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 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.
Claim 4-9 and 20 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. In this case, claim 4-9 and 20 recite phosphorous content being at least 0.5 atomic percent ( at. %) or not being greater than 6 at.%, or recite the carbon content being at least 90 at. %, or not greater than 95 at. %, or recite the oxygen content being at least 2.5 at. % or not greater than about 2.5 at.%, or being at least 0.5 at. % and not greater than 2.5 at.% based on elemental analysis of the carbon-based nanomaterial, but such phosphorus atomic percentage, oxygen atomic percentage and carbon atomic percentage has not been described in the original disclosure. Rather instant specification only generic discloses such phosphorous content, oxygen content and carbon content elemental analysis based on XPS (see filed instant specification para. [0044]-[0046]).
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.
Claim 1-12 and 20 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. In this case, claim 1and 20 respectively recite “nanomaterial” and “nanosphere”, but one of ordinary skill in the art is uncertain what dimension or size of material or sphere can be considered as “nanomaterial” or “nanosphere”, such as 1-100 nm or 5-500 nm or 100-1000nm? Therefore, such limitations render claim indefiniteness. All claim 1’s depending claims are rejected for similar reasons.
Claim 2 and 3 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. In this case, claim 2 and 3 respectively recite “phosphorus doped nanospheres”, which appears lack of antecedent basis.
Claim Rejections - 35 USC § 102/103
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1-3 and 6-7 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 Mahiko et al. (WO2020/195997) (for applicant’s convenience, English equivalent US2022/0185676 has been used for citations hereof).
Mahiko et al teaches a heteroatom-doped (specifically phosphorous-doped) nanodiamond comprising from 70 to 99% by mass of carbon wherein such nanodiamond having a shape preferably being spherical, ellipsoidal or polyhedral (para. [0047], example 9, 12, claim 11-12). Therefore, Mahiko et al. disclosed nanodiamond has a spherical shape, therefore, such nanodiamond reads onto the instantly claimed carbon nanospheres, and such spherical nanodiamond being doped with phosphorus.
Regarding claim 1, Mahiko et al. does not expressly teach the limitation of “formed from a forming mixture comprising a gas mixture and a phosphorous powder, wherein the gas mixture comprises a carbon-based gas, oxygen gas (O2), and a hydrogen gas (H2)”, such limitation is a product by process limitation”, even 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 (see MPEP§ 2113). In the instant case, Mahiko et al. already teaches a same or substantially the same carbon nanomaterial as that of instantly claimed.
Regarding claim 2-3, Mahiko et al. further teaches the heteroatom-doped nanodiamond having an average size of primary particles being from 2 to 70 nm, even more preferably even more preferably from 3 to 55 nm (para. [0038], [0053], table 2, claim 1).
Regarding claim 6-7, Mahiko et al. teaches the heteroatom-doped nanodiamond comprising from 70 to 99% by mass of carbon, more preferably from 80 to 97% by mass (para. [0054], claim 12), wherein such mass content suggesting atomic carbon percentage within or overlapping with that of instantly claimed range.
Claim 4-5 and 12 are rejected under 35 U.S.C. 103 as obvious over Mahiko et al. (WO2020/195997) (for applicant’s convenience, English equivalent US2022/0185676 has been used for citations hereof).
Regarding claim 4-5, Mahiko et al. further discloses the heteroatom-doped nanodiamond comprising a heteroatom content preferably from 0.0001 to 10.0 mass % (para. [0058]), wherein such phosphorous mass content suggesting a phosphorous atomic percentage overlapping with that of instantly claimed phosphorous atomic content thus renders a prima facie case of obviousness (see MPEP §2144. 05 I). As for the claimed using XPS, it is noted that this is just a measure method for obtaining phosphorous content, Mahiko et al. already teaches similar phosphorous content as that of instantly claimed.
Regarding claim 12, Mahiko et al. further discloses the heteroatom-doped nanodiamond having a ratio (D/G) preferably from 0.2 to 9, wherein D/G ratio overlaps with that of instantly claimed D/G ratio thus renders a prima facie case of obviousness (see MPEP §2144. 05 I). As for the claimed “determined by IR spectroscopy, it is noted that this is just a measure method for obtaining D/G ratio, Mahiko et al. already teaches similar D/G ratio as that of instantly claimed.
Claim 1, 9-10 and 20 are rejected under 35 U.S.C. 103 as obvious over Sorensen et al. (US 2014/0335010 A1) in view of Mahiko et al. (WO2020/195997) (for applicant’s convenience, English equivalent US2022/0185676 has been used for citations hereof).
Sorensen teaches graphene powder having particle size of 35 to 250 nm (para. [0026], [0032]), wherein such powder comprising spherical particles (i.e. carbon nanosphere) (Fig. 6-7, para. [0052]). Sorensen also teaches a process for producing such graphene powder ( i.e. a carbon based nanomaterial) comprising providing a mixture comprising a combustible carbon-containing material and an oxidizing agent for graphene; and detonating said mixture at a temperature of at least 3000 K (i.e., about 2726.85°C), wherein the carbon containing material is a hydrocarbon, particularly preferably acetylene (i.e., a carbon-based gas, as well as a hydrogen containing gas, i.e., a hydrogen gas), and the oxidizing agent is selected from O2, N2O, NO, and mixtures thereof (i.e., an oxygen gas) ( claim 1, para. [0027], [0028]).
Regarding claim 1, Sorensen et al. does not expressly teach the obtained carbon nanosphere being doped with phosphorus.
Mahiko et al. has been described as above. Mahiko et al. also teaches mixing a dry powder of heteroatom containing compound (e.g. phosphorus containing compound powder) under explosive condition (i.e. combustion) for forming such carbon nanomaterial (para. [0071], [0072], [0104], [0146], example 6 and 9).
It would have been obvious for one of ordinary skill in the art to adopt such well-known technique of adding phosphorus containing powder for obtaining a phosphorous doped carbon nanosphere as shown by Mahiko et al. to modify the process of producing graphene powder of Sorensen et al. because applying a known technique of adding phosphorus containing powder obtaining a phosphorus doped carbon nanosphere to a known process of producing carbon nanosphere containing graphene for improvement would yield predictable results (see MPEP §2143 KSR).
As for the claimed “formed from a forming mixture comprising a gas mixture and a phosphorous powder, wherein the gas mixture comprises a carbon-based gas, an oxygen gas, and a hydrogen gas”, Sorensen already teaches in view of Makiko et al. teaches such limitation as discussed above.
Regarding claim 9, Sorensen further teaches the obtained graphene material having a ratio of C to O being 49:1 based on XPS (para. [0049]). Therefore, the elemental percentage of carbon is 49/(49+1) = 98 at.% and the elemental percentage of oxygen is 1/(49+1) = 2 at.%, which is within the claimed range.
Regarding 20, Sorensen et al. in view of Mahiko et al. already teaches all the limitations as discussed above.
Regarding claim 10, Sorensen et al does not expressly teach “a carbon hybridization ratio Psp3/Psp2 of at least about 4.0 or of not greater than about 5.0”.
However, Sorensen et al already teaches a substantially the same process as that instant application for combusting a gas mixture containing a carbon, oxygen and hydrogen under substantially the same temperature as that of instant application (see instant filed specification in the published application US2023/0278872 para.[0006], [0007], [0028], [0037]), while Mahiko et al. teaches that phosphorous (containing) powder can be added into such mixture for combusting to form a phosphorus doped carbon based nanomaterial. Therefore, Sorensen et al. in view of Mahiko et al. discloses a substantially the same process of producing a same or substantially the same carbon-based nano material doped with phosphorus as that of instant application, therefore, same or substantially the same properties as that of instantly claimed, i.e. “a carbon hybridization ratio Psp3/Psp2 of at least about 4.0”, “a carbon hybridization ratio Psp3/Psp2 of not greater than about 5.0” as those of instantly claimed would be expected.
Claim 8 is rejected under 35 U.S.C. 103 as obvious over Sorensen et al. (US 2014/0335010 A1) in view of Mahiko et al. (WO2020/195997) (for applicant’s convenience, English equivalent US2022/0185676 has been used for citations hereof) as applied above, and further in view of Kohl (WO2020/073102) (for applicant’s convenience, equivalent US2021/0380415 has been used for citations hereof).
Regarding claim 8, Sorensen et al. in view of Mahiko et al. does not expressly teach the oxygen content being at least 2.5 at.%.
Kohl teaches a graphitic material with hetero-atom including, for example nitrogen, oxygen (para. [0118], [0120]) wherein when the hetero-atom being oxygen, its content being from about 0 to 20%. Kohl disclosed oxygen content suggesting an overlapping oxygen atomic percentage range as that of instantly claimed thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
It would have been obvious for one of ordinary skill in the art to adopt such oxygen content as shown by Kohl to modify the carbon nanomaterial of Sorensen et al in view of Mahiko et al because by doing so can help provide a graphitic material with high conductivity as suggested by Kohl (para. [0134]). Furthermore, adopting such well-known technique of oxygen content to modify a known phosphorous doped carbon nanomaterial containing oxygen for improvement would have predictable results (see MPEP §2143 KSR).
Response to Arguments
Applicant’s amendment filed on 04/10/2026 has been acknowledged and thus previous specification objection has been withdrawn.
Applicant's arguments filed on 04/10/2026 have been fully considered but they are not persuasive. In response to applicant’s arguments about nanomaterial or nanosphere being described with certain dimension in the specification, it is noted that such limitation not recited in either independent claim 1 or 20. Therefore, one of ordinary skill in the art cannot ascertain the metes and bounds of such claimed nanomaterial or nanosphere. As for claim 2 and 3 recited dimensions, it is noted that such dimension only being linked to nanosphere, but still does not define what is carbon nanomaterial or what is carbon nanosphere, or what dimension of material can be considered as carbon nanomaterial or nanosphere.
In response to applicant’s arguments about Mahiko not teaching carbon nanosphere, Mahiko et al teaches a heteroatom-doped (specifically phosphorous-doped) nanodiamond comprising from 70 to 99% by mass of carbon wherein such nanodiamond having a shape preferably being spherical, (para. [0047], example 9, 12, claim 11-12). Therefore, Mahiko et al. disclosed nanodiamond has a spherical shape, therefore, such nanodiamond reads onto the instantly claimed carbon nanospheres, and such spherical nanodiamond being doped with phosphorus. In response to applicant’s arguments about Mahiko et al disclosed carbon having diamond structure with carbon core being fundamentally different as compared to instantly claimed carbon nanosphere, as explained above, Mahiko et al. disclosed nanodiamond containing carbon which has spherical shape, therefore, a carbon nanosphere as that of instantly claimed is envisioned. In response to applicant’s arguments about Mahiko not teaching forming the nanomaterial from a gas mixture as that of instantly claimed, such limitation is product by process limitation and Mahiko already teaches a same or substantially the same carbon nanosphere as that of instantly claimed as discussed above.
In response to applicant’s arguments about Sorense teaches graphene nanosheet, it is noted that instant claim recites open-end language, such as “comprising” which does not limit the carbon nanomaterial comprising graphene at all either. Sorense teaches graphene powder having particle size of 35 to 250 nm (para. [0026], [0032]), wherein such powder comprising spherical particles (i.e. carbon nanosphere) (Fig. 6-7, para. [0052]). Therefore, Sorense teaches carbon nanosphere as that of instantly claimed.
In response to applicant’s arguments about combining Mahiko disclosed phosphorus doped nanodiamond into Sorense disclosed graphene nanosheets would not lead to phosphorous doped nanospheres as required by claim 1, as explained above, Mahiko disclosed phosphorous doped nanodiamond having spherical shaper, therefore, it is phosphorus doped carbon nanosphere, while Sorense already teaches graphene powder within particle size of 35 to 250 nm comprising spherical particles, i.e. comprising carbon nanospheres. Both references are directed to carbon nanosphere material, it would have been obvious for one of ordinary skill in the art to adopt such well-known technique of adding phosphorus containing powder for obtaining a phosphorous doped carbon nanosphere as shown by Mahiko et al. to modify the process of producing graphene powder containing carbon nanosphere of Sorensen et al. because applying a known technique of adding phosphorus containing powder obtaining a phosphorus doped carbon nanosphere to a known process of producing graphene for improvement would yield predictable results (see MPEP §2143 KSR). Therefore, such arguments are not found convincing.
Conclusion
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.
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/JUN LI/ Primary Examiner, Art Unit 1732
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