are not completely persuasive. The previous rejections of claims 10-12 and 18 under 35 U.S.C. 112(a) are moot as these claims have been canceled. Regarding claim 17, Applicant explained written support and enablement based on the specification, particularly, paragraphs [0059] [0062]-[0068] on Pages 6 and 8 of the remarks. The Examiner has accepted the explanation and withdrawn the previous rejections of this claim.
Applicant then pointed out that claim 26 was part of the original disclosure on Pages 7 and 9 of the remarks. The Examiner acknowledges so and has withdrawn the previous rejection under 35 U.S.C. 112(a) for lack of written description. However, the Examiner disagrees with Applicant’s remarks about this claim. Applicant pointed to paragraph [0069] of the original specification which describes that “some of the aluminum oxide buffer layer may be present at the interface or lifted with the top of the carbon nanotubes carpet as the CNTs grow from the interfacial layer” and Figs. 10, 11, and 13 that depict CNT carpets without a visible buffer layers over the top. Applicant interpreted that to mean that the buffer layer is “evidently absorbed into the nanotubes during the growing process.” The Examiner respectfully disagrees. The highlighted portions of the disclosure does not prove that the buffer layer is absorbed into the nanotubes during growth, as it could have, for example, fallen off during growth or after. As a result, the claim remains rejected under U.S.C. 112(a) for lack of enablement.
Regarding the rejection of claim 1 under 35 U.S.C. 102, Applicant argued on Pages 10-11 of the remarks that “Zhong’s interface with the CNTs is decisively AlOx, not Cu or Cu-catalyst alloy” and Zhong teaches away from Cu-Fe interdiffusion because the AlOx barrier of Zhong prevents diffusion/alloying of Fe into Cu to avoid catalyst loss and contains no copper. Applicant further asserted that “there is no disclosure of CNTs rooted in an interfacial layer of copper or a copper alloy as recited in amended claim 1.” The Examiner respectfully disagrees. The claim is broader than Applicant argued as it does not require CNTs rooted in the interfacial layer as argued. The claimed interfacial layer is one between the copper base and the carbon nanotubes. In Zhong, the interfacial layer is considered to include, at least, the Fe-Al-Cu alloy, the AlOx, and the Fe catalyst nanoparticles as seen in Figs. 3(d) and 3(e) of the reference. Zhong’s interfacial layer includes the claimed copper alloy.
Further, Applicant argued about claim 9 on Pages 11 and 12 of the remarks that “Zhong teaches way from such an interfacial alloy layer in direct contact with the CNTs” because Zhong’s AlOx barrier layer prevents the Fe catalyst from diffusing into the Cu, and so Zhong’s interface is different from the invention architecturally and chemically. Again, Applicant’s arguments are not commensurate with the scope of the claims, as the claims merely require a copper alloy with the catalyst in the interfacial layer and the carbon nanotube extending from such layer. Though the AlOx barrier layer of Zhong exists, so does the Fe-Al-Cu alloy which satisfies the claimed copper alloy in the interfacial layer and the CNTs extend from such layer. Zhong’s teachings about thicknesses of the Fe and Al layers were cited to provide a basis for an estimated thickness of the interfacial alloy layer per claim 9. Applicant argued that the thicknesses of the iron layer and aluminum oxide layers lead to a very Fe-rich interfacial layer in the instant invention. However, such features are not present in the claim.
On pages 12-13 of the remarks, Applicant argued that neither Zhong or Atthipalli “teaches a device that both (i) incudes a Cu-catalyst alloy interfacial layer that serves as a root where the CNTs connect to the interfacial layer and (ii) constraints surface impurities to <20 wt% in relation to that alloyed interface.” Again, the arguments are not commensurate with the scope of the claims as the claims do not require the Cu-catalyst alloy interfacial layer serve as a root where the CNTs connect to the interfacial layer as argued. Atthipalli was merely cited to show that elements other than copper such as oxygen in copper oxide occurs on the copper foil, as the claim does not specify that the element other than copper is a certain surface impurity as argued.
Finally, Applicant argued about claims 21-25 and 27 that the combination of Zhong and Pint would change Zhong’s principle of operation from preventing alloy formation to enabling it in direct contact with the catalyst. The Examiner respectfully disagrees. Contrary to Applicant’s assertion, Zhong allows diffusion of Fe and alloying with Cu in the interfacial layer (“Experimental”; Fig. 3). Pint was cited to show that it is known for nanotubes to grow between the interfacial layer and the protective layer (“Experimental”; Fig. 3).
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 HENG M CHAN whose telephone number is (571)270-5859. The examiner can normally be reached 9 am - 5:30 pm on Monday, 9 am - 3 pm on Tuesday, and 9 am to 1 pm on Wednesday and Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Heng M. Chan/Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725