DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. 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
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
The response dated 9/22/2025 has been received and will be entered.
Certain informalities were noted in the amendments accompanying the response. For example, in Claim 1 “Providing” is deleted with proper strike-through, but the “providing” that was inserted in its place does not have the required underlining to show an addition was being made. Compliance with the rules are waived for this response. See MPEP 714 related to making amendments, etc.: https://www.uspto.gov/web/offices/pac/mpep/s714.html
Claim(s) 1-11 is/are pending.
Claim(s) 1-11 is/are currently amended.
The action is FINAL.
Response to Arguments
Priority
The Remarks reproduce the Non-Final Office Action dated 8/12/2025, concluding with:
Applicant has amended the Application Data Sheet to be co-pending with Non- Provisional Application No. 14/822,822 (allowed 10/5/2022) which in turn claims priority to Provisional Application No. 62/035,140 (filed 8/8/2014).
The Cross-Reference to Related Applications Section has also been amended accordingly, in accordance with Examiner's suggestions in the following manner.
(Remarks of 9/22/2025 at 6). The amendment to the Specification has been received and will be entered. However, as understood, no Application Data Sheet appears to have been filed. The Electronic Filing Sheet shows only one document being filed:
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The “Tanimola 17931106.pdf” document appears to contain only the response, claim amendments, and specification amendments. The Application Data Sheet is still improper, and needs to be corrected. Please see here for correcting the IDS: https://www.uspto.gov/patents/apply/forms/important-information-completing-application-data-sheet-ads Note especially bullet point 2.
Specification
With respect to the objection to the amendment filed 10/6/2023 under 35 U.S.C. 132(a) because it introduces new matter into the disclosure, the Amendments to the Specification section contains an instruction, stating “Paras. [0068]-[0078] of the original specification have been cancelled because of New Matter.” (Amendment to Specification dated 9/22/2025). This is persuasive. The objection is WITHDRAWN.
Claim Objections
I. With respect to the objection to Claim 1 and Claim 3 for certain informalities, the objection is obviated by amendment. The objection is WITHDRAWN.
Claim Rejections – 35 U.S.C. §112
I. With respect to the rejection of Claims 4-10 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, the response adopts the suggested claims. (Remarks of 9/22/2025 at 8-9). This is persuasive. The rejection is WITHDRAWN.
II. With respect to the rejection of Claim(s) 4-9 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends, the response adopts the suggested claims. (Remarks of 9/22/2025 at 8-9). This is persuasive. The rejection is WITHDRAWN.
III. With respect to the rejection of Claims 1-11 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 Remarks rely on the suggested claims. (Remarks of 9/22/2025 at 12). In response, the Non-Final Office Action stated:
The above claims are offered as a suggestion to overcome the claim objections and claim rejections under 35 USC 112. These amendments presented would obviate the claim objections and rejections under 35 U.S.C. 112(b), (d). There are additional, more substantive issues with the claims. These are addressed under 35 USC 112(a), below:
(Non-Final Office Action dated 8/12/2025 at 12). The enablement rejection stated:
For purposes of the rejection, the claims have been construed as set forth in the “Suggested Claims” section above, which addresses the formal / 112(b),(d) issues.
(Non-Final Office Action dated 8/12/2025 at 14). Stated differently, while the suggested amendments would obviate the rejections under 112(b) and 112(d), they do not obviate the rejections under 112(a).
As state in the rejection, the Examples appear prophetic – i.e. they are “an embodiment of the invention based on predicted results rather than work actually conducted or results actually achieved.” MPEP 2164.02 (emphasis added).
Claim 1 does not actually require a step for making a carbon nanotube in the body of the claim. The only mention of carbon nanotubes appears in the preamble of the claim. Claim 1 merely requires providing a composition and contacting it with a reducing agent. As understood, there was no guidance (examples, etc.) describing this claim in the Specification.
Claim 3 requires contacting an asphaltene derivative with a reducing agent. Again, making carbon nanotubes is only recited in the preamble. No step in the body of the claim itself results in a nanotube being made. The rejection stated:
Scant direction was provided. The best direction was found in the examples. See (S. 19: [0080] et seq.). Example 1 at (S. 20: [0083]1) describes contacting an asphaltene/toluene solution with an oxidizing agent, then ascorbic acid, to make carbon nanotubes. Example 2 at (S. 20: [0084]) describes contacting an asphaltene/toluene solution with a mixed acid, which is then contacted with NaOH, followed by ascorbic acid. While this passage refers to 1D nanostructures, it does not recite carbon nanotubes. In both passages, the present tense is used versus the past tense to suggest work actually done. This is understood as presenting prophetic, versus actual working examples. See MPEP 608.01(p) II.
(Non-Final Office Action dated 8/12/2025 at 16). Stated differently, it is not understood how carbon nanotubes are made from asphaltenes in view of the disclosure. The evidence provided in the rejection – the Shoukat reference and the Gupta reference – teach methods that employ large amounts of energy (DC electric current in the case of arc discharge, a laser in the case of laser ablation, and heat in the case of chemical vapor deposition), and occasionally catalysts (especially in the case of chemical vapor deposition) to make carbon nanotubes. A review of “novel applications of asphaltenes” (i.e. the Kamkar reference), made of record in the Non-Final Office Action, makes no mention of making carbon nanotubes from asphaltenes as claimed. Rather, asphaltenes are viewed as a low-cost substitute filler for carbon nanotubes in certain composites. See (Kamkar at 2, col. 2 – 3, col. 1 ). One of skill in the carbon nanotube art would not recognize treating asphaltenes with a reducing agent would make carbon nanotubes.
While it is submitted this is apparent in view of the references of record, to illustrate the point differently, note: Karacan, et al., Changes in thermal properties of crude oil asphaltenes induced by NaOH treatment, Fuel Processing Technology 1999; 59: 13-21 (hereinafter “Karacan at __”). Karacan teaches treating asphaltenes contained within crude oil with sodium hydroxide, a reducing agent or alkaline solution. Stated differently, Karacan teaches the elements of Claim 3, but does not teach making nanotubes. If Karacan does not make nanotubes from asphaltenes by employing the claimed steps, then how do the Applicants make nanotubes from asphaltenes? This is the information the public needs in exchange for the limited monopoly of a patent. This information was not found in the Specification, and the prior art (and other Wands factors discussed in the rejection) does not support a conclusion of enablement of these claims.
The rejection is MAINTAINED.
Claim Rejections - 35 USC § 112
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. Claims 1-11 – or as stated below – is/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 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 analysis for determining whether a claim is supported by the disclosure is cast in terms of whether “undue experimentation” is necessary to practice the invention. See MPEP 2164.01. In examining the claims in light of the supporting disclosure, the Federal Circuit has provided a non-exclusive list of factors to consider in determining whether a disclosure is enabling. See generally In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These factors include:
The breadth of the claims;
The nature of the invention;
The state of the prior art;
The level of one of ordinary skill;
The level of predictability in the art;
The amount of direction provided by the inventor;
The existence of working examples; and
The quantity of experimentation needed to make or use the invention based on the content of the disclosure
Id. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” Id. The Examiner has considered all factors in light of all claims rejected makes the following findings of fact:
The breadth of the claims
Independent Claim 1 is drawn to a method for synthesis of carbon nanotubes, yet does not require an actual positive process step that makes the nanotubes. Rather, a “composition” is “provided” and contacted with a reducing agent. Most of Claim 1 limits this composition. Dependent Claim 10 suggests that some manner of vapor deposition is involved.
Independent Claim 3 is drawn to a method for synthesis of carbon nanotubes, yet does not require an actual positive process step that makes the nanotubes. Rather, an asphaltene derivative is contacted with a reducing agent.
The nature of the invention
The invention is ostensibly a method of synthesizing carbon nanotubes. See (S. 2: [0006]).
The state of the prior art
The examiner will stipulate that a well-developed body of prior art exists, with most recent references being devoted to CVD techniques for making nanotubes. Other older references include laser ablation and arc discharge techniques. Two relatively recent review articles are made of record:
Shoukat, et al., Carbon nanotubes: a review on properties, synthesis methods and applications in micro and nanotechnology, Microsystem Technologies 2021; 27: 4182-4192 (hereinafter “Shoukat at __”). See generally (Shoukat at 4184, col. 2 et seq. – 3 Synthesis methods of carbon nanotubes).
Gupta, et al., Carbon nanotubes: synthesis, properties and engineering applications, Carbon Letters 2019; 29: 419-417 (hereinafter “Gupta at __”). See generally (Gupta at 427, col. 2 – Synthesis of CNT).
Both discuss arc discharge, laser ablation, chemical vapor deposition, and plasma assisted chemical vapor deposition. The references would not appear to discuss techniques involving contacting asphaltene mixtures with reducing agents.
The level of one of ordinary skill
The level of skill in the art is high, frequently PhD level chemists, chemical engineers, and physicists. Note the authorship of Shoukat and Gupta, as well as the references cited in Shoukat and Gupta.
The level of predictability in the art
The level of predictability in the art necessarily involves a threshold inquiry of what one seeks to predict. Here, with conventional techniques (laser ablation, arc discharge, chemical vapor deposition), the art is predictable. With unconventional techniques – like those claimed - however, the art is unpredictable.
The amount of direction provided by the inventor
Scant direction was provided. The best direction was found in the examples. See (S. 19: [0080] et seq.). Example 1 at (S. 20: [0020]) describes contacting an asphaltene/toluene solution with an oxidizing agent, then ascorbic acid, to make carbon nanotubes. Example 2 at (S. 20: [0084]) describes contacting an asphaltene/toluene solution with a mixed acid, which is then contacted with NaOH, followed by ascorbic acid. While this passage refers to 1D nanostructures, it does not recite carbon nanotubes. In both passages, the present tense is used versus the past tense to suggest work actually done. This is understood as presenting prophetic, versus actual working examples. See MPEP 608.01(p) II.
The existence of working examples
As discussed above, no working examples were provided. No micrographs of nanotubes were presented. No results (diameter, length, surface area, density, etc.) were reported.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure
Those factors weighing in support of a conclusion of enablement include the level of skill in the art. Those factors weighing against a conclusion of enablement include the lack of guidance in the Specification, lack of examples, lack of prior art related to the claimed “asphaltene method” and breadth of the claims, which do not recite an actual step of making nanotubes. While the preambles of the claims have been considered, these claims are essentially methods for treating asphaltenes with no specific result. Arguably infinite but certainly undue experimentation is needed to practice the claimed invention.
Conclusion
This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted. Please note that the Office also offers initiatives that are available to applicants after the close of prosecution. See https://www.uspto.gov/patents/initiatives/uspto-patent-applications-iniatives-timeline for more information.
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If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final reply that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
1 Errant keystrokes in the Non-Final Office Action incorrectly referred to paragraph [0020].