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 .
Claim Interpretation
The phrase “Korean paper” (also known as “hanji” according to Specification para 0015) has been interpreted in view of Specification para 0057. Specifically, Korean paper, or hanji, has also been interpreted as specifically being made from the inner bark of the paper mulberry tree (see attached PTO-892 Reference U), distinct from other types of paper, e.g. rice paper.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-12 and 16-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended claim 10 recites “the carbon substance is fixed to the support without a polymer binder for fixing the carbon substance to the support”. There is no support for this negative requirement in the Specification in view of reasoning that a negative claim requirement introduces new concepts since an express exclusion of certain elements implies permissible inclusion of all other elements not so expressly excluded. Ex parte Grasselli, 231 USPQ 393, 394 (BD. App. 1983; aff’dmem., 738 F.2d 453 (Fed. Cir, 1984). Claims 11-12 and 16-17 are also rejected as depending on claim 10.
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 16 and 17 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 16 (dependent on amended claim 10) recites “on a surface of the substrate layer, a carbon substance layer formed by fixing the carbon substance onto the surface of the substrate layer” (emphasis added), rendering claim 16 indefinite as to how claim 16 further narrows claim 10. Claim 17 is also rejected as depending on claim 16.
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.
Claims 10 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwon et al (Effective embedment of activated carbons into traditional Korean paper ‘Hanji’ and its application to flexible supercapacitors), as evidenced by Bekyarova et al (Electronic Properties of Single-Walled Carbon Nanotube Networks).
With respect to claims 10 and 16, Kwon discloses an activated carbons (AC)- “embedded Hanji electrode” (i.e. claimed “substrate layer”) for supercapacitor electrodes in an electrochemical cell (e.g. the substrate layer is usable in a fuel cell) (Abstract; p. 36, Experimental), wherein a support of Hanji (i.e. Korean paper) is embedded (i.e. claimed “fixedly impregnated)” with the AC of “carbon nanotubes (CNTs)” alone “without using any binders” to form the AC-embedded Hanji electrode (i.e. claimed “substrate layer”) (Abstract; p. 35, Introduction; p. 36, Experimental). The preamble reciting “a gas diffusion layer for a fuel cell, being used as a constituent of a unit cell in the fuel cell” has not been given patentable weight since “the body of [the] claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, […], the purpose or intended use of the invention”; as such, “the preamble is not considered a limitation and is of no significance to claim construction” (MPEP 2111.02, II). The supercapacitor of Kwon has an “electrical conductivity” (i.e. claimed “electroconductivity”), wherein the electroconductivity of the CNTs alone for a supercapacitor would be expected as 250-400 S/cm as evidenced by the Abstract of Bekyarova.
Claims 10-12 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heo et al (Large-Scale Conductive Yarns Based on Twistable Korean Traditional Paper (Hanji) for Supercapacitor Applications: Toward High-Performance Paper Supercapacitors).
With respect to claims 10 and 16, Heo discloses coated KTP (i.e. claimed “substrate layer”) for supercapacitors having “outstanding mechanical and electrochemical performance” due to “effects of the carbon nanomaterials coating on porosity, mechanical properties, and electrochemical performance of the supercapacitors” (e.g. the substrate layer is usable in a fuel cell) (Abstract; p. 2, right col. to p. 3, left col.), wherein a support of Korean traditional paper (KTP) is coated with “reduced graphene oxide (rGO) or/and single-walled carbon nanotubes (SWNTs)” (emphasis added) (e.g. coated with claimed “carbon substance”) without a polymer binder to form the coated KTP (i.e. the substrate layer) (Abstract; p. 2, right col.; p. 5, Table 1); the coated KTP has the carbon substance of SWNTs alone adhering to both surfaces of the coated KTP “as well inside the pores of [the coated] KTP” (p. 5, left col.), thus the carbon substance is “fixedly impregnated inside” the coated KTP. The preamble reciting “a gas diffusion layer for a fuel cell, being used as a constituent of a unit cell in the fuel cell” has not been given patentable weight since “the body of [the] claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, […], the purpose or intended use of the invention”; as such, “the preamble is not considered a limitation and is of no significance to claim construction” (MPEP 2111.02, II). Heo further suggests for the supercapacitor of the coated KTP to have an “electrical conductivity” (i.e. claimed “electroconductivity”) of 4000 S/cm (p. 2, right col.), with the coated KTP undergoing a heat treatment of 900oC (p. 10, Experimental Section). Since Heo teaches the claim requirements of SWNTs applied to KTP to form the coated KTP which is then heated at 900oC, a prima facie case of either anticipation or obviousness has been established that Heo also teaches the resulting coated KTP having a property of the claimed “electroconductivity of 9.00x101 S/cm or higher” (MPEP 2112.01, I).
With respect to claim 11, Heo further discloses the support of the KTP has a base weight of “≈10 gsm (gram per square meter)” and thickness 60 mm (p. 10, Experimental Section, left col.).
With respect to claim 12, Heo further discloses the substrate layer (i.e. the coated KTP with the carbon substance of SWNTs) comprises a porosity 82.5% (p. 5, Table 1).
With respect to claim 17, Heo further discloses the carbon substance is applied to and “sufficiently absorbed into” (i.e. impregnated) the KTP as an ink, wherein the ink (i.e. claimed “carbon material layer”) is applied to a thickness of 10 mm on the KTP with a thickness of 60 mm (p. 10, Experimental Section, left col.); thus the coated KTP has a thickness of greater than 50 mm.
Response to Arguments
Applicant’s Remarks on p. 4-6 filed 7/27/2026 are addressed below.
112 Rejections
Claim 15 has been canceled; the previous 112(b) rejection is moot.
Claim 16 has been amended to clarify how ‘the carbon substance is fixed onto the substrate layer’; the previous 112(b) rejection is maintained for the new reasoning set forth above.
Claim 17 has been amended to clarify the “carbon substance layer”; the previous 112(b) rejection has been withdrawn in view of at least para 0062 of Applicant’s published Specification (US 2024/0105963) linking “carbon material 230” as the same as “carbon substance 230”.
102 Rejections
On p. 5-6, Applicant argues that Kwon does not teach as recited by amended claim 10 (a) the claimed gas diffusion layer; and (b) the claimed electroconductivity of 9.00x101 S/cm or higher.
The Examiner respectfully disagrees.
Regarding (a), a recitation of the intended use (i.e. ‘the carbon nanotubes fixed to the support of Korean paper’ is for the gas diffusion layer) of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure of Kwon is capable of performing the intended use, then Kwon meets the claim.
Regarding (b), as discussed above, the supercapacitor having the CNTs of Kwon would be expected to have the claimed electroconductivity as evidenced by Bekyarova.
On p. 6, Applicant argues that Heo does not teach as recited by amended claim 10 (a) the claimed gas diffusion layer; and (b) the claimed electroconductivity of 9.00x101 S/cm or higher.
The Examiner respectfully disagrees.
Regarding (a), a recitation of the intended use (i.e. ‘the carbon nanotubes fixed to the support of Korean paper’ is for the gas diffusion layer) of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure of Heo is capable of performing the intended use, then Heo meets the claim.
Regarding (b), as discussed above, the supercapacitor of the coated KTP of Heo is formed by SWNTs alone without a polymer binder coated onto the KTP, similar to claim 10, with the coated KTP undergoing a heat treatment of 900oC, which results in the claimed electroconductivity according to Applicant (see p. 6 Remarks). As such, a prima facie case of either anticipation or obviousness has been established that Heo also teaches the resulting coated KTP having a property of the claimed “electroconductivity of 9.00x101 S/cm or higher” (MPEP 2112.01, I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Heo (Paper-Derived Millimeter-Thick Yarn Supercapacitors Enabling High Volumetric Energy Density) is relevant for teaching a mixture of carbon nanotubes (CNTs) and reduced graphene oxide applied onto Korean paper to form a supercapacitor, wherein the supercapacitor has an electrical conductivity of 240, 2800, or 2050 S/cm; while Heo does not specifically suggest for only CNTs to be applied onto the Korean paper, it is further noted that Applicant’s published Specification para 0069 states “when used as the carbon substance 230, a mixture of carbon nanotubes (CNT) and a reduced graphene oxide (rGO) gives lower electroconductivity to the gas diffusion layer than does the sole carbon nanotubes (CNT)”, thus giving further support that the electroconductivity of Heo (cited for the rejection of claim 10) would expectedly be 90 S/cm or higher as claimed.
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 MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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