DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶) where # denotes the page number and ¶ denotes the paragraph number of the pregrant publication corresponding to this application: US 2024/0132361. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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
The response dated 08/18/2025 is non-compliant. Claims 1-2 have been amended but lack status identifiers. See MPEP 714 II. C. (A). Furthermore, the amendments do not account for all of the changes made to the claims. For example, portions of the claims as filed 4/14/2022 appear above, with the amendment dated 8/18/2025 appearing below:
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(Claims dated 4/14/2022).
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(Claims dated 8/18/2025).
Note how the term “second” is not shown as canceled in the amendment. To prevent delays in prosecution, compliance with the amendment rules is waived for this response only. Future replies should adopt proper amendment / status identifier practice. See generally MPEP 714.
Claim(s) 1-2 is/are pending.
Claim(s) 1-2 is/are currently amended.
Claim(s) 3-14 is/are acknowledged as cancelled.
The action is FINAL.
Response to Arguments
Specification
I. With respect to the objection to the specification for failing to provide proper antecedent basis for the claimed subject matter, cancellation of “predetermined” from the claims obviates the objection. The objection is WITHDRAWN.
Claim Rejections – 35 U.S.C. §112
I. With respect to the rejection of Claims 1-2 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, cancellation of “predetermined” from the claims obviates the rejection. The rejection is WITHDRAWN.
Claim Rejections – 35 U.S.C. §103
I. With respect to the rejection of Claim(s) 1-2 under 35 U.S.C. 103 as being unpatentable over US 2012/0034150 to Noyes, et al. in view of: (i) US 2017/0334725 to Noyes, et al. (“Noyes II”), the traversal would appear to rely upon amendments. The Remarks state:
In addition, applicant has added to claim 1 the feature that the synthetic graphite is powdered. Applicant submits that several of the TEM images of the specification support this amendment. For example, Figures 21-24, 27-30, and 33-36 are TEM images of the output product of the present process. Those images depict the output product, which is particles (or powder) having sizes of 1500 nanometers or less (see for example Fig. 27, which shows an individual output product with a 500 nm scale). Applicant submits such a size is a powder. In fact, inasmuch as the input carbon is powder, there being no compression or pressure applied in applicant's process, applicant submits that the synthetic graphite must be a powder.
(Remarks of 8/18/2025 at 4). In response, as understood, the Specification does not use the word “powder.” The Remarks do not point to any passage with the word “powder,” relying instead on the figures noted above.
Introduction of the term “powder” creates two related issues: (1) How to construe “powder,” and (2) Whether the Specification contains sufficient written description support for the newly added language.
Claim construction is addressed in MPEP 2111:
During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." … The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach.
MPEP 2111 (citations omitted). “[T]he best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms.” MPEP 2111.01 (citations omitted). As discussed above, the language does not exist in the Specification. An ordinary and customary meaning might be: “matter in a finely divided state.” Definition of “powder,” accessed online at https://www.merriam-webster.com/dictionary/powder on 18 November 2025. The references applied in the Office Action do use the term powder. US 2012/0034150 to Noyes states:
[0093] FIG. 12 depicts an image of a particle of the powder from Example 4 at 800 x magnification;
[0094] FIG. 13 depicts an image of a particle of the powder from Example 4 at 120,000 x magnification;
(S. 5: [0093]-[0094]). Figures 12-13 of Noyes are reproduced below:
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(Noyes “Fig. 12-13). US 2017/0334725 to Noyes, et al. (“Noyes II”) uses the term powder throughout. Noyes II states:
[0079] The first powder material may comprise CNTs, carbon nanofibers, a combination thereof. By way of nonlimiting example, the powder material may comprise single-wall CNTs and multi-wall CNTs, such as the single-wall and the multi-wall CNTs described above. A diameter of particles of the first powder material may be between about 1 nm and about 100 μm, such as between about 1 nm and about 10 nm, between about 10 nm and about 50 nm, between about 50 nm and about 100 nm, between about 100 nm and about 500 nm, between about 500 nm and about 1 μm, between about 1 μm and about 5 μm, between about 5 μm and about 10 μm, between about 10 μm and about 50 μm, or between about 50 μm and about 100 μm. In some embodiments, the diameter of the particles of the first powder material is between about 1 μm and about 5 μm.
[0080] The second powder material may comprise one or more materials that may be incorporated into the structure being formed. In some embodiments, the second powder material comprises at least one material selected from the group consisting of at least one metal, at least one ceramic (e.g., a carbide, a nitride, a silicide, an oxide), and at least one other material. By way of nonlimiting example, the second powder material may comprise one or more of aluminum, silicon, phosphorus, sulfur, titanium, vanadium, chromium, manganese, iron, cobalt, nickel, copper, zinc, zirconium, palladium, silver, cadmium, tin, tantalum, tungsten, platinum, and gold, a ceramic (e.g., a carbide (e.g., aluminum carbide, tungsten carbide, cementite, silicon carbide, titanium carbide, boron carbide, etc.), an oxide (e.g., alumina (Al2O.sub.3), beryllia, ceria, zirconia, etc.) a nitride (e.g., silicon nitride), a silicide (e.g., ferrosilicon (Fe5Si2), manganese silicide (MnSi2), titanium disilicide (TiSi2), silicon boride (SiB4, SiB6), etc.), borides (such as, for example, aluminum diboride (AlB2), cobalt boride (CoB, CO2B), nickel boride (NiB), tantalum boride (TaB, TaB2), titanium boride (TiB2), tungsten boride (WB), etc.), or combinations thereof.
(Noyes II 8: [0079]-[0080]). As understood, Noyes and Noyes II share the same applicant/assignee as the instant application, so some weight is given to the use and context of the term “powder” in the Noyes references. They would appear to be describing a “material in a finely divided state.”
It is ““reasonably”” clear that the Applicant possessed a “material in a finely divided state.” The Examiner adopts that construction of the term “powder.” The term is generic and reads on any number of structures/morphologies that only become visible upon higher magnification or other analysis. The new language is construed further, below.
The Remarks state “the input carbon in this application is a collection of different morphologies of carbon, not limited to CNTs and carbon fiber.” (Remarks of 8/18/2025 at 5). In response, Claim 1 requires inputting carbon monoxide to produce a solid carbon reaction product. This reaction product is then subjected to the heat treatments. The “solid carbon reaction product” language is generic and does not require any specific morphology or a collection of different morphologies of carbon. The Remarks are not commensurate with the claims.
After making certain characterizations of Noyes II, the Remarks state:
Applicant notes that Noyes II has nothing to do with creating synthetic graphite. The specification mentions the word "graphite" 4 times:
[0108]: referring to a graphite foil used to line the die
[0110]: referring to the die used
[0111]: referring to graphite foil, and comparing the conductivity of a product to being nearly as conductive as graphite
The specification also uses the word "graphitic" three times:
[0038]: referring to the input material, it states "The carbon atoms 102 are covalently bonded into a hexagonal lattice, and thus form a CNT 100 that appears as a single graphitic layer rolled into the form of a tube."
[0039]: again referring to the input material, "FIG. 2 schematically depicts a multi-wall CNT 120 having multiple graphitic layers 122,124,126,128 arranged generally concentrically about a common axis."
[0098]: stating that some of the carbon atoms in Fig 17 "were crystalline (e.g., graphitic)."
There is no indication graphite was even a minute part of the end product. The starting carbon input comprised CNTs and carbon fiber. The output was solid carbon objects of cross-linked CNTs and carbon fiber, which has nothing to do with the present invention.
In contrast, Applicant's output product is powdered synthetic graphite, not a solid carbon object of any specific shape. Noyes I and Noyes II, in combination, provide no information about forming powdered synthetic graphite.
(Remarks of 9/18/2025 at 7) (emphasis added). In response, and as discussed in the Interview Summary, Noyes II teaches:
[0054] Heat is applied to green bodies to link the carbon-containing material together into a more cohesive body in which at least some of the adjacent CNTs and/or carbon nanofibers form covalent bonds between other CNTs and/or carbon nanofibers. For example, the carbon-containing material may be heated at a heating rate from about 1° C./min to about 50° C./min to a temperature of at least 1500° C., 1800° C., 2100° C., 2400° C., 2500° C., 2700° C. or even to just below the sublimation temperature of carbon (approximately 3600° C.). Pressure may also be applied concurrently with, before, or after heat is applied. For example, the carbon-containing material may be pressed at 10 to 1000 MPa, such as 30 MPa, 60 MPa, 250 MPa, 500 MPa, or 750 MPa. The green bodies may be subjected to a heated inert environment, such as helium or argon, in an annealing furnace. Sintering the carbon-containing material (i.e., subjecting CNTs and/or carbon nanofibers to heat in an oxygen-free environment) apparently creates covalent bonds between the CNTs and/or carbon nanofibers at points of contact. The sintering of the carbon-containing material typically occurs in a non-oxidizing environment, such as a vacuum or inert atmosphere so that the CNTs and/or carbon nanofibers are not oxidized during the sintering. Sintering the carbon-containing material to induce chemical bonding at the contact surfaces may improve desirable material properties such as strength, toughness, impact resistance, electrical conductivity, or thermal conductivity in the solid structure product when compared to the green material. The carbon-containing material may also be sintered in the presence of additional constituents such as metals or ceramics to form composite structures, lubricants to aid processing, or binders (e.g., water, ethanol, polyvinyl alcohol, coal, tar pitch etc.). Materials may be introduced as powders, shavings, liquids, etc. Suitable metals may include, for example, iron, aluminum, titanium, antimony, Babbitt metals, etc. Suitable ceramics may include materials such as oxides (e.g., alumina, beryllia, ceria, zirconia, etc.), carbides, boride, nitrides, silicides, etc. In embodiments in which materials other than CNTs and/or carbon nanotubes are present, covalent bonding occurs between at least some of the CNTs and/or carbon nanofibers, and the additional materials may become locked into a matrix of CNTs and/or carbon nanofibers.
(Noyes II [0054]). The high temperatures taught in Noyes II are well known in causing graphitization. Fischbach, The Graphitization Process, Tanso 1970; 53: 115-120 (hereinafter “Fischbach at __”) is made of record in support of this. Fischbach states “The graphitization range, above about 2000°C, in which hydrogen and other impurities have largely evaporated and, perhaps, cross-link bonds have been broken down. La growth continues, and the đ decrease is significant, and layer stacking order develops.” (Fischbach at 117, col. 2). Dahn, et al., Mechanisms for Lithium Insertion in Carbonaceous Materials, Science 1995; 270: 590-593 (hereinafter “Dahn at __”) is also made of record in support of this. Dahn states:
During further heating of soft carbons above 1000°C, the lateral dimensions of the graphene sheets grow to 150 A; by 2000°C, the layers become parallel (with 50 to 100 layers per stack) but turbostratic misalignment is not relieved, apparently because of some "pinning" that prevents the rotation of layers into the normal stacking found in graphite. Only above 2000°C is enough thermal energy present to overcome this pinning and for the layers to rotate into the registered graphite stacking arrangement. The probability P of finding adjacent graphene sheets in turbostratic misalignment decreases from -1 at 2000°C to near 0 for soft carbons heated to -3000°C.
(Dahn at 590, col. 3). Patentability is not an ipsissimis verbis test. Identity of terminology is not required. MPEP 2131. Thus the fact that the word “graphite” does not have to be present if graphitization would inherently result from the teachings of a reference. This was not persuasive.
The Remarks further traverse on the grounds that “Noyes II is putting the input carbon into a mold (body 244 having an interior shape), with the idea of compressing the carbon. The present process does not involve a mold (indeed, the end product is synthetic graphite, a powder), and there is no compression step as taught by Noyes Il. The input carbon (the “solid carbon reaction product”) of the present application is merely placed into a [generic] reaction vessel.” (Remarks of 8/18/2025 at 8). In response, neither the claims as previously pending nor the claims as currently pending exclude a mold. Neither the claims as previously pending nor the claims as currently pending exclude compression. See MPEP 2111.03 I (definition of “comprising”). Furthermore, Noyes II teaches that the pressure is optional. Specifically, Noyes II states “[p]ressure may also be applied concurrently with, before, or after heat is applied.” (Noyes II 4: [0054]) (emphasis added). See also (Noyes 2: [0031]: “This disclosure includes methods of forming solid carbon products by applying heat and/or pressure to carbon nanotubes, carbon nanofibers, or both.”) (emphasis added). This was not persuasive.
The Remarks state:
Thus, Noyes II produces solid carbon objects comprised of compressed and crosslinked CNTs, i.e. sintered carbons. The present process produces graphite. Hence, the reaction conditions are necessarily different. In particular, Noyes Il uses pressure or lasers to sinter its products (with the “green bodies” being an intermediate product), whereas the present process does not apply pressure or any sintering to the carbon input or graphite output (and there is no intermediate product). In fact, the use of pressure or the seeking of sintering would defeat the intent of the claimed process in this application, which is to produce a powdered synthetic carbon.
(Remarks of 8/18/2025 at 8-9) (emphasis added). These Remarks are inconsistent. “Powdered synthetic carbon” is generic to graphite. Arguably a rejection under the practice set forth in MPEP 2172 would be appropriate, however it is assumed that the Remarks intended to argue graphite. Again, Claim 1 does not exclude pressure or sintering. Intent is irrelevant; the scope of the claim controls. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining
whether the subject matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is the objective reach of the claim.”). This was not persuasive.
The Remarks quote a passage of the rejection, and then state:
Applicant submits that it is correct, the combination of Noyes | and II would produce sintered solid carbon objects formed from crosslinked CNTs and carbon fiber. In contrast, Applicant’s claims do not produce sintered solid carbon objects. According to the present invention, there is no pressure applied to the input “solid carbon reaction product” nor to the graphite being produced, nor is the graphite sintered by laser printing action, as taught by Noyes II. Hence, the products produced by Noyes | and Noyes II on the one hand, and the present invention on the other hand, are only similar in that they both comprise the element carbon; the carbon is in very different morphologies.
(Remarks of 8/18/2025 at 9). In response, the claims as previously presented were broadly drawn to “solid carbon reaction product.” This reads on everything: sintered, not sintered, powder, not powder, pressure, no pressure, laser, no laser, green, not green, etc. Application of Noyes II was entirely proper, especially when it directs the skilled artisan to the process of Noyes (Noyes II 1: [0004]) and calls for nanotubes. (Noyes II 4: [0050]; passim).
The Brief Summary (Remarks of 8/18/2025 at 9-10) has been considered, and is not repeated here. In response:
Only now, after application of the prior art, was “synthetic graphite powder” claimed. Previously, the claims broadly recited a “solid carbon reaction product.” The application of the prior art as set forth in the Non-Final Office Action was correct.
The extremely high temperatures taught in Noyes II call into question whether the carbon fiber and CNTs actually “remain[] carbon fiber and CNTs through the Noyes II processing,” as argued. Note the Fishbach and Dahn references discussed above, and the discussion of graphitization. The “99.9+% graphite powder” sentence fragment was provided without attribution. Where does the Specification state this?
As noted above, neither the claims as previously pending nor the claims as currently pending exclude pressure and temperature or laser sintering of, or heat sintering of the carbon source. Also, as noted above, Noyes II does not require application of pressure.
The rejection is MAINTAINED, as updated below.
Discussion – Claim Construction; Written Description Support
The amendments necessitate discussion before revisiting the prior art. Claim construction is addressed in MPEP 2111. Succinctly stated, the claims are given their broadest reasonable interpretation consistent with the Specification. Claim terms are given their plain meaning (i.e. the ordinary and customary meaning to those of skill in the art), unless it is inconsistent with the Specification. The Specification has been reviewed. The Examiner makes the finding of fact that no claim terms have been defined.
Claim 1 has been amended to require “the solid carbon reaction product having been converted to synthetic graphite powder.” The phrase “synthetic graphite powder” does not appear in the Specification.
The term “powder” has been discussed above. The term “powder” is construed as “material in a finely divided state.”
The term “graphite” has an ordinary, well-established meaning. Fitzer, et al., Recommended Terminology For The Description of Carbon As A Solid, Pure & Appl. Chem. 1995; 67(3): 473-506 (hereinafter “Fitzer at __”) is made of record. Fitzer states:
GRAPHITE
Description:
GRAPHITE is an allotropic form of the element carbon consisting of layers of hexagonally arranged carbon atoms in a planar condensed ring system (GRAPHENE LAYERS). The layers are stacked parallel to each other in a three-dimensional crystalline long-range order. There are two allotropic forms with different stacking arrangements, hexagonal and rhombohedral. The chemical bonds within the layers are covalent with sp2 hybridization and with a C-C-distance of 141.7 pm. The weak bonds between the layers are metallic with a strength comparable to VAN DER WAALS bonding only.
See: CARBON
HEXAGONAL GRAPHITE
RHOMBOHEDRAL GRAPHITE
Note:
The term GRAPHITE is also used often but incorrectly to describe GRAPHITE MATERIALS, i.e. materials consisting of GRAPHITIC CARBON made from CARBON MATERIALS by processing to temperatures greater than 2500 K, even though no perfect graphite structure is present.
See: GRAPHITIC CARBON
CARBON MATERIAL
GRAPHITE MATERIAL
(Fitzer at 491-492). It is submitted that the term “graphite” in the claims should be construed as “graphitic carbon,” i.e. “substances consisting of the element carbon in the allotropic form of graphite irrespective of the presence of structural defects.” (Fitzer at 493).
As discussed above, the “99.9%” allegation made in the Remarks (Remarks of 8/18/2025 at 10: “The output carbon of the present invention is synthetic graphite powder. 99.9+% graphite powder.”) does not appear to be supported. If Applicants disagree, they are requested to identify support for this on the record, in writing. This is necessary to treat the matter. Regardless, the purity is not claimed, and any purity limitation will not be imported into claim. MPEP 2111.01 II.
If anything, the Specification supports the contention that true graphite has not been made, and at best only graphitic carbon has been made. The Specification states:
[0048] FIG. 39 graphs the surface area in square meters per gram of the carbon feedstock (left-most dot or circle) and the 1600° C., 2000° C., and 2400° C. carbon products from the experiments. In addition, the iron content of the 2400° C. treated feedstock product was significantly reduced. As the BET goes down (that is, for the higher temperature samples), this indicates a more graphitic morphology of the carbon. It appears that, were experiments conducted at even higher temperatures, the carbon product would likely become even more graphitic.
(S. 4: [0048]) (emphasis added). Something with iron in it is not 99.9+% graphite. Likewise, use of the comparative adjective “more” (“more graphitic”) indicates that true graphite has not been produced. It is noted that this passage (and the Fischbach and Dahn references) support the contention that the temperatures in Noyes II would graphitize the products of Noyes.
In lieu of a written description rejection, the term “graphite” in Claim 1 is construed broadly to mean graphitic carbon as defined above, i.e. “substances consisting of the element carbon in the allotropic form of graphite irrespective of the presence of structural defects.” As noted in Fitzer, this term is so frequently misused that its misuse is tacitly sanctioned by the International Unition of Pure and Applied Chemistry.
If Applicants disagree, they are free to construe the language on and for the record, setting for the contentions in support thereof. The Examiner reserves the right to make all appropriate rejections (written description, enablement, etc.) in response to the claim constructions advanced.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
I. Claim(s) 1-2 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0034150 to Noyes, et al. in view of:
(i) US 2017/0334725 to Noyes, et al. (“Noyes II”), and further in view of:
(ii) Fischbach, The Graphitization Process, Tanso 1970; 53: 115-120 (hereinafter “Fischbach at __”) to show a state of fact and
(iii) Dahn, et al., Mechanisms for Lithium Insertion in Carbonaceous Materials, Science 1995; 270: 590-593 to show a state of fact.
With respect to Claim 1, this claim requires “feeding a reaction mixture comprising carbon dioxide and hydrogen at a first first first -et seq. – Bosch reaction) are fed into reactors. (Noyes 8: [0131] et seq. – reactors). The temperature and pressure language is generic. Whatever temperatures and pressures are taught by Noyes read on this. (Noyes 9: [0154] et seq. - Examples).
Claim 1 further requires “feeding a catalyst into the reactor at a second et seq.). The rate language is generic. Whatever rates Noyes teaches or suggests read on this. (Noyes 8: [0132] et seq. – reactors; 9: [0154] et seq. - Examples).
Claim 1 further requires “maintaining the reaction process for a sufficient to produce a solid carbon reaction product.” Times are taught. (Noyes 9: [0154] et seq. - Examples).
Claim 1 further requires “removing the solid carbon reaction product from the reactor and cooling the solid carbon reaction product.” The solid carbon is removed from the reactor. (Noyes 8: [0134]; passim).
Claim 1 further requires “condensing out any water and other gaseous impurities from the solid carbon reaction product.” Condensing water is taught. (Noyes 6: [0104]). See also (Noyes 9: [0153]).
Claim 1 further requires “placing a quantity of the solid carbon reaction product into a reaction vessel.” Noyes teaches making carbon nanotubes (Noyes 9: [0154] et seq.; passim). Noyes would not appear to recite the specific treatment of the carbon nanotubes. This difference does not impart patentability. First, note that Noyes II explicitly refers (i.e. teaches, suggests and motivates) the skilled artisan to Noyes. (Noyes 1: [0004]). Noyes II teaches placing carbon nanotubes into a reactor. See (Noyes II 4: [0050]; passim).
Claim 1 further requires “loading the reaction vessel into a vacuum furnace equipped with a vacuum pump.” Vacuum conditions (Noyes II 2: [0020]; passim) and a vacuum pump (Noyes II 11: [0108]) are taught.
Claim 1 further requires “closing the furnace and beginning to heat the furnace to increase the temperature of the reaction vessel.” The furnace/reactor is closed (Noyes II 4: [0051]) and temperature is increased. (Noyes II 4: [0054]).
Claim 1 further requires “starting the vacuum pump.” Vacuum conditions are taught. (Noyes II 4: [0054]).
Claim 1 further requires “increasing the furnace temperature at a first second a first period of passim).
Claim 1 further requires “increasing the furnace temperature at a second 1 third passim).
Claim 1 further requires “maintaining the reaction vessel temperature at the 2 third passim).
Claim 1 further requires “cooling the reaction vessel at a rate sufficient to ensure that the processed solid carbon reaction product will not oxidize upon opening of the furnace.” Cooling is taught. (Noyes II 2: [0020]).
Claim 1 further requires “opening the furnace and allowing the reaction vessel to cool to a handling temperature.” Cooling is taught. (Noyes II 6: [0067]).
Claim 1 further requires “removing the processed solid carbon reaction product from the reaction vessel.” Removing from the reactor is taught. (Noyes II 6: [0067]).
Claim 1 has been amended to further require “the solid carbon reaction product having been converted to synthetic graphite powder.” As to the graphite language, note the claim construction discussion. While Noyes II does not explicitly say the word “graphite” or “graphitization,” Noyes II teaches temperatures that would inherently result in the further graphitization of the carbon material of Noyes. (Noyes II: 9: [0091] – noting temperatures up to 3500 C). In support of this, the Fitzbach and Dahn references, discussed above, are relied upon. See (Fitzbach at 117, col. 2) and (Dahn at 590, col. 3). As such, it is expected that the carbon of Noyes I will become more graphitized or graphitized carbon, etc. This is the evidence/rationale to show inherency. It is further noted that Noyes II teaches the temperatures that Applicants state on and for the record results in graphitization. Compare (S. 4: [0048]: “this indicates a more graphitic morphology of the carbon”) with (Noyes II: 9: [0091]) (emphasis added). This is additional evidence to show inherency.
As to the powder language, note that Noyes II states that the application of pressure is optional. See e.g. (“This disclosure includes methods of forming solid carbon products by applying heat and/or pressure to carbon nanotubes, carbon nanofibers, or both.”) (emphasis added). As such, Noyes II does not have to result in a compact or cohesive body. Noyes II only suggest a more cohesive body. (Noyes II 4: ]0054]). Noyes II calls for carbon nanotubes (Noyes II 2: [0036]), and directs the skilled artisan to Noyes. (Noyes II 1: [0004]). Noyes II teaches that only “at least some” carbon nanotubes form bonds between them. (Noyes II: [0032]: “The solid carbon products may be formed to include carbon-carbon covalent bonds between at least some adjacent CNTs and/or carbon nanofibers between at least some of their contact points.”). At least some means not all. As such, Noyes II reasonably teaches a finely divided material or a powder.
The combination (Noyes and Noyes II) reflects application of a known technique (the sintering of Noyes II) to a known process for making nanotubes (the Bosch reaction process of Noyes) to achieve predictable results, namely whatever is taught by Noyes II. It is expected to have graphitic domains given the high temperatures taught by Noyes II. Note that Noyes II incorporates Noyes by reference (Noyes 1 : [0004]), so the skilled artisan is taught, suggested and motivated to use the process of Noyes. None of this imparts patentability. MPEP 2143; KSR.
As to Claim 2, inert gasses are taught. (Noyes 8: [0141], [0144]; 10: [0165]), (Noyes II 4: [0054]; 6: [0066]; 10: [0105]).
II. Claim(s) 1-2 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0034150 to Noyes, et al. in view of:
(i) Huang, et al., 99.9% purity multi-walled carbon nanotubes by vacuum high-temperature annealing, Carbon 2003; 21: 2585-2590 (hereinafter “Huang at __).
With respect to Claim 1, this claim requires “feeding a reaction mixture comprising carbon dioxide and hydrogen at a first first first -et seq. – Bosch reaction) are fed into reactors. (Noyes 8: [0131] et seq. – reactors). The temperature and pressure language is generic. Whatever temperatures and pressures are taught by Noyes read on this. (Noyes 9: [0154] et seq. - Examples).
Claim 1 further requires “feeding a catalyst into the reactor at a second et seq.). The rate language is generic. Whatever rates Noyes teaches or suggests read on this. (Noyes 8: [0132] et seq. – reactors; 9: [0154] et seq. - Examples).
Claim 1 further requires “maintaining the reaction process for a sufficient to produce a solid carbon reaction product.” Times are taught. (Noyes 9: [0154] et seq. - Examples).
Claim 1 further requires “removing the solid carbon reaction product from the reactor and cooling the solid carbon reaction product.” The solid carbon is removed from the reactor. (Noyes 8: [0134]; passim).
Claim 1 further requires “condensing out any water and other gaseous impurities from the solid carbon reaction product.” Condensing water is taught. (Noyes 6: [0104]). See also (Noyes 9: [0153]).
Claim 1 further requires “placing a quantity of the solid carbon reaction product into a reaction vessel.” Noyes teaches making carbon nanotubes (Noyes 9: [0154] et seq.; passim). Noyes would not appear to recite the specific treatment of the carbon nanotubes. This difference does not impart patentability. Wang teaches vacuum annealing methods for purifying carbon nanotubes. (Wang Title, Abstract, passim).
Claim 1 further requires “loading the reaction vessel into a vacuum furnace equipped with a vacuum pump.” Huang teaches loading the nanotubes into a vacuum furnace. (Huang at 2586, col. 1). A vacuum pump is taught. (Huang at 2588, col. 2).
Claim 1 further requires “closing the furnace and beginning to heat the furnace to increase the temperature of the reaction vessel.” The nanotubes are heated. (Huang at 2586, Table 1). Closing the furnace is an obvious expedient for safety and/or energy conservation.
Claim 1 further requires “starting the vacuum pump.” Vacuum conditions are taught. (Huang at 2586, col. 1). One of skill in the art understands an on/off switch, etc. and how to operate a vacuum pump.
Claim 1 further requires heating to two temperatures for two time periods. The claims are generic in that they do not specify any temperature or any time. This reads on the heating process of Huang. As the oven increases in temperature, it passes though each temperature for a period of time. (Huang at 2586, col. 1 – 2. Experimental).
Claim 1 further requires “cooling the reaction vessel at a rate sufficient to ensure that the processed solid carbon reaction product will not oxidize upon opening of the furnace.” The subsequent analysis of the nanotubes in Huang suggests cooling enough to handle. The purity of the nanotubes (99.9%) suggests that they were not oxidized. (Huang at 2588, col. 2).
Claim 1 further requires “opening the furnace and allowing the reaction vessel to cool to a handling temperature.” The discussion above is relied upon. It is highly unlikely any of the named authors in Huang (or anyone else) grabbed a fistful of nanotubes at 2150 C. One of skill in the art would be motivated to allow the reactor to cool to prevent injury or death.
Claim 1 further requires “removing the processed solid carbon reaction product from the reaction vessel.” See above. The nanotubes were removed from the reactor and put into, e.g. a SEM.
Claim 1 has been amended to further require “the solid carbon reaction product having been converted to synthetic graphite powder.” As to the graphite language, note the claim construction discussion. Huang teaches graphitized MWNTs. (Huang at 2586, col. 1: “graphitized MWNTs.”). The purity is 99.9%, the same as the Remarks made by Applicants. (Huang at 2588, col. 2). Huang teaches that temperature and time increase graphitization, which is essentially the result presented in the application. Compare (Huang at 2589, col. 1-2 – 3.3. Raman analysis) with (S. 4: [0049]). As to the powder language, Huang teaches a finely divided material. (Huang “Figs,” passim).
The combination (Noyes and Huang) reflects application of a known technique (vacuum annealing, per Huang) to a known process for making nanotubes (the Bosch reaction process of Noyes) to achieve predictable results: graphitization. This does not impart patentability. MPEP 2143; KSR. Furthermore, vacuum annealing per Huang increases efficiency and removescatalysts better than other methods. (Huang at 2590 – 4. Conclusions). One of skill in the art would be motivated to anneal for these reasons. Altenratively or additionally, “an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal-and even common-sensical-we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (emphasis added). Vacuum annealing nanotubes would result in a more pure or cleaner product.
As to Claim 2, inert gasses are taught. (Noyes 8: [0141], [0144]; 10: [0165]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
1 This amendment was not shown in the Claims dated 8/18/2025.
2 This amendment was not shown in the Claims dated 8/18/2025.