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 .
Response to Amendment
Applicant’s amendment filed on July 17, 2026 has been entered. Claim 3 has been amended. New Claims 5-8 have been added. As such, Claims 1-8 are currently pending in the application, with Claim 4 withdrawn from consideration.
Specification
The disclosure is objected to because of the following informalities: the Specification does not contain a CROSS-REFERENCE TO RELATED APPLICATIONS section stating the foreign priority claim.
Appropriate correction is required.
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.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over .S. Patent Application Publication No. 2012/0295108 to Nishii et al. (“Nishii”) in view of U.S. Patent Application Publication No. 2015/0086901 to Tatsuno (“Tatsuno”).
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 material 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 rod-shaped crystalline materials and/or sheet-shaped crystalline materials, paragraphs [0040] and [0059] to [0063], followed by calcination in a quartz tube at a temperature of 1100 degrees C. to remove the copper and form multilayer walls of graphene. Paragraphs [0064] to [0065]. Nishi does not disclose providing a sheet-shaped precursor prior to the calcination step. However, Nishi does disclose that their carbon material can be used in a low temperature fuel cell or as an electrode. Paragraphs [0003], [0010], and [0017]. Moreover, Nishi teaches that “[t]he carbon nanostructure may be formed in any shape, but may be normally formed in a shape of three-dimensional integrated monolith.” Paragraph [0016]. Tatsuno is also related to porous carbon materials used to provide electrodes for use in fuel cells. See, e.g., Abstract, paragraph [0001], entire document. Tatsuno teaches that carbon materials can be produced in a sheet-form product by dispersing the materials into a sheet, paragraph [0061], prior to carbonizing the sheet at a temperature greater than 1000 degrees C. Paragraph [0085]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the carbon materials disclosed by Nishi into a precursor sheet prior to calcination in order to provide the material with a form suitable for use as an electrode, as shown to be known by Tatsuno, and as to produce an end use product as suggested by Nishi. With regard to Claim 2, Tatsuno discloses that the precursor sheet comprising carbon materials can be bound by a phenolic resin prior to carbonization at elevated temperature. Paragraph [0042]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the carbon materials disclosed by Nishi with a phenolic resin in order to properly bind the carbon residue materials in order to form a solid electrode sheet, as shown to be known in the art by Tatsuno. With regard to Claim 3, Nishi discloses the calcination can be performed under vacuum atmosphere. Paragraphs [0049] and [0064]. With regard to Claim 5, Nishi discloses the carbon materials are filtered, washed, and dried prior to calcination. Paragraph [0064]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize filter paper to form the sheet-shaped precursor in the process disclosed by the combination of Nishi with Tatsuno, since Nishi discloses that the carbon materials are filtered and washed, because filter paper serves the primary function of filtering a material, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claims 6 and 7, Tatsuno discloses applying or spraying the dispersion using a nozzle, paragraph [0241], and the use of a planar jig would be necessary, and therefore obvious, to form a two-dimensional film material suitable for an electrode.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nishi in view of Tatsuno as applied to claim 1 above, and further in view of U.S. Patent No. 9,255,008 to Howard et al. (“Howard”).
With regard to Claim 8, Nishi teaches that the carbon materials are dried, paragraph [0064], but does not provide the drying parameters. Howard is also related to carbon nanomaterials suitable for use in electrodes. See, e.g., Abstract, entire document. Howard teaches that carbon nanomaterials can be dried under vacuum at a temperature of 176 to 260 degrees C. Column 10, lines 17-25. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to dry the carbon nanomaterials disclosed by Nishi at a temperature in the range of 170 to 300 degrees C. under vacuum in order to provide conditions that properly dry nanosized carbon, as shown to be known in the art by Howard. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
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, 3, and 5-7 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. The ‘995 Application also claims that the precursor is formed by applying or spraying, and that the solution is agitated in a similar manner.
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 Tatsuno. Although the ‘995 Application does not claim the step of adding phenol resin to the sheet-shaped precursor prior to calcination, Tatsuno renders obvious such a step to be well known in the art of manufacturing porous carbon materials in order to provide bonding of the carbon prior to heat treatment at an elevated temperature.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of the ‘995 Application in view of Howard. Although the ‘995 Application does not claim the step of drying the sheet-shaped precursor under vacuum at the specified temperature prior to calcination, Howard renders obvious such a step to be well known in the art of manufacturing porous carbon materials in the field of providing electrode materials.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/ Primary Examiner, Art Unit 1789
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