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 .
DETAILED ACTION
Response to Election/Response
1. Applicant's election with traverse of Group I, claims 1-11 & 15-20, in the reply filed on 04/21/2026 is acknowledged. The traversal is on the ground(s) that “there would be no serious search burden if the claims were examined together…” (Applicants’ response page 4).
Applicant’s argument is found persuasive, the nonelected claims have been rejoined with the elected claims and the restriction made on 03/02/2026 has been withdrawn.
Status of Application
2. This application has Provisional of 63369285, which was filed on 07/25/2022.
Claims 1-20 were originally presented in this application for examination.
Claims 1-20 are currently pending and under consideration.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on 12/29/2023 has been made of record. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
An initialed copy of the IDS accompanies this office action.
Claim Objections
4. Claims 2, 3, & 17 are objected to because of the following informalities:
A. In claim 2, line 2, --between-- should be inserted before “about” (first occurrence).
B. In claim 3, line 2, --between-- should be inserted before “about” (first occurrence).
C. In claim 17, line 2, --between-- should be inserted before “about” (first occurrence).
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b) (Second Paragraph)
5. 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 12-15 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.
The instant claims recite a method for preparing activated carbon (claims 12-14) and a modified activated carbon (claim 15), but there are no process steps being set forth in the claims, thus the claims are not positively reciting the process steps for the claimed method.
Claim Rejections - 35 USC § 102(a)(1)
6. 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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dussert et al. (US 5,368,738), hereinafter “Dussert et al. ‘738”.
The claimed invention relates to a method for modifying a surface of activated carbon, comprising contacting the activated carbon with a chemical oxidant to produce a surface-modified activated carbon (as recited in the instant claim 1).
Dussert et al. ‘738 teaches a method for treating water with activated carbon, wherein the activated carbon has been oxidized by treatment with air or oxygen at temperatures greater than 300oC but less than 700oC, or between 350oC to 500oC (see col. 6, claims 1-3; col. 4, lines 15-21). The activated carbon was oxidized for a time greater than 5 minutes, but less than 3 hours. The activated carbon was introduced in a rotary kiln. The activated carbon was oxidized with air or oxygen at flow rates between 2.5 and 50 l/min, and at rotation speeds ranging from 1 to 10 rpm. See col. 4, lines 22-27.
Regarding claims 1-7 & 16-18, Dussert et al. ‘738 teaches the claimed method for modifying a surface of activated carbon by contacting the activated carbon with a chemical oxidant (air or oxygen in a gaseous form) at the claimed temperatures (see col. 6, claims 1-3).
Regarding claims 8-11 & 19-20, the claimed features on activation flow rates, time, and rotary kiln speed are the same as the disclosed (see col. 4, lines 22-27).
Regarding claims 12-14, the additional claim feature on “such that a surface of the activated carbon is oxidized, resulting in functional groups on the surface of the activated carbon” would be an inherent characteristic of the activated carbon produced by the disclosed method because the same activation treatment was carried out in the disclosed method.
Regarding claim 15, the instant claim relates to a method for preparing a modified activated carbon, but does not recite the process steps for carrying out the claimed method. The claim feature on “such that when used in water treatment, treating 10,000 gallons of water with 0.9 gallons of the modified activated carbon requires 15 or fewer backwash cycles” is noted. This is regarded as recitation of intended use of the modified activated carbon and while this intended use recitation is not disregarded, it is considered the modified activated carbon produced by method of Dussert et al. ‘738 would be able to do the same or have the same capabilities as well in view of the same product disclosed and prepared by the same method.
Claims 1-20 are unpatentable as being anticipated by Dussert et al. ‘738.
Claim Rejections - 35 USC § 102(a)(1)
7. 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.
Claim(s) 1, 4-8, 10, 12-16, & 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagai et al. (US 3,909,449), hereinafter “Nagai et al. ‘449”.
The claimed invention relates to a method for modifying a surface of activated carbon, comprising contacting the activated carbon with a chemical oxidant to produce a surface-modified activated carbon (as recited in the instant claim 1).
Nagai et al. ‘449 broadly discloses a method for the production of activated carbon spheres, comprising preparing the spheres, oxidizing the spheres to infusibilize them, and post-treating the spheres by contacting with ammonia and a member selected from a group consisting of air, oxygen, steam, nitrogen and hydrogen at a temperature within the range of 550-1000oC to affect a weight loss of at least 15% (see col. 9, claim 1). The spheres are infusibilize by treatment with an oxidative aqueous solution (oxidizing agents, such as nitric acid, sulfuric acid, chromic acid, etc.) or in an atmosphere of an oxidative gas (oxygen, air, nitrogen oxide, or a mixture thereof) (see col. 3, lines 60- col. 4, line 5).
Specifically, Nagai et al. ‘449 teaches a rotary kiln is charged with 50 g of spheres and the spheres were infusibilized by heating from 150oC to 300oC over 10 hours with an air feed rate of 5 liters per minute (see col. 6, lines 18-24).
Regarding claims 1, 4-7, 16, & 18, Nagai et al. ‘449 teaches the claimed method for modifying a surface of activated carbon by contacting the activated carbon with a chemical oxidant (air or oxygen in a gaseous form) (see col. 9, claim 1).
Regarding claims 8 & 19, the claim feature on “at a flow rate of between about 2.5 and about 50 liters per minute” is met by the reference because it encompassed the disclosed flow rate of 5 liters per minute (see col. 6, lines 18-25).
Regarding claim 10, Nagai et al. ‘449 teaches to carry out the activation treatment of the activated carbon in a rotary kiln (see col. 6, lines 18-24).
Regarding claims 12-14, the additional claim feature on “such that a surface of the activated carbon is oxidized, resulting in functional groups on the surface of the activated carbon” would be an inherent characteristic of the activated carbon produced by the disclosed method because the same activation treatment was carried out in the disclosed method.
Regarding claim 15, the instant claim relates to a method for preparing a modified activated carbon, but does not recite the process steps for carrying out the claimed method. The claim feature on “such that when used in water treatment, treating 10,000 gallons of water with 0.9 gallons of the modified activated carbon requires 15 or fewer backwash cycles” is noted. This is regarded as recitation of intended use of the modified activated carbon and while this intended use recitation is not disregarded, it is considered the modified activated carbon produced by method of Nagai et al. ’449 would be able to do the same or have the same capabilities as well in view of the same product disclosed and prepared by the same method.
Claims 1, 4-8, 10, 12-16, & 18-19 are unpatentable as being anticipated by Nagai et al.
Claim Rejections - 35 USC § 103
8. 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) 2-3, 9, 11, 17, & 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagai et al. (US 3,909,449), hereinafter “Nagai et al. ‘449”.
Naigai et al. ‘449 discloses a method for the production of activated carbon spheres (see col. 9, claim 1) as set forth in the precedent paragraph, except for the following differences.
Regarding claims 2, 3, & 17, Nagai et al. ‘449 discloses an activation temperature of from 150oC to 300oC (see col. 6, lines 18-25), which appears to be touching the claimed lower temperature range of “about 300oC” (as recited in the instant claim 2) but lies outside of the claimed temperature range of “between about 350oC and about 500oC” (as recited in the instant claim 3).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been prima facie obvious to a person of skilled in the art (before the effective filing date of the claimed invention) to optimize the activation temperature in the method of Nagai et al. ‘449, in view of In re Boesch.
Regarding claim 11, the reference does not disclose the rotary speed of the rotary kiln. However, it is considered obvious for a person skilled in the art to control the speed rotation of the rotary kiln at an adjustable rate effective to perform the activation since it involves only routine experimentation of one of ordinary skill in the art to do so without technical skill required.
Regarding claims 9 & 20, the reference teaches the activation is performed over 10 hours (see col. 6, lines 18-25), which appears to be longer than the time required in the claimed method. It is considered since the heating time is temperature dependent and that heating at a higher temperature will require shorter time and at a lower temperature will require longer time, such as in Nagai et al. ‘449.
Claims 2-3, 9, 11, 17, & 20 are unpatentable as being obvious over Nagai et al.
Citations
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All references are cited for related art. See PTO-892 Form prepared.
US 2008/0063592 (relates to a method of producing activated carbon by activation under oxygen atmosphere).
US 2022/0062855 A1 (and US 12,064,745) (relate to a method of manufacturing a sorbent material (activated carbon) comprising activating and oxidizing the activated carbon precursor with oxygen).
US 8,420,033 B2 (relates to a method for activating or reactivating the carbonaceous mercury sorbent precursor (activated carbon) by activating with oxygen).
US 12/377,399 (relates to activated carbon comprises functional groups produced by activation in inert gas atmospheres, such as argon, helium, and nitrogen).
Conclusion
10. Claims 1-20 are pending. Claims 1-20 are rejected. No claims are allowed.
Contacts
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner CAM N. NGUYEN whose telephone number is (571)272-1357. The examiner can normally be reached on M-F (8:30 am – 5:00 pm) at alternative worksite or at cam.nguyen@uspto.gov.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer, can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Cam N. Nguyen/Primary Examiner, Art Unit 1736
/CNN/
July 02, 2026
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