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 .
Election/Restrictions
Claims 16-22 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/05/2025.
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 1-15 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.
Regarding Claim 1, the term “relatively high” is a relative term which renders the claim indefinite. The term “relatively high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 2-15 are rejected for their dependence on Claim 1 and for further failing to remedy this indefiniteness. For purposes of examination, the examiner will interpret the limitation as requiring a temperature and pressure that are higher relative to the temperature and pressure in the reduced pressure and temperature zone downstream from the throat, as recited by the claim.
Further regarding Claim 1, the term “reduced size opening” is a relative term which renders the claim indefinite. The term “reduced size opening” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, the examiner will interpret the limitation as requiring the throat be narrower in its diameter than that of the diameter of the chamber of the apparatus required by the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5-6, 14 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO1996028577A1, hereinafter ‘Detering’.
Regarding Claim 1, Detering discloses a method of making nanomaterials (Page 35: ” this system has been successfully used to produce an ultrafine particle size range of less than 500 nanometers, with 10-100 nanometers being the preferred range. The particles have been successfully produced within a narrow size range, meaning that 90 percent of the particles would fall within a 25 nanometer size range”), comprising:
introducing at least two materials into the chamber of an apparatus (Table 3: the table shows 10 different combinations of gaseous reactants that may be fed to the inventive process, each combination having at least two gases which are fed to the chamber of the apparatus), wherein
when the materials are in said chamber, they are at a first pressure and a first temperature, said first pressure and said first temperature being relatively high (Page 17, lines 12-24: the gas in the first chamber has a temperature and pressure higher than that of the region following the throat of the reactor),
said apparatus having a throat having a reduced size opening, said throat being downstream from said chamber (Fig. 1: the reactor of the inventive process is shown to have a convergent throat downstream from the chamber having an opening narrower than the chamber), wherein
said apparatus further comprises a reduced pressure and temperature zone downstream from said throat (Page 17, lines 12-24: in the converging-diverging nozzle, the gas is flowing from a higher pressure P0 and temperature T0 to a lower pressure P1 and temperature T1),
said zone having an exit (Fig. 1: the quench zone 26 has an outlet, or exit), wherein
at least one of said materials comprises a primary source material for the nanomaterials to be formed (Table 3: it is clear that the materials fed contain a primary source material for the nanomaterials to be formed – for example, in the first row of the table, a reactant gas of TiCl4 is fed into the process, and the products formed include titanium metal. The reactants fed in this case contained titanium for the formation of titanium nanomaterials);
b) passing said materials into said throat (Page 17, lines 12-24: the fed gases pass through the reactor throat);
c) passing said materials into said reduced pressure and temperature zone wherein said materials expand at a lower pressure than said first pressure (Page 17, lines 12-20: In the converging-diverging nozzle, the gas flows through the throat and into the quenching zone, wherein the gas goes from a higher pressure P0 to a lower pressure P1, and is described as experiencing adiabatic expansion);
d) forming nanomaterials in said apparatus (Page 35: ” This system has been successfully used to produce an ultrafine particle size range of less than 500 nanometers, with 10-100 nanometers being the preferred range. The particles have been successfully produced within a narrow size range, meaning that 90 percent of the particles would fall within a 25 nanometer size range”); and
e) collecting said nanomaterials at the exit from said zone (Fig. 1: Reaction particles are collectable within a cyclone separator shown generally at 27).
Regarding Claim 5, Detering discloses when at least two of said materials combine, they create an exothermic reaction to contribute to the creation of said first pressure and first temperature (Table 3, row 6: titanium tetrachloride and oxygen gas are reactants fed to the inventive method – the reaction between these reactants would be an exothermic reaction, as the enthalpy of the reaction, calculated with a standard table of enthalpy of formation values, is -181.5 kJ, wherein a negative value indicates the reaction is exothermic – this exothermic reaction which would contribute to the creation of the first temperature and pressure).
Regarding Claim 6, Detering discloses externally heating the chamber, thereby resulting in the conditions present in said chamber (Page 14, lines 21-29).
Regarding Claim 14, Detering discloses said primary source material comprises a source of titanium, and said nanomaterials comprise titanium dioxide nanoparticles (Example 2, Page 26).
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) 2, 4, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO1996028577A1, hereinafter ‘Detering’.
Regarding Claim 2, Detering makes obvious the chamber is a combustion chamber (Page 10, lines 4-9: the reactor is heated by a rapid heating means that includes, among other members, flames produced by oxidation of a suitable fuel, i.e., combustion. In light of this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to carry out the process of Detering using combustion in the chamber, thereby utilizing a combustion chamber as claimed).
Regarding Claim 4, Detering discloses that rapid heating as defined in the invention may be accomplished by, for example, flames produced by oxidation of a suitable fuel, e.g., an oxygen/hydrogen flame (Page 10, lines 4-9). In utilizing such a flame, a fuel and an oxygen source would be required – therefore, utilizing a fuel and an oxidizer as claimed is obvious when utilizing an oxidative flame as the rapid heating source in the process disclosed by Detering.
Further, Detering discloses that the plasma gas, considered analogous to the fuel in the case of using an oxygen flame as a heating means as described above, can also be a reactant (Page 11, line 6), i.e., may contain source material for the synthesis of nanoparticles of said material. Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize a fuel containing the primary source material for forming nanoparticles, as claimed.
Regarding Claim 13, the process of Detering as modified above makes obvious the primary source material comprises a boron source, and said nanomaterials comprise boron nitride. Particularly, while no embodiment of Detering discloses using a source material comprising boron and simultaneously producing a boron nitride, Detering does disclose that other nitride, boride, and carbide ceramic materials may be formed in the disclosed method provided that the required gases to achieve the correct chemical environment for synthesis of these materials is provided (Page 10, line 31 – Page 11, line 2). Further, Detering shows embodiments in which boron is the primary source material – see Table 3, row 5. In light of this, since Detering contemplates both the use of boron source materials and nitride products, it would be obvious to utilize boron source materials while simultaneously providing the required gases to achieve the correct chemical environment for synthesis of a nitride, thereby synthesizing boron nitride.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO1996028577A1, hereinafter ‘Detering’, in view of Glen Research Center (NASA, Liquid Rocket Engine, 2021), as cited in the IDS of 01/09/2023.
Regarding Claim 3, Detering does not disclose that the described method and apparatus are configured such that the chamber and said reduced pressure and temperature zone are provided in the form of a rocket engine comprising a nozzle, wherein said reduced pressure and temperature zone is in said nozzle.
However, the same configuration as described in Detering, namely a combustion chamber upstream of a throat upstream from a low pressure/temperature zone, is known for use in a rocket engine. This is shown by Glen, which shows a depiction of a liquid rocket engine. Notably, it shares the same structure as the apparatus of Detering: fuel is provided to a combustion chamber, where it is combusted, after which the combustion gases pass through a throat and expand through a nozzle, where the temperature and pressure would decrease as a result of expansion.
In light of this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize the provide the chamber and said reduced pressure and temperature zone in the form of a rocket engine comprising a nozzle, wherein said reduced pressure and temperature zone is in said nozzle, as such a configuration is shown in the art to be useful for such a purpose and would predictably provide thrust while also producing nanoparticles, improving the overall utility of the process.
Claim(s) 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO1996028577A1, hereinafter ‘Detering’, in view of US20040179989A1, hereinafter ‘Height’.
Regarding Claim 7, Detering discloses that the inventive process may be used to produce materials such as metals, alloys, intermetallics, composites, gases and ceramics (Page 9, lines 20-25) – see also Table 3, disclosing various products which may be produced by the instant process. This implies that the process and apparatus of Detering is adaptable, and may be adapted to any processes that may reasonably benefit from the disclosed quench mechanism.
However, while Detering does disclose the use of a primary material comprising carbon (Table 3, rows 9-10), Detering does not disclose that the produced nanoparticles are carbon nanotubes.
Height discloses a method for producing filamentary structures such as carbon nanotubes including combusting hydrocarbon fuel and oxygen so as to establish a non-sooting pre-mixed or non-premixed flame, and providing an unsupported catalyst to synthesize the filamentary structure in a post-flame region of the flame ([0013]). As discussed above, the process of Detering may utilize a flame for heating the reactants utilizing an oxidant and a fuel, in the same way as Height, and is mutually drawn to the synthesis of nanoparticles. The references are therefore analogous, as they both relate to the same field, processes for producing nanoparticles comprising the use of a fuel in combination with an oxidant to provide a flame. A reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212
Further, Height discloses that the produced carbon nanotubes may be quenched following formation, namely disclosing quenching as injecting an inert fluid that will quench by sensible energy, latent energy, or chemical reaction ([0052]). While the disclosure of Detering performs quenching by adiabatic and isentropic expansion of gases in a converging-diverging nozzle and not injection of a fluid, one of skill in the art would recognize both quenching methods as capable of reducing the temperature of the produced gas such that the chemical reaction is quenched – this is expressly disclosed as a result of quenching in Detering (Page 9, lines 26-31).
Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize the process and apparatus of Detering to form carbon nanotubes as disclosed by Height. The process and apparatus of Detering have been shown to be able to predictably provide the reaction conditions required for formation of carbon nanotubes, and one of skill in the art, considering the adaptable nature of the process of Detering, would have found it obvious to adapt the process to those reactions which would utilize its unique quenching mechanism, such as the process for making nanotubes as disclosed in Height.
Regarding Claim 8, Detering as modified above makes obvious the carbon source comprises a carbon-containing fuel, wherein the ratio of fuel and oxidizer is non-stoichiometric and fuel-rich so that when combusted, excess un-combusted carbon is created that will provide the primary source material for the nanomaterials. Particularly, Detering as modified above expressly utilizes a hydrocarbon fuel, i.e., a carbon-containing fuel. Further, Height defines, for the formation of carbon nanotubes, an equivalence ratio φ, defined as the actual fuel/oxygen ratio divided by the stoichiometric fuel/oxygen ratio corresponding to conversion of all carbon to CO2 and all hydrogen to H2O ([0005]). Table 1 of Height shows operational settings and parameters to obtain good quality nanotubes, which includes an equivalence ratio of 1.6, implying that the ideal ratio of fuel to oxidizer for making nanotubes in the process of Detering as modified above is 1.6 times the stoichiometric amount. This ratio is non-stoichiometric and fuel-rich.
Regarding Claim 9, the process of Detering as modified above makes obvious the use of a hydrocarbon fuel.
Regarding Claim 10, the process of Detering as modified above makes obvious the use of oxygen as the oxidizer.
Regarding Claim 11, the process of Detering as modified above makes obvious introducing a catalyst or catalyst precursor into the chamber prior to step (b), and said carbon source and catalyst or catalyst precursor participate in a reaction. Particularly, Height discloses providing an unsupported catalyst to synthesize the filamentary structure in a post-flame region of the flame, and that it is preferred that the catalyst be a metal in the form of an aerosol produced in the flame either by chemical reactions of a precursor compound such as iron pentacarbonyl and coagulation of the reaction products or by physical dispersion and mixing of pre-prepared catalyst particles ([0013]). It would be obvious for one performing the method of Detering as modified above to also utilize a catalyst as discussed in Height in order to maximize the potential yield of nanotubes from the process. Further, such a catalyst would take part in a reaction with the carbon source in catalyzing the reaction taking place in the reaction chamber.
Regarding Claim 12, the process of Detering as modified above makes obvious the use of a metal catalyst.
Regarding Claim 15, the process of Detering as modified above makes obvious the fuel comprises a hydrocarbon and that the oxidizer comprises oxygen, as discussed above. Further, carbon nanotubes produced by such a process are considered catalysts.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13 of copending Application No. 18094494 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite nearly identical methods for producing nanomaterials, and only meaningfully differ in that the reference application requires the claimed process to occur in the chamber of an apparatus that is located between the Earth’s atmosphere. Since it is not clear what difference the location of the apparatus makes in the instant claimed process, the claims are prima facie obvious over the claims of the reference application.
Claims 5-6, 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13 of copending Application No. 18094494 (reference application), in view of Detering and Height as applied above. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application combined with the teachings of Detering and Height make obvious those claims that do not directly correspond to a claim of the reference application.
Regarding Claim 5, Detering makes obvious the use of two materials that react to produce an exothermic reaction.
Regarding Claim 6, Detering makes obvious externally heating the reactor.
Regarding Claim 9-10, Detering in view of Height make obvious the use of a hydrocarbon fuel and air as an oxidizer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOGAN LACLAIR whose telephone number is (571)272-1815. The examiner can normally be reached M-F, 8:30-5:30 PST.
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LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./ Examiner, Art Unit 1736
/DANIEL C. MCCRACKEN/ Primary Examiner, Art Unit 1736