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 .
Applicants’ Preliminary Amendment, filed on August 2, 2023, has been made of record and entered. In this amendment, the Specification has been amended to update its cross-reference to related applications, claims 6, 19, and 26 have been amended to eliminate multiple claim dependency, and claims 7-16, 25, 30, 31, and 34-40 have been canceled.
No claims have been added; claims 1-6, 17-24, 26-29, 32, and 33 are presently pending in this application.
Claim Objections
Claims 2, 5, and 24 are objected to because of the following informalities:
In claim 2, “A catalytic material” should be amended to recite “The catalytic material”.
In line 2 of claim 5, “B(OB)1(OH)2 and B(OB)2(OH)1” should be amended to recite “B(OB)(OH)2 and B(OB)2(OH)”; see, for example, paragraph [0014] of Applicants’ Specification.
In lines 3 and 4 of claim 24, “oxidized amorphous carbon; calcining…” and “oxidized amorphous carbon; and thermally treating…” should be amended to recite “oxidized amorphous carbon, calcining…” and “oxidized amorphous carbon, and thermally treating…”.
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.
Claims 3-5 and 18 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 3 is (and claims 4 and 5 depending therefrom are) indefinite because the phrase “majority of 3-coordinate boron species” therein, lacks antecedent basis. Claim 2, from which claim 3 depends, recites the limitation “plurality of 3-coordinate boron species”.
The Examiner respectfully submits that claim 3 be amended to recite either (a) “a majority of the plurality of 3-coordinate boron species are clustered” or (b) "wherein, in the plurality of 3-coordinate boron species, a majority of said 3-coordinate boron species are clustered".
Claim 18 is indefinite because the limitation “excess boric acid” is not defined. It cannot be determined whether the term “excess” is to be interpreted in terms of quantity of the boric acid, or in terms of molality of the boric acid.
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.
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, 6, and 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Ando et al. (JP 2022 099330; English translation provided and relied upon).
Regarding claims 1, 6, 17, and 19, Ando et al. teach a conductive carbon material comprising a conduction aid, said conduction aid containing a boron-containing carbon material ([0016]). The conductive aid is defined as being “doped with boron element” ("carbon impregnated with boron"; "boron is impregnated onto the surface of the oxidized amorphous carbon"). Ando et al. teach that the boron-containing carbon material may be produced by a method comprising mixing a carbon source with a boron source, and heat-treating the mixture. See paragraphs [0018], [0021], and [0039] of Ando et al.
Further regarding claim 6, and also regarding claims 17, 20, and 21, Ando et al. teach that examples of the carbon source include activated carbon (“amorphous carbon”). Ando et al. further teach that the carbon may be subjected to a carbon oxidation treatment by treating the carbon at high temperatures in air or secondary treatment with nitric acid, nitrogen dioxide, ozone, etc., to directly introduce oxygen-containing polar functional groups onto the carbon surface; exemplary polar functional groups include carboxy and carbonyl groups (“oxidized amorphous carbon comprises,…one or more moieties selected from…a carboxyl,…a carbonyl,…”). See paragraphs [0043] and [0045] of Ando et al.
Although Ando et al. teach that it is “preferable to use carbon that has not been subjected to an oxidation treatment”, it has been held that a reference can be relied upon for all its teachings, including non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. Denied, 493 U.S. 975 (1989).
Regarding claims 18, 19, and 22-24, Ando et al. teach orthoboric acid (“boric acid”) as an exemplary boron source. See paragraphs [0052], [0106]-[0110], [0114], and [0116]-[0118], of Ando et al., which additionally teach embodiments in which the carbon and boron sources are admixed, dried in an over at 80°C (“thermally treating the impregnated oxidized amorphous carbon”), and heat-treated under an argon atmosphere at 2050°C for one hour to obtain a boron-containing carbon material (“calcining the impregnated oxidized amorphous carbon”; “heating the impregnated oxidized amorphous carbon under an inert atmosphere”).
Ando et al. do not explicitly teach or define the aforementioned boron-containing carbon material as a “catalytic material”, as recited in Applicants’ claims. However, because the boron-containing carbon material disclosed in Ando et al. structurally reads upon Applicants’ claimed catalytic material, and because Ando et al. teach a method for producing the aforementioned boron-containing carbon material comparable to that recited in Applicants’ claims, as discussed above, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the boron-containing carbon material disclosed in Ando et al. to suitably and effectively function as a catalytic material, absent the showing of convincing evidence to the contrary.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 3-5 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.
Claims 26-29, 32, and 33 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 2-5, while Ando et al. teach that the form of the boron in the boron-containing material is not particularly limited, and teaches BC3, boron cluster type boron elements (e.g., B4C, BC) boron oxide type boron elements in a fully or partially oxidized state (BC2O, BCO2, B2O3 types) as exemplary forms, this reference does not specifically teach or suggest the 3-coordinate boron species recited in claims 2-5. See paragraph [0027] of Ando et al.
Regarding claims 26-29, 32, and 33, while oxidative dehydrogenation processes are known in the art, employing the claimed catalytic material as catalyst in said oxidative dehydrogenation processes is not known, taught or suggested by the prior art of record. See, for example, Lin et al. (CN 108484349), which teaches a method for the preparation of olefins via oxidative dehydrogenation of alkanes with liquid boron oxide as catalyst. While Lin et al. additionally teach that the catalyst may be prepared from boric acid, this reference teaches that the catalyst does not require a support; see paragraphs [0019] and [0036] of Lin et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 January 6, 2026