DETAILED ACTION
Response to Arguments
Applicant's arguments filed 11 August 2025 with respect to the 35 USC 102(a) rejection of claims 1-31 have been fully considered but they are not persuasive. Applicant argues that the amendments to the independent claims are not disclosed or taught by Brambilla (WO 2018/102562). The Office respectfully disagrees.
Applicant’s amendments to independent claims 1 and 29 recite a number of conditions by which the ultracapacitor recited in the claims can function. However, each of these conditions is considered to be a physical property of the ultracapacitor, which are considered to be implicitly disclosed in Brambilla, since Brambilla explicitly recites each of the structural limitations. See MPEP 2112.01(a). The Office notes that any structural differences in the instant invention and the disclosure by Brambilla, which results in the conditions recited in claim 1, should be explicitly recited in the claims.
Applicant’s arguments with respect to the statutory double patenting rejection of claims 1-31 have been considered but are moot in light of the new ground of rejection for non-statutory double patenting, necessitated by Applicant’s amendment.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13, 15, and 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 11,450,488. Although the claims at issue are not identical, they are not patentably distinct from each other as follows.
With respect to claim 1, claims 1-31 of the ‘488 patent recite an apparatus comprising: an active layer substantially free of binding agents (see claim 1, col. 16, lines 34-35), the active layer comprising: a network of carbon nanotubes defining void spaces, the network of carbon nanotubes making up less than 10% by weight of the active layer (see claim 1, col. 16, lines 36-39); and a carbonaceous material located in the void spaces and bound by the network of carbon nanotubes (see claim 1, col. 16, lines 40-41); wherein the active layer is configured to provide energy storage (see claim 1, col. 16, lines 42-43); an electrode comprising the active layer (see claim 14); and an ultracapacitor comprising the electrode (see claim 16); wherein the ultracapacitor has a wide operating temperature of -55 to 90°C and an ultra high power density of 120 kilowatts/kilogram or 150 kilowatts per liter at room temperature; and wherein the ultracapacitor is configured to be charged and discharged over 1,000,000 times (while the embodiment of claims 1, 14, and 16 of the ‘488 patent fail to explicitly recite these conditions for the ultracapacitor, the embodiment of claims 1, 14, and 16 is considered to implicitly disclose any physical properties associated with the explicitly recited structures, including operating temperature, power density and charge/discharge lifetime; see MPEP 2112.01(a), citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
With respect to claim 2, claims 1-31 of the ‘488 patent recite that the active layer consists essentially of the carbonaceous material and the carbon nanotubes. See claim 2. While claim 2 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 2, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 3, claims 1-31 of the ‘488 patent recite that the active layer is bound together by electrostatic forces between the carbon nanotubes and the carbonaceous material. See claim 3. While claim 3 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 3, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 4, claims 1-31 of the ‘488 patent recite that the carbonaceous material comprises activated carbon. See claim 4. While claim 4 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 4, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 5, claims 1-31 of the ‘488 patent recite that the carbonaceous material comprises nanoform carbon other than carbon nanotubes. See claim 5. While claim 5 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 5, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 6, claims 1-31 of the ‘488 patent recite that the network of carbon nanotubes makes up less than 5% by weight of the active layer. See claim 6. While claim 6 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 6, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 7, claims 1-31 of the ‘488 patent recite that the network of carbon nanotubes makes up less than 1% by weight of the active layer. See claim 7. While claim 7 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 7, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 8, claims 1-31 of the ‘488 patent recite an adhesion layer consisting essentially of carbon nanotubes disposed between the active laver and an electrically conductive layer. See claim 8. While claim 8 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 7, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 9, claims 1-31 of the ‘488 patent recite that a surface of the electrically conductive layer facing the adhesion layer comprises a roughened or textured portion. See claim 9. While claim 9 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 9, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 10, claims 1-31 of the ‘488 patent recite that a surface of the electrically conductive layer facing the adhesion layer comprises a nanostructured portion. See claim 10. While claim 10 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 10, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 11, claims 1-31 of the ‘488 patent recite that the nanostructured portion comprises carbide nanowhiskers. See claim 11. While claim 11 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 11, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 12, claims 1-31 of the ‘488 patent recite that the active layer has been annealed to reduce the presence of impurities. See claim 12. While claim 12 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 12, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 13, claims 1-31 of the ‘488 patent recite that the active layer has been compressed to deform at least a portion of the network of carbon nanotubes and the carbonaceous material. See claim 13. While claim 13 of the ‘488 patent does not depend from claims 14 and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 13, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 15, claims 1-31 of the ‘488 patent recite that the electrode is a two-sided electrode comprising a second active layer. See claim 15. While claim 15 of the ‘488 patent does not depend from claim 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 1, 14, and 16, as recited in claim 15, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 29, claims 1-31 of the ‘488 patent recite a method comprising: dispersing carbon nanotubes in a solvent to form a dispersion (see claim 29, col. 18, lines 19-20); mixing the dispersion with carbonaceous material to form a slurry (see claim 29, col. 18, lines 21-22); applying the slurry in a layer (see claim 29, col. 18, line 23); and drying the slurry to substantially remove the solvent to form an active layer that is substantially free of binder material, the active layer comprising a network of carbon nanotubes making up less than 10% by weight of the active layer, the carbon nanotubes defining void spaces and the carbonaceous material is located in the void spaces and bound by the network of carbon nanotubes (see claim 29, col. 18, lines 25-32).
The embodiment of claim 29 fails to recite providing an electrode comprising the active layer; and providing an ultracapacitor comprising the electrode; wherein the ultracapacitor has a wide operating temperature of -55 to 900C and an ultra high power density of 120 kilowatts/kilogram or 150 kilowatts per liter at room temperature; and wherein the ultracapacitor is configured to be charged and discharged over 1,000,000 times.
Claims 14 and 16 of the ‘488 patent, on the other hand, recite an electrode comprising the active layer; and providing an ultracapacitor comprising the electrode. While these claims depend from claim 1, rather than claim 29, the Office notes that claim 29 is merely an assembly method corresponding to the apparatus of claim 1, and as such, it would be obvious to one of ordinary skill in the art to modify claim 29, to include the subject matter of claims 14 and 16, as such a modification would correspond to that recited in the combination of claims 1, 14 and 16.
Further, while the combination of claims 29, 14, and 16 fail to explicitly recite the conditions for the ultracapacitor, the embodiment of claims 29, 14, and 16 is considered to implicitly disclose any physical properties associated with the explicitly recited structures, including operating temperature, power density and charge/discharge lifetime; see MPEP 2112.01(a), citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With respect to claim 30, claims 1-31 of the ‘488 patent recite forming and/or applying a layer of carbon nanotubes to provide an adhesion layer on a conductive layer. See claim 30. While claim 30 of the ‘488 patent does not depend from the combination of claims 29, 14, and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 29, 14, and 16, as recited in claim 30, in order to provide better energy storage for the ultracapacitor device.
With respect to claim 31, claims 1-31 of the ‘488 patent recite that the applying step comprises applying the slurry onto the adhesion layer. See claim 31. While claim 31 of the ‘488 patent does not depend from the combination of claims 29, 14, and 16, it would have been obvious to one of ordinary skill in the art, at the time of invention, to at least try modifying the combination of claims 29, 14, and 16, as recited in claim 31, in order to provide better energy storage for the ultracapacitor device.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-13, 15, and 29-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brambilla et al. (WO 2018/102652).
With respect to claim 1, Brambilla discloses an apparatus comprising: an active layer substantially free of binding agents (see paragraph [0010]), the active layer comprising: a network of carbon nanotubes defining void spaces (see paragraph [0009]), the network of carbon nanotubes making up less than 10% by weight of the active layer (see paragraph [0012]); and a carbonaceous material located in the void spaces and bound by the network of carbon nanotubes (see paragraph [0009]); wherein the active layer is configured to provide energy storage (see paragraph [0009]); an electrode comprising the active layer (see paragraph [0017]); an ultracapacitor comprising the electrode (see paragraph [0017]); wherein the ultracapacitor has a wide operating temperature of -55 to 90°C and an ultra high power density of 120 kilowatts/kilogram or 150 kilowatts per liter at room temperature; and wherein the ultracapacitor is configured to be charged and discharged over 1,000,000 times (while Brambilla fails to explicitly recite these conditions for the ultracapacitor, Brambilla is considered to implicitly disclose any physical properties associated with the explicitly recited structures, including operating temperature, power density and charge/discharge lifetime; see MPEP 2112.01(a), citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
With respect to claim 2, Brambilla discloses that the active layer consists essentially of the carbonaceous material and the carbon nanotubes. See paragraph [0010].
With respect to claim 3, Brambilla discloses that the active layer is bound together by electrostatic forces between the carbon nanotubes and the carbonaceous material. See paragraph [0010].
With respect to claim 4, Brambilla discloses that the carbonaceous material comprises activated carbon. See paragraph [0010].
With respect to claim 5, Brambilla discloses that the carbonaceous material comprises nanoform carbon other than carbon nanotubes. See paragraph [0011].
With respect to claim 6, Brambilla discloses that the network of carbon nanotubes makes up less than 5% by weight of the active layer. See paragraph [0012].
With respect to claim 7, Brambilla discloses that the network of carbon nanotubes makes up less than 1% by weight of the active layer. See paragraph [0012].
With respect to claim 8, Brambilla discloses an adhesion layer consisting essentially of carbon nanotubes disposed between the active layer and an electrically conductive layer. See paragraph [0013].
With respect to claim 9, Brambilla discloses that a surface of the electrically conductive layer facing the adhesion layer comprises a roughened or textured portion. See paragraph [0014].
With respect to claim 10, Brambilla discloses that a surface of the electrically conductive layer facing the adhesion layer comprises a nanostructured portion. See paragraph [0014].
With respect to claim 11, Brambilla discloses that the nanostructured portion comprises carbide nanowhiskers. See paragraph [0014].
With respect to claim 12, Brambilla discloses that the active layer has been annealed to reduce the presence of impurities. See paragraph [0015].
With respect to claim 13, Brambilla discloses that the active layer has been compressed to deform at least a portion of the network of carbon nanotubes and the carbonaceous material. See paragraph [0016].
With respect to claim 15, Brambilla discloses that the electrode is a two-sided electrode comprising a second active layer. See paragraph [0070].
With respect to claim 29, Brambilla discloses a method comprising: dispersing carbon nanotubes in a solvent to form a dispersion (see paragraph [0019]); mixing the dispersion with carbonaceous material to form a slurry (see paragraph [0019]); applying the slurry in a layer (see paragraph [0019]); and drying the slurry to substantially remove the solvent to form an active layer that is substantially free of binder material (see paragraphs [0019] and [0010]), the active layer comprising a network of carbon nanotubes making up less than 10% by weight of the active layer (see paragraph [0012]), the carbon nanotubes defining void spaces and the carbonaceous material is located in the void spaces and bound by the network of carbon nanotubes (see paragraph [0019]); an electrode comprising the active layer (see paragraph [0017]); an ultracapacitor comprising the electrode (see paragraph [0017]); wherein the ultracapacitor has a wide operating temperature of -55 to 90°C and an ultra high power density of 120 kilowatts/kilogram or 150 kilowatts per liter at room temperature; and wherein the ultracapacitor is configured to be charged and discharged over 1,000,000 times (while Brambilla fails to explicitly recite these conditions for the ultracapacitor, Brambilla is considered to implicitly disclose any physical properties associated with the explicitly recited structures, including operating temperature, power density and charge/discharge lifetime; see MPEP 2112.01(a), citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
With respect to claim 30, Brambilla discloses forming and/or applying a layer of carbon nanotubes to provide an adhesion layer on a conductive layer. See paragraph [0019].
With respect to claim 31, Brambilla discloses that the applying step comprises applying the slurry onto the adhesion layer. See paragraph [0020].
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 DION R FERGUSON whose telephone number is (571)270-7566. The examiner can normally be reached Monday-Friday, 5:30 a.m. - 4:00 p.m..
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/DION R. FERGUSON/Primary Examiner, Art Unit 2848
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