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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/29/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant's election with traverse of group I (claims 1-5) in the reply filed on 3/10/2026 is acknowledged. The traversal is on the ground(s) that there is no undue burden to examine all claims. This is not found persuasive because that is not the reason for the restriction requirement of a national stage application. The restriction requirement, filed on 2/19/2026, states that the group of inventions listed do not relate to a single general inventive concept under PCT Rule 13.1, because they lack the same or corresponding features.
The requirement is still deemed proper and is therefore made FINAL.
Claim Status
Claims 1-16 are pending with claims 1-5 being examined and claims 6-16 are withdrawn.
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.
Claims 1-5 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.
Claim 1 recites the limitation "an activated carbon having a BET specific surface area of 900 m2/g or more for desorbably adsorbing" in in line 3. The limitation is unclear because the preamble recites “An activated carbon for adsorbing” and it is unclear if Applicants intend to claim separate activated carbon compounds for “adsorbing” and “desorbably adsorbing”. For purpose of prosecution, the examiner interprets the activated carbon of line 3 be the same compound that is claimed in the preamble. Claims 2-5 are rejected by virtue of dependency on claim 1.
Claim 3 recites the limitation “wherein a sum (Vmet) of a volume of mesopores of 2 to 60 nm or less” in lines 2-3. The limitation is unclear as to whether Applicants’ claim for the mesopores to be within 2 to 60 nm, or if the mesopores can be less than 2 nm. Specifically, Applicants provide a range but state that the size can be “less”. For purpose of prosecution, the Examiner interprets that the mesopores of the activated carbons may be anything less than 60 nm.
Claim 4 recites the limitation “wherein a volume difference (Vs) between the sum (Vmic) of the volume of micropores and the sum (Vmet) of the volume of mesopores” in lines 2-4. There is insufficient antecedent basis for this limitation in the claim, thus the limitation is unclear. Specifically, claim 1 does not recite the limitation of “a sum (Vmic) of the volume of micropores” and “a sum (Vmet) of the volume of mesopores”. The examiner suggests incorporating dependent claims 2 and 3 into claim 1, or change the claim dependency of claims 2-4.
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 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Seol (US 20210179435 A1; hereinafter “Seol”).
Regarding claim 1, Seol teaches an activated carbon for adsorbing neutral per- and polyfluoroalkyl compounds used in quantitative analysis of neutral per- and polyfluoroalkyl compounds in a water sample1 (Seol; para [57]), comprising an activated carbon having a BET specific surface area of 900 m2/g or more (Seol; para [54]; The activated carbon applied to the energy storage device may have a specific surface area (BET) of 500 m2/g to 2,500 m2/g) for desorbably adsorbing neutral per- and polyfluoroalkyl compounds distributed in a gas phase from the water sample by aerating or bubbling, with an inert gas as a carrier gas2, the water sample sealed in a vessel and temperature-controlled to a temperature at which the neutral per- and polyfluoroalkyl compounds can be distributed in a gas phase3 (Seol; para [57, 58]). The claimed range overlaps or falls within the prior art range; in cases where the claimed range overlaps or falls within the prior art range, a prima facie case of obviousness of the range exists. It would have been obvious to one having ordinary skill in the art to have selected the BET specific surface area in the range that corresponds to the claimed range. See MPEP 2144.05(I).
1 The limitation “for adsorbing neutral per- and polyfluoroalkyl compounds used in quantitative analysis of neutral per- and polyfluoroalkyl compounds in a water sample” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2114. The activate carbon element disclosed by Seol teaches all of the structural limitations of the claim and thus is configured for and capable of performing the intended use and/or function language of adsorbing neutral per- and polyfluoroalkyl compounds used in quantitative analysis of neutral per- and polyfluoroalkyl compounds in a water sample.
2 The limitation “for desorbably adsorbing neutral per- and polyfluoroalkyl compounds distributed in a gas phase from the water sample by aerating or bubbling, with an inert gas as a carrier gas” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2114. The activate carbon element disclosed by Seol teaches all of the structural limitations of the claim and thus is configured for and capable of performing the intended use and/or function language of for desorbably adsorbing neutral per- and polyfluoroalkyl compounds distributed in a gas phase from the water sample by aerating or bubbling, with an inert gas as a carrier gas.
3 The limitation “the water sample sealed in a vessel and temperature-controlled to a temperature at which the neutral per- and polyfluoroalkyl compounds can be distributed in a gas phase” is intended use/functional language of the activated carbon as discussed above. Specifically, “the water sample” is not a positively recited limitation, thus the limitation is not required.
Regarding claim 2, Seol teaches the activated carbon for adsorbing neutral per- and polyfluoroalkyl compounds according to claim 1, wherein a sum (Vmic) of a volume of micropores of 1 nm or less of the activated carbon is 0.35 cm3/g or more (Seol; para [28]; a micropore volume per unit mass of 0.9 cm3/g or less and a volume fraction of pores having a diameter of 5 Å). Examiner notes 5 Å is less than 1 nm. The claimed range overlaps or falls within the prior art range; in cases where the claimed range overlaps or falls within the prior art range, a prima facie case of obviousness of the range exists. It would have been obvious to one having ordinary skill in the art to have selected the sum (Vmic) of a volume of micropores in the range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding claim 3, Seol teaches the activated carbon for adsorbing neutral per- and polyfluoroalkyl compounds according to claim 1, wherein a sum (Vmet) of a volume of mesopores of 2 to 60 nm or less of the activated carbon is 0.02 cm3/g or more (Seol; para [45]). The claimed range overlaps or falls within the prior art range; in cases where the claimed range overlaps or falls within the prior art range, a prima facie case of obviousness of the range exists. It would have been obvious to one having ordinary skill in the art to have selected the sum (Vmet) of a volume of mesopores in the range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding claim 4, Seol teaches the activated carbon for adsorbing neutral per- and polyfluoroalkyl compounds according to claim 1, wherein a volume difference (Vs) between the sum (Vmic) of the volume of micropores and the sum (Vmet) of the volume of mesopores of the activated carbon as prescribed by the following formula (i) is 0.45 cm3/g or more (Seol; para [28, 45]). Examiner notes that the Seol teaches the volume difference based on the selected sum of volumes selected as discussed above.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Seol in view of Kasuhiro et al (JP 2013220413 A; hereinafter “Kasuhiro”; English translation attached).
Regarding claim 5, Seol teaches the activated carbon for adsorbing neutral per- and polyfluoroalkyl compounds according to claim 1.
Seol does not teach wherein a surface oxide amount of the activated carbon is 0.10 meq/g or more.
However, Hanamoto teaches an analogous art of an activated carbon (Kasuhiro; Abstract) comprising a surface oxide amount of the activated carbon is 0.10 meq/g or more (Kasuhiro; page 5, para [3]). The claimed range overlaps or falls within the prior art range; in cases where the claimed range overlaps or falls within the prior art range, a prima facie case of obviousness of the range exists. It would have been obvious to one having ordinary skill in the art to have selected the surface oxide amount of the activated carbon in the range that corresponds to the claimed range. See MPEP 2144.05(I). Further, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the activated carbon of Seol to comprise the surface oxide amount of 0.10 meq/g as taught by Kasuhiro, because Kasuhiro teaches that the surface oxide amount increases the hydrophilicity and contact efficiency of the activated carbon (Kasuhiro; page 5, para [4]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin Q Le whose telephone number is (571)272-7556. The examiner can normally be reached Monday - Friday 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.Q.L./Examiner, Art Unit 1796
/MATTHEW D KRCHA/Primary Examiner, Art Unit 1796
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