DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/260,422 application filed 5 July 2023, which is being examined under the first inventor to file provisions of the AIA .
Claims 1-10 are pending and have been fully considered.
Specification
The disclosure is objected to because of the following informalities: the range in line 4 of page 5 of the specification needs correction: “0 ,01” should be “0.01.”
Appropriate correction is required.
Claim Interpretation
Applicant is reminded that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. In the instant case, the instant application discloses “[c]arbon nanotubes from industrial production are coated with amorphous carbon, graphene, fullerenes and other carbon crystallization by-products. These by-products are removed by annealing the CNTs in a controlled atmosphere at temperatures of 300 to 1150° C. for a selected time of 0.1 to 12 hours. The resulting CNTs thus have a surface free of these impurities, which is formed only by crystalline carbon hexagons, which are part of the basic crystal lattice of the CNTs. During annealing in a controlled atmosphere, partially oxidized carbon contaminants are formed, which evaporate from the CNTs surface and create a suitable atmosphere to heal the lattice distortions of the basic CNTs crystal lattice. CNTs treated in this way, without lattice distortion and chemically modified surface, have a significantly higher adsorption capacity than untreated or chemically modified CNTs” [paragraphs 0030-0032 of the published application]. It is not necessarily the case that all CNTs “are coated with amorphous carbon, graphene, fullerenes and other carbon crystallization by-products.” For example, it may be the case that CNTs that are not derived from industrial production lack the aforementioned coating(s). Any nanomaterial produced with such a CNT, as long as it is immobilized on a fibrous natural or synthetic material, corresponds to the nanomaterial of instant claim 4.
Applicant is further reminded “[u]nder a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms.” Phillips v. AWH Corp., 415 F.3d 1303, 1315, 75 USPQ2d 1321, 1327. In the instant case, coarse-grained has been interpreted as a “grain size rang[ing] from [0.01] to 5 mm” [see paragraph 0027 of the published application]. Otherwise, coarse is a relative term which renders the claims (i.e., claims 3, 6, and 10) indefinite.
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 1-10 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.
The term “high” in claims 1-4 and 6 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. High means situated or passing above the normal level, surface, base of measurement, or elevation. It is not clear what the normal level or base of measurement may be. Therefore, the metes and bounds of the claimed invention cannot be determined.
Claim 1 further recites “…to form carbon nanotubes without lattice distortion and a chemically modified surface…” It is unclear if the chemically modified surface describes its presence on the nanotubes or its lack. In other words, it is unclear if the limitation could be described as (1) carbon nanotubes having a chemically modified surface or (2) carbon nanotubes without, amongst other things, a chemically modified surface. Thus, the metes and bounds of the claimed invention cannot be determined.
With respect to claim 5, said claim is directed to “[t]he adsorption/filtration nanomaterial according to claim 4…” However, the body of the claim is not directed to the structure of the nanomaterial individually but, rather, to a bed of nanomaterials. Consequently, claim 5 fails to further limit the subject matter of the claim upon which it depends. Additionally, it is not clear whether claim 5 should be directed to an adsorption tower or some other unit operation.
Claim 7 recites the limitation "the crystallization" in line 3. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. See prior discussion with respect to claim 5. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 4-5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wan et al (CN 102634870).
Note: the following discussion is based on the WIPO machine translation of the aforementioned publication.
With respect to claim 4, Wan et al discloses a “carbon nanotube reinforced cellulose-based nano-carbon fiber is characterized in that it is a single-wall or multi-walled carbon nanotube with a diameter of 0.9-100 nm, the cellulose fiber is a carbon nanofiber with a precursor material and has a diameter of 150-1150 nm, and the mass percentage content of the carbon fiber is as follows:
(a) 0.5-50% of carbon nanotubes;
(b) 50-99.5% carbon.
The cellulose fiber is one of natural cellulose fibers, such as cotton fiber, kapok fiber, ramie fiber, flax fiber, jute fiber, hemp fiber, apocynum fiber, bamboo fiber, wood fiber, straw fiber, sisal fiber, banana fiber, hemp fiber, coir fiber, lotus root fiber, reed leaf fiber, and grass blade fiber.
The carbon nanotube reinforced cellulose-based nano-carbon fiber of the present invention has the following steps:
(1) adding a cellulose raw material with a mass percentage content of 0.5-8% to an aqueous solution of N-methylmorpholine-N-oxide (NMMO) with a mass percentage of 85% (NMMO). H O), fully dissolving cellulose at a temperature of 75-95°C to obtain a cellulose spinning solution;
(2) adding a certain amount of single-walled or multi-walled carbon nanotubes with a diameter of 0.9-100 nm and antioxidant gallic acid or propyl gallate to the cellulose spinning solution configured in step (1), so that the mass percentage of the carbon nanotubes, the antioxidant gallic acid or the gallate and the cellulose is 0.01-50: 0.001-0.05: 100;
(3) subjecting the mixed solution obtained in step (2) to ultrasonic treatment to prepare a cellulose spinning solution uniformly dispersed with carbon nanotubes, wherein the ultrasonic temperature is 75-95° C. the ultrasonic frequency is 20-40 KHz, the power is 300-2400 W, and the ultrasonic time is 5-60 min;
(4) transferring the cellulose spinning solution uniformly dispersed with carbon nanotubes prepared in step (3) into an electrospinning instrument, spinning the spinning solution into a coagulation bath stored in the open container at a spinning temperature of 80-140°C and a spinning rate of 0.5-5 ml/h, a spinning voltage of 15-45 kV and a spinning distance of 5-20 cm to obtain cellulose fibers containing carbon nanotubes and small amounts of antioxidant gallic acid or propyl gallate and having a diameter of 180-1200 nm;
(5) washing the cellulose fiber containing the carbon nanotubes and the diameter of 180-1200 nm prepared in step (4) in water for 5-120 min, and drying at 60-105° C.” [bottom of page 1 to middle of page 2 of translation]. The reference further discloses “[t]he carbon nanotube reinforced cellulose-based nano-carbon fiber not only has mechanical properties, thermal insulation properties, and electrical conductivity better than that of ordinary carbon fibers, but also has higher specific surface area and high porosity, so that the carbon nanotubes have superior functions in filtration,…, absorption…” [see 1st paragraph under the heading “Summary of the Invention” on page 1 of translation].
Wan et al does not mention that the carbon nanotube(s) is/are commercially produced or derived from an industrial process. The reference also does not disclose that the carbon nanotube(s) has/have been coated with amorphous carbon, graphene, fullerenes and other carbon crystallization by-products, which are removed via annealing. Therefore, it is obvious that the carbon nanotube reinforced cellulose-based nano-carbon fiber of the reference corresponds to the adsorption/filtration nanomaterial of the instant application.
With respect to claim 5, applicant is reminded that “limitations relating to…size [is] not sufficient to patentably distinguish over the prior art.” In re Rose, 220 F.2d 459, 105 USPQ 237. The same also applies to the diameter and length requirements in instant claim 9.
Allowable Subject Matter
Claims 1-3, 6, and 10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 7 and 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: with respect to claim 1, Wan et al does not disclose annealing without access to ambient air. Indeed, the reference is completely silent with respect to annealing carbon nanotubes. With respect to claims 3 and 7, the reference does not disclose that an inorganic and /or organic material is added to the carbon nanotube reinforced cellulose-based nano-carbon fiber.
Conclusion
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/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
11 February 2026