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 .
This application is in response an Election/Restriction filed on 09/25/2025.
Claims 1-20 are pending. Applicant has elected with traverse Group I, claims 1-13, and claims 14-20 are withdrawn as non-elected group II-III claims. Claims 1-13 are under examination.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-13 in the reply filed on 09/25/2025 is acknowledged. The traversal is on the ground(s) that there is not undue burden and that the subject matter among the groups is not independent and distinct as required by statute and furthermore, different classifications as recited by the USPTO are not independent adequate grounds for restriction since the USPTO has historically examined applications containing multiple sets of claims. This is not found persuasive as applicant argues that it is not undue burden to search all of the claims and that the subject matter is not independent and distinct but however, applicants have provided no evidence to support this position. Therefore, the examiner’s position remains that Group I, Group II, and Group III have a separate status in the art for the reasons set forth on pages #2-5 of the Office Action mailed on 07/25/2025. Further, as set forth on page 2 of the Office Action mailed 07/25/2025, the examiner has established that the three groups have a different classification. Specifically, Group I, drawn to a carbon-based nanomaterial composition classified in C01B32/15; Group II, drawn to a method of forming a carbon-based nanomaterial composition, classified in C09C1/0081; and Group III, drawn to a carbon-based nanomaterial, classified in C01P2006/80.
Further, while applicant states the USPTO has historically examined applications containing multiple sets of claims, it is not required that examiners examine multiple sets of claims when a restriction between claim sets in proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II-III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/25/2025.
Information Disclosure Statement
It is noted that the applicant has listed a large number of documents for consideration in the information disclosure statements submitted in this application. As noted in MPEP 2001.05, if information is not material, there is no duty to disclose the information to the Office. Information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). As noted in MPEP 2004 (Section 13), it is desirable to avoid the submission of long lists of documents if it can be avoided. It is suggested that applicants eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant' s attention and/or are known to be of most significance. Consideration by the examiner of the information submitted in an IDS means that the examiner has considered the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search, 609.05(b). Foreign language documents have been considered for relevance in light of information provided by applicant under guidelines in MPEP 609.04(a)(III).
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains less than 50 words and uses the implied phrase “the present disclosure relates to” in line 1. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 4-9 and 12-13 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.
Claims 4-9 recite: “oxygen content of at least about 2% based on elemental analysis of the carbon-based nanomaterial composition” as recited in claim 4;
“oxygen content of not greater than about 50% based on elemental analysis of the carbon-based nanomaterial composition” as recited in claim 5; “carbon content of at least about 60% based on elemental analysis of the carbon-based nanomaterial composition” as recited in claim 6; “carbon content of not greater than about 99% based on elemental analysis of the carbon-based nanomaterial composition” as recited in claim 7; “oxygen content of at least about 1% based on elemental analysis of the carbon-based nanomaterial composition” as recited in claim 8; and “oxygen content of not greater than about 35% based on elemental analysis of the carbon-based nanomaterial composition” as recited in claim 9.
However, it is unclear what “% based on elemental analysis of the carbon-based nanomaterial composition” refers to, e.g., mass %, atomic %, weight%, volume%, etc. For purposes of examination, the examiner interprets “% based” as atomic % based. Clarification is requested.
Claims 4-5 and 8-9, recites “oxygen content” which is not clear asto if an oxygen content is of oxygen gas or oxygen powder or oxygen doped as recited in claim 1. Clarification is requested. For purposes of examination, the examiner interprets oxygen content of oxygen doped.
Claims 6-7, recites “carbon content” which is not clear asto if a carbon content is of carbon-based nanomaterial or carbon-based gas as recited in claim 1. Clarification is requested. For purpose of examination, the examiner interprets carbon content of carbon-based nanomaterial.
Claims 12-13 recites “D/G ratio” which is not clear asto what D and G represent. Applicant’s specification just discloses D/G ratio measured by Raman spectroscopy but it is not clear from specification of what D/G represent and how the D/G ratio is obtained. Clarification is requested.
Claim Rejections - 35 USC § 102/103
11. 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.
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.
12. Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as being obvious over Ye et al (NPL: “Nitrogen and oxygen-codoped carbon nanospheres for excellent specific capacitance and cyclic stability supercapacitor electrodes, Chemical Engineering Journal, vol.330, 15 December 2017, pages 1166-1173).
Regarding claim 1, Ye discloses nitrogen and oxygen codoped carbon nanospheres (see title, abstract, see section 2.3 on page 1167, i.e., reads on wherein the carbon-based nanomaterial composition comprises oxygen-doped carbon nanospheres).
Although Ye does not explicitly teach the oxygen doped nanospheres are formed from a forming mixture comprising a gas mixture and an oxygen powder, wherein the gas mixture comprises a carbon-based gas, an oxygen gas, and a hydrogen gas as presently claimed, its is noted that the present claims are drawn to product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Ye meets the requirement of the claimed product, Ye clearly meets the requirements of the present claim.
Regarding claims 2-3, Ye teaches the carbon-based nanomaterial composition of claim 1, wherein the carbon spheres have diameters in the range of 130 nm (see abstract and results and discussion-left column on page 1168), which fall within the claimed range.
Regarding claims 4-5 and 8-9, Ye teaches the carbon-based nanomaterial composition of claim 1, wherein carbon-based nanomaterial composition comprises an oxygen content of at least 3.83 to 11.71 atomic% based on elemental composition of PANI/SA (i.e., carbon-based nanomaterial, see table 1) which falls within claimed range of oxygen content based on elemental analysis.
Regarding claims 6-7, Ye teaches the carbon-based nanomaterial composition of claim 1, wherein carbon-based nanomaterial composition comprises a carbon content of 84.67 to 88 atomic% based on elemental composition of PANI/SA (i.e., carbon-based nanomaterial, see table 1) which falls within claimed range of carbon content based on elemental analysis.
Claim Rejections - 35 USC § 103
13. 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.
14. Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ye et al (NPL: “Nitrogen and oxygen-codoped carbon nanospheres for excellent specific capacitance and cyclic stability supercapacitor electrodes, Chemical Engineering Journal, vol.330, 15 December 2017, pages 1166-1173) as applied to claim 1 above.
Regarding claims 10-11, Ye teaches carbon-based nanomaterial composition of claim 1 applied above, wherein as oxygen doped carbon nanosphere of Ye are substantially identical to the claimed carbon-based nanomaterial composition and further discusses carbonization (pages 1169-1171, fig 3, 4, table 2), it is clear that oxygen-doped carbon nanospheres of Ye would inherently comprise a carbon hybridization ratio Psp3/Psp2 of at least about 4.0 of claim 10 and not greater than about 5.0 of claim 11, where Psp3 is the percent of carbon within the carbon-based nanomaterial composition having a sp3 hybridization and Psp2 is the percent of carbon within the carbon-based nanomaterial composition having a sp2 hybridization.
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 claims 12-13, Ye discloses D/G ratio measured by Raman spectra of the PANI/
SA-600, PANI/SA-700, PANI/SA-800, and PANI/SA-900 are 1.02,0.99,0.98,.096 respectively (see page 1168-Right column, figure 2a).
Ye does not explicitly disclose D/G ratio of not greater than 0.5 of claim 12 and of at least about 2.0 of claim 13 as presently claimed.
However, since Ye discloses carbon-based nanomaterial composition similar to presently claimed invention and further discloses D/G ratio measured by Raman spectra of the PANI/SA-600, PANI/SA-700, PANI/SA-800, and PANI/SA-900 are 1.02,0.99,0.98,.096 respectively (see page 1168-Right column, figure 2a), it would have been obvious to one of the ordinary skill in the art before the effective filing date of applicant invention to choose the instantly claimed ranges that includes D/G ratio of not greater than 0.5 and at least of about 2.0 through optimization process by routine experimentation since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art which would provide excellent capacitive performances as taught by Ye (see page 1168-right column-second paragraph). See In re Boesch, 205 USPQ 215 (CCPA 1980), see MPEP 2144.05.
Conclusion
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SMITA S PATEL whose telephone number is (571)270-5837. The examiner can normally be reached on 9AM-5PM EST M-W.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached on 5712705713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SMITA S PATEL/Primary Examiner, Art Unit 1732
01/21/2025