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 .
Election/Restrictions
Claims 9-18, 19, 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/24/26.
This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is subjected to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I, II and III do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth on page 3, last paragraph of the previous Office Action.
Therefore, given that the Examiner has properly established that Groups I, II and III lack unity as set forth on page 3 of the Office Action mailed 5/6/26, it is the Examiner's position that the restriction is proper.
Claim Interpretation
The claims include parenthesis “( )” throughout. These parenthesis describe the configuration of the carbon nanotube chirality. For example, Claim 1, line 4 states that the zigzag chirality has a (m, 0) coordinate. Therefore, the points shown in the parenthesis are meant to describe the configuration described in the claims.
Claim Objections
Claim 7 is objected to because of the following informalities: It is recommended to amend “EUV” to spell out the acronym. 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 1-19, 25 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, line 3 “a substantial amount” is indefinite.
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.
Claim(s) 1, 2, 3, 7, 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP 2013/43117) and in view of Wang (CN 109713331).
Tanaka describes a use or carbon nanotubes for use in negative electrodes (abstract). The reference explains that in the prior art, it is known to use carbon nanotubes whose volume shrinks due to the presence of ions responsible for conduction inside or near the outside of the carbon nanotubes (page 2, para. 2 from the bottom). The benefit of this is that it limits volume change of the entire active material layer during the charge/discharge and improves the cycle characteristics of the electrode material (page 2, second para from bottom).
The features used to determine the volume change of the carbon nanotubes due to the presence of ions responsible for electrical conduction inside or near the nanotube are called chiral vectors (page 2, last para). Tanaka explains that a mixture of both the zigzag and armchair carbon nanotubes with different chiral indices may be used to facilitate the volume expansion of the carbon nanotubes (page 4, second para from bottom). The carbon nanotubes can be mixed with binders, such as thermosetting resins, such as polyimides, polyester resins and others (see page 5, para. 3).
As to the carbon nanotube composition being in a membrane, Tanaka does not teach this feature.
Wang describes a catalyst slurry that includes a carbon nanotube composition mixed with a catalyst and resin to make a membrane electrode (abstract). Use of these composition can optimize the conductivity of the slurry and improve the conductivity of the catalyst layer and electrochemical active area of the membrane electrode (page 26-31).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to shape the composition of Tanaka into a membrane, as taught by Wang because this composition is useful in a membrane structure of a membrane electrode.
As to Claims 2 and 3, Tanaka teaches that the carbon nanotubes hold up to 40-80 mass% in the electrode composition (page 4, last para). Since Tanaka states that the carbon nanotubes can be made up of a mixture of zigzag and armchair chiralities, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the all of the carbon nanotubes have one of these configurations, amounting to the total amount to as close to 100% as possible.
As to Claim 7, Tanaka describes the membrane composition of Claim 1. As to the EUV transmissivity property, although Tanaka does not specifically state this feature, since the composition is the same, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition would have the same properties.
As to Claim 25, Tanaka teaches that the product can be made into a membrane (see above). The membrane can be considered a pellicle.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka and Wang as applied to claim 1 above, and further in view of Kishi (WO 2019/151081).
Kishi describes a catalyst slurry that includes a mixture of carbon nanotubes and catalyst and a slurry (see catalyst layer slurry 3), where the fiber diameter of the carbon nanotube is about 1nm (see catalyst layer slurry 3). This arrangement is made for use in a membrane electrode assembly (title and abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a carbon nanotube that has about a 1nm diameter, as taught by Kishi for use with the carbon nanotube of Tanaka and Wang because this carbon nanotube with these features are predictably effective for use in membrane electrode assembly.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka and Wang as applied to claim 1 above, and further in view of Zhao (CN 208298958).
Tanaka and Wang do not disclose inclusion of an etch-protective coating.
Zhao describes a configuration that includes a cathode sheet, an anode sheet configured to make a membrane electrode complex (abstract). The cathode and anode sheets are covered by two hard plates (page 2, last 10 lines). On these hard surfaces, there is an aluminum-plastic film (page 2, last 10 lines). This ensures that the battery can be fixed to a hardboard and improves the stability of the battery (page 2, last para).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that a hard surface with an aluminum-plastic film can be considered an etch-protective coating.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an etch-protective coating, as taught by Zhao for use with the carbon nanotube-containing membrane electrode assembly of Tanaka and Wang because this ensures stability of the battery.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka and Wang as applied to claim 1 above, and further in view of Oh (US Pub.: 2016/0099471).
The references do not teach that the carbon nanotubes have the same chirality.
Oh describes use of a carbon nanotube that can have both zigzag and an armchair shape (para. 22) for use in a battery structure (para. 25). Oh explains that the conductivity of the carbon nanotubes is intimately related to the chirality of the carbon nanotubes (para. 25). Single chirality carbon nanotubes are more easily controlled (para. 25).
Therefore, since conductivity of the carbon nanotube is intimately related to chirality and since single-chirality has conductivity that is more easily controlled, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a single chirality, as taught by Oh for use with the carbon nanotubes of Tanaka and Wang because the conductivity of these carbon nanotubes can be more easily controlled.
Allowable Subject Matter
Claim 6 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.
The following is an examiner’s statement of reasons for allowance: JP 2002507494.
JP ‘494 describes a carbon nanotube dioide formed by a linear combination of an armchair and a zig zag nanotube (see para. 28, para. 4). Fig. 13-14 show different products that can be made from this, one of which is a mesh (see Fig. 1-13 and para. 28, para. 5, “the density of the mesh is shown”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the mesh can be considered a membrane.
The reference does not describe that the thickness of the membrane has a thickness of 100nm or less.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fung Coris can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 August 6, 2026
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