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 Arguments
Applicant's arguments filed 04/01/2026 have been fully considered but they are not persuasive.
Applicant argues the prior art does not teach “rare earth metal nanostructures disposed within carbon nanopores, wherein the rare earth metal nanostructures comprise internal carbon”
Applicant’ states “As described in the specification, internal carbon refers to the location of carbon within the nanostructures. Specifically, the nanoporous carbon forms the substrate for the instantiation of metal within the carbon pore. As the instantiated metal forms off of the carbon substrate, carbon is internalized (i.e., internal carbon) into the metal nanostructure. This can be clearly seen in, for example, Figure 10 wherein blue (carbon) can be seen internalized within the red (metal nanostructure). In other words, the "internal carbon" is within the metal itself occupying space between the metal atoms.” Applicant then argues “The Examiner's reliance on Kodas (col. 31, lines 1-20) to teach "internal carbon" is incorrect. The passage cited by the Examiner (col. 31, lines 1-20) discusses forming a metal alloy where one metal coats another. Fig. 35D, referenced by the Examiner for agglomeration, explicitly shows a metal coating on a carbon particle. This is structurally distinct from having carbon internal to a metal nanostructure.” Applicant’s argument is not persuasive because the metal coated nanoporous carbon particle taught by Kodas et al. meets a broad and reasonable interpretation of “metal nanostructures comprise internal carbon”. The nanoporous carbon is on the inside of the particulate metal coating, i.e. carbon is internalized.
Applicant argues the method taught by Applicant’s specification is different from the method of making taught different from the method of making taught by Kodas et al. but product claims are no defined by method of making.
Applicant then argues “The teachings or suggestions of Hampden-Smith and/or Terrian do not provide that which Kodas lacks as there is no teaching or suggestion in Hampden-Smith, or Terrian of a metal nanostructure that itself contains carbon within its metallic matrix. Therefore, Kodas, Hampden-Smith and/or Terrian, alone or in combination, fail to teach or suggest rare earth metal nanostructures comprising a rare earth metal and internal carbon; i.e., wherein the carbon is within the metal itself occupying space between the metal atoms.” Applicant’s argument is not persuasive because as stated supra the metal coated nanoporous carbon particle taught by Kodas et al. meets a broad and reasonable interpretation of “metal nanostructures comprise internal carbon”. The nanoporous carbon is on the inside of the particulate metal coating, i.e. carbon is internalized. Hampden-Smith and/or Terrian
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.
Claim(s) 1-6 and 8-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kodas et al. (U.S. Pat. No. 6,103,393) in view of Hampden-Smith et al. (U.S. Pat. No. 6,635,348) in view of Terrian et al. (U.S. Pub. No. 2020/0346188).
Kodas et al. teaches a metal-carbon composite produced by spray conversion (column 1, lines 10-20). Kodas et al. teaches a TEM image of a particle of the powder is illustrated in FIG. 40 (column 39, lines 35-40). Kodas et al. teaches the particle is comprises a porous carbon support having small metal crystallite phases dispersed through the carbon which meets a broad and reasonable interpretation of nanoporous carbon composition comprising metal nanostructures disposed within carbon nanopores (column 39, lines 35-40). Kodas teaches small metal crystallite phases dispersed through the carbon wherein the metal crystallites are less than 300 nm measure by TEM which meets the limitation of metal nanostructures have an average diameter of less than about 10 um, as detected by visual inspection of a SEM image (Fig. 40). Kodas et al. teaches a coating the metal-carbon particle with a metal which meets a broad and reasonable interpretation of metal nanostructures comprise internal carbon because the metal coating encapsulates the carbon particle (column 31, lines 1-20). Kodas teaches the metal precursor will be a metal-containing compound such as a salt dissolved in a liquid solvent of the liquid feed (column 29, lines 1-10; Fig. 35F). Kodas et al. does not specify a metal selected from the group consisting of Sc, Y, La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu.
Hampden-Smith et al. teaches a multi-phase particle comprising a metallic phase and a carbon phase (column 39, lines 60-67). Hampden-Smith et al. teaches yttrium and neodymium (column 38, lines 10-35).
Terrian et al. teaches methods for preparing shaped porous carbon products (paragraph 8). Terrian et al. teaches the present invention also relates to catalyst compositions including these shaped porous carbon products, processes of preparing the catalyst compositions, and various processes of using the shaped porous carbon products and catalyst compositions (paragraph 30). Terrian et al. teaches catalytically active component such as yttrium (paragraph 148).
It would have been obvious to one of ordinary skill in the art at the time of filing to use rare earth metals such as yttrium or neodymium for the metal-carbon composite material taught by Kodas et al. because rare-earth metals such as yttrium are catalytically active material. Furthermore, it is well known in the art that yttrium influences electronic and magnetic behavior of materials.
Regarding claim 2, Kodas teaches small metal crystallite phases dispersed through the carbon wherein the metal crystallites are less than 300 nm measure by TEM which meets the limitation of metal nanostructures have an average diameter of less than about 1 µm, as detected by visual inspection of a SEM image (Fig. 40).
Regarding claims 3 and 25, Hampden-Smith et al. teaches a multi-phase particle comprising a metallic phase and a carbon phase (column 39, lines 60-67). Hampden-Smith et al. teaches yttrium and neodymium (column 38, lines 10-35).
Terrian et al. teaches methods for preparing shaped porous carbon products (paragraph 8). Terrian et al. teaches the present invention also relates to catalyst compositions including these shaped porous carbon products, processes of preparing the catalyst compositions, and various processes of using the shaped porous carbon products and catalyst compositions (paragraph 30). Terrian et al. teaches catalytically active component such as yttrium (paragraph 148).
It would have been obvious to one of ordinary skill in the art at the time of filing to use rare earth metals such as yttrium or neodymium for the metal-carbon composite material taught by Kodas et al. because rare-earth metals such as yttrium are catalytically active material. Furthermore, it is well known in the art that yttrium influences electronic and magnetic behavior of materials.
Regarding claims 4 and 29, Kodas et al. teaches particles are substantially spherical (paragraph 34, column 34, lines 55-65).
Regarding claim 5, Kodas et al. teaches wherein at least some of the nanostructures are agglomerated (Fig. 35D and 35F).
Regarding claim 6, Kodas et al. teaches the average metal phase size is preferably at least about 5 nanometers which overlaps with wherein at least some of the nanostructures are adynamic and a diameter less than about 10 nm (column 33, lines 45-65).
Regarding claims 8 and 9, Kodas et al. in view of Hampden-Smith et al. in view of Terrian et al. does not teach the type of bonding between the carbon and metal. However, the cited prior art teaches a metal-carbon composite comprising carbon black and yttrium which is commensurate with the materials taught by Applicant’s claimed disclosure (column 39 and 40). It is the position of the Office the materials taught by the cited prior art would have the claimed properties because the claimed and prior art products are identical or substantially identical in structure or composition. 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). See MPEP 2112.01 (I).
Regarding claim 10, Kodas et al. teaches metal oxides (column 30, lines 45-50).
Regarding claims 11 and 12, Kodas et al. teaches carbon black, graphitic carbon and amorphous carbon (column 39 and 40).
Regarding claim 13, Kodas et al. teaches particle size between 0.1 micron to 10 micron which overlaps with the nanoporous carbon powder has a mass mean diameter between 1 µm and 5 mm (Figure 41).
Regarding claim 14, Kodas et al. teaches carbon surface area of at least about 50 m2 /g which meets the limitation wherein the nanoporous carbon powder has a surface area of at least about 1 m2/g (column 35, lines 5-20).
Regarding claims 15 and 16, Kodas et al. teaches metal nanoparticles in carbon pores (Figure 40). Kodas et al. teaches nanoporous carbon powder is characterized by a plurality of ultra- micropores wherein the nanoporous carbon powder is characterized by a plurality of ultra-micropores having a diameter of less than 20 angstroms(Figure 40).
Regarding claim 17, Kodas et al. teaches carbon surface area of at least about 50 m2 /g which meets the limitation wherein the nanoporous carbon powder has an ultramicropore surface area between about 100 and 3000 m2/g (column 35, lines 5-20).
Regarding claims 18-23, Kodas et al. teaches control over the carbon crystallinity is important for long term success of the devices (column 39, 55-67). It would have been obvious to on e of ordinary skill in the art at the time of filing to treat the carbon powder in order to obtain the desired crystallinity.
Regarding claims 24, Kodas et al. teaches graphite which is composed of graphene layers (column 40).
Regarding claim 26, Hampden-Smith et al. teaches a multi-phase particle comprising two metals(column 39). It would have been obvious to one of ordinary skill in the art at the time of filing to use 2 metals that are synergistic thereby optimizing the catalyst material.
Regarding claims 27 and 28, Hampden-Smith et al. teaches a multi-phase particle comprising two metals such as copper an nickel which meets the limitation of transition metal (column 39). It would have been obvious to one of ordinary skill in the art at the time of filing to use 2 metals that are synergistic thereby optimizing the catalyst material .
Conclusion
THIS ACTION IS MADE FINAL. 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 GUINEVER S GREGORIO whose telephone number is (571)270-5827. The examiner can normally be reached M-W 11 am - 9 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 06/01/2026
Prosecution Insights