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 .
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.
Election/Restrictions
This application contains claims directed to the following patentably distinct species:
a method of initiating vaporization comprising positioning a metal catalyst loaded graphitic target within a heated tube furnace and vaporizing with pulsed lasers (claims 2-14); a method of initiating vaporization comprising using an electric arc maintained between a silicon loaded graphitic anode and a cathode (claim 15); a method of initiating vaporization by injecting powders of carbon black, metal and a silica compound into a plasma induction zone (claims 16-18); a method of initiating vaporization comprising vaporizing organometallic and organosilica compounds (claims 19-22).
The species are independent or distinct because the claims to the different species recite the mutually exclusive characteristics of such species, such as different starting materials or different vaporization methods. In addition, these species are not obvious variants of each other based on the current record.
Applicant’s election without traverse of Species 4, a method of initiating vaporization comprising vaporizing organometallic and organosilica compounds (claims 19-22), in the reply filed on 9 April 2026 is acknowledged.
Claims 2-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9 April 2026.
Claim Objections
Claim 19 is objected to because of the following informalities:
Claim 19 recites the limitation “vaporizing an organometallic and organosilica compounds.” The presence of the “an” before “organometallic” coupled with the plural “compounds” leaves the claim unclear. Based upon the recitations of “the organometallic compound” and “the organosilica compound” in claims 20 and 21, it is recommended that claim 19 be amended to recite “an organometallic compound and -an organosilica compound[[s]].”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 22 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.
Claim 22 recites the limitation “wherein the organometallic and organosilica compounds decompose in a high temperature furnace that pyrolyze in a stream of hydrocarbons…”. It is unclear in this claim what the phrase “that pyrolyze” is modifying and therefore what is required by the limitations of the claim. For the purposes of further examination, this claim will be interpreted as requiring that the organometallic and organosilica compounds decompose in a high temperature furnace in a stream of hydrocarbons that pyrolyze to provide a feedstock for growth of the SWNTs.
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.
Claims 1 and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Rabbani et al. (US 2017/0275760 A1).
Regarding claim 1, Rabbani teaches a method comprising providing a vapor (subjecting a liquid reactant solution to atomization in the presence of at least one gas flow; [0054]) comprising a metal catalyst (at least one metallocene;[0054]), silicon (at least one metal alkoxide, which may be a silicon alkoxide; [0054] and [0063]) and balance carbon (at least one carbon source compound; [0054). Rabbani further teaches synthesizing carbon nanotubes from the vapor (synthesizing carbon nanotubes… using the chemical vapor deposition reactor; [0054]), where the carbon nanotubes may be single walled ([0067]), and collecting the synthesized carbon nanotubes (the CVD reaction product can be expeditiously collected; [0054]).
Rabbani also teaches that the weight ratio of the silicon alkoxide (metal alkoxide) to the metal catalyst (metallocene) may be from 10:1 to 1:10 ([0069]). If one were to select silicon ethoxide (tetraethylorthosilicate) as the metal alkoxide (as suggested in [0063]), and ferrocene as the metallocene (as suggested in [0066] and Example 1), these weight ratios correspond to Si:Fe atomic ratios of 9:1 to 1:11, a range which includes silicon at about 10 at% of the metal catalyst.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the method of Rabbani where the metal alkoxide is a silicon alkoxide, where the silicon is present at a level of about 10 at%, and where the carbon nanotubes formed from the vapor are single walled carbon nanotubes. One of ordinary skill in the art would have been motivated to do so because Rabbani suggests each of these embodiments.
It is also noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed level of silicon merely represents an obvious variant and/or routine optimization of the amount ratio of metallocene to silicon taught by Rabbani.
Regarding claims 19-21, Rabbani teaches the method of claim 1, where the vapor comprising the metal catalyst, silicon, and carbon is provided by vaporizing a metallocene and a metal alkoxide ([0054]), where the metal alkoxide can be a silicon alkoxide, and silicon ethoxide (also known as tetraethylorthosilicate) in particular ([0063]), thereby meeting the limitations of claims 19-21.
Regarding claim 22, Rabbani teaches the method of claim 19, and further teaches the organometallic and organosilica (metal alkoxide) compounds decomposing in a high temperature furnace in a stream of hydrocarbons that pyrolyze to provide feedstock for growth of the SWNTs ([0067]).
Regarding claim 23, Rabbani teaches the method of claim 1, and further teaches that the synthesis of SWNTs can be carried out where the support gas and the carrier gas are each inert gases ([0060]-[0061]), which would provide an oxygen free synthesis. Rabbani also teaches that it may be preferable to carry out the method under a low pressure or a vacuum using hydrogen as a support gas to deoxidize an oxidized surface of the metal particles so that high-quality carbon nanotubes can be formed ([0075]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the method of Rabbani under streams of inert gas or hydrogen in an oxygen free synthesis, as suggested by Rabbani. One of ordinary skill in the art would have been motivated to do so because Rabbani teaches that such conditions are appropriate for their method and because Rabbani also teaches that forming deoxidized particles can provided high-quality nanotubes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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