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 Applicant has elected with traverse Group I, claims 1-13, and claims 14-20 are withdrawn as non-elected group II-III claims.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 has not provided 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 07/30/2025. Further, as set forth on page 2 of the Office Action mailed 07/30/2025, 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Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II-III, there being no allowable generic or linking claim.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: “sodium content of at least about 2% based on elemental analysis of the carbon-based nanomaterial composition” as recited in claim 4;
“sodium 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, sodium content, oxygen content and carbon content as disclosed above in claims 4-9 has no basis, such as being mol percentage, weight percentage, volume percentage, atomic %, mass%, etc.,. Therefore, such content(s) renders claim indefiniteness. Clarification is requested.
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. 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-IDS cited reference by applicant, for applicant’s convenience, English equivalent US2022/0185676 has been used for citations hereof).
Regarding claim 1, Mahiko et al teaches a heteroatom-doped (specifically sodium-doped) nanodiamond (abstract, paragraph 0042) comprising from 70 to 99% by mass of carbon (paragraphs 0029, 0054) wherein such nanodiamond having a shape preferably being spherical, ellipsoidal or polyhedral (paragraphs 0028, 0066, example 9, 12, claim 11-12). Therefore, Mahiko et al. disclosed heteroatom-doped nanodiamond as mentioned above reads onto the instantly claimed a carbon-based nanomaterial comprising sodium doped nanospheres.
Although Mahiko et al does not explicitly teach the sodium doped nanospheres are formed from a forming mixture comprising a gas mixture and a sodium powder, wherein the gas mixture comprises a carbon-based gas, an oxygen gas, and a hydrogen gas as presently claimed, it 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 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).
13. Claim 4-5 and 10-13 are rejected under 35 U.S.C. 103 as obvious over Mahiko et al. (WO2020/195997-IDS cited reference by applicant-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 (i.e., sodium) content preferably from 0.0001 to 10.0 mass % (paragraphs 0042,0058) wherein such content overlapping with that of instantly claimed sodium content. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 10-11, Mahiko et al teaches carbon-based nanomaterial composition of claim 1 applied above, wherein as sodium doped carbon nanosphere of Mahiko is substantially identical to the claimed carbon-based nanomaterial composition, it is clear that sodium-doped carbon nanospheres of Mehiko et al 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, Mahiko et al. further discloses the heteroatom-doped nanodiamond having a ratio (D/G) measured by Raman spectroscopy preferably from 0.2 to 9, wherein D/G ratio overlaps with that of instantly claimed D/G ratio (see paragraphs 0030, 0060). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
14. Claim 1-13 are rejected under 35 U.S.C. 103 as obvious over Sorensen et al. (US 2014/0335010 A1, IDS cited reference by applicant) in view of Mahiko et al. (WO2020/195997-IDS cited reference by applicant-for applicant’s convenience, English equivalent US2022/0185676 has been used for citations hereof).
Regarding claims 1-3, Sorensen teaches graphene powder having particle size of 35 to 250 nm (para. [0026], [0032], reads on claims 2-3), wherein such powder comprising spherical particles (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]).
Sorensen et al. does not expressly teach the obtained nanosphere being doped with sodium and carbon-based nanomaterial composition comprising a sodium powder.
However, Mahiko et al teaches a heteroatom-doped (specifically sodium-doped) nanodiamond (abstract, paragraph 0042) comprising from 70 to 99% by mass of carbon (paragraph 0054) wherein such nanodiamond having a shape preferably being spherical, ellipsoidal or polyhedral (paragraph 0066, claim 11-12, reads on claim 1 of carbon-based nanomaterial comprises sodium doped nanospheres). 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, reads on claims 2-3). In addition, Mahiko et al. also teaches mixing a dry powder of heteroatom containing compound (e.g. sodium containing compound powder, reads on sodium powder of claim 1) under explosive condition (i.e. combustion) for forming such carbon nanomaterial (para. [0071], [0072], [0141]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious for one of ordinary skill in the art to adopt such well-known technique of adding sodium containing powder for obtaining a sodium doped carbon nanomaterial 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 sodium containing powder obtaining a sodium doped carbon nanomaterial to a known process of producing 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 sodium powder, wherein the gas mixture comprises a carbon-based gas, an oxygen gas, and a hydrogen gas”, Sorensen in view of Makiko et al. already teaches such limitation as discussed above.
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. [0042], [0058], includes sodium), wherein such content overlapping with that of instantly claimed sodium content. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Sorensen teaches the obtained graphene material having a ratio of C to O being 49:1 (para. [0049]). Therefore, the elemental percentage of carbon is 49/(49+1) = 98%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8-9, Sorensen further teaches the obtained graphene material having a ratio of C to O being 49:1 (para. [0049]). Therefore, the elemental percentage of carbon is 49/(49+1) = 98% and the elemental percentage of oxygen is 1/(49+1) = 2%, which is within the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 10-11, Sorensen in view of Mahiko 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 disclosed above in claim 1 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 US2023/0278867 para.[0006], [0007], [0028], [0037]), while Mahiko et al. teaches that sodium (containing) powder can be added into such mixture for combusting to form a sodium doped carbon based nanomaterial as disclosed above in claim 1. 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 sodium as that of instant application disclosed above in claim 1, 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.
Regarding claims 12-13, 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 (see paragraphs 0030, 0060). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
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/SMITA S PATEL/Primary Examiner, Art Unit 1732
01/28/2026