DETAILED ACTION
Status of Claims
Claims 1, 4-6 and 8-20 are pending.
Claims 2-3 and 7 are cancelled.
Claims 17-20 are withdrawn from consideration.
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 Objections and Rejections
The previous grounds of rejection stand.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 4-6, 8-12 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Licht et al. (US 2018/0044183) in view of Licht et al. (WO 2020/092449).
Regarding claims 1 and 9, Licht discloses a method for producing a metal coated carbon nanomaterial (CNM) product, the method comprising steps of: a) heating a carbonate electrolyte media to obtain a molten carbonate electrolyte media (abstract); b) positioning the molten carbonate electrolyte media between a nickel anode and a steel cathode of an electrolytic cell (abstract, [0044]); c) introducing a source of carbon into the electrolytic cell [0042]; d) applying an electrical current to the cathode and the anode in the electrolytic cell (abstract); e) introducing a metal into the molten carbonate electrolyte media by degrading the nickel anode or introducing a metal-containing additive acting as filling or coating agent [0068]; and f) collecting the CNM product from the cathode [0042] (see Fig. 1 and 2A with accompanying text [0042]-[0044]). Licht further discloses in an embodiment use of voltage < 0.7 V [0063] (which falls within the claimed range, 1 volt or less), voltage in the range of 1 V to several V in another embodiment [0049], and voltage in the range of 1-1.5 V in another embodiment [0073]. Licht discloses a current densities of 50 mA/cm2 and 1000 mA/cm2 which overlaps the claimed range therefore a prima facie case of obviousness exists [0054], [0063]. Licht further discloses in FIG. 7D a linear electron dispersive spectroscopy map that shows a nickel trace (710) and a carbon trace (712) (see Fig. 7D and [0068]). Licht discloses wherein the carbon nanomaterial is coated on or within [0068].
Licht differs from the instant claim in that Licht discloses the cathode as steel, galvanized steel, nickel or carbon [0044]. Licht does not indicate that the steel is stainless steel.
In the same or similar field of endeavor, Licht (‘449) discloses producing carbon nanomaterials from a molten carbonate by electrolysis [0008]. Licht discloses that the cathode for electrolysis may be any of copper, stainless steel or Monel material [00103]. In other embodiments, Licht discloses the use of galvanized steel cathodes [0088]-[0089]. Licht discloses a current density of 0.5 A/cm2 [00179] and the use of a nickel anode [0075]. Licht discloses forming a coated carbon nanomaterial [0081], [00122].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a method comprising a stainless steel cathode because Licht (‘449) discloses the use of any materials such as copper, stainless steel, Monel or galvanized steel as cathode material. It would have been obvious to simply substitute one known cathode material with another to produce the same or similar predictable result.
Licht (‘183 or ‘449) does not explicitly teach that the CNM product comprises a “minimum relative-amount” of a metal-coated CNM product that comprises a metal coating formed on an outer surface of a constituent CNM structure within the CNM product and, wherein the minimum relative-amount is between 5 wt% and 99.5 wt% relative to a total amount of the CNM product. It is noted that that this limitation defines intended results of the recited method steps (viz., characteristics of the product) and does not define a process step. While Licht (‘183 or ‘449) do not specifically disclose the minimum relative-amount, this is considered to be an intrinsic property resulting from following the method steps taught by the reference(s), which are the same as those instantly claimed, absent any clear and convincing evidence and/or arguments to the contrary. As a prima facie case of obviousness has been set forth on the record, and because the USPTO does not possess the laboratory facilities to test and compare the prior art to the claimed invention, the burden shifts to applicant to demonstrate otherwise. If the applicants would like to argue that the product produced by the claimed process is different from the product produced by Licht’s process, the applicants need to patentably distinguish the claimed process steps from the Licht’s process (‘183 and ‘449).
Regarding claims 4-5, 8, 10-12 and 14, Licht (‘183) discloses introducing nickel as a metal into the molten electrolyte media by degrading a nickel anode [0041]-[0042], [0044].
Regarding claim 6, Licht (‘183) further teaches that the electrical current has a current density of about 0.05 A/cm2 – 1 A/cm2 [0054], [0063] which overlaps the claimed range.
Regarding claim 15, Licht (‘183) further teaches that the metal-coated CNM can comprise iron [0055], thus teaching that the metal-coated CNM is magnetic and moves when in a magnetic field.
Claim(s) 13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Licht et al. (US 2018/0044183), in view of Licht et al. (WO 2020/092449) and in further view of Licht (US 2020/0032404).
Regarding claim 13, Licht (‘183 or ‘449) do not explicitly teach that the anode comprises a nickel alloy.
In the same or similar field of endeavor, Licht (‘404) discloses an anode comprising nickel chromium alloy [0041]-[0042], [0047]. Similar to Licht (‘183, ‘449), Licht (‘404) discloses a method for producing carbon nanomaterials using a carbonate electrolyte in molten state and performing electrolysis (abstract). Licht (‘404) discloses that doped carbon nanomaterials can differentiate with targeted qualities as electronic wire replacements, specialty catalysts, heavy metal sorbents or improved oxygen or charge storage materials [0008]-[0009].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the method of Licht (‘183, ‘449) by substituting the nickel anode with the nickel alloy anode of Licht (‘404) to produce carbon nanomaterials with selectively produced morphologies [0012] and the additional benefits described above.
Regarding claim 16, Licht (‘404) discloses producing doped carbon nanomaterials (abstract) with a system (100) that uses carbonate materials (Figure 1A, [0036]) and a step of introducing a doping additive component into the electrolytic cell, wherein the metal-coated CNM is doped and atoms of the doping additive component are directly incorporated throughout the doped, coated CNM [0054]. Licht (‘404) teaches that doped carbon nanotubes have unusual, useful properties including high electrical conductivity, catalysis, heavy metal removal, enhanced oxygen kinetics and improved charge storage [0005].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the method of Licht (‘183, ‘449) by adding a step of introducing a doping additive component into the electrolytic cell, wherein the metal-coated CNM is doped and atoms of the doping additive component are directly incorporated throughout the doped, coated CNM as taught by Licht (‘404). One of ordinary skill in the art would be motivated to make the modification because Licht (‘404) teaches that doped carbon nanotubes have unusual, useful properties including high electrical conductivity, catalysis, heavy metal removal, enhanced oxygen kinetics and improved charge storage [0005].
Response to Arguments
Applicant's arguments filed 7 October 2025 have been fully considered but they are not persuasive. The argument on page 8 states that Licht (‘183) discloses the nickel acting as a nucleating agent and there is no indication of any metal coating of the carbon nano-fiber. The Examiner respectfully disagrees with this analysis.
Excerpts from [0068] of Licht (‘183):
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It is clear from the passages that electrolysis composition including viscosity quantity of transition metal added to the cathode contributes to the filling of nano-tubes. Also included is the rate at which transition metals are added to the cathode. Licht explicitly states that additives such as bright nickel act as filling agents. And finally, the excerpt states that additives including transition metal salts can act as filling or coating agents. Therefore the disclosure of Licht (‘183) appears to explicitly state that metal containing additives are present to fill and coat the carbon nanomaterial. The Examiner acknowledges nickel as a nucleation agent, however, Licht explicitly discloses that nickel is both a nucleation agent and filling/coating metal.
Conclusion
THIS ACTION IS MADE FINAL. 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 STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Stefanie S Wittenberg/ Primary Examiner, Art Unit 1795