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
Applicant’s amendments, filed 10/29/2025, have been fully considered and reviewed by the examiner. The examiner notes the amendment to the claims to cure the 112 2nd paragraph issues and therefore such rejections are withdrawn. Claims 25-26 are added. Claims 1-23 and 25-26 are pending, with claims 19-23 withdrawn due to a restriction requirement.
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive as they are directed to newly added claim requirements that are addressed in the prior art rejection that follows.
Election/Restrictions
Newly submitted claim 29 is directed to an invention that is independent or distinct from the invention originally elected claimed for the following reasons: the supercapacitor as claimed can be made by another and materially different process including depositing CNTs without growing as claimed. See also Election requirement dated 9/23/2024 and election date 10/14/2024.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 29 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 1-18 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 1 recites the limitation "increased capacitance" is a relative term that fails to define the metes and bounds the claims as drafted. The claims require increased capacitance; however, the claims do not quantify the reference point and therefore it is unclear how the increase is measured (i.e. increase of capacitance relative what reference point). For the purposes of applying prior art, the presence of the CNTs will increase the capacitance relative to some undefined supercapacitor with inferior capacitance.
Claim 2 requires “the metal film substrate” ; however, this term lacks antecedent basis in the claims.
Claim 4 and 5 each requires “the metal compound layer” ; however, this term lacks antecedent basis in the claims.
Claims 6 and 7 requires “the metal compound” ; however, this term lacks antecedent basis in the claims.
Claim 9 requires “the formed metal nanoparticles” ; however, this term lacks antecedent basis in the claims.
Claims 12 and 13 each requires “the metal film substrate; however, this term lacks antecedent basis in the claims.
Dependent claims do not cure the deficiencies of the claims from which they depend and therefore are similarly rejected.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 4, 6, 9 and 28 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 further broadens the metal film substrate (Claim 1 requires aluminum film substrate) .
Claim 4 further broadens the metal compound layer (Claim 1 requires nickel) .
Claim 6 further broadens the metal compounds (Claim 1 requires nickel) .
Claim 9 further broadens the nanoparticles (Claim 1 requires nickel nanoparticles).
Claim 28 further broadens the size of the microstructures (Claim 1 requires 1540 microns)
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-18 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao, Jin et al. (High Peel Strength and Flexible Aligned Carbon Nanotubes/Etched Al Foil Composites with Boosted Supercapacitor and Thermal Dissipation Performances) taken with US Patent Application Publication 20150147525 by Maruyama et al. and WO 2019008297 by Pinault, hereinafter Pinault (citations to US Patent Application Publication 20200227212 by Pinault et al.) alone or in view of EP 1946833, hereinafter EP 833.
Claim 1: Xiao discloses a method for fabricating an electrode for a supercapacitor comprising, in a surface of an aluminum foil, etching irregular microstructures having a depth and being distributed throughout the surface, depositing in the microstructure a metal, converting the metal to metal nanoparticle catalysts, growing crosslinked CNTS from the surface to provide linked interconnected CNTS in the microstructure with the metal nanoparticles acting as a catalyst (Figure 5 and accompanying text, title, introduction, abstract, Section 3.3 related to growth, stating “Consequently, with the deposition of the catalyst nanoparticles on the internal surfaces of the etched cavities, the CNTs began to grow on the catalyst nanoparticles. The narrow spaces of the etched cavities and nonuniform distribution of the catalyst particles on the internal surfaces of etched cavities compelled the CNTs to grow randomly. As a result, the CNTs became tangled with one another and embedded in the etched cavities firmly at the beginning of growth.”)
Xiao fails to disclose the width of the irregular microstructure; however, initially, the width, as evidenced by Figure 5 in combination with the disclosure of depth in section 3.1 would meet the claimed scope, see width versus depth in Figure 5. At the very least, the width of the microstructure would have been a result effective variable, directly affecting the CNT growth therein and the achievement of the bonding between the substrate and the CNT film (See comparison between the smooth Aluminum and the aluminum with irregular damage as it relates to bonding, i.e. too little width will not allow proper adhesion of the CNTs, but too much width will be defeating to the presence of the microstructures as they will overlap each other). Therefore, taking the level of ordinary skill in the art, it would have been obvious to one of ordinary skill in the art at the time of the invention to have determined the optimum width through routine experimentation to achieve the desired and optimum bond between the CNT film and aluminum.
Xiao fails to disclose the depth as claimed, however the depth of the microstructure would have been a result effective variable, directly affecting the CNT growth therein and the achievement of the bonding between the substrate and the CNT film (See comparison between the smooth Aluminum and the aluminum with irregular damage as it relates to bonding, i.e. too little depth will not allow proper adhesion of the CNTs, but too much depth will be defeating to the presence of the microstructures as they will affect the overall structure and rigidity of the substrate or go through the thickness). Therefore, taking the level of ordinary skill in the art, it would have been obvious to one of ordinary skill in the art at the time of the invention to have determined the optimum depth through routine experimentation to achieve the desired and optimum bond between the CNT film and aluminum.
Xiao fails to discloses the conversion of a metal or metal compound layer into metal nanoparticles. However, Maruyama, also in the art of etching a substrate surface and forming CNTs within the structure discloses on the substrate surface depositing in the microstructures a metal or metal compound layer (see 0037-0038 related to metal catalyst layer in the etched surface); converting the metal or compounds layer into metal nanoparticles, constituting a catalyst (see 0037-0038 related to catalyst nanoparticles); and growing carbon nanotubes in the microstructures at the metal nanoparticle acting as catalysts (0040). Maruyama and Xiao discloses e.g. using ferrocene, to as catalyst and therefore taking the references collectively, it would have been obvious to have modified Xiao with the disclosure of Maruyama, that is to form the nanoparticles from a metal/metal compound layer, forming in the damaged surface, to predictably and successfully deposit the catalyst nanoparticles for CNT growth within the damaged surface.
As for the size of the nanoparticle, Maruyama explicitly discloses nanoparticles and while the reference does not disclose the range of sizes; however, one of ordinary skill in the art would have found if obvious to have determine the optimum size of the nanoparticles through routine experimentation as the prior art’s the mere disclosure of nanoparticles would lead one to determine the size of such, which would reasonably include a value between the broad range of 5-100 nm.
As to the requirement “increase capacitance”, such is met by Xiao (see e.g. title “Boosted supercapacitor”). Xiao discloses aluminum foil (Figure 5 and accompanying text). Xiao discloses ferrocene, iron compound. Maruyama discloses the metal compound layer comprises at least one of nickel (0037, iron, cobalt, nickel) or organometallics of such (i.e. nickel compound) and therefore using a known metal compound (i.e. nickel or nickel organometallic) layer for catalyst CNT growth would have been obvious.
Xiao with Maruyama discloses all that is taught above; however, the references fail to disclose the carbon mass loading as claimed and the capacitance of the electrode as claimed. However, Pinault discloses supercapacitors (0003) comprising an aluminum substrate (0030) with CNTs grown thereon and discloses the growing the CNTs in varying density (i.e. carbon mass loading as claimed, see 0039) and discloses such is a function of the protocol used to synthesis the CNTs (i.e. process conditions which would necessarily include the nickel catalyst). Therefore taking the references collectively, it would have been obvious to have provide the desired and varied carbon mass loading as suggested by Pinault as such is taught by Pinault as well within the skill of one of ordinary skill in the art at the time of the invention.
Pinault discloses the capacitance of using the CNTs of at least 185 mF/cm2 (0060) and thus overlaps and makes obvious the claims as drafted.
As for the requirement that the capacitance is a function of CNT mass loading, the examiner notes that Pinault explicitly discloses variable CNT mass loading and a capacitance that meets the claim requirement and thus the claimed results, i.e. the capacitance as a function of the carbon loading, is a mere recognition of a relationship that naturally flows from the presence of the CNTs and the capacitance. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
While the examiner maintains the position as set forth above with respect to the nanoparticle size, for the sake of compact prosecution, the examiner cites here EP 833, which discloses forming CNTs in recesses formed by etching a substrate (0021) and discloses the diameter can be selected of smaller than 100 nm or 5-10 nm (00022). EP 833 discloses Nickel (0094) via a metal layer that is converted to nanoaparticles via heating. Therefore taking the references collectively and all that is known to one of ordinary skill in the art at the time of the invention, depositing metal layer and converting to nanoparticles in the range as claimed, specifically less than 100 nm or 5-10 nm, would have been obvious as Xiao discloses CNTs in recesses formed in the substrate surface and EP 833 discloses such a method is used to form nanoparticles for the CNT growth in recesses formed in a substrate.
Claim 2: Xiao discloses aluminum (Figure 5 and accompanying text). Maruyama discloses metal film substrate includes any type of metals (see e.g. 0032, steel)
Claim 3: Maruyama discloses depositing with the metal layer is be achieved by electron-beam evaporation, thermal evaporation, or sputtering (see e.g. 0038, sputtering, e-beam evaporation).
Claim 4: Xiao discloses ferrocene, iron compound. Maruyama discloses the metal compound layer comprises at least one of nickel, iron, and cobalt (0037, iron, cobalt, nickel). Pinault discloses nickelocene (0037).
Claim 5: Xiao discloses spraying a metal compound, such as an iron compound – Ferrocene (experimental). Maruyama discloses depositing of the metal compound layer is achieved by dip coating or spray coating using a metal compound precursor (drop casted at 0038 can reasonably be spraying as claimed).
Claim 6: Xiao discloses ferrocene, iron compound. Maruyama discloses the metal compounds comprise at least one of nickel compound, iron compound, and cobalt compound (see organometallic compound having the transition metals) and using the nickel compound precursor would have been obvious as predictable. Pinault discloses nickelocene (0037).
Claim 7: Xiao discloses organometallic compound in a solvent (section 2.1).
Claim 8: Maruyama discloses depositing the catalytic material and heating/drying to generate a layer of catalyst nanoparticles (0038) and discloses using hydrogen gas (0040); however, fails to disclose the claimed temperature for drying/heating. However, the temperature would have recognized as a result effective variable, directly affecting the drying of the deposited layer, and it would have been obvious to one of ordinary skill in the art at the time of the invention to have determined the optimum temperature to reap the benefits of predictably and successfully drying the deposited material.
Claim 9: Xiao discloses iron nanoparticles. Maruyama explicitly discloses iron, nickel and cobalt catalyst (0037) and catalyst nanoparticles (0038) and thus it would have been obvious to use iron, nickel and cobalt nanoparticles as claimed.
Claim 10: Xiao fails to disclose the claimed deposition parameters. However, Maruyama discloses growing cross-linked carbon nanotubes is formed by the catalytic pyrolysis of carbon-containing gas by APCVD at 400˜600° C (see e.g. 0040 related to 500C temperature, within the range as claimed under a carbon containing gas, which can reasonably be APCVD as defined by the claims). Therefore using the known process conditions for forming CNTs would have been obvious to one of ordinary skill in the art to successfully deposit CNTs using catalyst nanoparticle.
Claim 11: Xiao discloses CNTs using a carbon containing gas; however, fails to disclose the claimed gases. However, Maruyama discloses the carbon-containing gases for forming CNTS can comprise at least one of acetylene, methane, ethylene, propane, and butane (0040, methane, acetylene and ethylene). Therefore using the known gases would have been obvious to one of ordinary skill in the art to successfully deposit CNTs using catalyst nanoparticle.
Claim 12: Xiao discloses aluminum foil, which meets this claim requirement (abstract). Maruyama discloses the metal film substrate comprises any structural type of metal products (see 0032).
Claim 13: Xiao discloses metal film substrate with microstructures by etching and using physical or chemical method (i.e. the two known etching methods) would have been obvious as selection from a finite number of predictable solutions. Additionally, Maruyama discloses metal film substrate with microstructures is be fabricated by a physical or chemical method (0033-0034) and therefore using these known methods would have been obvious as predictable.
Claim 14: Xiao discloses multi-walled CNTs (Section 3.1). Maruyama discloses single-walled carbon nanotubes (SWCNTs) (see 0004).
Claims 15-18: Xiao discloses the use of pseudocapacitive materials, including polymers and metal oxides (section 2.3, stating “being an appropriate substrate for the pseudocapacitance materials [such as polyaniline (PANI), manganese dioxide and so on], section 3.4, stating “the ACNT/etched Al foil served as a current collector for polymer (PANI, polypyrrole, and so on.) and metallic oxide (such as MnO2, Co3O4, and so on) deposition.”
Claim 28: Xiao discloses microstructures having what can reasonably be considered tunnels as claimed (see Figure 5) and while the reference fails to disclose the depth of the tunnels, the depth of the etched microstructure is within the range as claimed (section 3.1, the depth of the etched cavities was between 4 and 6 μm) and thus meets this claimed requirement.
Claim(s) 5, 7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao with Maruyama, Pinault alone or with EP 833 as applied above and further with US Patent Application Publication 20120058352 by Malet et al.
Claims 5 and 7: Xiao with Maruyama discloses all that is taught above and discloses catalyst deposition techniques. Examiner cites here Malet, which discloses spraying and dipping (abstract) and depositing such precursors from a solution containing a solvent (abstract) and therefore forming the catalytic layer using well known techniques would have been obvious as Xiao with Maruyama discloses using various techniques for forming the catalyst for CNT growth and Malet discloses a known technique includes spraying or dipping a substrate in a solution containing the metal precursor.
Claim 10: Examiner maintains the position as set forth above and cites here Malet which discloses the deposition of the CNTs via APCVD is known technique (0074) at a temperature range that overlaps the claimed range and therefore it would have been obvious to synthesis CNTs using APCVD as claimed at the temperature as claimed.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao with Maruyama, Pinault alone or with EP 833 as applied above to claim 1 and further with WO 2008070926, hereinafter WO 926.
Examiner maintains the position as set forth above and cites here WO 926, which explicitly discloses depositing an iron catalyst precursor onto the substrate surface and then flowing H2 into the chamber and ramping the temperature (Examples, pages 24-25) to achieve conversion of metal precursor to metal nanoparticle as claimed prior to the CNT growth. The temperature ramp encompasses a heating in the range as claimed and thus the claim is met due to the comprising language and therefore taking the references collectively it would have been obvious to have modified Maruyama or Maruyama with Gleason as applied above to use the conversion of the metal precursor to the nanoparticle for the catalyst grown of CNTS using vapor deposition.
Claim(s) 1-18 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao with Maruyama, Pinault alone or with EP 833 as applied above to claim 1 and further with US Patent 9058957 by Sanborn et al.
While the examiner maintains the position as set forth above regarding the obviousness of the depth as claimed, the examiner cites here Sanborn, also in the formation of CNTs within an etched feature of a substrate and discloses etching features with depths that overlap the range as claimed (column 2, lines 12-15) and therefore taking the references collectively as well as all that is known to one ordinary skill in the art at the time of the invention, using known etched depths for the features for the CNT growth would have been obvious as predictable and reasonable expectation of success would follow (i.e. CNTs growth within the feature).
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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached on 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718