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, Claims 1-16 in the reply filed on 06/23/2026 is acknowledged. Claims 17-20 are withdrawn as being drawn to a non-elected group and claims 1-16 are examined herein.
Information Disclosure Statement
It is noted that an information disclosure statement (IDS) was not included in the electronic file wrapper of the instant application. Applicant is reminded of the duty to disclose information material to patentability as defined by 37 C.F.R. 1.56 (also see MPEP 2001).
Drawings
The drawings are objected to because the text for Figs. 1A-1B and 6A-8 are pixelated and difficult/impossible to read. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 15 is 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 15 recites “using the carbon electrode”. The preamble of claim 1, from which the claim depends, recites “A method for forming a carbon electrode”. It is unclear how a method of forming a carbon electrode is further limited by the use of the electrode. Furthermore, as outlined in MPEP 2173.05(q) “Use” claims: Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b). For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). It follows that claim 15 is rejected for failing to further limit the “method of forming” of claim 1 and also for failure to “set forth any steps involved in the process” of using the electrode.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 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.
Claims 1-2, 4, 6-9, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitajima et al. (M Kitajima, M Sato, H Nishide, Preparation of flat porous carbon films from paper-thin wood shavings and control of their mechanical, electrical and magnetic properties, Carbon 61 (2013) 260-269).
Regarding claim 1, Kitajima discloses a method for forming a carbon electrode ([abstract, conclusions]), the method comprising:
forming a blank comprising a bio-based material (shaving wood blocks into paper-thin wood shavings (PWSs) with an oblong sheet shape [Pg. 261, 2.1. Materials and preparation, Para. 2; Fig. 1]);
constraining the blank (the PWSs were constrained inside of a fixture during a “material setting” step that comprises top and bottom heat resistant glass plates with side spacers [Pg. 261, 2.2. Carbonization procedure, Para. 1; Fig. 2]);
pyrolyzing the blank (the material was pyrolyzed at 573k for 6hrs and then 773-1123K for 30 min [Pg. 261, 2.2. Carbonization procedure, Para. 1; Fig. 2]); and
forming a carbon electrode based on pyrolyzing the blank (the PWSs after carbonization/hydrolyzation form a carbon electrode [see Fig. 3]).
Regarding claim 2, Kitajima further discloses wherein forming the blank comprises:
cutting a flat block of the bio-based material to form the blank, wherein the flat block is cut in a radial and longitudinal direction ([Pg. 261, 2.1. Materials and preparation, Para. 2; Fig. 1]).
Regarding claim 4, Kitajima further discloses wherein the bio-based material comprises wood ([Pg. 261, 2.1. Materials and preparation, Paras. 1-2; Fig. 1]).
Regarding claims 6-8, Kitajima further discloses wherein the constraining the blank comprises: placing a mechanical constraint on top of the blank during the pyrolyzing, of instant claim 6, wherein the mechanical constraint comprises a porous material, a mesh, a screen, or any combination thereof, of instant claim 7, and wherein the mechanical constraint has a melting point above a pyrolysis temperature of the blank, of instant claim 8 (the PWSs were covered with a heat resistant top glass plate “mechanical constraint” during the pyrolyzing where the alumina ceramic would have at least some degree of porosity and would further be considered a screen since it screens, blocks, protects and covers the PWSs during the pyrolyzing [Pg. 261, 2.2. Carbonization procedure, Para. 1; Fig. 2]. Note Fig. 3 shows the consequences of not using the mechanical constraint as the carbon electrode curls or shrinks of not screened and constrained properly).
Regarding claim 9, Kitajima further discloses wherein pyrolyzing the blank occurs at a temperature between about 600°C and about 1,000°C (final pyrolysis occurs between 773-1123 K (500-850°C) with the examples in table 1 being pyrolyzed at 1023 k (750°C) [Pg. 261, 2.2. Carbonization procedure, Para. 1; Fig. 2; Table 1]).
Regarding claim 15, the limitation “using the carbon electrode in a battery, capacitor, supercapacitor, fuel cell, or any combination thereof” is an intended use of the produce manufactured by the method of claim 1 rather than a proper method step that further limits the method of making the electrode. In method claims, it is the overall method steps that are given patentable weight not the intended result thereof because the intended result does not materially alter the overall method. In method claims, the intended result is not given patentable weight when it simply expresses the intended result or use of a process step positively recited. Examiner further notes that Kitajima discloses the use of carbonized wood films for capacitors [Pg. 261, Introduction].
Regarding claim 16, Kitajima further discloses wherein the carbon electrode and the blank are free of binders (the flat porous carbon films are binder free [Pg. 268, 4. Conclusions, Para. 1]).
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 3 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kitajima, as applied to claim 1 above, and further in view of Gadkaree et al. (US 20170092440 A1).
Regarding claim 3, Kitajima discloses the limitations of claim 1 as discussed previously.
Kitajima discloses wherein the PWSs are cut with a thickness of approximately 150 μm (equivalent to 0.15 mm) and thus fails to expressly teach wherein the blank has a thickness of between about 0.3mm and about 0.8 mm.
Gadkaree discloses activated carbon materials that are formed from natural precursors including biomass ([Para. 0019]). Gadkaree further disclose wherein the carbon electrode material is formed with a thickness in the range of about 100-300 micrometers (0.1-0.3 mm) and also discloses that increasing the thickness of the negative electrode relative to the positive electrode can increase the initial capacitance of an ultracapacitor [Paras. 0061, 0063].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the PWs disclosed by Kitajima to have select and utilize a thickness within the disclosed range of Gadkaree (i.e., 0.1-0.3 mm) because Gadkaree discloses that this thickness is known in the art as a suitable thickness of a biomass based electrode/carbon film. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Furthermore, since this particular parameter is recognized as result-effective variable, i.e. a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable can be characterized as routine experimentation. See In re Boesch, 617 F. 2d 272, 205 U.S.P.Q. 215 (C.C.P.A. 1980). Thus, it would be obvious to one skilled in the art at the time of the claimed invention to modify the thickness of the carbon material relative to the positive electrode to yield an expected result of increasing the initial capacitance [Para. 0063].
Regarding claims 11-14, Kitajima discloses the limitations of claim 1 as outlined previously.
Kitajima fails to expressly teach treating the blank with an activation agent prior to pyrolyzing the blank, of instant claim 11, treating the carbon electrode with an activation agent, of instant claim 12, wherein the activation agent comprises at least one of KOH, ZnCl2, H3PO4, NaOH, H2O2, KMnO4, NH4NO3, H2SO4, HNO3, K2SiO3, or any combination thereof, of instant claim 13, or where pyrolyzing the blank occurs in the presence of N2, O3, CO2, steam, or any combination thereof, of instant claim 14.
Gadkaree discloses activated carbon materials that are formed from natural precursors including biomass ([Para. 0019]). Gadkaree teaches that physical or chemical activation processes may be used to activate the carbon that include exposing either the raw material or the already carbonized material to oxidizing conditions including oxygen or steam oxidizing agents at elevated temperatures [Paras. 0052-0053]. Gadkaree also teaches that chemical activating agents can be used on the raw material or pyrolyzed material that includes exposing to KOH, NaOH, phosphoric acid or other suitable salts including ZnCl2 [Paras. 0052-0053]. Examiner notes that activation of the raw material meets the limitations of treating “prior to pyrolyzing the blank” and treatment of the carbonized material with the chemical activating agents meets the limitation of “treating the carbon electrode” with the activation agent as required by the claims. Gadkaree further teaches that during the pyrolysis an inert or reducing atmosphere can be used that includes gases and gas mixtures including nitrogen [Para. 0051].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to pyrolyze and active the biomass based carbon electrode disclosed by Kitajima using the techniques and materials discussed above because Gadkaree discloses that these are known techniques to process carbon biomass materials for the formation of carbon based electrode materials [Para. 0019]. It has been held that the use of a known technique to improve similar devices or methods in the same way would have been obvious to one having ordinary skill in the art [MPEP 2143(C)].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kitajima, as applied to claim 1 above, and further in view of Lei et al. (Danyun Lei et al., Nanostructured polyaniline/kenaf-derived 3D porous carbon materials with high cycle stability for supercapacitor electrodes, J. Mater. Sci. (2017) 52:2158-2168).
Regarding claim 5, Kitajima discloses the limitations of claim 1 as discussed previously.
Kitajima is silent on the pre-processing of the wood board used as the blank and thus fails to expressly teach the steps of retting biomass, extracting natural fibers from the biomass based on the retting, and forming the blank from the fibers, as required by instant claim 5.
Lei discloses Kenaf-derived porous carbon (KPC) biomass materials for use as electrodes in supercapacitors [abstract]. Lei discloses that the kenaf bark was used in the study but that the sample was pre-processed (before pyrolyzing) by chemical retting whereby the KPC was prepared by chemical retting, the fibers were extracted after the retting, and the blank was formed and subsequently carbonized into the carbon electrode [Pgs. 2159-2160, Experimental].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Kitajima using the techniques and materials discussed above because Lei discloses that a suitable way of forming carbon-based biomass electrodes is to pre-process the raw material via retting and extracting the fibers to form the blank material that is then processed via pyrolysis to form the carbon electrode [Pgs. 2159-2160, Experimental]. It has been held that the use of a known technique to improve similar devices or methods in the same way would have been obvious to one having ordinary skill in the art [MPEP 2143(C)].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kitajima, as applied to claim 1 above, and further in view of Park et al. (US 20110020701 A1).
Regarding claim 10, Kitajima discloses the limitations of claim 1 as discussed previously.
Kitajima discloses wherein the pyrolysis/carbonization conditions include purging of the air and eventual anaerobic atmosphere [Pg. 261, 2.2. Carbonization procedure]. However, Kitajima fails to teach wherein the pyrolyzing the blank occurs under a “vacuum pressure” as required by instant claim 10.
Park discloses a process for forming carbon electrodes [abstract] wherein carbon-based precursors are pyrolyzed to convert to carbon. Park discloses wherein the precursor mixture is pyrolyzed in a reducing atmosphere that can include an inert atmosphere, a vacuum and/or flowing argon, nitrogen, or helium gas while the material is heated to about 900 to 1350°C [Para. 0050].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Kitajima wherein the “anerobic atmosphere” is formed by applying a vacuum during the pyrolysis because Park discloses that maintaining a reducing atmosphere via an inert gas or a vacuum is a known method for converting carbon precursors to a pyrolyzed carbon for carbon electrodes [abstract; Para. 0050]. It has been held that the use of a known technique to improve similar devices or methods in the same way would have been obvious to one having ordinary skill in the art [MPEP 2143(C)].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kitajima, as applied to claim 1 above, and further in view of Liu et al. (Mao-Cheng Liu et al., Porous wood carbon monolith for high-performance supercapacitors, Electrochimica Acta 60 (2012) 443-448).
Regarding claim 15, Kitajima discloses the limitations of claim 1 as discussed previously. Claim 15 is further rejected under 35 U.S.C. § 112(b) and 35 U.S.C. § 102(a)(1) as outlined previously.
Although Kitajima discloses the use of carbonized wood for capacitors in the introduction section, Kitajima fails to teach the use of the example material as a carbon electrode in a battery, capacitor, supercapacitor, fuel cell, or any combination thereof, as required by instant claim 15.
Liu discloses a surface modified wood carbon material that is formed by pyrolyzed wood [Pg. 444, 2.2. Preparation of the m-WCM]. Liu discloses wherein the pyrolyzed wood material after pyrolyzing is cut into suitable sized pieces and directly serves as the electrode material for the formation of a supercapacitor [Pg. 444, 2.4. Preparation of the m-WCM electrode; Pg. 448, 4. Conclusions].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the carbon material formed by Kitajima directly as electrode materials for a supercapacitor because Liu teaches that pyrolyzed wood electrodes can be used directly as supercapacitor electrodes.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tang et al. (Zijie Tang et al., Highly anisotropic, multichannel wood carbon with optimized heteroatom doping for supercapacitor and oxygen reduction reaction, Carbon 130 (2018) 532-543) disclose the delignification, pyrolysis, and activation of cut wood blocks for the formation of supercapacitor electrodes. Arima et al. (US 20220371893 A1) disclose carbon electrodes formed from plant-derived raw materials including coconut shell, softwood, and bamboo.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA ALLEN whose telephone number is (571)270-3176. The examiner can normally be reached 7:30am-4:30pm ET Mon-Thurs, 7:30am-11:30pm Fri.
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/JOSHUA L ALLEN/Supervisory Patent Examiner, Art Unit 1713
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