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
Claims 7-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/05/2026.
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.
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.
Claim(s) 1, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20200231443A1, hereinafter ‘Ryu’.
Regarding Claim 1, Ryu discloses a method of preparing a catalyst for manufacturing carbon nanotubes, comprising dissolving a metal precursor in a solvent to prepare a precursor solution; thermally decomposing the precursor solution by spraying the precursor solution into a reactor; and obtaining a catalyst (Abstract: An embodiment of the present invention provides a method for manufacturing multi-wall carbon nanotubes, the method comprising the steps of: (a) dissolving a metal precursor in a solvent to prepare a precursor solution; (b) performing thermal decomposition while spraying the precursor solution into a reactor, thereby forming a catalyst powder),
wherein the catalyst includes a metal component represented by the following Chemical Formula 1 ([0030]-[0031]: the catalyst powder contains metal components according to the following Equation 1: Ma:Mb=x:y, where Ma represents two or more types of metals selected from among Fe, Ni, Co, Mn, Cr, Mo, V, W, Sn, and Cu, and Mb represents one or more types of metals selected from among Mg, Al, Si, and Zr, x and y represent the mole fractions of Ma and Mb, respectively, and x+y=10, 2.0≤x≤7.5, and 2.5≤y≤8.0; Example 10, Table 1: the catalyst is Co/V/Al/Zr, with amounts of these metals of 237.6/17.7/74.1/21.9 mol respectively. This implies a value for x of 237.6, a value for y of 96, and a value for z of 17.7. Therefore, x/y as claimed is 2.475, and x/z is 13.424).
Further regarding Claim 1, the claim requires a value for x/z of no more than 13, while Ryu discloses x/z = 13.424.
It is apparent, however, that the instantly claimed x/z and that taught by Ryu are so close to each other that the fact pattern in the instant case is similar to that in In re Woodruff, 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) wherein, despite a “slight” difference in the ranges taught by the prior art and the claims of the application, the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above, and given that there is only a “slight” difference between the x/z disclosed by Ryu and the x/z disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the x/z disclosed in Ryu is so close to that claimed that one of ordinary skill in the art before the effective filing date of the claimed invention would have expected the catalysts of both Ryu and the instant claim to have the same properties, and thereby would have arrived at the claimed invention, absent showings to the contrary or evidence of criticality associated with the difference in x/z in this case.
Regarding Claim 5, Ryu discloses spraying the precursor solution into the reactor with air at 1 to 3 bar; and thermally decomposing the sprayed precursor solution at 600 to 1,000° C ([0063]: thermal decomposition is achieved by spraying the catalyst precursor into a reactor with air at about 3 atm and a reactor internal temperature of 750 °C).
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20200231443A1, hereinafter ‘Ryu’, in view of US20120040186A1, hereinafter ‘Ryu2’.
Regarding Claims 2-3, while Ryu discloses the synthesis of a catalyst according to the method of Claim 1, and discloses a catalyst comprising Co/V/Al/Zr, Ryu does not disclose that the step of dissolving a metal precursor in a solvent to prepare a precursor solution comprises dissolving a Co precursor, a Zr precursor, and at least one metal precursor selected from Al, Ca, Si, Ti, and Mg in a solvent to prepare a first precursor solution; and introducing at least one metal precursor selected from W, V, Mn, and Mo to the first precursor solution to prepare a second precursor solution, wherein the first precursor solution has a temperature of less than 30 °C.
Ryu2 discloses a process for preparing catalyst composition for the synthesis of carbon nanotube comprising the steps of i) dissolving multi-component metal precursors of catalyst composition in de-ionized water; ii) spraying obtained catalytic metal precursor solution into the high temperature reactor by gas atomization method; iii) forming the catalyst composition powder by pyrolysis of gas atomized material; and iv) obtaining the catalyst composition powder ([0002]). A person of ordinary skill in the art would have recognized Ryu2 as analogous to Ryu, as both references are drawn to the same field of endeavor as the claimed invention, the spray pyrolysis of metal precursors to obtain a carbon nanotube synthesis catalyst - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Ryu2 discloses in embodiments a method for preparing a precursor material to be thermally decomposed by spraying. Particularly, Ryu2 discloses adding 2,897 g of Fe(NO3)3.9H2O, 5,569 g of Al(NO3)3.9H2O 5569 g and 95 g of Mg(NO3)2.6H2O into 9 L of de-ionized water, and separately Mo precursor solution was prepared after adding 166 g of (NH4)6Mo7O24.4H2O into 2.5 L of de-ionized water and stirring the mixture for 2 hours at room temperature (Preparation Example 4). It is reasonable to infer that the resulting solution would be approximately room temperature absent disclosure to the contrary, i.e., the final precursor solution into which all precursors have been mixed would have a temperature less than 30 °C. Ryu2 discloses that such a method produces an aqueous solution in which all components of metal catalyst are completely dissolved without any raw materials which result in precipitation and support powder, wherein such precipitation may result in the closing or hindering of the utilized spray nozzle ([0014]-[0016]).
Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize the process for forming the precursor solution as disclosed in Ryu2 when forming the precursors in Ryu, including preparing a first precursor solution comprising dissolving Co, Zr, and an M1 precursor to form a first precursor solution, and thereafter introducing an M2 precursor into the room temperature first precursor solution. Such a method has been shown to provide a fully dissolved precursor solution compatible with the spray pyrolysis method of both Ryu and Ryu2, and prevents the formation of precipitate which may block the nozzle of said process.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20200231443A1, hereinafter ‘Ryu’, in view of US20150273441A1, hereinafter ‘Kim’.
Regarding Claim 6, Ryu discloses a catalyst according to Ma:Mb=x:y, wherein x and y represent the mole fractions of Ma and Mb, respectively; and x+y=10, 2.0≤x≤7.5, and 2.5≤y≤8.0, As discussed above, in Example 10, the catalyst is Co/V/Al/Zr, with amounts of these metals of 237.6/17.7/74.1/21.9 mol respectively, which implies a value for x of 237.6, a value for y of 96, and a value for z of 17.7. Therefore, x/y as claimed is 2.475, and x/z is 13.424. Further, Ryu discloses that when the catalyst component and the active component are in a uniform distribution within a certain range, the synthesis yield of carbon nanotubes can be improved ([0050]).
However, Ryu does not disclose a catalyst according to Claim 6, in which x/y satisfies 0.5≤x/y≤2.0, and x/z satisfies 8≤x/z≤9. In the claim, x/y corresponds to the ratio of Co to M1 + Zr, and x/z corresponds to the ratio of Co to M2.
Kim discloses a catalyst for producing carbon nanotubes comprising a main catalyst, such as Co, Fe, or Ni, and an auxiliary catalyst, such as Mo or V. A person of ordinary skill in the art would have recognized Kim as analogous to Ryu, as both references are drawn to the same field of endeavor as the claimed invention, catalysts for forming carbon nanotubes comprising Co and V - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Kim discloses that in the case where the supported catalyst includes a Co-based graphitization catalyst, the Co content may be from about 3 to about 100 moles, based on 100 moles of the support ([0081]). Ryu makes clear that the metals included in Mb are support metals. Therefore, the ratio x/y represents the ratio of Co to support, and the disclosure of Kim suggests a value for x/y of between 0.03 and 1, which overlaps with the instant claimed range.
Further, Kim discloses a catalyst for producing carbon nanotubes comprising a main catalyst, such as Co, Fe, or Ni, and an auxiliary catalyst, such as Mo or V. Kim discloses that the catalyst may include between 0.1 to 10 mols of auxiliary catalyst per 10 moles of main catalyst ([0081]), which corresponds to a ratio of Co to M2, or in other words, a value for x/z, between 2 and 20, which overlaps with the instant claimed range.
One of ordinary skill in the art before the effective filing date of the claimed invention would therefore have found it obvious to select the relative amounts of Co, V, and the Al/Zr support as disclosed in Ryu to satisfy the ranges disclosed in Kim as suitable for producing a carbon nanotube synthesis catalyst, including selecting amounts of Co and corresponding support materials to satisfy a molar ratio of 3 to 100 moles of Co per 100 moles of support, and a ratio of 2 to 20 moles of V per mole of Co. Such ranges have been shown to result in a catalyst effective in catalyzing the synthesis of carbon nanotubes, and one of ordinary skill in the art would have had a reasonable expectation of success in applying such ranges to the process of Ryu.
Allowable Subject Matter
Claim 4 is 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:
The prior art does not disclose or reasonably suggest the limitations of Claim 4, requiring introducing the metal precursor and stirring the resulting mixture under a nitrogen atmosphere. Ryu particularly suggests introducing the mixed precursor into the thermal decomposition step with air. The use of a nitrogen atmosphere would require a system configured to mix the precursor solution under a nitrogen atmosphere, and subsequently introduce the mixed solution with air into the thermal decomposition reactor. There is no teaching, suggestion, or motivation to devise such a system when the prior art does not disclose any criticality associated with the particular mixing atmosphere. There is no suggestion or motivation to replace an air mixing atmosphere with nitrogen.
Furthermore, the instant specification discloses that “when the mixture is stirred under an atmosphere other than nitrogen, for example, an ambient atmosphere, a precipitation phenomenon may occur due to the reaction between the acidic first precursor solution and the basic cocatalyst precursor, which may result in deteriorated productivity and quality uniformity of the catalyst.” This result is unexpected and is not predictable from the disclosure of the prior art.
Conclusion
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LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./ Examiner, Art Unit 1736
/ANTHONY J ZIMMER/ Supervisory Patent Examiner, Art Unit 1736
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