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 § 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 1-18 are rejected under 35 U.S.C. 103 as being obvious over US 2023/0390737 to Imai et al. (hereinafter “Imai”).
The examiner notes that the instant application has an effective filing date of 3/23/2023 and the reference to Imai has an effective filing date of 2/22/2022. The examiner, also, notes that Imai reference shares one of two assignees and some of the inventors of the instant application.
With respect to claims 1, 7-9, and 15-18, Imai discloses a formed adsorber for high performance canisters (Abstract) comprising:
activated carbon fiber, granular activated carbon, and a binder,
5 to 100 parts by weight ratio of activated carbon fiber and 0 to 95 parts by weights of granular activated carbon ([0148]-[0149]),
the ratio of the content of the binder in the formed adsorber to the content of the activated carbon in the formed adsorber may be 0.3 to 20 parts by weight of the binder to 100 parts by weight of the activated carbon ([0151]),
the formed adsorber having a total pore volume in the range of 0.5-1.20 cm3/g ([0077]), and
the formed adsorber having a mean pore diameter in the range of 0.5 to 2.5 nm ([0080] & [0081]).
Imai is silent with respect to the claimed total pore volume of the granulated activated carbon and total pore volume of the activated carbon fiber.
However, it is noted Imai discloses the formed adsorber having a total pore volume in the range of 0.5-1.20 cm3/g ([0077]). Imai further discloses that setting the total pore volume in the disclosed range would result in the formed adsorber having excellent adsorption-desorption performance for fuel vapor ([0078]). It is to be noted that the claimed range for the total pore volume for granular activated carbon and for activated carbon fiber overlap, 0.9-2.5 cm3/g and 0.5-1.20 cm3/g, respectively. Hence, it would have been obvious to one having ordinary skill in the art at the time of instant claimed invention to select the size of the total pore volume for both the granulated activated carbon and the activated carbon to have a total pore volume in the range of 0.5-1.20 cm3/g which overlaps the claimed ranges. Overlapping ranges have bee held to be prima facie obvious.
With respect to claims 2-4 directed to properties of granular activated carbon, Imai discloses the formed adsorber having a mean pore diameter in the range of 0.5 to 2.5 nm ([0080] & [0081]) and a surface area in the range of 100 to 2500 m2/g ([0074] & [0075]). Although Imai is directed to the formed adsorber of mixed activated carbon (granular and fiber types), it is understood that the mean pore diameter and the surface area of each type of activated carbon would have the disclosed ranges. The disclosed ranges overlap with the claimed ranges and overlapping ranges have been held to be prima facie obvious.
With respect to claims 10-12 directed to effective adsorption-desorption ratio for n-butane, Imai discloses 75% or more ([0142] & [0143]).
With respect to claims 13-14 directed the binder being a fibrous binder, Imai discloses fibrous binders ([0150, lines 6-7]).
Allowable Subject Matter
Claims 5 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Imai is deemed to be the closest prior art which discloses claimed formed adsorber comprising activated carbon fiber, granular activated carbon, and a binder. Imai further discloses using a mixture of different forms of activated carbon such as powdered activated carbon, granular activated carbon, and activated carbon fiber ([0149]). Imai discloses properties directed to total pore volume, mean pore diameter, and specific surface area of the final formed adsorber and not individually to granular activated carbon and activated carbon fiber. Therefore, it would not be obvious to one skilled in the art to arrive at claimed comparison of pore volume and mean pore diameter between the activated carbon fiber and the granular activated carbon as recited specifically in claim 5 and 6.
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 1-18, provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/618341 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims is directed to a formed adsorber having comprising activated carbon fiber, granular activated carbon, and a binder for canisters. Instant claims and the reference application have overlapping weight ratio of activated carbon fiber to granular activated carbon and overlapping weight ratio of binder to combined activated carbon fiber and granular activated fiber. The reference application’s claims 1 and 9 read on instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2021/0198111 to Imai et al. discloses formed adsorber comprising activated carbon fiber and a binder for canisters.
Conclusion
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/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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