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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 10/9/2023 and 10/13/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
Election/Restrictions
Claims 18-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/26/2026.
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 12-17 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 12 requires “performing a first heat treatment … under reduced pressure”, however Claim 12 fails to establish a first pressure by which the heat treatment could be reduced from. The specification fails to reasonably suggest a starting pressure, or further disclose the specific numerical range suggested by “reduced pressure”. Claim 12 is being interpreted under the broadest reasonable interpretation to require “performing a first heat treatment … under reduced pressure relative to atmospheric pressure”, however appropriate correction is required.
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.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013178927 A Ryoichi et al.
Claim 12 requires “A process for producing a nitrogen-modified mesoporous and dendritic carbon material, the process comprising: preparing a carbon precursor comprising a metal acetylide”. Ryoichi et al. discloses “acetylene gas is blown into an ammonia aqueous solution of silver nitrate while irradiating it with ultrasound. Preferably, the solution is stirred simultaneously with the ultrasonic irradiation. This results in the formation of a silver acetylide precipitate in the solution.” [0039].
Claim 12 further requires “mixing the carbon precursor with a nitrogen precursor to form a starter mixture”. Both the ammonium hydroxide (ammonia aqueous solution) and nitrate salts disclosed by Ryoichi et al. (see above) can be considered a nitrogen precursor.
Claim 12 further requires “performing a first heat treatment of the starter mixture at a temperature in a range from 40 to 80°C under reduced pressure to form a metal inclusion compound”. Ryoichi et al. discloses “Next, the precipitate, along with the solvent, is divided into test tubes and placed in a vacuum electric furnace or vacuum high-temperature bath, where it is heated at a temperature of 60°C to 80°C for, for example, 12 hours or more.” [0040].
Claim 12 further requires “performing a second heat treatment at a temperature in the range from 120 to 220°C to break down the metal inclusion compound under the reduced pressure and produce an intermediate comprising a metal, the intermediate having a carbon lattice in which some carbon atoms are replaced by nitrogen atoms”.
Ryoichi et al. discloses “Next, the metal-encapsulated dendritic nanostructure is heated at 160°C to 200°C for, for example, 10 to 30 minutes. This heat treatment can be carried out immediately after the previous heat treatment. Because the temperature is higher than the previous heating temperature (60°C to 80°C), as the temperature rises, the remaining silver acetylide explodes on a nanoscale, and the silver encapsulated in the metal-encapsulated dendritic nanostructure is ejected to the outside, yielding a carbon nanostructure.” [0041]. It is understood that the second heat treatment, being performed immediately after the first heat treatment would also be in a vacuum.
Ryoichi et al. does not explicitly disclose that nitrogen atoms are incorporated within the carbon lattice, however, this is believed to be inherent to the method of synthesis. It has been held that where claimed and prior art products are produced by identical or substantially similar methods, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In other words, if the prior art teaches or at least suggests the claims' positive method steps, it matters not whether the prior art also teaches or suggests the features of the intended result of performing said steps — it would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”) (emphasis in original).
Claim 12 further requires “treating the intermediate to remove the metal and form a treated intermediate”. Ryoichi et al. discloses “By dissolving and washing these carbon nanostructures to remove any remaining silver and other unstable carbon compounds from the surface, stable carbon nanostructures can be obtained.” [0042].
Claim 12 further requires “and consolidating the treated intermediate by performing a third heat treatment at a temperature in the range from 200 to 1000 °C under reduced pressure or in an inert gas atmosphere to obtain the nitrogen-modified mesoporous and dendritic carbon material.”. Ryoichi et al. discloses “Furthermore, the dissolved and washed carbon nanostructures are placed in a vacuum, an inert gas atmosphere, or an air atmosphere and heated at a temperature of, for example, 180 °C to 200 °C for 24 to 48 hours.” [0043], which overlaps with the claimed range at one point, 200 °C.
Potentially Allowable Subject Matter
Claims 13-17 are objected to as being dependent upon a rejected base claim, but would be potentially 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 closest prior art to Claims 13-17 is given by JP 2013178927 A Ryoichi et al. by virtue of teaching Claim 12 upon which Claims 13-17 depend.
Claim 13 requires “the nitrogen precursor is selected from the group consisting of urea, cyanamide, melamine, and combinations thereof.”. Ryoichi et al. discloses ammonium hydroxide and nitrate salts as the nitrogen precursor compound (see Claim 12, above). Ryoichi et al. neither teaches, suggests, nor motivates using urea, cyanamide, or melamine as nitrogen precursors.
Claims 14-16 similarly relate to the molar ratio of nitrogen to carbon with Claim 14 having the most broad range of 0.05-1.5 and Claim 16 having the most narrow range of 0.3-0.92. Ryoichi et al. does not disclose what the ratio of nitrogen to carbon is in their method. It is therefore possible that the ratio of nitrogen to carbon used by Ryoichi et al. was within the claimed range, however a rejection cannot be made based on speculation.
Claim 17 requires “the third heat treatment is conducted at a temperature in the range from 600 to 900 °C.”. Ryoichi et al. discloses a third heat treatment in the range of 180-200 °C (see Claim 12, above). Ryoichi et al. neither teaches, suggests, nor motivates a higher temperature for the third heat treatment step.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
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JOSHUA MAXWELL SPEER
Examiner
Art Unit 1736
/J.M.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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