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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/24/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 03/24/2026.
Claims 1-11 and 28-35 are presently pending and under examination; claims 12-27 are canceled; claims 1, 28, 32 and 34-35 are amended.
The objection to claim 28 is withdrawn in light of the amendments to the claims.
The provisional nonstatutory double patenting rejections of claims 1, 7-11, 29-30 and 33-34 over -373 and claims 6 and 31 over -373 in view of HAKEEM are withdrawn.
The 35 U.S.C. 103 rejection of claims 1-11, 28-31 and 33-35 over FULTON in view of HAKEEM is withdrawn in light of the amendments to the claims; the 35 U.S.C. 103 rejection of claims 1-5, 7-11 and 28-35 over FULTON in view of SILVY is maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
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.
Claims 1-5, 7-11 and 28-35 are rejected under 35 U.S.C. 103 as being unpatentable over FULTON in view of Silvy, et al. (U.S. Pub. No. 2015/0283539-A1) (hereinafter, “SILVY”).
Regarding claim 1, FULTON teaches a carbon nanotube (CNT) hybrid material (see FULTON at generally at Abstract), comprising:
a blend comprising a metal catalyst comprising metal oxide particles (see FULTON at claim 1, Figs. 9 and 11, and paragraphs [0029], [0031], [0069]-[0070] and [0072] and Table 1, teaching a blend comprising a metal catalyst provided in the form of particles, such as a Ni, Fe or Co metal catalyst comprising an oxide such as MgO, ZnO, Mo2O3 or SiO2),
CNTs grown on the catalyst (see FULTON at Figs. 9 and 11, and paragraphs [0029], [0031] and [0047], teaching a blend comprising CNT, wherein after formation of the CNT, metal catalyst particles are still present; it is noted that the word “grown” is considered product-by-process language which is not given patentable weight in the present product claim, see MPEP § 2113), and
and at least one material selected from the group of materials consisting of: cementitious materials, materials used in the production of cementitious materials, and materials used to enhance cementitious materials (see FULTON at paragraphs [0018], [0045], [0074]-[0076] and Table 1, teaching blending with cement and supplementary cementitious materials, e.g., fly ash); and
FULTON fails to explicitly mention that the metal catalyst is dispersed on the surfaces of alumina support particles.
However, it is known in the art of CNT materials to use alumina-supported catalysts. For example, SILVY teaches a metal catalyst suitable for preparing multi-wall carbon nanotubes, and a CNT material formed thereof (see SILVY at paragraphs Abstract and paragraphs [0059] and [0063]), wherein the metal catalyst comprises cobalt, iron and molybdenum dispersed on the surfaces of alumina support particles (see SILVY at paragraphs [0006], [0024]-[0025], [0029] and [0044]-[0051]). SILVY teaches using this type of catalyst will provide multi-wall CNTs having narrow distribution ranges of walls and external diameters, which improves the value of the CNTs for mechanical reinforcement applications and provides enhanced thermal conductivity and mechanical strength (see SILVY at paragraphs [0002]-[0006] and [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the CNT hybrid material of FULTON by simply substituting the metal catalyst of FULTON (e.g., catalysts comprising iron/cobalt and metal oxides such as magnesium oxide/ molybdenum oxide; see FULTON at paragraph [0070]) with the metal catalyst of SILVY comprising metallic oxides of cobalt, iron and molybdenum dispersed on the surface of alumina support particles (see SILVY at paragraphs [0006], [0024]-[0025], [0029] and [0044]-[0051]). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing a metal catalyst which is suitable for preparing multi-wall carbon nanotubes (see FULTON at paragraphs [0046]-[0047] and [0070]; see SILVY at Abstract and paragraph [0006]). Further, one of ordinary skill in the art would have been motivated to use the catalyst of SILVY in the material of FULTON for the benefit of providing multi-wall CNTs having narrow distribution ranges of walls and external diameters, thereby improving the value of the CNTs for mechanical reinforcement applications and providing enhanced thermal conductivity and mechanical strength as taught by SILVY (see SILVY at paragraphs [0002]-[0006] and [0008]). Additionally, as exemplified by SILVY, the claimed catalyst is a known catalyst in the art; MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding claims 2-3, as applied to claim 1 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 1, wherein the cementitious material comprises a hydraulic cement, as required by claim 2, and wherein the hydraulic cement comprises Portland cement, as required by claim 3 (see FULTON at paragraphs [0003] and [0045]).
Regarding claims 4-5, as applied to claim 1 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 1, wherein the cementitious material comprises a supplementary cementitious material (SCM), as required by claim 4, and wherein the SCM comprises fly ash, as required by claim 5 (see FULTON at paragraph [0045] and Table 1).
Regarding claims 7-11 and 29-30, as applied to claim 1 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 1.
FULTON does not explicitly disclose “wherein the CNT are grown on at least part of the blend in a rotary kiln reactor” as recited by claim 7; “wherein the supported catalyst and the cementitious material are blended and then fed into the reactor wherein CNT are grown on this blend”, as recited by claim 8; “wherein the supported catalyst is fed into the reactor wherein CNT is grown on the supported catalyst to create a hybrid material, and then the hybrid material is blended with the cementitious material” as recited by claim 9; “wherein the hybrid material is blended with the cementitious material by mechanical mixing of the two in powder form” as recited by claim 10; “wherein the hybrid material is blended with the cementitious material by preparing a dispersion of the hybrid material in an aqueous solution and then mixing the dispersion with the cementitious material” as recited by claim 11; “wherein prior to CNT growth the alumina particles comprise agglomerations of elementary alumina particles that are smaller than about 1 micron in size”, as recited by claim 29; or “wherein the CNTs cause de-agglomeration of the elementary alumina particles in the CNT hybrid material”, as recited by claim 30; however, all of these limitations are considered product-by-process claim language and are not given patentable weight.
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Regarding claim 28, as applied to claim 1 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 1, wherein the CNTs have an aspect ratio overlapping with and thereby rendering obvious the claimed range of over 1000 (see FULTON at paragraph [0049], teaching CNTs with diameters under 100 nm and lengths of up to greater than 20,000 nm, which yields aspect ratios of over 1000; e.g., a diameter of 10 nm and a length of 20,000 nm is an aspect ratio of 2,000). As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)).
Regarding claim 31, as applied to claim 1 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 1, wherein the alumina particles have a diameter overlapping with and thereby rendering obvious the claimed range of less than 70 microns in diameter (see SILVY at paragraphs [0028] and [0030], teaching a particle size of 20 to 150 microns). As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)).
Regarding claim 32, as applied to claim 1 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 1, wherein the catalyst comprises an active metal that makes up an amount overlapping with and thereby rendering obvious the claimed range of less than 1% by weight of the total weight of the catalyst plus alumina support particles (see SILVY at paragraphs [0025]-[0026] and [0030]-[0035], teaching the catalyst particles comprising, by weight, between 91% and 97.6% gamma alumina support particles, between 0.5% and 3.3% Mg support particles (MgO and MgAl2O4), and active metals including from 0.5% to 2% Co, from 0.3% to 2% Mo, and from 0% to 3% Fe).
Regarding claim 33, as applied to claim 1 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 1, further comprising carbon black (see FULTON at paragraphs [0008]-[0009] and [0074]).
Regarding claim 34, as applied to claim 33 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 33; the recitation of “wherein the carbon black is mixed with the supported catalyst before the CNTs are grown on the catalyst” is considered product-by-process claim language and is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Regarding claim 35, as applied to claim 34 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 34.
FULTON does not explicitly mention that carbon black is present at levels of from about 10% to about 50% by weight of the supported catalyst.
However, FULTON teaches a mass ratio of nanocarbon to catalyst of 20:1 to 40:1, wherein the nanocarbon comprises a mixture of CNTs and carbon black in a desired mass ratio (see FULTON at paragraphs [0008]-[0011], [0072] and [0074]), and further teaches that the mass percentage ranges of each the different types of nanocarbon included (e.g., the ratio of CNT and carbon black) can be varied to obtain the desired mixture characteristics (see FULTON at paragraphs [0008]-[0011] and [0074]). FULTON therefore explicitly teaches that the amount/ratio of carbon black and CNTs (and resulting ratio of carbon black to catalyst) is a result-effective variable which may be optimized by one of ordinary skill in the art. MPEP states that “[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.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "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." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over FULTON in view of SILVY, as applied to claim 1 above, and further in view of Harutyunyan, et al. (U.S. Pub. No. 2006/0078489-A1) (hereinafter, “HARUTYUNYAN”).
Regarding claim 6, as applied to claim 1 above, FULTON in view of SILVY teaches a CNT hybrid material according to claim 1. However, FULTON and SILVY fail to explicitly teach that the alumina particles are nano-alumina particles.
HARUTYUNYAN teaches a CNT hybrid material for use in reinforcement and nanocomposite applications (see HARUTYUNYAN generally at Abstract and paragraphs [0016] and [0063]) wherein the CNTs are synthesized with a metal catalyst supported on powdered alumina particles having a particle size of 0.01 microns to 100 microns, i.e., as low as 10 nm (see HARUTYUNYAN at paragraphs [0016]-[0017], [0033]-[0034] and [0043]-[0044]). HARUTYUNYAN teaches that using powdered alumina having a small particle size within this range as the solid support provides large surface areas and helps to prevent agglomeration of the metal catalyst nanoparticles (see HARUTYUNYAN at paragraphs [0043]-[0044] and [0047]), i.e., HARUTYUNYAN explicitly teaches that the size of the alumina support particles is a result-effective variable which may be optimized by one of ordinary skill in the art.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the CNT hybrid material of FULTON in view of SILVY by using nano-sized alumina powder as the metal catalyst support as taught by HARUTYUNYAN (see HARUTYUNYAN at paragraphs [0016]-[0017], [0033]-[0034] and [0043]-[0044]). One of ordinary skill in the art could have selected an alumina particle size within the nano range through routine experimentation and optimization in order to achieve the desired surface area and to reduce agglomeration of the metal catalyst nanoparticles as taught by HARUTYUNYAN (see HARUTYUNYAN at paragraphs [0043]-[0044] and [0047]). As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)). MPEP states that “[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.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "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." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Fulton discloses only metal catalysts and metal oxide catalysts… Fulton does not disclose metal oxide catalyst support particles… since Fulton’s catalyst is a metal or a metal oxide particle, there would be no reason to substitute a catalyst comprising a metal on an alumina particle. Accordingly, the combination of Fulton and Silvy is not obvious” (see Remarks at pg. 1-2).
However, for at least the following reasons the Examiner finds these arguments unpersuasive.
In response to Applicant' s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as set forth in the rejection above, the claimed catalyst supported by alumina particles is a well known metal catalyst for CNT synthesis in the art; MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Additionally, as discussed in the rejection above, FULTON discloses a metal catalyst comprising metals and metal oxides which are the same as those taught by SILVY; one of ordinary skill in the art could simply substitute one metal catalyst for another metal catalyst with a reasonable expectation of success yielding predictable results. Further, as discussed in the rejection above, SILVY provides explicit motivation for one of ordinary skill in the art to use the metal catalyst supported on alumina particles, teaching that using this type of catalyst will provide CNTs having narrow distribution ranges of walls and external diameters, which improves the value of the CNTs for mechanical reinforcement applications and provides enhanced thermal conductivity and mechanical strength (see SILVY at paragraphs [0002]-[0006] and [0008]).
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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