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
Applicant’s election without traverse of group I invention (claims 1-6) in the reply filed on 12/12/2025 is acknowledged.
Claim 7 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/12/2025.
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 1-6 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. In this case, claim 1 recites “wherein a thickness of a carbon wall of the carbon support, which is derived from a three-dimensional pore structure of a silica mold obtained by pore volume measurement of the silica mold by nitrogen adsorption analysis”, one of ordinary skill in the art is uncertain how a silica mold “obtained by pore volume measurement of the silica mold by nitrogen adsorption analysis”, therefore, such limitation renders claim indefiniteness. Next, claim 1 recites “ a carbon wall content is more than 60.3 ml/g and less than 190.8 ml/g”, one of ordinary skill in the art is uncertain such recited carbon wall content is based on what, such as the total carbon support content or the silica mold? Therefore, such limitations render claim indefiniteness. All claim 1’s depending claims are rejected for similar reasons.
Claim 2-3 and 4 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. In this case, claim 2 recites “carbon support ratio….. more than 36% and less than 67%”, while claim 4 recites “carbon support ratio is 46% or more and 57% or less”, one of ordinary skill in the art is uncertain such recited carbon support ratio is based on what, such as the total support mass or something else? Next, both claim 2 and 3 recite “3D-TEM”, such abbreviation renders confusion for one of ordinary skill in the art because one of ordinary skill in the art is uncertain what such “3D-TEM” actually represents, or what it’s full description. Thirdly, claim 3 and 4 respectively recite “at least one throat in the pore”, one of ordinary skill in the art is uncertain what section or portion can be considered as “one throat” in such pore since there is no specific pore structure or geometry or section has been defined as “a throat” for a hole or pore. Therefore, such limitations render claims indefiniteness.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as obvious over Hasegawa et al (US2021/0163292).
Hasegawa et al teaches a mesoporous carbon support comprising at least one pore, wherein an average thickness of pore walls of the mesopores is 3 nm or more and 15 nm or less, or the average thickness of the pore walls is 3.5 nm or more and 10 nm or less (claim 1-3, 7, para. [0046]-[0048], example 1-3).
As for the claimed “which is derived from a three-dimensional pore structure of a silica mold obtained by pore volume measurement of the silica mold by nitrogen adsorption analysis”, such limitation appears to be a measure method used to obtain the wall thickness, i.e. a product by process limitation, even though product-by-process limitations 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 (See § MPEP 2113). In the instant case, Hasegawa et al already teaches a same or substantially the same wall thickness as that of instantly claimed.
Regarding claim 1, Hasegawa et al does not expressly teach the carbon wall content being more than 60.3 ml/g and less than 190. 8 ml/g.
However, Hasegawa et al teaches polymerizing silica source in the presence of surfactant to obtain a mesoporous silica, using acid such as hydrochloric acid, sulfuric acid and nitric acid to expand the pore diameter of mesoporous silica with hydrothermal treatment in the presence of hydrocarbon, and baking (i.e. calcining) , using such prepared mesoporous silica template with carbon precursors obtaining a mesoporous silica and carbon composite, polymerizing and carbonizing the obtained mesoporous silica and carbon composite , and then graphitizing to obtain the mesoporous carbon (para. [0075]-[0129], example 1-3), wherein such process is same or substantially the same as that of instant application disclosed process of making the instantly claimed porous carbon (see instantly published application US2023/0343971 para. [0058]-[0103], example 1-3).
It would have been obvious for one of ordinary skill in the art to expect that Hasegawa et al disclosed same or substantially the same process would lead to a same or substantially the same product, i.e., a same or substantially the same porous carbon having same or substantially the same carbon wall content being more than 60.3 ml/g and less than 190. 8 ml/g as that of instantly claimed.
Regarding claim 2, Hasegawa et al does not expressly teach a carbon support ratio being more than 36% and less than 67%, however, Hasegawa et al disclosed same or substantially the same process would lead to a same or substantially the same product, i.e., a same or substantially the same porous carbon having same or substantially the same carbon support ratio being more than 36% and less than 67% as that of instantly claimed.
Regarding claim 3-4, Hasegawa et al. further teaches the mesoporous carbon having a pore diameter of the mesopores is 2 nm or more and 10 nm or less (claim 1, para. [0043]-[0045], example 1-3). Since Hasegawa et al. already teaches pore diameter being from 2 to 10 nm, it would have been obvious that at least one throat in the pore having a diameter slight smaller than such size, i.e. slightly smaller about 2 to 10 nm. As for the claimed carbon wall content and carbon support ratio in claim 4, please see similar remarks as discussed in claim 1 and 2.
Regarding claim 5-6, Hasegawa et al. further teaches such mesoporous carbon support being used as an air electrode catalyst layer, wherein Pt being supported onto the mesoporous carbon support thereof (claim 7, para. [0145]-[0146], [0165]-[[0171], Fig. 6-7).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of U.S. patent No. 12006216 in view of Hasegawa et al (US2021/0163292). US’216 teaches a substantially the same porous carbon as that of instantly claimed, except the carbon wall content, which is taught by Hasegawa et al as discussed above. It would have been obvious for one of ordinary skill in the art to adopt the process as shown by Hasegawa et al to modify the mesoporous carbon having same or substantially the same carbon wall content as that of instantly claimed because adopting such well-known process to modify a well-known mesoporous carbon for improvement would have predictable results. It is noted that Hasegawa et al also teaches the pore diameter, carbon ratio and mesoporous carbon as catalyst carrier supporting Pt as air electrode in a fuel cell as discussed above.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732