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 .
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 1-2 are rejected under 35 U.S.C. 112(b)/2nd par. 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’s “the synthetic graphite material” recitations lack sufficient antecedent bases, rendering claim 1 rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. Although claim 1’s preamble is interpreted for prior art purposes to instead read “…a synthetic graphite material,” this rejection nevertheless needs addressing.
Claim 1 recites “wherein the synthetic graphite material has[ certain properties]”, but it is unclear at what point in the claimed method that the synthetic graphite material is actually formed: is it 1) when the heat-treated raw coke powder is heat treated to obtain graphite powder, or 2) when the graphite powder is pulverized? This uncertainty causes confusion as to the claimed scope and how to avoid infringement thereof (MPEP 2173.02), rendering claim 1 rejected as indefinite under 35 U.S.C. 112(b)/2nd par. While interpretation 2) is being applied for prior art purposes, this rejection nevertheless needs addressing.
Applicant is hereby advised that, as independent claim 1 is rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d 1701, 1702-04 (BPAI 1989) (same); 35 USC 112(d)/4th par.
Claim Interpretation
Claim 1’s “wherein the synthetic graphite material has… to 8.2 m2/g” recitation has not been accorded patentable weight because it merely expresses an intended result of the claim's positively-recited process steps. See Ex parte Hatch, 155 USPQ 105, 107 (BPAI 1966) (stating that “the process in order to distinguish [from the prior art] must recite something more than an intended result”). See also MPEP 2111.04 (stating that a “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited”) (internal citations omitted). Additionally and/or alternatively, 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 (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).
Double Patenting
The nonstatutory double patenting (“ODP”) 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. An ODP 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 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (CCPA 1969).
A timely filed terminal disclaimer (“TD”) compliant with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional ODP rejection provided that 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 TD by itself is not a complete reply to an ODP rejection. A complete reply requires that the TD be accompanied by a reply requesting reconsideration of the prior Office action. Even where the ODP rejection is provisional the reply must be complete. See MPEP § 804 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 TD forms which may be used. See 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 (“eTD”) may be filled out completely online using web-screens. An eTD that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTDs, see www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Instant claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of US 12,139,408 (“’408”), claims 1-8 of US 9,142,832 (“’832”), and claims 1-5 of US 12,043,548 (“’548”). Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope and do not manifest any non-obvious differences, as detailed below.
Regarding instant claim 1, said references claim the claimed positive method steps; it is noted that subjecting particles to compressive shearing stress is considered to qualify as pulverizing the same as claimed. See ‘408 at, e.g., clm. 1; ‘832 at, e.g., clms. 2-3; ‘548 at, e.g., clms. 1-2. As the claimed intended result recitations have not been accorded patentable weight, said references anticipate the claim. Notwithstanding the foregoing, i) ‘408’s and ‘548’s synthetic graphite material (“SGM”) has a size L (112) of 4-30 nm and ‘832’s SGM has a size L (112) of ≥4 nm; ii) ‘408’s and ‘548’s SGM has a 0.22-1.70 m2/cm3 surface area; iii) ‘408’s and ‘548’s SGM has an oil absorption of 67-147 ml/100 g. See id. Additionally and/or alternatively, as to the other claimed properties of the SGM formed by the claimed method, since said references anticipate the claimed positive method steps as detailed above, the claimed properties of the resulting SGM are reasonably expected to be met/present, and/or the presence thereof would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. MPEP 2112.01, citing In re Best. MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs. See also In re Woodruff.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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.
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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al., US 2013/0251620 (published 9/26/13) (“Suzuki”), or, in the alternative, under 35 U.S.C. 103 as being unpatentable over the same. Regarding claim 1, Suzuki discloses a method comprising performing a delayed coking process upon a raw oil composition to give a raw coke composition, pulverizing the raw coke composition to give a raw coke powder, heat-treating the powder to give graphite particles, and subjecting the particles to compressive shearing stress (which is considered to qualify as pulverizing the same as claimed) to give an SGM. See Suzuki at, e.g., par. 32 and 549; clms. 2-3. As the claimed intended result recitations have not been accorded patentable weight, Suzuki anticipates the claim. Notwithstanding the foregoing, Suzuki’s SGM has a size L (112) of ≥4 nm, such as 4-30 nm. See id. Additionally and/or alternatively, as to the other claimed properties of the SGM formed by the claimed method, since Suzuki anticipates the claimed positive method steps as detailed above, the claimed properties of the resulting SGM are reasonably expected to be met/present, and/or the presence thereof would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. MPEP 2112.01, citing In re Best. MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs. See also In re Woodruff.
Regarding claim 2, Suzuki’s raw oil composition possesses the claimed values. See id. at, e.g., par. 76, 78, 80, and 84.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ July 21, 2026
Primary Examiner
Art Unit 1736
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