DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4, 7-9, 12-21, and 25 in the reply filed on 10/06/2025 is acknowledged.
Claims 22-23 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 10/06/2025.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7-9, 12-14, and 17-21 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1, 4, 6, 10, 18-20, 25, 28, 30-34, 39, and 41-45 of copending Application No. 17/859,533 (copending). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The present claims require a method for of making carbon structures, the method comprising the steps of: (i) forming a reaction mixture by contacting a heterogeneous catalyst with a hydrocarbon or carbon source in a chamber, and (ii) focusing an excitation laser on the reaction mixture under conditions that result in formation a carbon structure; wherein the light source has a wavelength from 380 nm to 750 nm (claim 1).
The copending claims of 17/859,533 requires a method for of making hydrogen without carbon release in gas form, the method comprising the steps of: (i) forming a reaction mixture by contacting a heterogeneous catalyst with a hydrocarbon source in a chamber, and (ii) focusing a light source on the reaction mixture under conditions that result in formation a carbon structure, wherein the heterogeneous catalyst at least partially comprises hexagonal boron nitride, optionally comprising at least one catalytically active defect on a surface thereof, or wherein the heterogeneous catalyst at least partially comprises a boron-rich solid such as boron produced through the chemical etching of metal borides (copending, claim 1), wherein the light source is an excitation laser, wherein the excitation laser optionally has a wavelength from 380nm to 750nm, and wherein the excitation laser optionally has a power from 4mW to 500 mW, or higher (copending, claim 10), wherein the heterogeneous catalyst is substantially free of metals, (ii) wherein the hydrocarbon source is selected from a group comprising of methane, ethane, propene allene, propyne, cyclohexene, and higher molecular weight hydrocarbons, (iii) wherein the chamber is pressurized up to 276 kPA, (iv) wherein the light source comprises an excitation laser, a UV LED, a high intensity discharge lamp, or a solar source, and/or (v) wherein the chamber has a temperature of 24 to 80°C (copending, claim 6), which corresponds to the limitations of present claims 1, 2, 3, 5, 7, 8, 9, 10, 12, 13, 14, 17 and 21.
The copending claims further requires wherein the catalytically active defect is selected from the group consisting of Stone-Wales defects, B/N defects, boron substituted nitrogen, nitrogen substituted for boron, carbon substituted for nitrogen, carbon substituted for boron, boron vacancy, nitrogen vacancy, and combinations thereof (copending, claim 4), which corresponds to the limitations of present claim 4.
The copending further requires wherein the carbon structures are primarily composed of graphitic carbon (copending, claim 19), which corresponds to the limitations of present claim 19.
The copending further requires wherein the heterogeneous catalyst at least partially comprises boron-rich solids consisting of low dimensionality non-equilibrium carbon (copending, claim 25), which corresponds to the limitations of present claim 20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 25 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 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 25 recites, “wherein the heterogenous catalyst at least partially comprises a boron-containing solid produced through a chemical etching of aluminum diboride (AlB2) at ambient temperature”, however, there is no support in the instant disclosure for the metal boride of claim 1 being aluminum diboride. While the Specification in Example 3 discloses a catalyst with a high boron content was produced through chemical etching of aluminum diboride at ambient temperature, it also discloses that the material only had a “reduced aluminum content”, and is therefore not substantially free of metals, i.e., aluminum, which is required in claim 1. Further, there is no definition in the instant disclosure for “substantially free” and rather only discloses the catalyst being “metal-free” (Specification, Title; p. 7, lines 16 and 23).
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.
Claims 1-4, 7-9, and 12-21 are rejected under 35 U.S.C. 103 as being unpatentable over Nash et al. (“Analysis of the fluorescence of mechanically processed defect-laden hexagonal boron nitride and the role of oxygen in catalyst deactivation”, 2019) (Nash) in view of Elbadawi et al. (“Electron beam directed etching of hexagonal boron nitride”, 2016) (Elbadawi).
Regarding claims 1-4, 7-9, 12, and 20-21, Nash teaches the use of hexagonal boron nitride (h-BN) as a non-metal heterogeneous catalyst (Nash, Abstract) (i.e., the heterogeneous catalyst is substantially free of metals).
Nash further teaches the h-BN is defect laden (dh-BN) through ball-milling (Nash, p. 154, Col. 1, Paragraph 1) which creates defects such as nitrogen vacancies (Nash, p. 153, Col. 1, Paragraph 2) (i.e., claim 2, heterogeneous catalyst at least partially comprises hexagonal boron nitride; claims 3 and 21, the hexagonal boron nitride has at least one catalytically active defect; claim 4, the catalytically active defect is selected from the group consisting of nitrogen vacancy).
Nash teaches the dh-BN powder is transferred into a pressurization cell under an argon environment. After loading the powder, the cell was pressurized with 275 kPa of either propene or CO2 gas, which falls within the claimed pressure range (Nash, p. 154, Col. 1, Paragraph 2) (i.e., forming a reaction mixture by contacting a heterogeneous catalyst with a hydrocarbon or carbon source in a chamber; claim 7, the hydrocarbon or carbon source is selected from the group comprising propene and CO2; claim 8, the chamber is pressurized up to 276 kPa).
Nash further teaches fluorescence emission spectra were obtained using a microplate reader with an excitation wavelength that scans for fluorescence emission from 280 nm to 850 nm, which overlaps with the range of the presently claimed light source wavelength (Nash, p. 154, Col. 2, Paragraph 1) (i.e., focusing a light source on the reaction mixture; claims 9, the light source is an excitation laser; claim 12, the wavelength is 532 nm). Further, Nash teaches molecules such as propene and carbon dioxide also bind to vacancy defects on h-BN (Nash, p. 157, Col. 2, Paragraph 2) (i.e., under conditions that result in formation of the carbon structures; claim 20, the heterogeneous catalyst at least partially comprises boron-rich solids consisting of carbon).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
However, Nash does not explicitly teach wherein the heterogeneous catalyst at least partially comprises a boron-containing solid produced through a chemical etching of metal borides.
With respect to the difference, Elbadawi teaches chemical dry etching of h-BN (Elbadawi, Abstract) which forms defects in the surface of h-BN (Elbadawi, p. 16185, Col. 1, Paragraph 2).
As Elbadawi expressly teaches, the technique enables damage-free, nano scale, iterative patterning of supported and suspended 2D h-BN, thus opening the door to facile fabrication of h-BN-based 2D heterostructures and devices (Elbadawi, Abstract).
Elbadawi is analogous art as it is drawn to the defect laden h-BN (Elbadawi, Abstract; p. 16185, Col. 1, Paragraph 2).
In light of the motivation of using chemical etching to produce the dh-BN as disclosed by Elbadawi, it therefore would have been obvious to one of ordinary skill in the art to modify the method of Nash by producing defects using chemical etching in order to allow for damage-free, nano scale, iterative patterning of the h-BN, and thereby arrive at the claimed invention.
Regarding claims 13-15, Nash teaches the method of claim 12, wherein the fluorescence emission spectra is related to the wavelength of the microplate reader (Nash, p. 154, Col. 2, Paragraph 1).
Although there are no disclosures on the amounts of power being from 4 mW to 500 mW or 25 mW and the objective being 4x to 50x as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the power and objective, including over the amounts presently claimed, in order to achieve the desired fluorescence emission, and thereby arrive at the claimed invention.
Regarding claim 16, Nash teaches the method of claim 9, wherein the mixture is exposed to excitation wavelengths in 5-minute increments (Nash, p. 154, Col. 2, Paragraph 1), which falls within the claimed range.
Regarding claim 17, Nash teaches the method of claim 1, wherein the temperature in the cell is 27°C (Nash, p. 154, Col. 2, Paragraph 1), which falls within the claimed range.
Regarding claim 18, Nash teaches the method of claim 1, wherein the only deficiency of the method of Nash is that Nash discloses the use of 27°C in the cell, while the present claims require 24°C in the chamber.
It is apparent, however, that the instantly claimed amount of 24°C and that taught by Nash are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the temperature disclosed by Nash and the temperature disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the temperature of 24°C, it therefore would have been obvious to one of ordinary skill in the art that the temperature of 24°C disclosed in the present claims is but an obvious variant of the temperature disclosed in Nash, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 19, Nash teaches the method of claim 1, but does not explicitly state the carbon structures are comprised of graphitic carbon. However, as Nash teaches the method that is substantially identical to the claimed method, it is clear the carbon structures formed in Nash would inherently be comprised of graphitic carbon.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Response to Arguments
In response to applicant’s amendments in claims 1 and 9, the previous claim objection and 112b rejections over claims 9 and 15-16 are withdrawn from the record. However, due to the amendments, a new 112a rejection over claim 25 is set forth above.
In response to Applicants' remark, regarding the double patenting rejection to be held in abeyance, Applicants’ request that the double patenting rejections to be held in abeyance is noted. However, the double patenting rejection will be maintained until such time as the rejection is properly overcome (see MPEP IB and IB1).
Applicant primarily argues:
“Applicant respectfully traverses this rejection as to amended independent claim 1 for at least the following reasons. Nash fails to disclose or suggest that "the heterogeneous catalyst at least partially comprises a boron-containing solid produced through a chemical etching of metal borides." Applicant notes that the foregoing limitation is from claim 5. And Nash was not relied upon to teach or suggest this limitation.
Accordingly, for at least the reasons discussed above, Applicant respectfully requests the withdrawal of the rejection of independent claim 1 and its dependent claims 2-4, 7-9 and 12-21 under 35 USC 103 over Nash.”
Remarks, p. 9
The examiner respectfully traverses as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Nash does not expressly teach the claimed “heterogeneous catalyst at least partially comprises a boron-containing solid produced through a chemical etching of metal borides. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Nash does not disclose the entire claimed invention. Rather, Elbadawi is relied upon to teach claimed elements missing from Nash. See item #20 above.
Applicant further argues:
“Applicant respectfully submits that a person of ordinary skill in the art (POSITA) would not be motivated to combine Elbadawi with Nash to produce an invention that includes both:
i) a heterogeneous catalyst that is substantially free of metals
and
ii) the heterogeneous catalyst at least partially comprises a boron-containing solid
produced through a chemical etching of metal borides
Applicant's reasons are as follows. An object of the present invention is to produce a heterogeneous catalyst that is substantially free of metals. In order to accomplish this goal, a POSITA would want to avoid processes that include metals. Therefore, a POSITA would not be motivated to a combine a process that involves the chemical etching of metal borides (emphasis added). A reason for avoiding chemical etching of metal borides to produce this catalyst is that the process may introduce metal contaminants or residual etchant agents into the catalyst. Since the claim requires that the heterogeneous catalyst be substantially free of metals, such contamination could decrease the catalyst's purity and its intended performance in making carbon structures. In addition, chemical etching can be difficult to control precisely, potentially leading to inconsistent catalyst composition or morphology, which would negatively affect the reproducibility and efficiency of the carbon structure fabrication process. Furthermore, Applicant submits that a POSITA would not believe that there would have been a reasonable expectation of success in obtaining a heterogeneous catalyst that is substantially free of metals if a process that involved the chemical etching of metal bodies was used.”
Remarks, p. 10-11
The examiner respectfully traverses as follows:
Firstly, it is noted that “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). It is the examiner’s position that the arguments provided by the applicant regarding reasons for avoiding chemical etching due to the possibility that chemical etching of metal borides could introduce metal contaminants or residual etching agents into the catalyst, and additionally that chemical etching can be difficult to control precisely, potentially leading to inconsistent catalyst composition or morphology must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Secondly, while applicant argues that a POSITA would not believe that there would have been a reasonable expectation of success in obtaining a heterogeneous catalyst that is substantially free of metals if a process that involved the chemical etching of metal bodies was used, as Elbadawi teaches chemical etching allows for damage-free, nano scale, iterative patterning of the h-BN, and does not teach remaining metal, there is proper motivation to combine Nash with Elbadawi. Further, it is well settled that obviousness does not require absolute predictability of success; all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). See MPEP 2143E.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732