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 .
Response to Amendment
This office action is in response to the Amendment filed on 03/23/2026.
Claims 11, 14, 16-18, 21, 23-28, 30-32 and 35 are presently pending and under examination; claims 1-10, 12-13, 15, 19-20, 22, 29, 33-34 and 36-37 are canceled; claims 11, 25 and 27 are amended.
The rejections of claims 33-34 and 36-37 under 35 U.S.C 112(a) are moot as these claims have been canceled.
The 35 U.S.C. 102 rejection of claims 11, 14, 16-18, 23-24, 26-28, 30 and 35 over SHEARER and the 35 U.S.C. 103 rejections of claim 25 over SHEARER in view of OSWALD and SHANKMAN, claim 21 over SHEARER in view of FINI, claim 31 over SHEARER in view of LUTHE, and claim 32 over SHEARER in view of SONG are withdrawn in light of the amendments to the claims; the rejections of claims 12-13, 22, 33-34 and 36-37 are moot as these claims have been canceled.
The finality of the Office action mailed 11/24/2025 is hereby withdrawn in view of the statement regarding the 35 U.S.C. 102(b)(2)(C) exception for FINI filed 03/23/2026.
New grounds of rejection are present herein in light of the amendments to the claims.
Claim Rejections - 35 USC § 103
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 11, 14, 16-18, 21, 23-28, 30 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Shearer, et al. (U.S. Pub. No. 2019/0315662-A1) (hereinafter, “SHEARER”; it is noted that SHEARER incorporates De Leij, et al. (WO-2009/016381-A2; hereinafter, “DE LEIJ”) by reference, therefore the disclosure of DE LEIJ is considered part of the disclosure of SHEARER; see MPEP 2163.07(b)) in view of Oswald, et al. (U.S. 2019/0106637-A1) (hereinafter, “OSWALD”), Shankman (AU-2015/213412-A1) (hereinafter, “SHANKMAN”) and Dandamudi, et al., “Production of functionalized carbon from synergistic hydrothermal liquefaction of microalgae and swine manure”, Resources, Conservation and Recycling, Volume 170, available online 16 March 2021 (hereinafter, “DANDAMUDI”).
Regarding claim 11, SHEARER teaches a method of functionalizing biochar (see SHEARER generally at Abstract), the method comprising:
removing contaminants from the biochar to yield decontaminated biochar (see SHEARER at paragraphs [0048] and [0059], teaching subjecting the biomass to a pyrolysis charring process wherein the temperature is selected to remove unwanted compounds or other contaminants, and teaching post-treatment of the biochar formed by pyrolysis which can include washing the biochar to remove volatiles);
wherein the biochar is derived from algae and/or manure (see SHEARER at paragraphs [0016] and [0048] and DE LEIJ at pg. 2, lines 16-26);
oxidizing the decontaminated biochar to yield oxidized biochar (see SHEARER at paragraphs [0048] and [0058], teaching activating the biochar generated via pyrolysis with steam, which is an oxidizing agent; see SHEARER at paragraphs [0063] and [0065], teaching chemically and/or physically treating the biochar to form biochar with activated carbon which can then be mixed with another material to functionalize the biochar; see SHEARER at paragraph [0048], incorporating the disclosure of DE LEIJ; see DE LEIJ at pg. 1, line 29 – pg. 2, line 7, teaching that biochar formed by pyrolysis can be activated via oxidation with carbon dioxide, steam, or acid at high temperatures);
and functionalizing the oxidized biochar (see SHEARER at Fig. 2 and paragraphs [0005], [0063] and [0065], teaching functionalizing the activated/oxidized biochar by mixing it with chemicals),
wherein functionalizing the biochar comprises contacting the oxidized biochar with a solution comprising a source of functional groups to yield a functionalized biochar in solution (see SHEARER at paragraphs [0063] and [0065], teaching functionalizing the activated/oxidized biochar by mixing it with chemicals, e.g., urea or a phosphorous source);
separating the functionalized biochar from the solution; drying the functionalized biochar; and washing the functionalized biochar (see SHEARER at paragraphs [0002], [0019] [0059] and [0061], teaching that post-treatment of the biochar can include high temperature heating (i.e., drying) and solvent washing to obtain the solid (i.e., not in solution) final product; see also DE LEIJ at e.g., pg. 15, lines 28-29, pg. 24, line 23, pg. 42, lines 23-25 and pg. 48, lines 16-20, teaching that char product is obtained by separating the char from treatment solution and drying/washing).
However, SHEARER fails to explicitly teach that (i) the biochar is decontaminated by sonicating the biochar to yield graphene oxides and exfoliating graphene sheets from the graphene oxides, or to explicitly mention that (ii) the algae and manure are blended.
Regarding (i) above, OSWALD teaches a method of functionalizing biochar (see OSWALD at paragraph [0051]) comprising removing impurities from the biochar via sonication (see OSWALD at paragraphs [0060]-[0061]). OSWALD does not explicitly mention that sonicating the biochar yields graphene oxides which are exfoliated.
However, it is known in the art that sonication of biochar can yield graphene oxides. For example, SHANKMAN teaches a method of forming functionalized graphene oxide using biochar as the carbon source (see SHANKMAN at Abstract and paragraphs [0016], [0079], [0249]) comprising applying ultrasonic vibrations to promote the formation of graphene oxide platelets/sheets (see SHANKMAN at paragraphs [0347] and [0354]). SHANKMAN further teaches that the method comprises exfoliating graphene sheets from the purified graphene oxides (see SHANKMAN at paragraphs [0009], [0017] and [0079]).
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 method of SHEARER by incorporating the step of sonicating the biochar as taught by OSWALD (see OSWALD at paragraphs [0060]-[0061]), in order to yield purified graphene oxides as taught by SHANKMAN (see SHANKMAN at Abstract and paragraphs [0347] and [0354]), and incorporating the step of exfoliating the graphene sheets from the purified graphene oxide as taught by SHANKMAN (see SHANKMAN at paragraphs [0009], [0017] and [0079]). One of ordinary skill in the art would have been motivated to make this modification for the benefit of effectively removing impurities from the biochar (see OSWALD at paragraphs [0060]-[0061]) and producing separate purified graphene sheets which can be used for other purposes, e.g., as polishing agents, as taught by SHANKMAN (see SHANKMAN at Abstract and paragraph [0005]).
Regarding (ii) above, DANDAMUDI teaches a method of functionalizing biochar which is derived from a blend of algae and manure (see DANDAMUDI at Title and Abstract). DANDAMUDI teaches that using a balanced feedstock of high protein and high lipid from a combination of algae and swine manure provides a synergistic effect and has many benefits such as providing biochar with enhanced interaction with various matrices to reduce the chance of leachate and with great potential as use as a free-radical scavenger (see DANDAMUDI at §1, pg. 2, §4, pg. 8, and §5, pg. 9).
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 further modified the method of SHEARER by selecting a blend of both algae and manure as the biochar source material as taught by DANDAMUDI (see DANDAMUDI at Abstract; see SHEARER at paragraphs [0016] and [0048] and DE LEIJ at pg. 2, lines 16-26, teaching both algae and manure), as DANDAMUDI teaches that a mixture of algae and manure is a known source material for biochar. 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, one of ordinary skill in the art would have been motivated to use a blend of both microalgae and swine manure for the benefit of providing a balanced renewable feedstock having a synergistic effect and forming biochar having benefits such as the ability to reduce the chance of leachate and to be used as a free-radical scavenger as taught by DANDAMUDI (see DANDAMUDI at §1, pg. 2, §4, pg. 8, and §5, pg. 9).
Regarding claim 14, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 11, wherein oxidizing the biochar comprises contacting the biochar with an acid (see SHEARER at paragraph [0048]; see DE LEIJ at pg. 1, line 29 – pg. 2, line 7, teaching oxidizing the biochar with acid).
Regarding claims 16-18, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 11, wherein the method further comprises coupling the functional groups to the oxidized biochar, as required by claim 16; the source of functional groups comprises a source of amine groups or a source of phosphorous, as required by claim 17; and the source of amine groups comprises urea, as required by claim 18 (see SHEARER at paragraphs [0063] and [0065], teaching functionalizing the activated/oxidized biochar by mixing it with chemicals, e.g., urea or a phosphorous source).
Regarding claim 21, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 11.
SHEARER fails to explicitly mention that the biochar comprises polyaromatic rings connected through polyphosphate bridges; however, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a biochar as recited in claim 11 which is made from algae and manure and is prepared at temperatures within the same range as the biochar of the present invention (see SHEARER at paragraphs [0047] and [0049] teaching temperatures of, e.g., 300 °C), and Applicant’s specification states that char prepared at temperatures of 280-350 °C contain small polyaromatic rings connected through polyphosphate bridges in paragraph [0083]. The biochar of SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI would therefore also be expected to comprise polyaromatic rings connected through polyphosphate bridges as it is a biochar according to the present claim which is formed via a substantially similar process, and would therefore be expected to have the same or overlapping properties. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 23, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 11, wherein the biochar comprises micropores (see SHEARER at paragraph [0060], teaching a pore size of 5 to 50 microns, i.e., micropores).
Regarding claim 24, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 11, wherein oxidizing the decontaminated biochar increases the number of active sites that can be functionalized on the decontaminated biochar (see SHEARER at paragraphs [0063] and [0048] and DE LEIJ at pg. 1, line 29 – pg. 2, line 7, teaching that activating/oxidizing the biochar results in increased surface area and cation exchange capacity and allows for improved functional activity of the biochar).
Regarding claim 25, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 11. SHEARER further teaches sorting the biochar by particle size/density, which can be accomplished by screening (i.e., sieving) (see SHEARER at paragraphs [0017] and [0063]), but does not explicitly mention sieving the sonicated biochar.
OSWALD further teaches filtering the sonicated biochar to remove larger particles or impurities (i.e., sieving) (see OSWALD at paragraph [0060]), which would allow for the removal of the purified graphene oxides.
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 further modified the method of SHEARER by incorporating the step of sieving the sonicated biochar (thereby removing the purified graphene oxides) as taught by OSWALD (see OSWALD at paragraph [0060]). One of ordinary skill in the art would have been motivated to make this modification for the benefit of sorting particles by size/density and removing larger particles or impurities (e.g., the purified graphene oxide) from the biochar (see SHEARER at paragraphs [0017] and [0060]; OSWALD at paragraph [0060]).
Regarding claim 26, as applied to claim 14 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 14, wherein contacting the biochar with an acid comprises mixing the biochar and a solution of the acid at a temperature above room temperature (see SHEARER at paragraph [0048] and DE LEIJ at pg. 1, line 29 – pg. 2, line 7, teaching oxidizing the biochar with acid at high temperatures).
Regarding claim 27, as applied to claim 14 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 14, further comprising separating the oxidized biochar from the acid by filtering and drying the oxidized biochar (see SHEARER at paragraph [0048] and DE LEIJ at pg. 21, lines 12-21, teaching mixing charred material with an acid, then draining and subsequently drying the material; see DE LEIJ at pg. 48, lines 18-20, teaching filtering and drying charred material; see DE LEIJ at pg. 27, lines 9-10, teaching filtering charred material to remove it from acid; see SHEARER at paragraph [0059], teaching that post-treatment of the biochar can include high temperature heating (i.e., drying)).
Regarding claim 28, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 11, wherein the functional groups comprise amines (see SHEARER at paragraph [0065], teaching functionalizing the biochar by mixing it with urea, which is a source of amine groups).
Regarding claim 30, as applied to claim 15 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 15, wherein the functional groups are configured to promote adsorption and decomposition of organic compounds emitted from bitumen. SHEARER does not explicitly mention bitumen; however, the method of SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI is identical or substantially identical to the claimed method, therefore the functional groups would be expected to have the same properties and behave in the same manner as the functional groups resulting from the claimed method. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Therefore, as SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to the present claim, the functional groups would inherently be configured to promote adsorption and decomposition of organic compounds emitted from bitumen.
Regarding claim 35, as applied to claim 14 above, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 14, wherein the acid comprises sulfuric acid, nitric acid, or a combination thereof (see SHEARER at paragraph [0048] and DE LEIJ at pg. 21, lines 12-15, teaching oxidizing with nitric acid).
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI, as applied to claim 17 above, and further in view of Luthe, et al. (DE-102015013981-A1) (hereinafter, “LUTHE”; citations herein refer to the machine translation provided with a previous office action).
Regarding claim 31, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 17.
However, SHEARER fails to explicitly teach that the source of phosphorous comprises phosphorous acid.
LUTHE teaches a method of functionalizing biochar by mixing it with phosphorous acid (see LUTHE at Abstract and paragraphs [0009] and [0027]).
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 further modified the method of SHEARER by simply substituting the unspecified phosphorous source (see SHEARER at paragraph [0065]) with phosphorous acid as taught by LUTHE. 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 source of phosphorous to functionalize the biochar (see SHEARER at paragraphs [0060], [0063] and [0065]; see LUTHE at paragraphs [0009] and [0027]).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI, as applied to claim 17 above, and further in view of Song, et al. (CN-113145069-A) (hereinafter, “SONG”; citations herein refer to the machine translation provided with a previous office action).
Regarding claim 32, SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI teaches a method according to claim 17.
However, SHEARER fails to explicitly teach that the source of amine groups comprises methylamine, ethylamine, diethylamine, trimethylamine, aniline, benzylamine, or combinations thereof.
SONG teaches a method of functionalizing biochar with a nitrogen source such as urea or aniline (see SONG at Abstract and paragraph 4).
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 further modified the method of SHEARER by simply substituting the urea (see SHEARER at paragraph [0065]) with aniline as taught by SONG, as SONG teaches that urea or aniline can be used interchangeably for the same purpose (see SONG at Abstract). 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 source of phosphorous to functionalize the biochar (see SHEARER at paragraphs [0063] and [0065]; SONG at Abstract and paragraph 4).
Claims 11, 14, 16-18, 21, 23-28, 30 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over SHEARER (it is noted that SHEARER incorporates DE LEIJ by reference, therefore the disclosure of DE LEIJ is considered part of the disclosure of SHEARER; see MPEP 2163.07(b)) in view OSWALD, SHANKMAN and Jin, et al., “Copper(II) removal potential from aqueous solution by pyrolysis biochar derived from anaerobically digested algae-dairy-manure and effect of KOH activation”, Journal of Environmental Chemical Engineering, Volume 4, available online 1 December 2015 (hereinafter, “JIN”).
Regarding claim 11, SHEARER teaches a method of functionalizing biochar (see SHEARER generally at Abstract), the method comprising:
removing contaminants from the biochar to yield decontaminated biochar (see SHEARER at paragraphs [0048] and [0059], teaching subjecting the biomass to a pyrolysis charring process wherein the temperature is selected to remove unwanted compounds or other contaminants, and teaching post-treatment of the biochar formed by pyrolysis which can include washing the biochar to remove volatiles);
wherein the biochar is derived from algae and/or manure (see SHEARER at paragraphs [0016] and [0048] and DE LEIJ at pg. 2, lines 16-26);
oxidizing the decontaminated biochar to yield oxidized biochar (see SHEARER at paragraphs [0048] and [0058], teaching activating the biochar generated via pyrolysis with steam, which is an oxidizing agent; see SHEARER at paragraphs [0063] and [0065], teaching chemically and/or physically treating the biochar to form biochar with activated carbon which can then be mixed with another material to functionalize the biochar; see SHEARER at paragraph [0048], incorporating the disclosure of DE LEIJ; see DE LEIJ at pg. 1, line 29 – pg. 2, line 7, teaching that biochar formed by pyrolysis can be activated via oxidation with carbon dioxide, steam, or acid at high temperatures);
and functionalizing the oxidized biochar (see SHEARER at Fig. 2 and paragraphs [0005], [0063] and [0065], teaching functionalizing the activated/oxidized biochar by mixing it with chemicals),
wherein functionalizing the biochar comprises contacting the oxidized biochar with a solution comprising a source of functional groups to yield a functionalized biochar in solution (see SHEARER at paragraphs [0063] and [0065], teaching functionalizing the activated/oxidized biochar by mixing it with chemicals, e.g., urea or a phosphorous source);
separating the functionalized biochar from the solution; drying the functionalized biochar; and washing the functionalized biochar (see SHEARER at paragraphs [0002], [0019] [0059] and [0061], teaching that post-treatment of the biochar can include high temperature heating (i.e., drying) and solvent washing to obtain the solid (i.e., not in solution) final product; see also DE LEIJ at e.g., pg. 15, lines 28-29, pg. 24, line 23, pg. 42, lines 23-25 and pg. 48, lines 16-20, teaching that char product is obtained by separating the char from treatment solution and drying/washing).
However, SHEARER fails to explicitly teach that (i) the biochar is decontaminated by sonicating the biochar to yield graphene oxides and exfoliating graphene sheets from the graphene oxides, or to explicitly mention that (ii) the algae and manure are blended.
Regarding (i) above, OSWALD teaches a method of functionalizing biochar (see OSWALD at paragraph [0051]) comprising removing impurities from the biochar via sonication (see OSWALD at paragraphs [0060]-[0061]). OSWALD does not explicitly mention that sonicating the biochar yields graphene oxides which are exfoliated.
However, it is known in the art that sonication of biochar can yield graphene oxides. For example, SHANKMAN teaches a method of forming functionalized graphene oxide using biochar as the carbon source (see SHANKMAN at Abstract and paragraphs [0016], [0079], [0249]) comprising applying ultrasonic vibrations to promote the formation of graphene oxide platelets/sheets (see SHANKMAN at paragraphs [0347] and [0354]). SHANKMAN further teaches that the method of forming purified graphene oxides from biochar comprises exfoliating graphene sheets from the purified graphene oxides (see SHANKMAN at paragraphs [0009], [0017] and [0079]).
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 method of SHEARER by incorporating the step of sonicating the biochar as taught by OSWALD (see OSWALD at paragraphs [0060]-[0061]), in order to yield purified graphene oxides as taught by SHANKMAN (see SHANKMAN at Abstract and paragraphs [0347] and [0354]), and incorporating the step of exfoliating the graphene sheets from the purified graphene oxide as taught by SHANKMAN (see SHANKMAN at paragraphs [0009], [0017] and [0079]). One of ordinary skill in the art would have been motivated to make this modification for the benefit of effectively removing impurities from the biochar (see OSWALD at paragraphs [0060]-[0061]) and producing separate, purified graphene sheets which can be used for other purposes, e.g., as polishing agents, as taught by SHANKMAN (see SHANKMAN at Abstract and paragraph [0005]).
Regarding (ii) above, JIN teaches a method of producing functionalized biochar which is derived from a blend of algae and manure (see JIN at Title and Abstract). JIN teaches that using anaerobically digested algae-dairy-manure slurry as feedstock to produce biochar provides biochar which exhibit excellent adsorption of Cu(II) from aqueous solutions (see JIN at Abstract and §4).
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 further modified the method of SHEARER by selecting a blend of both algae and manure (anaerobically digested algae-dairy-manure) as the biochar source material as taught by JIN (see JIN at Abstract; see SHEARER at paragraphs [0016] and [0048] and DE LEIJ at pg. 2, lines 16-26, teaching both algae and manure), as JIN teaches that a mixture of algae and manure is a known source material for biochar. 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, one of ordinary skill in the art would have been motivated to use anaerobically digested algae-dairy-manure for the benefit of providing a biochar which exhibits excellent adsorption of heavy metals such as Cu(II) from aqueous solutions as taught by JIN (see JIN at Abstract and §4).
Regarding claim 14, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 11, wherein oxidizing the biochar comprises contacting the biochar with an acid (see SHEARER at paragraph [0048]; see DE LEIJ at pg. 1, line 29 – pg. 2, line 7, teaching oxidizing the biochar with acid).
Regarding claims 16-18, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 11, wherein the method further comprises coupling the functional groups to the oxidized biochar, as required by claim 16; the source of functional groups comprises a source of amine groups or a source of phosphorous, as required by claim 17; and the source of amine groups comprises urea, as required by claim 18 (see SHEARER at paragraphs [0063] and [0065], teaching functionalizing the activated/oxidized biochar by mixing it with chemicals, e.g., urea or a phosphorous source).
Regarding claim 21, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 11.
SHEARER fails to explicitly mention that the biochar comprises polyaromatic rings connected through polyphosphate bridges; however, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a biochar as recited in claim 11 which is made from algae and manure and is prepared at temperatures within the same range as the biochar of the present invention (see SHEARER at paragraphs [0047] and [0049] teaching temperatures of, e.g., 300 °C), and Applicant’s specification states that char prepared at temperatures of 280-350 °C contain small polyaromatic rings connected through polyphosphate bridges in paragraph [0083]. The biochar of SHEARER in view of OSWALD, SHANKMAN and JIN would therefore also be expected to comprise polyaromatic rings connected through polyphosphate bridges as it is a biochar according to the present claim which is formed via a substantially similar process, and would therefore be expected to have the same or overlapping properties. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 23, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 11, wherein the biochar comprises micropores (see SHEARER at paragraph [0060], teaching a pore size of 5 to 50 microns, i.e., micropores).
Regarding claim 24, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 11, wherein oxidizing the decontaminated biochar increases the number of active sites that can be functionalized on the decontaminated biochar (see SHEARER at paragraphs [0063] and [0048] and DE LEIJ at pg. 1, line 29 – pg. 2, line 7, teaching that activating/oxidizing the biochar results in increased surface area and cation exchange capacity and allows for improved functional activity of the biochar).
Regarding claim 25, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 11. SHEARER further teaches sorting the biochar by particle size/density, which can be accomplished by screening (i.e., sieving) (see SHEARER at paragraphs [0017] and [0063]), but does not explicitly mention sieving the sonicated biochar.
OSWALD further teaches filtering the sonicated biochar to remove larger particles or impurities (i.e., sieving) (see OSWALD at paragraph [0060]), which would allow for the removal of the purified graphene oxides.
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 further modified the method of SHEARER by incorporating the step of sieving the sonicated biochar (thereby removing the purified graphene oxides) as taught by OSWALD (see OSWALD at paragraph [0060]). One of ordinary skill in the art would have been motivated to make this modification for the benefit of sorting particles by size/density and removing larger particles or impurities (e.g., the purified graphene oxide) from the biochar (see SHEARER at paragraphs [0017] and [0060]; OSWALD at paragraph [0060]).
Regarding claim 26, as applied to claim 14 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 14, wherein contacting the biochar with an acid comprises mixing the biochar and a solution of the acid at a temperature above room temperature (see SHEARER at paragraph [0048] and DE LEIJ at pg. 1, line 29 – pg. 2, line 7, teaching oxidizing the biochar with acid at high temperatures).
Regarding claim 27, as applied to claim 14 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 14, further comprising separating the oxidized biochar from the acid by filtering and drying the oxidized biochar (see SHEARER at paragraph [0048] and DE LEIJ at pg. 21, lines 12-21, teaching mixing charred material with an acid, then draining and subsequently drying the material; see DE LEIJ at pg. 48, lines 18-20, teaching filtering and drying charred material; see DE LEIJ at pg. 27, lines 9-10, teaching filtering charred material to remove it from acid; see SHEARER at paragraph [0059], teaching that post-treatment of the biochar can include high temperature heating (i.e., drying)).
Regarding claim 28, as applied to claim 11 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 11, wherein the functional groups comprise amines (see SHEARER at paragraph [0065], teaching functionalizing the biochar by mixing it with urea, which is a source of amine groups).
Regarding claim 30, as applied to claim 15 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 15, wherein the functional groups are configured to promote adsorption and decomposition of organic compounds emitted from bitumen. SHEARER does not explicitly mention bitumen; however, the method of SHEARER in view of OSWALD, SHANKMAN and JIN is identical or substantially identical to the claimed method, therefore the functional groups would be expected to have the same properties and behave in the same manner as the functional groups resulting from the claimed method. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Therefore, as SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to the present claim, the functional groups would inherently be configured to promote adsorption and decomposition of organic compounds emitted from bitumen.
Regarding claim 35, as applied to claim 14 above, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 14, wherein the acid comprises sulfuric acid, nitric acid, or a combination thereof (see SHEARER at paragraph [0048] and DE LEIJ at pg. 21, lines 12-15, teaching oxidizing with nitric acid).
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over SHEARER in view of OSWALD, SHANKMAN and JIN, as applied to claim 17 above, and further in view of Luthe, et al. (DE-102015013981-A1) (hereinafter, “LUTHE”; citations herein refer to the machine translation provided with a previous office action).
Regarding claim 31, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 17.
However, SHEARER fails to explicitly teach that the source of phosphorous comprises phosphorous acid.
LUTHE teaches a method of functionalizing biochar by mixing it with phosphorous acid (see LUTHE at Abstract and paragraphs [0009] and [0027]).
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 further modified the method of SHEARER by simply substituting the unspecified phosphorous source (see SHEARER at paragraph [0065]) with phosphorous acid as taught by LUTHE. 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 source of phosphorous to functionalize the biochar (see SHEARER at paragraphs [0060], [0063] and [0065]; see LUTHE at paragraphs [0009] and [0027]).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over SHEARER in view of OSWALD, SHANKMAN and JIN, as applied to claim 17 above, and further in view of Song, et al. (CN-113145069-A) (hereinafter, “SONG”; citations herein refer to the machine translation provided with a previous office action).
Regarding claim 32, SHEARER in view of OSWALD, SHANKMAN and JIN teaches a method according to claim 17.
However, SHEARER fails to explicitly teach that the source of amine groups comprises methylamine, ethylamine, diethylamine, trimethylamine, aniline, benzylamine, or combinations thereof.
SONG teaches a method of functionalizing biochar with a nitrogen source such as urea or aniline (see SONG at Abstract and paragraph 4).
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 further modified the method of SHEARER by simply substituting the urea (see SHEARER at paragraph [0065]) with aniline as taught by SONG, as SONG teaches that urea or aniline can be used interchangeably for the same purpose (see SONG at Abstract). 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 source of phosphorous to functionalize the biochar (see SHEARER at paragraphs [0063] and [0065]; SONG at Abstract and paragraph 4).
Response to Arguments
Applicant's arguments, see pg. 5-6, filed 03/23/2026, with respect to claim(s) 11, 14, 16-18, 21, 23-28, 30-32 and 35 have been fully considered and are persuasive. The 35 U.S.C. 102 rejection of claims 11, 14, 16-18, 23-24, 26-28, 30 and 35 over SHEARER and the 35 U.S.C. 103 rejections of claim 25 over SHEARER in view of OSWALD and SHANKMAN, claim 21 over SHEARER in view of FINI, claim 31 over SHEARER in view of LUTHE, and claim 32 over SHEARER in view of SONG have been withdrawn. However, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 103 for claims 11, 14, 16-18, 21, 23-28, 30 and 35 over SHEARER in view of OSWALD, SHANKMAN and DANDAMUDI and SHEARER in view of OSWALD, SHANKMAN and JIN, claim 31 further in view of LUTHE, and claim 32 further in view of SONG as set forth above.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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, Amber Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
Prosecution Insights