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 .
Response to Amendment
Acknowledgment is made to Applicant’s claim amendments received 11 September 2025. Claims 1-16 are currently pending of which claim 1 is currently amended and claims 13-16 are withdrawn.
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.
Claims 1-12 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 recite the limitation “a vacuum for pulling at least a portion of the carbanogel, including at least a portion of the network of CNM and at least a portion of the electrolyte, through a filter”. However, the disclosure as originally filed does not specify that a portion of the network of CNMs are pulled through the filter.
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 6 is 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.
As to claim 6, the claim recites the limitations of a vacuum and a filter; however, these limitations are already recited in claim 1, upon which claim 6 is dependent. Therefore, it is unclear as to if the limitations of claim 6 intend to refer back to the limitations of claim 1 or to new and separate limitations. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
Claim Rejections - 35 USC § 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 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.
Claims 1, 2, 3, 5, 6, 7, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Licht US Patent Application Publication No. 2020/0149173 to Licht et al. (Licht) in view of US Patent No. 2,690,421 to Lilliendahl et al. (Lilliendahl).
As to claims 1, 2, 3, 5, 6, 7, 8 and 9, Licht teaches an apparatus for making a carbanogel, the apparatus comprising an apparatus for performing an electrolysis process that splits carbon dioxide in a molten electrolyte to produce the carbanogel comprising a network of carbon nanomaterials and an electrolyte, the apparatus further comprises an electrolyte reducing and isolating unit (200) comprising housing (202), considered a mold, receiving the carbanogel product from the electrolysis apparatus, the apparatus further comprising a compression unit (102) configured to apply a compressive force upon the carbanogel within the mold (202) and comprising a vacuum to pull a portion of the carbanogel, the electrolyte, through a filter (screen (208)) (Paragraphs 0018, 0021, 0038, 0068, 0077 and 0105; Figure 2). Licht further teaches that the carbanogel can be compressed with a force of between about 10 psi and about 100,000 psi (Paragraph 0018). Therefore, the apparatus of Licht would be capable, at certain pressures, of forming a buckypaper from the carbon product, as evidenced, at least, by applicant’s own disclosure indicating the pressure is what forms a buckypaper from a carbanogel produced in the same manner.
Licht further teaches that the cathode product is removed from the cathode, and thus that the apparatus comprises a processing unit of some sort to accomplish this removal (Paragraph 0076). Licht further teaches that the processing unit is configured to cool the carbanogel on the cathode and extract the cooled carbanogel from the cathode (Paragraph 0097). However, Licht fails to teach that the processing unit is configured to crush the cooled carbanogel.
However, Lilliendahl also discusses the removal of contaminant/electrolyte from a cathode product removed from the cathode and teaches that in addition to a filtering step, as in Licht, the cathode product should be crushed and washed for production of the final finished product (Column 1, Lines 26-27). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the processing unit of Licht with the additional step of crushing and washing the product to allow for additional means for electrolyte/contaminant removal prior to the filtering step as taught by Lilliendahl. Thus performing the crushing prior to the compression in the combination and applying the compressive force upon the crushed carbanogel. Lilliendahl further teaches that the processing unit comprises, at least in part, a grinder (Column 1, Line 75 to Column 12, Line 7).
The apparatus of the combination would thus further be capable of pulling at least a portion of the network of CNMs through the filter depending upon the operating conditions chosen for the crushing step and the pressure applied during the vacuum filtering step (MPEP 2114).
Claims 4, 10, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Licht and Lilliendahl as applied to claim 1, 2 and 9 above, and further in view of US Patent No. 10,196,269 to Zeng (Zeng).
As to claims 4, 10, 11 and 12, the combination of Licht and Lilliendahl teaches the apparatus of claim 1, 2 and 9. However, the combination fails to further teach that the apparatus comprises an alignment unit. However, Zeng also discusses buckypaper and teaches that an improved buckypaper is formed by aligning the buckypaper by treatment of the buckypaper and the application of tensile force (Claim 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the apparatus of Licht and Gou with the addition of an alignment unit, separate from the mold, for performing the alignment steps of Zeng in order to allow for the apparatus to form an improved buckypaper as a final product as taught by Zeng.
Response to Arguments
Applicant's arguments filed 11 September 2025 have been fully considered but they are not persuasive.
Applicant argue that the new limitation overcome the prior art. However, as discussed above, the Examiner disagrees. Particularly in view of the fact that the claims are drawn to an apparatus and the amended limitations argued relate to functional limitations.
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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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794