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 .
Election/Restrictions
Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/14/2025.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 6, 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hwang et al. (Synthesis And Characterization Of Silver Particles Decorated Amorphous Carbon Nanotubes, Universiti Tunku Abdul Rahman, 2017), hereinafter ‘Hwang’.
Regarding Claim 1, Hwang discloses a composite comprising an amorphous isotropic carbon compound with a carbon defect; and a nanoparticle located at the carbon defect (Abstract: amorphous carbon nanotubes are decorated with silver particles which attach to the surface defects of the nanotubes, which act as nucleation sites for addition of materials such as silver particles – these amorphous carbon nanotubes must necessarily be isotropic, as all amorphous materials are considered isotropic; 4.2.2 Silver Concentration, Silver content and Conversion of Silver Particles, Page 61: the silver particles are described as nanoparticles).
Regarding Claim 2, Hwang discloses the use of amorphous carbon nanotubes, which have a tube shape.
Regarding Claim 3, the instant claim is drawn to further limiting limitations of Claim 2 that are presented in the alternative, such that they are not required by the claim in the presence of other alternatives. Particularly, Claim 2 requires the amorphous isotropic carbon compound includes a homogeneous carbon compound having a hollow sphere shape, an ellipsoid shape, or a tube shape, and Claim 3 limits the particular carbon compounds included in the hollow sphere shape category. Therefore, given that Hwang discloses tube-shaped carbon compounds, the corresponding alternative of hollow sphere shape carbon compounds as set forth by Claim 3 is not required. As such, the instant claim is rejected in the same way as Claim 2.
Regarding Claim 4, Hwang discloses the nanoparticle is atomic scale (Fig. 4.12: the nanoparticles are shown to be ionic silver particles, which are considered atomic scale).
Regarding Claim 6, Hwang discloses an amount of the nanoparticle is 0.001 part by weight to 10 parts by weight with respect to 100 parts by weight of the amorphous isotropic carbon compound (Table 4.2: the α-CNTAGWR and α-CNTAGES samples both have a content of silver within the claimed range).
Regarding Claim 9, it is noted that this claim is drawn to the intended use of the claimed composition. MPEP 2111.02 (II) states that ‘if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction’ (Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997)). During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963).
In the instant case, the disclosure of Hwang meets the structural limitations of Claim 1. It is not clear from the instant claim how the required intended use limitations further limit or result in a structural difference between the claimed invention and the prior art. Accordingly, absent evidence to the contrary, the composition of Hwang is considered to meet that structure required by the instant claim.
Claim(s) 1, 4-6, 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (Ir Single Atom Catalyst Loaded on Amorphous Carbon Materials with High HER Activity, Advanced Science, 2022), hereinafter ‘Liu’.
Regarding Claim 1, Liu discloses a composite comprising an amorphous isotropic carbon compound with a carbon defect; and a nanoparticle located at the carbon defect (Introduction: Inspired by previous report that the nanometer defects can be repaired by C-C bond reconstruction and has the ability to capture fixed single atoms, we sought to prepare such materials in bulk…we would like to report our work in bulk synthesis of a 2D-carbon materials derivative with nanometer holes…when various volatile metal precursors (M═Fe, Co, Ni, Mn, Pd, Mo, W, Re, Ir) were introduced; Title: the carbon materials are amorphous, and are therefore also isotropic).
Regarding Claim 4, Liu discloses that the defects capture fixed single atoms, which are atomic scale.
Regarding Claim 5, Liu discloses the nanoparticle is Fe, Co, Ni, Mn, Pd, Mo, and Re as claimed.
Regarding Claim 6, Liu discloses the Pd/W/Re/Mo/Fe/Mn content as measured by EDS was around 3.4%, 0.7%, 6.9%, 0.3%, 2%, 0.24% by mass respectively (2.2 Analysis of Composition and Atomic Structure).
Regarding Claim 9, Liu discloses the catalyst is a high efficiency hydrogen evolution reaction (HER) catalyst (Abstract).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (Ir Single Atom Catalyst Loaded on Amorphous Carbon Materials with High HER Activity, Advanced Science, 2022), hereinafter ‘Liu’, in view of Ma et al. (Heterogeneous Catalysis by Metals, Encyclopedia of Inorganic and Bioinorganic Chemistry, 2006), hereinafter ‘Ma’.
Regarding Claim 7, while Liu discloses the synthesis of single-atom supported catalysts comprising an amorphous carbon support, Liu is silent regarding the specific surface area of the resulting catalyst.
It is known in the art of catalysis, however, that the specific surface area of a catalyst is critical to its ability to effectively catalyze chemical reactions. As disclosed by Ma, it is important to maximize the surface-to-volume ratio of the active phase to minimize cost and improve performance. The surface area of bulk metals is rather small, with only a few active sites exposed, and pure metals in high surface area forms are generally not thermally stable under catalytic conditions. Instead, metals are typically dispersed onto high surface area refractory supports such as alumina, silica, zeolites, activated carbon, titania, zirconia, or mixed oxides (2.3 Supports, Promoters). This passage emphasizes the relation between active sites, which are considered to encompass the surface defects in the catalyst of Liu, and specific surface area of a catalyst, showing that the surface-to-volume ratio of the active phase as represented by the specific surface area of a catalyst is directly related to the number of available active sites in said catalyst, controlling considerations such as cost and performance.
Accordingly, as the number of available active sites in a catalyst is a variable that can be modified, among others, by adjusting the specific surface area of the catalyst support, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed range cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have found it obvious to choose a support for the catalyst of Liu having a specific surface area sufficient to provide an optimal number of active sites on the catalyst, thereby optimizing catalyst performance and cost, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art neither discloses nor suggests the limitations of Claim 8. While both Liu (Ir Single Atom Catalyst Loaded on Amorphous Carbon Materials with High HER Activity, Advanced Science, 2022) and Hwang (Synthesis And Characterization Of Silver Particles Decorated Amorphous Carbon Nanotubes, Universiti Tunku Abdul Rahman, 2017) disclose a carbon support having surface defects in which a nanoparticle is located within said defects, the prior art does not disclose or suggest such defects to be located at any of the particular edge locations required by Claim 8. There is no reasonable basis to conclude that the nanoparticles in the prior art would necessarily be found in these locations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yang et al. (Single Carbon Vacancy Traps Atomic Platinum for Hydrogen Evolution Catalysis, Journal of the American Chemical Society, 2022) discloses purposely synthesizing single vacancies in a carbon matrix (defective graphene) that can trap atomic Pt to form the Pt–C3 configuration, which gives exceptionally high reactivity for HER in both acidic and alkaline solutions – see Abstract.
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LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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