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
Applicant's election with traverse of Group I (claims 1-8) in the reply filed on 4/10/2026 is acknowledged. The traversal is on the ground(s) that inventions I, II, and III would not require different fields of search since they have substantially overlapping features (Remarks of 4/10/2026 at 7). This is not found persuasive because each group still has features requiring different areas of searches.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on.
Claim Rejections - 35 USC § 102
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) 1-8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Naskar (2013/0214442).
With respect to claim 1, the claim requires “A structure comprising: one or more carbonized materials having a shape based on a polymer based template structure and formed of a chemical compound having the chemical structure wherein each carbonized material has been crosslinked and has an average pore size diameter of about 10 nm to about 50 nm.” This is product-by-process language, making this a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent they suggest structure or composition. See generally MPEP 2113. Here, the claim suggests carbonization of material (applicant Specification 18, [0170]). Nasker teaches carbonization (Naskar 9: [0064]). The cross-linking of the polymer is not understood to impart structural or compositional features into the final product after it has been heated to the temperatures described in the Specification. See (S. 18: [0170]: “The crosslinked and/or sulfonated structure (e.g., a sulfonated polyolefin) is then converted to carbonaceous materials).. Nasker further teaches mesopores with pore sizes of 2-50 nm (Naskar 10: [0070]-[0073]). Any difference – to the extent there is any – would be viewed as obvious based on the close structural similarity. MPEP 2144.09.
Regarding claim 2, Nasker teaches material with pores 15 - 35 nm (Nasker 10, [0071]).
Claim 3 is rejected for the reasons discussed with to claim 1. The claimed polystyrene-block-poly(ethylene-ran-butylene)-block-polystyrene material is the starting material subjected to carbonization and does not structurally distinguish the claimed carbonized product. See MPEP 2113.
Regarding claim 4, Nasker teaches mesopores (Nasker 10, [0071]).
Regarding claim 5, Nasker teaches pore sizes of 15 - 35 nm and surface areas of 5 – 1000 m2/g (Nasker 10, [0071]).
Regarding claim 6, Nasker teaches carbonized material having pore structure comprising an average surface area of 5 – 1000 m2/g (Nasker 10, [0071]).
Regarding claim 7, Nasker teaches carbonized cylindrical mesopores (Nasker, Fig 1).
Regarding claim 8, the Office does not have the capability to test the carbonized materials of Naskar for CO2 adsorpotion capacity. However, Naskar teaches the claimed/disclosed surface areas. Compare (Naskar 10: [0074]) with (S. 15-16: [0161]; Claim 5-6). As discussed above, Naskar also teaches the claimed pore diameters. As such, it is expected that the adsorption capacity is necessarily present. This is the rationale to show inherency. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency' under 35 U.S.C. 102, on ‘prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STARFARI TESHAWN MCCLAIN whose telephone number is (571)272-0169. The examiner can normally be reached M-F 8 AM- 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STARFARI TESHAWN MCCLAIN/Examiner, Art Unit 1736
/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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