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 .
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) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ishihara et al. (JP 2013-220413 machine translation provided by Examiner).
Regarding claim 1, Ishihara teaches an activated carbon adsorbent having pores in the range greater than 0 nm to 100 nm and a pore volume of 0.43-0.48 cc/g (Table 1). While Ishihara does not teach what the pore volume sum having a pore diameter of 2 to 50 nm in the activated carbon adsorbent as measured by the DH plot method is 0.025 cm3/g or less, and a pore volume sum of pores having a pore diameter of 1.5 to 2 nm in the activated carbon adsorbent as measured by the MP plot method is 0.0 14 cm3/g or more, it is noted that the DH plot method and the MP plot method for the pore volume sum is a property of the activate carbon adsorbent. It is further noted that the prior art rarely defines the pore volume sum by a DH or MP plot method over the range claimed and in fact, such a property was hardly used in the entire patent database. In Tables 1-2 of the present invention provide many more properties of activated carbon adsorbents that would also be present for adsorbents that have the claimed pore volume sum by a DH or MP plot method. In comparing Table 1 of the Ishihara activated carbon adsorbent and Tables 1-2 of the present invention, it is noted that many of the other properties more commonly used to define such adsorbents are similar. Thus, one skilled in the art would expect the pore volume sum by a DH or MP plot method of the two activated carbon adsorbents to be similar as well thereby providing a basis that the adsorbent in Ishihara would either anticipate or obviate the claimed pore volume sum by a DH or MP plot method ranges. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.") (see MPEP 2112.01).
It is noted that the claims are directed to a composition of matter (activated carbon adsorbent). How the composition of matter is intended to be used is not material in anticipation rejections. As such, the activated carbon adsorbent would read on the composition of matter claimed as they are nearly identical/similar and one would expect similar claimed properties.
Regarding claim 2, the claimed invention is an activated carbon adsorbent, which Ishihara teaches. One skilled in the art would expect similar results for identical/substantially identical activated carbon adsorbents.
Regarding claim 3, the term tap specific gravity as applied to activated carbon adsorbents is only found to be used in Applicant’s specification. As such, no prior art would directly read on the claimed property. It is noted that the units for the tap specific gravity are g/cc, which is used in Ishihara to denote packing density. Ishihara teaches a packing density that is within the claimed g/cc range in Table 1. As discussed in claim 1 above, one skilled in the art would expect similar properties for similar compositions of matter and therefore the limitation is either anticipated or obviated by Ishihara.
Regarding claim 4, it is noted that the claims are directed to a specific use and results of said specific use. As discussed above, all aspects of the claimed activated carbon adsorbent are either anticipated or obviated in light of Ishihara and one skilled in the art would expect similar results as the same composition cannot have different properties.
Regarding claim 5, it is noted that the activated carbon adsorbent of Ishihara is capable of being used as claimed (Fig. 1B).
Conclusion
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777