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, corresponding to Claims 1-3, in the reply filed on March 4, 2026 is acknowledged. Claim 4 is withdrawn from consideration.
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 3 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 3 recites “the precursor is calcined under a pressure lower than a normal pressure” in line 2. The phrase “normal pressure” is a relative term which renders the claim indefinite, as it is not defined by the claim, and the specification does not provide a standard for ascertaining what is considered to be normal. Is “normal pressure” a typical pressure under which calcination typically takes place? If so, what is the value of such a typical pressure in the calcination process? Is “normal pressure” considered to be the standard atmospheric pressure? If not, what quantity of pressure is to be applied for a pressure to be considered normal? The scope of Claim 3 is indefinite.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2012/0295108 to Nishii et al. (“Nishii”).
With regard to Claim 1, Nishii discloses “a carbon nanostructure including: carbon containing rod-shaped materials and/or carbon containing sheet-shaped materials which are bound three-dimensionally; and graphene multilayer membrane walls which are formed in the rod-shaped materials and/or the sheet-shaped materials; wherein air-sac-like pores, which are defined by the graphene multilayer membrane walls, are formed in the rod-shaped materials and/or the sheet-shaped materials.” Abstract; see entire document. The air-sac-like pores of Nishii provide hollowed portions to the rod-shaped materials because the pores branch several times such that adjacent pores are communicated with one another. Paragraph [0015]. Nishii discloses the carbon sheet has mesoporosity with first pores having a diameter of 1 nm to 20 nm and second pores having a diameter of 10 nm to 80 nm. Paragraphs [0037] and [0038]. Nishii discloses that a solution containing copper methylacetylide is agitated to entangle rod-shaped structures to form the carbon sheet, paragraphs [0059] to [0063], followed by calcination at a temperature of 1100 degrees C. to remove the copper and form multilayer walls of graphene. Paragraphs [0064] and [0065]. With regard to Claim 3, Nishii discloses the calcination is performed under vacuum atmosphere. Paragraphs [0049] and [0064].
Claim Rejections - 35 USC § 103
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Nishii in view of Japanese Patent Application Publication No. 2018-12627 to Takashi et al. (an English translation obtained from the PE2E database is referenced herein) (“Takashi”).
With regard to Claim 2, Nishii does not disclose adding phenol resin to the precursor sheet. Takashi is also related to the manufacture of porous carbon material using copper methylacetylide. See, e.g., Abstract, entire document. Takashi discloses that phenol resin can be added prior to calcination without any undue burden. Page 11. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to add phenol resin to the precursor sheet disclosed by Nishii prior to calcination in order to provide a functionalized resin to the calcined, porous carbon sheet, as shown to be well within the purview of the person having ordinary skill in the art by Takashi.
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 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/614,995 (“the ‘995 Application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘995 Application also claims a process for making a porous carbon sheet comprising agitating a solution comprising copper methylacetylide to form wire-shaped structures that are entangled, forming the precursor into a sheet-shape by adding it to a base sheet, and calcining the precursor sheet at a temperature in the range of 1000 to 1200 degrees C. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of the ‘995 Application in view of Takashi. Although the ‘995 Application does not claim the step of adding phenol resin to the sheet-shaped precursor prior to calcination, Takashi renders obvious such a step to be well known in the art of manufacturing porous carbon materials.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 pm.
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, Marla D. McConnell can be reached at 571-270-7692. 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.
JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
Prosecution Insights