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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, drawn to a process, classified in C01B32/05.
II. Claim 12, drawn to a method of use, classified in B01D 53/00.
III. Claims 13-21, drawn to a product, classified in B01J 20/20.
The inventions are independent or distinct, each from the other because:
Inventions III and II are (at best) related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product can be sued as a filler. Claim 12 refers to a product-by-process claim.
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product can be made by direct deposition of oxidation without the initial reduction.
Groups I and III are distinct for the cumulative reasons above.
During a telephone conversation with Mr. Mehlenbacher on 2/18/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-21 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
Claims 1, 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Bakker et al. 20140107371.
Bakker teaches, especially in paras 81-84, impregnating a carbon support with metal salt, reducing, followed by oxidation to form oxides. This differs in not exemplifying the terminal oxidation step, however it is obvious since it is suggested. Bakker teaches Pd; compare to specification para 71.
The examples make nanoparticles. While Bakker does not teach a slurry, a solution is taught in para 72. Increasing the concentration to form a slurry is obvious to achieve the desired level of impregnation; see para 77. Note that the particles are deposited on the support; no difference is seen since the support can be the same as claimed. Similarly, no difference is seen in the byproducts since the salts and reducing agents are used; see para 79.
It is also noted that, absent an oxidative treatment, carbon particles are hydrophobic and thus form a slurry in water due to an inability to dissolve.
For claim 8, hydrazine is taught in para 82. In a liquid phase, the hydrate forms in-situ.
For claim 9, no difference is seen in the particle character due to the similarity of the synthesis.
For claim 10, activated carbon is taught in para 114.
For claim 11, the low amount of metal is deemed not to materially affect the carbon properties.
Allowable Subject Matter
Hughes et al. 20110297616 is noted.
Hughes teaches, especially on pg. 3, impregnating carbon support with selenite and reducing to Se. However Hughes does not re-oxidize. Claims 2-7 are thus allowable over the prior art. It is also noted that Bakker (above) does not teach Se and thus is not used to reject the claims drawn thereto.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736