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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/US2021/061122, filed 30 November 2021, which has PRO 63/119,612, filed 30 November 2020) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-3, 5-9, and 13-17, drawn to a device comprising a carbon-based material and a flexible substrate, and Species 2 (i.e., the flexible substrate has an open porosity) of Species Election B in the reply filed on 09 December 2025 is acknowledged. It is noted that the election of Group I renders moot the Species A election requirement of the type of cell by which activity is modulated.
Claims 18-22, 39, and 40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected groups and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09 December 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
Claim 1 recites “monolithic porous carbon membranes”. The Specification has equated “monolithic” to be “binder-free” (see p0006, p0007).
Claims 2, 3, 5, and 6 recite that the “at least one carbon membrane” is “mesoporous” and/or “macroporous”. No specific definitions are provided by Applicant in their disclosure limiting explicit pore size ranges to be considered either “mesoporous” or “macroporous”. Applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the time of filing (See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674; Fed. Cir. 1994; MPEP §2111.01 IV). To act as their own lexicographer, the Applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. The specification may also include an intentional disclaimer, or disavowal, of claim scope.
As such, the Examiner will interpret “mesoporous” and “macroporous” by their plain, ordinary meaning, i.e., “mesoporous” indicates a pore size range of 2-50 nm and “macroporous” indicates a pore size range of > 50 nm based on IUPAC standard definitions.
Claim 6 requires that “the carbon-based material comprises at least one carbon membrane”. This is differentiated from the requirement of Claim 1 that “a carbon-based material [comprises] one or more monolithic porous carbon membranes”.
Claim Objections
Claim 9 is objected to because of the following informalities:
“wherein the two or more monolithic porous carbon membranes each have…”.
Appropriate correction is required.
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.
Claim(s) 1-3, 5-9, 13, 14, 16, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over ICHIKAWA et al. (US 2009/0242478 A1) in view of STRIEMER et al. (US 2016/0199787 A1).
Regarding Claim 1, ICHIKAWA discloses a carbon membrane laminated body including a porous substrate, a first porous carbon membrane as an underlayer disposed on a surface of the porous substrate, and a second porous carbon membrane as a separation layer disposed on a surface of the underlayer (i.e., a carbon-based material comprising one or more… porous carbon membranes; abstract). Each of the first and second porous carbon membrane layers are prepared from precursor solutions containing only solvents and are disposed/coated and carbonized by thermal treatment (i.e., binder-free; one or more monolithic porous carbon membranes; p0053, p0055, p0057, p0059). ICHIKAWA is deficient in explicitly disclosing that the porous substrate is “a flexible substrate comprising one or more polymers in which the carbon-based material is distributed”.
STRIEMER discloses a composite membrane having a monolithic structure useful for filtration and other biological applications (abstract). The membrane is a silicon nitride membrane and is a part of a monolithic structure supported on a silicon wafer (p0024); the membrane further includes a range of pore sizes between 10 nm and 100 nm (p0025). Upon the silicon wafer is a scaffold on which the membrane is supported (p0030). STRIEMER teaches that the scaffold may comprise polymeric materials, such as SU-8 photoresist and polyethylene glycol or other biocompatible materials useful as a supporting mesh for biological applications (p0030) or the scaffold may be an inorganic scaffold that would enable the use of the composite membrane in harsher environments, e.g., solid oxide fuel cells, etc. (p0050). As is well-known to one of ordinary skill in the art, SU-8 photoresist is flexible (i.e., a flexible substrate comprising one or more polymers in which the carbon-based material is distributed). Advantageously, the use of a scaffold, especially a polymer scaffold provides more flexibility to the membrane and allows for the membrane and scaffold to be released together from the surface of the fabrication wafer (p0046). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a flexible substrate comprising one or more polymers as taught by STRIEMER as a support of the monolithic carbon-based membrane disclosed by ICHIKAWA.
Regarding Claim 2, modified ICHIKAWA makes obvious the device of Claim 1. ICHIKAWA further discloses the first porous carbon membrane has an average pore diameter of 0.2 to 100 nm, and the second porous carbon membrane has an average pore diameter of 0.1 to 5.0 nm (p0013; p0047), which indicates that the disclosed carbon membrane laminated body includes both a mesoporous layer (the second porous carbon membrane) and a macroporous layer (the first porous carbon membrane) (i.e., the carbon-based material comprises at least one carbon membrane that is mesoporous or macroporous).
Regarding Claim 3, modified ICHIKAWA makes obvious the device of Claim 2. As noted, ICHIKAWA discloses the second porous carbon membrane (the separation layer) has an average pore diameter of 0.1 to 5.0 nm (i.e., the at least one carbon membrane is mesoporous; p0013; p0047), which overlaps with the claimed range of 2 nm to 30 nm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05).
Regarding Claim 5, modified ICHIKAWA makes obvious the device of Claim 2. As noted, ICHIKAWA discloses the first porous carbon membrane (the underlayer) has an average pore diameter of 0.2 to 100 nm (i.e., the at least one carbon membrane is macroporous; p0013; p0047), which overlaps with the claimed range of 60 nm to 2000 nm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05).
Regarding Claim 6, modified ICHIKAWA makes obvious the device of Claim 1. As noted, ICHIKAWA discloses a carbon membrane laminated body comprising first and second porous carbon membranes (abstract). ICHIKAWA further discloses the first porous carbon membrane has an average pore diameter of 0.2 to 100 nm, and the second porous carbon membrane has an average pore diameter of 0.1 to 5.0 nm (p0013; p0047), which indicates that the disclosed carbon membrane laminated body includes both a mesoporous layer (the second porous carbon membrane) and a macroporous layer (the first porous carbon membrane) (i.e., the carbon-based material comprises at least one carbon membrane comprising mesopores and macropores).
Regarding Claim 7, modified ICHIKAWA makes obvious the device of Claim 6. As noted, ICHIKAWA discloses the second porous carbon membrane (the separation layer) has an average pore diameter of 0.1 to 5.0 nm (i.e., the at least one carbon membrane comprises a first pore; p0013; p0047), which overlaps with the claimed range of 2 nm to 30 nm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05). Further, ICHIKAWA discloses the first porous carbon membrane (the underlayer) has an average pore diameter of 0.2 to 100 nm (i.e., the at least one carbon membrane… comprises a second pore; p0013; p0047), which overlaps with the claimed range of 60 nm to 2000 nm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05).
Regarding Claim 8, modified ICHIKAWA makes obvious the device of Claim 1. As noted, ICHIKAWA discloses first and second porous carbon membranes, prepared from precursor solutions containing only solvents and are disposed/coated and carbonized by thermal treatment (i.e., binder-free; the carbon-based material comprises two or more monolithic porous carbon membranes; p0053, p0055, p0057, p0059).
Regarding Claim 9, modified ICHIKAWA makes obvious the device of Claim 8. ICHIKAWA is deficient in explicitly disclosing the [two or more monolithic porous] carbon membranes each have different porosity. However, ICHIKAWA discloses exemplary preparation methods for each of the first and second porous carbon membranes utilizing different carbon-based polymers, solvents, and polymer concentrations (Example 1, p0052-0057; first porous carbon membrane: p0037-0038; second porous carbon membrane: p0041-0042). One of ordinary skill in the art would inherently expect such differing precursor solutions would result in monolithic porous carbon membranes having different porosities as claimed. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II). Thus, the claimed limitation that the [two or more monolithic porous] carbon membranes each have different porosity is at least inherently obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention.
Regarding Claims 13 and 14, modified ICHIKAWA makes obvious the device of Claim 1. As noted, STRIEMER discloses the scaffold may comprise polymeric materials, such as SU-8 photoresist or other biocompatible materials useful as a supporting mesh for biological applications (i.e., the one or more polymers are selected from the group consisting of a photoresist polymer, a biocompatible polymer, a biodegradable polymer, an extracellular matrix protein, and a combination thereof (Claim 13); the polymer is SU-8 photoresist; p0030).
Regarding Claim 16, modified ICHIKAWA makes obvious the device of Claim 1. STRIEMER further discloses a scaffold having at least 80% porosity (i.e., the flexible substrate has [a]… porosity of at least about 10%; p0047). Similarly, ICHIKAWA discloses a substrate having a high porosity range of 30-70% (p0051), which reads on the claimed porosity of at least about 10%, and further discloses that the carbon membrane laminated body is formed on the wall surfaces of a plurality of flow passages of the monolith-shaped porous substrate (p0059) indicating that the substrate has an open porosity as claimed.
Regarding Claim 17, modified ICHIKAWA makes obvious the device of Claim 1. As noted, STRIEMER discloses that the composite membrane is formed on a silicon wafer with a scaffold (p0030) and further notes that an inorganic scaffold material can be used, including SiO2 (p0050), which reads on the claimed silicon oxide substrate.
Regarding the steps of
“contacting a carbon precursor with an organic template in a carrier solution to form a dispersion of micelles within the carrier solution;
providing the carrier solution with the dispersion of micelles to a silicon oxide substrate; and
removing the carrier solution and heating the substrate to obtain the monolithic porous carbon membrane”
none of these process steps (other than the limitation regarding the “silicon oxide substrate”) imparts any structure or functionality to the claimed one or more monolithic porous carbon membranes. Even if the prior art discloses a differing method by which the device of Claim 1 is made, the prior art as noted makes obvious all limitations of Claim 1. Absent distinctive structural characteristics imparted by these manufacturing process steps, the claimed invention is not patentably distinct from the prior art teachings (In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979); MPEP §2113).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over ICHIKAWA et al. (US 2009/0242478 A1) in view of STRIEMER et al. (US 2016/0199787 A1), as applied to Claim 13 above, and further in view of LIU et al. (US 2018/0319943 A1).
Regarding Claim 15, modified ICHIKAWA makes obvious the device of Claim 13. As noted earlier, STRIEMER teaches that the scaffold may comprise polymeric materials, such as SU-8 photoresist and polyethylene glycol or other biocompatible materials useful as a supporting mesh for biological applications (p0030) or the scaffold may be an inorganic scaffold that would enable the use of the composite membrane in harsher environments, e.g., solid oxide fuel cells, etc. (p0050). Modified ICHIKAWA is deficient in disclosing the one or more polymers are selected from the group consisting of polydimethylsiloxane, poly(methyl methacrylate), poly lactic-co-glycolic acid, poly( ethylene glycol) diacrylate, collagen, and gelatin.
LIU discloses a membrane useful as a delivery vehicle for biological applications (p0001); the membrane includes a graphene-based material layer (i.e., a carbon-based membrane) and at least one substrate layer (p0005). The substrate layer further comprises materials such as polymethylmethacrylate, polylactic-co-glycolic acid, and polydimethylsiloxane (i.e., the one or more polymers are selected from the group consisting of polydimethylsiloxane, poly(methyl methacrylate), poly lactic-co-glycolic acid, poly( ethylene glycol) diacrylate, collagen, and gelatin; p0041). Such materials are advantageously biocompatible, bioinert, and/or are medical grade materials (p0041). The nature of the problem to be solved would have led one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective, individual functions, and the combination would have yielded nothing more than predictable results (MPEP §2143.01 A). Given the intended application of the disclosed prior art membranes, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious to utilize such claimed polymers as taught by LIU as the one or more polymers of the flexible substrate made obvious by modified ICHIKAWA.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1777