Response to Arguments
Applicant's arguments filed 29 January 2026 have been fully considered but they are not persuasive. Specifically, applicant argues that upon zooming in on the figures of the prior art, some separation appears between the adsorption and desorption curves and therefore the prior art cannot be considered to have two hysteresis loops. This is not persuasive however, as the figures of the prior art clearly show that curves that overlap in similar fashion to applicant’s Figure 1, and that any minute separation between the curves is simply a matter of the accuracy and level of graduations in the measurements taken during the isotherms. The material of the prior art is substantially identical in structure and composition and presumed to have the claimed isotherms curves which anticipate or at least obviate the claimed material. Applicant makes no argument against the assertion that the product of the prior art would have similar properties in a manner which obviates the claimed material.
The Examiner notes that this application is attempting to claims a very well-studied material (high surface area carbon materials for electrochemical catalysts) and the volumes of prior art, such as those references cited above, speak to the obviousness of the necessity to optimize the variables claimed (surface area, porosity, nitrogen absorption etc.). Furthermore, the instant claims fail to establish criticality of the claimed ranges (by failing to be reasonable commensurate in scope with the results shown in the specification – see MPEP 716.02(d)) because the claims do not positively require any structural (with the exception of surface area) or chemical requirements for the carbon, and generally claim material properties.
The ranges applicant has claimed have not been established as critical, and therefore the rejection over the prior art which teaches an indistinguishable carbon material and the double patenting of the previous office action have been maintained. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12, 27 and 28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 27 requires “the carbon material satisfies the following requirements (A), (B), (C) and (D)” then goes on to stipulate conditions (A), (B), (C) and (E). Claim 12 requires a condition (D). It is unclear whether condition (E) is required by the instant claims, and whether the condition by claim 12 is required by claim 27. For the purpose of examination, claim 27 is presumed to require “the carbon material satisfies the following requirements (A), (B), (C) and (E)”.
Relevant MPEP Sections
MPEP 2112.01 relating to Composition, Product, and Apparatus Claims: 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 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “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).
Claim Rejections - 35 USC § 102/103
Claims 9, 12, 14-16, 18-23 and 27-29 are rejected under 35 U.S.C. 102(a)(1 or 2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over NUMAO et al. ("Synthesis and characterization of mesoporous carbon nano-dendrites with graphitic ultra-thin walls and their application to supercapacitor electrodes", cited in IDS).
In regard to claim 9, Numao et al. teach a carbon material (mesoporous carbon nano-dendrites i.e. MCNDs) for a catalyst carrier of a polymer electrolyte fuel cell (use in high speed charge and discharge electrodes for motor vehicles and electric or hydrogen storage cells – see Abstract and Conclusion sections), wherein a nitrogen adsorption/desorption isotherm exhibits two hysteresis loops comprising a first hysteresis loop and a second hysteresis loop in a range in which a relative pressure P/Po is 0.4 or more (see figure 5, Experimental and Results sections).
In regard to the amendment, the two hysteresis loops exhibited by the nitrogen adsorption/desorption isotherm comprise a first hysteresis loop within a range in which the relative pressure P/Po is 0.87 or more and a second hysteresis loop within a range in which the relative pressure P/Po is from 0.4 to 0.87 (see figure 5, Experimental and Results sections), and
the carbon material has a specific surface area determined by BET analysis of a nitrogen adsorption isotherm such as 1324 m2/g (first paragraph on page 309), while no particular amounts of nitrogen absorption for particular ΔV ranges are disclosed by the prior art in hysteresis loops (such as in figures 5, such appears to anticipate or obviate the claimed range for the inventive examples a, a’, b and b’), as the prior art material is indistinguishable from the claimed material, the material of the prior art is presumed to have properties which anticipate or obviate the claimed ranges (per MPEP 2112.01), absent evidence to the contrary.
In regard to new claim 27, Numao et al. teach the carbon material as applied to claim 9 above where the carbon material has in a Raman spectrum obtained by Raman spectrometry, a half-value width of a G-band detected in a range of 1500 cm-1 to 1700 cm-1 is from 45 cm-1 to 70 cm-1 (figure 4).
The material properties of the prior art anticipate the claimed ranges of material properties (including dependent claims below) in a manner which anticipates the claims. In the alternative, the material of the prior art is taken to have properties which overlap the claimed ranges in a manner which establishes a prima facie case of obviousness (see MPEP 2112 above).
In regard to claim 14-16 and 18-23, Numao et al. teach a fuel cell and a catalyst layer for a polymer electrolyte fuel cell, the catalyst layer comprising the carbon material for a catalyst carrier of a polymer electrolyte fuel cell according to the claims above (electric or hydrogen storage cells, “One interesting modification of MCNDs involves covering the metallic layers or cluster islands on the graphene surface for fuel cell electrodes or various storage cells, since more than 70% of the volume is empty.” – page 311, last paragraph of Results and Conclusion section). The Examiner notes that both electrodes would benefit from such a gas diffusion material layer, and the designation of cathode or anode is arbitrary depending on the state or charging or discharging, therefore the catalyst layer of the prior art is necessarily present on the cathode side.
In regard to claim 28 and 29, at a start point and an end point of each of the first and second hysteresis loops, a value obtained by subtracting the adsorption amount indicated by the adsorption isotherm from the adsorption amount indicated by the desorption isotherm is 20 mL/g or less (figure 5 – start and end point may be arbitrarily selected).
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 9, 12, 14-16, 18-23 and 27-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,394,034. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims require a support for a polymer electrolyte fuel cell catalyst, comprising a carbon material, and satisfying the following requirements (A), (B), (C), and (D): (A) a specific surface area according to a BET analysis of a nitrogen adsorption isotherm is from 450 to 1500 m2/g; (B) a nitrogen adsorption and desorption isotherm forms a hysteresis loop in a range of relative pressure P/P.sub.0 of more than 0.47 but not more than 0.90, and a hysteresis loop area ΔS0.47-0.9 is from 5 to 35 mL/g; (C) a relative pressure P/Po at which the hysteresis loop closes is more than 0.47 but not more than 0.70; and (D) a half-width of a G band detected by Raman spectrometry in a range of from 1500 to 1700 cm−1 is from 45 to 75 cm−1 which substantially overlaps the instantly claimed ranges for material properties of the carbon material catalyst carrier.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure – Calarco et al. (USP 7,241,409) teaches exfoliated graphite worms as a gas diffusion layer on both anode and cathode side of a fuel cell membrane (see figures 2 and 3).
US Pub 2007/0148531 newly cited, teaches a similar carbon catalyst layer (figure 2).
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 Nicholas P D'Aniello whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723