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 .
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 1-3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. 2017/0309923 by Mihara et al. (Mihara).
In regard to claim 1, Mihara teaches an activated carbon having an average particle diameter of 0.1 to 10 mm ([0072], 5000 µm reads on 5 mm), a BET specific surface area of 500 m2/g or more and 2000 m2/g or less ([0034]). Mihara teaches a porosity inside a particle of 10% or more and 40% or less as obtained by X-ray CT ([0024]). It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding limitations recited in claim 1, which are directed to method of making said activated carbon (e.g. “as obtained by X-ray CT with a pixel size of 1 µm”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the activated carbon as recited in claims 1 is the same as the activated carbon disclosed by modified Mihara, as set forth above, the claim is unpatentable even though the activated carbon of modified Mihara was made by a different process. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Regarding limitations recited in claim 2 which are directed to specific properties of activated carbon recited in said claim, it is noted that once an activated carbon is disclosed to comprise a material comprising an average particle diameter of 0.1 to 10 mm, a BET surface area of 500 m2/g or more and 2000 m2/g or less and a porosity inside a particle of 10% or more and 40% or less, and therefore is the same as the activated carbon of claim 2, it will, inherently, display recited properties. See MPEP 2112.
Regarding limitations recited in claims 3 and 8, which are directed to method of making said activated carbon (e.g. “coal is used as a raw material of the activated carbon”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the activated carbon as recited in claims 3 and 8 is the same as the activated carbon disclosed by Mihara, as set forth above, the claim is unpatentable even though the activated carbon of Mihara was made by a different process. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Response to Arguments
Applicant's arguments filed 6/17/2026 have been fully considered but they are not persuasive.
In regard to the Applicant’s argument the continuous porous structure in Mihara is completely different from a void itself; the porosity in claim 1 and the porosity in Mihara are different physical properties from each other; the Examiner does not find this persuasive.
Claim 1 requires “a porosity inside a particle of 10% or more and 40% or less as obtained by X-ray CT with a pixel size of 1 µm”. As noted above: Mihara teaches a porosity inside a particle of 10% or more and 40% or less as obtained by X-ray CT ([0024]). It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., void) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See MPEP 716.01c.
Declaration
The Declaration under 37 CFR 1.132 filed 6/17/2026 is insufficient to overcome the rejection of claims based upon Mihara as set forth in the last Office action because fails to set forth facts; facts presented are not germane to the rejection at issue; showing is not commensurate in scope with the claims. See MPEP 716.
The Declaration does not provide evidence for arguments related to porosity and physical properties.
The Declaration states that the ‘602 application is a value obtained by measuring a content ratio of voids having a size of around 1 µm or more while the porosity disclosed in Mihara is a value which is obtained by measuring a content ratio of voids mainly having a size of around 1 to several 100 nm or less; therefore the porosity recited in the claims and the porosity in Mihara are different physical properties.
Claim 1 requires “a porosity inside a particle of 10% or more and 40% or less as obtained by X-ray CT with a pixel size of 1 µm”. The claim does not require a void area. Further, the claim does not require a specific void size.
Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence." "[A]ppellants have not presented any experimental data showing that prior heat-shrinkable articles split. Due to the absence of tests comparing appellant’s heat shrinkable articles with those of the closest prior art, we conclude that appellant’s assertions of unexpected results constitute mere argument."). See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991). See MPEP 716.
Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See MPEP 716.
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP § 716.02(c).
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
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 KARA M PEO whose telephone number is (571)272-9958. The examiner can normally be reached 9 to 5:30.
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/KARA M PEO/Primary Examiner, Art Unit 1777
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