DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶) where # denotes the page number and ¶ denotes the paragraph number of the pregrant publication corresponding to the application, US 2023/0391623. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
Two copies of the response dated 1/27/2026 were filed: (1) EFS Acknowledgement Receipt at 4:59:59 PM ET and (2) EFS Acknowledgement Receipt at 5:03:25 PM ET. While it appears as if the two are identical, the 5:03:25 PM ET copy is being examined.
Claim(s) 1-17 and 19-20 is/are pending.
Claim(s) 1, 2, 4, 6, 8, 9, 11, and 12 is/are currently amended.
Claim(s) 18 is/are acknowledged as cancelled.
The action is FINAL.
Response to Arguments
Claim Rejections – 35 U.S.C. §112
I. With respect to the rejection of Claim(s) 1-20 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, the rejection was not traversed or otherwise addressed. (Remarks of 1/27/2026 at 5). As understood, the Remarks make no attempt to address the core indefiniteness surrounding what was styled as the “intended use” language in the rejection. As best understood, the Remarks rely on amendments. Id.
Claim 1 now recites “the non-mineral acid-based reagent solution is characterized to purify.” First, the newly added “characterized to purify” language is not in the Specification. The Remarks (in the traversal of the art-based rejection) point to Claim 18 as supporting the amendments. (Remarks of 1/27/2026 at 6). Previously pending Claim 18 did not contain this “characterized to purify” language. Second, it is unclear what – if anything – this language limits. If this was a sentence (versus a patent claim with all of their esoteric rules), the “solution” is the subject. “[I]s characterized” is the verb phrase. “to purify a carbon nanomaterial…” is an infinitive functioning as an adverb to modify/describe the verb phrase. The word “characterize” means “to describe the character or quality of.” Definition of “characterize,” accessed online at https://www.merriam-webster.com/dictionary/characterized on 14 April 2026. Thus, the solution describes the character or quality of purifying a carbon nanomaterial? This doesn’t really make sense…
When analyzed in the context of traditional patent claim doctrines, this can only be some manner of product-by-process claim. “Characteriz[ing]” is the process step, and a broad/nebulous one at that. As best understood, the solution is “described” in a manner to purify a carbon nanomaterial that apparently has some level of metal impurities in it. Thus, the claim apparently covers a solution ““described”” in relation to a variable amount of catalytic metal impurities. This creates a “chicken or the egg” (or causality dilemma) as it pertains to the claim. One must know the amount of metal impurities before the solution can be ““characterized”” (““described”” etc.) to purify the impurities. The Specification confirms this. (S. 3: [0032]: “The molar ratio of reagent solution is selected based on concentration of the metal impurities present in carbon nanomaterials (CNMs).”). This makes no sense in the context of a product or composition claim. Reference to variable objects is indefinite. MPEP 2173.05(b) II.
Applicants have not addressed the molar ratio / molarity issue. The analysis is presumed correct.
If Applicants disagree with any of this, construing the claims on the record would be helpful in withdrawing the rejection.
The rejection is MAINTAINED, updated below.
Claim Rejections – 35 U.S.C. §102
I. With respect to the rejection of Claim(s) 1-5 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park, et al., Effect of surface treatment with potassium persulfate on dispersion stability of multi-walled carbon nanotubes, Materials Letters 2010; 64: 718-721 (hereinafter “Park at __”), the Remarks rely upon amendments. (Remarks of 1/27/2026 at 5 et seq.). The rejection is WITHDRAWN in view of the amendments. New rejections appear below.
Claim Rejections - 35 USC § 112
112(a)
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.
I. Claims 1-5 – or as stated below – is/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.
Claim 1 has been amended to recite inter alia “the non-mineral acid-based reagent solution is characterized to purify.” At least the “characterized to purify” language was not found in the disclosure. The Remarks only refer to previously pending Claim 18 to support this language. Claim 18 did not contain the “characterized to purify” language. If Applicants disagree, please point out the support. MPEP 714.02 (“Applicant should also specifically point out the support for any amendments made to the disclosure.”).
Dependent claims not specifically addressed import the language of the claims from which they depend. This is a new matter rejection.
112(b)
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.
I. Claim(s) 1-17, 19, and 20 – or as stated below – is/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 non-mineral acid-based reagent solution is characterized to purify a carbon nanomaterial comprising catalytic metal impurities; and wherein the non-mineral acid-base” The discussion accompanying the Response to Arguments section above is incorporated herein by reference. As best understood, the claim has now been converted to a product-by-process claim with reference to an object that is variable: the moles of metal impurities. Reference to variable objects is indefinite. MPEP 2173.05(b) II.
The “intended use” issues in the previous rejection are still present. The 112(b) rejection in the Non-Final Office Action dated 10/2/2025 is incorporated herein mutatis mutandis. Arguably, under one interpretation, the claim merely requires (or reads on) potassium persulfate in water. The nanotubes/carbon nanomaterial is not required by this claim.
It is separately unclear how the term “molar ratio” is being used in the claims. This term is mentioned in the following locations in the Specification:
[0031] The inventors of the present invention have found that a reagent selection is crucial to remove the metals that are encapsulated at the tip or base of the carbon nanomaterials or intercalated between the carbon nanomaterials by selective oxidation of metal while leaving the carbon nanomaterial structure unperturbed. The potassium persulphate or ammonium persulfate or sodium persulfate reagent solution of the present invention decomposes to give free radical persulfate species under reaction condition, and these species are responsible for removal of metals from the carbon nanomaterial, thus resulting in metal particles leaving the carbon nanomaterial and dissolving into solution by reacting with sulfate ion. Present invention deals with the non-acid based solid regent approach which comprises of ammonium or sodium or potassium salt of persulphate in appropriate molar ratio to the metal concentrations of carbon nanomaterial, which enable to purify carbon nanomaterials in aqueous solution at moderate process conditions. The same method can also be employed for demetallation of other type carbon materials including pet coke.
[0032] The present invention discloses a reagent solution for purifying carbon nanomaterials at ambient to moderate process conditions. The disclosed reagent solution comprises a solid reagent selected from potassium persulphate or ammonium persulphate or sodium persulphate, which will be dissolved in deionized water in the desired molar concentrations. The reagent solution has been used in the appropriate mole ratios to the metal impurities that are present in carbon nanomaterials, either equivalent to or in fractional ratio of 0.1 to 1. The molar ratio of reagent solution is selected based on concentration of the metal impurities present in carbon nanomaterials (CNMs).
[0037] wherein the solid reagent is dissolved in the deionized water in a molar ratio of 0.01 to 1; and
[0043] (a) mixing a solid reagent and deionized water in a molar ratio of 0.01 to 1 to form a reagent solution, wherein the solid reagent is selected from the group consisting of sodium persulphate, potassium persulphate, ammonium persulphate and a mixture thereof;
[0060] The primary objective of the invention is to provide a reagent solution for purification of carbon nanomaterials with or without heteroatoms bearing catalytic metal impurities. The reagent solution comprises a solid reagent dissolved in deionized water in a molar ratio of 0.01 to 1.
[0111] The present invention discloses a reagent solution for purifying carbon nanomaterials at ambient to moderate process conditions. The disclosed reagent solution comprises a solid reagent selected from potassium persulphate or ammonium persulphate or sodium persulphate, which will be dissolved in deionized water in the desired molar concentrations. The reagent solution has been used in the appropriate mole ratios to the metal impurities present in carbon nanomaterials (CNMs), either equivalent or in fractional ratio of 0.1 to 1. The molar ratio of reagent solution selected is based on initial metal impurities present in carbon nanomaterials. The said carbon nanomaterials are characterized with a bulk density in a range of 0.01 to 0.2 g/cc. Also, the carbon nanomaterials, with or without heteroatoms, are associated with transitional metals in a form of metal-carbides, encapsulated or intercalated along with carrier metal oxides.
(emphasis added).
The following findings of fact are made: 1) the term is not defined. 2) The plain meaning of the term would appear to be the ratio of the moles of one substance to the moles of another substance. 3) The example in the Specification states:
Example 1: Preparation of Reagent Solution
[0130] 228 grams of ammonium persulphate dissolved in 10 liters of deionized water under stirring condition, which is denoted as solution A. The prepared solutions are kept in different sealed containers that can be used as purification agent for CNT purification process to remove the metals in an appropriate concentration.
The molecular weight of ammonium persulphate is 228.18 g/mol. The density of water is 1 g/mL or 1000 g/L. The molecular weight of water is 18.01528 g/mol. This information is widely available and readily verified. Official notice is taken without documentary evidence.
Converting 10 liters of water to moles of water: 10 L (1000 g / L) (1 mol / 18.01528 g) = 555.05 mol of H2O, rounded to 555 mol of H2O. 228 g of ammonium persulphate is (approximately) 1 mol of ammonium persulphate. Thus, the molar ratio of ammonium persulphate to water is 1 / 555, or 0.0018. This is outside the claimed range. It is irregular for the examples in a patent application to not “read on” the claims.
If on the other hand the claim is referring to molarity, this is a different concept, but it is arguably supported by the Specification. Molarity is understood to be the number of moles of a solute per liter of solution. This is widely known and verified in many chemistry text books. Reexamining the example from the Specification discussed above, 1 mol of ammonium persulphate / 10 L of water = 0.1 M. This value is within the claimed range. Molarity however is not a molar ratio.
It should be stated that other rejection could be made to address this limitation. For example, it is highly unlikely that one mol of the salt (e.g. 228 g of ammonium persulphate or approximately half a pound) could be ““dissolved”” in 1 mol (18 mL) of water. Arguably an enablement rejection is appropriate. The issue is addressed under 112(b). The Examiner reserves the right to make any additional rejection, as appropriate.
If molarity was intended, making this change would be new matter. If it was an error, Applicants should explain how one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).
Note with the new molar ratio added, i.e. the “the non-mineral acid-based reagent solution and the catalytic metal impurities are in a molar ratio of 0.1 to 1” language in Claim 1 and the similar/parallel language in Claim 6, the plain language of the claim would seem to account for or encompass the moles of the solvent as well, yet the calculations in the Remarks appear to be referring to the ratio of moles of the solute alone (i.e. the salt: APS) to the metals. (Remarks of 1/27/2026 at 7).
Generally speaking, the Specification contains myriad amounts of the “reagent solution,” reported in different values. See for example (S. 6: [0121]):
[0121] In another embodiment, different molar concentrations of reagent solution are prepared in a vessel and stored in an airtight container. 1 to 100 wt. % of 0.01 molar to 1 molar reagent solution, preferably 1 to 50 wt. %, and more preferably 1 to 30 wt. % of 1 molar reagent solution has been used for treating pristine carbon nanomaterial to remove the encapsulated/embedded and excess metal impurities from the carbon nanomaterials.
The metes and bounds of the claims, i.e. how much of what is required, needs to be clear.
Dependent claims not specifically addressed import the issues of the claims from which they depend.
Claim Rejections - 35 USC § 102-103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
I. Claim(s) 1-5 – or as stated below - is/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 Park, et al., Effect of surface treatment with potassium persulfate on dispersion stability of multi-walled carbon nanotubes, Materials Letters 2010; 64: 718-721 (hereinafter “Park at __”).
With respect to Claim 1, and notwithstanding the ambiguities noted above, this claim has been amended to recite in the preamble “[a] non-mineral acid-based reagent solution.” This is not construed as requiring any compositional feature, as the “non-mineral acid compound” is recited in the body of the claim.
Claim 1 has been amended to further require “(a) a solid reagent, wherein the solid reagent is a non-mineral acid compound.” Park teaches potassium persulfate (KPS). (Park at 718, col. 1-2). Potassium persulfate is one of the disclosed reagents, and is construed as a solid non-mineral acid compound. (S. 6: [0120] – “One of the embodiments states that, reagent solution is either one or combination of the reagents such as ammonium persulfate (APS) or potassium persulfate (KPS) or sodium persulfate dissolved in deionized water.”).
Claim 1 further requires “(b) deionized water, wherein the non-mineral acid-based reagent solution is characterized to purify a carbon nanomaterial comprising catalytic metal impurities.”
Deionized water is taught. (Park at 718, col. 2). As discussed above, this is some manner of product-by-process claim to describe the solution. The solution is described. (Park at 718, col. 2: “KPS solutions with different concentrations (0.001, 0.005, 0.01, 0.05, and 0.1 M).” The rejection is made under 102/103 per the practice in MPEP 2113. Note that the Office bears a lower burden on product-by-process claims. MPEP 2113. Any difference – to the extent there is any – would be viewed as obvious based on the close structural similarity. MPEP 2144.09.
Claim 1 further requires “the non-mineral acid-based reagent solution and the catalytic metal impurities are in a molar ratio of 0.1 to 1.” As discussed above, this makes reference to an object that is variable. Whatever molar ratio is taught at (Park at 718, col. 2) can read an equal concentration (i.e. a 1:1 ratio) of metal impurities in carbon nanotubes, etc.
As to Claim 2, potassium persulfate is not a mineral acid.
As to Claim 3, notwithstanding the ambiguities above, this is interpreted as a statement of intended use, and is not limiting.
As to Claim 4, notwithstanding the ambiguities above, this is interpreted as a statement of intended use, and is not limiting.
As to Claim 5, notwithstanding the ambiguities above, this is interpreted as a statement of intended use, and is not limiting.
Conclusion
Yi, et al., Concentration and temperature controlled oxidation and cutting of single-walled carbon nanotubes by ammonium persulfate, Science China 2010; 53(9): 2026-2032 (hereinafter “Yi at __”) is made of record. Yi teaches treating carbon nanotubes with ammonium persulfate (APS) dissolved in water. (Yi at 2027, col. 1-2, 2.2 APS treatment of SWNTs”). Times, temperatures, drying in vacuum, etc. are all taught. Id. While indefinite for the reasons noted above, Yi would not appear to teach the information needed to calculate the molar ratio of APS to metal impurities. While teaching 90% pure nanotubes (which suggests 10% impurities), Yi does not teach what these impurities are such that moles can be calculated.
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 DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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