DETAILED ACTION
In the amendment filed on June 15, 2026, claims 2 – 3, 5 – 6, 9 – 13, 16 – 26 are pending. Claims 2, 3, 13, 16 have been amended and claims 1, 4, 7 – 8, 14 – 15 have been canceled. Claims 21 – 26 have been added.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 § 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.
The rejections of the claims under 35 USC § 112 in the previous Office Action are withdrawn due to Applicant amendment.
Claims 2 – 3, 5 – 6, 9 – 13, 16 – 26 are 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.
Regarding claim 16:
Many of the deficiencies cited in the previous Office Action concerning the previous presentation of claim 16 have been cured. However, new deficiencies had been introduced as a result of the amendments.
Present claim 16 recites: “…inorganic materials, wherein the reaction chamber has an inlet and an outlet end, and comprises …propagation zone; the method comprising: …” within the preamble of the claim. There is a lack of sufficient antecedent basis for the recited limitation within the preamble, as no reaction chamber is established and its relation to the purpose of the method expressed in the preamble. This may be cured (among other potential amendments) by e.g. adding relevant conjoining language within the preamble, .e.g. “producing … organized hybrid carbon solids with a reaction chamber, wherein the hybrid carbon solids comprise…” alongside any necessary changes within the steps of the method that are to take place inside such a reaction chamber”; or alternatively by e.g. amending the method of the claim to add a step of “providing a reaction chamber, wherein the reaction chamber has an inlet end and outlet end …with the propagation zone;” where the details of the reaction chamber is word-for-word the same as that of the recited “wherein the reaction chamber” clause currently placed within the preamble of the method.
Regarding claims 13:
The recited “a second quench gas” is not a recited step and not a limitation of a claimed step. It is therefore unclear how the recited second quench gas relate to the steps, including the “providing …” step. While the claim had been amended to recite “further comprising”, that the method “further comprises” an object does not ameliorate the lack of clarity when a claimed method would be comprised of its steps/ manipulative acts.
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(s) 16, 2 – 3, 5 –10, 12 – 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luhrs et al. US 8623470 B2 (hereinafter “Luhrs”) in view of Strumban et al. US 5593740 A (hereinafter “Strumban”).
Regarding claim 16 and dependent claims 5, 7, 8, 9, 10, 12, 13 (in one interpretation):
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Luhrs is directed to a process for making core-shell structured nanoparticles, particularly with carbon shells [organized hybrid carbon solids with elemental carbon solid shells] (Abstract; col 3 lines 4 – 10. As shown in the Figures 2 and 5, Luhrs discloses the provision of an apparatus 30 [reaction chamber], with Fig. 5 reproduced below (col 2 line 45 – col 4):
The apparatus comprises one or more precursor containers 320,325 used in aerosolizing core and shell precursors into an aerosol gas stream; an inlet end as depicted as the structures below hot zone 342 of a plasma torch and conduit for supplying plasma gas 350 (col 3 line 55 – col 4 line 6); a plasma torch 340 which is structured for energy input from a waveguide 360; the upper end of the plasma torch an afterglow region 344 in fluid communication with the lower end of the plasma torch [propagation zone and part of the annealing zone] (col 4 lines 15 – 32); an exit tube 330 [one or more conduits capable of conveying precursors and nucleation seeds]; and a chimney region 370 [the rest of the annealing zone] where further cooling occurs (col 3 line 55 – col 4 line 6). Fig 2. only differs from Fig. 5 in that container 320 contains all precursor material 322.
Luhrs discloses an embodiment of their method where tin-carbon core-shell nanoparticles are produced [organized hybrid carbon solids with elemental carbon solid shells and inorganic tin cores] comprising (col 5 line 30 – col 6 line 20):
providing the apparatus as depicted in Fig. 2;
directing an aerosol gas [feed gas] from source 300 to aerosolize/suspend [gasify, see Examiner’s discussion of broadest reasonable interpretation of the term “gas” in the Response to Arguments below] anthracene particles [unsaturated hydrocarbon precursor] and dry tin particles [plurality of nucleation seeds, eventually cores comprising inorganic material] from container 320 to form a combined gaseous stream [mixed before entry to initialization zone] that directed by exit tube 330 [one or more conduits] and then through the apparatus 30 [reaction chamber] (col 4 line 39 – 56);
coupling [exposing] microwave energy [1st energy input] to the precursors to reorganize atoms [chemically decomposing, forming initial reaction products, providing residual chemical reaction energy (and thus a second energy input, within the broadest reasonable interpretation where heat from exothermic decomposition can be construed as an energy input) and subsequently carbon solids in the propagation zone] in the gaseous stream within the plasma torch and form new tin-carbon particles [depositing carbon solids on tin nucleation seeds; meeting claims 5] (col 1 lines 45 – 65, col 4 line 60 – col 5 line 12); and
flowing the gaseous stream with the tin-carbon particles to a particle filter to collect [separate] the tin-carbon particles from the gaseous stream (col 4 lines 5 – 16).
Luhrs does not expressly teach the step of treating the gaseous stream with a quench gas to affect a physical or chemical property of the organized hybrid carbon solids.
With regards to the step of treating the gaseous stream with a quench gas to affect a physical or chemical property of the organized hybrid carbon solids:
Strumban is directed to a method and apparatus for making carbon-encapsulated ultrafine metal particles (Abstract). Within the context of their reaction chamber as depicted in the Figure, Strumban discloses an inlet 32 that provides a quenching gas of an inert gas such as e.g. nitrogen or argon [meeting claims 9, 12] and arranged in a quenching chamber 14 after forming carbon-encapsulated metal particles (col 4 lines 50 – 67). The quenching gas mixes and quenches with the heated mixed gas to form [affect the size of] ultrafine carbon encapsulated particle product by causing rapid cooling [necessarily requiring lower temperature delivery by 0th and 2nd law of thermodynamics, meeting claim 10] (col 2 lines 10 – 20, col 4 lines 1 – 20), which is similar to Luhrs’s disclosure of rapid cooling in plasma of the propagation zone (Luhrs col 1 lines 55 – 67).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the provided system and the method of Luhrs by treating the gaseous stream with a quench gas to affect the size of the organized hybrid carbon solids because Strumban teaches that such an action further aids in forming organized hybrid carbon solids of a desired size, which in turn vastly affects physical properties such as thermal and/or electrical conductivity (col 1 lines 19 – 45).
Optionally and additionally with regards to the step of directing a feed gas comprising an unsaturated hydrocarbon precursor gas, in the sense where a gas refers to a precursor existing in the gas state at standard temperature and pressures, Luhrs does not expressly teach supplying such an unsaturated hydrocarbon precursor gas.
Strumban discloses that suitable carbon precursors for forming a carbon shell include ethane, ethylene and mixtures thereof (Claim 3; col 3 lines 57 – 67). Strumban suggests that such compounds readily release free carbon for the production of a deposited shell onto core particles.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Luhrs by using e.g. ethylene [unsaturated hydrocarbon gas] because as taught by Strumban, the use of such hydrocarbon precursors is known to be suitable for the purpose forming carbon shells when used as a reactant in plasma formation of core-shell nanoparticles. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
Regarding claims 2, 3, 6, 21, 24:
Luhrs does not expressly teach that the unsaturated hydrocarbon is selected from the group consisting of ethylene, ethane and acetylene; that the nucleation seeds comprise silicon or silica; and does not expressly teach a feed gas mixture further comprises a second hydrocarbon precursor that is different from the recited hydrocarbon precursor.
With regards to the hydrocarbon being selected from the group consisting of ethylene and acetylene; and that a feed gas mixture further comprises a second hydrocarbon precursor that is different from the recited hydrocarbon precursor:
Strumban discloses that suitable carbon precursors for forming a carbon shell include ethane, ethylene and mixtures thereof (Claim 3; col 3 lines 57 – 67). Strumban suggests that such compounds readily release free carbon for the production of a deposited shell onto core particles.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Luhrs by using ethane [second hydrocarbon precursor different from unsaturated hydrocarbon], ethylene [unsaturated hydrocarbon] or mixtures thereof because as taught by Strumban, the use of such hydrocarbon precursors is known to be suitable for the purpose forming carbon shells when used as a reactant in plasma formation of core-shell nanoparticles. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
With regards to the nucleation seeds comprising silicon or silica:
Luhrs discloses that aluminum, silicon and tin is a suitable core material for the purpose of lithium alloying (col 2 lines 57 –67).
Additionally, Strumban discloses that the powdered metal material [nucleation seed] may be selected among e.g. aluminum and silicon (Claim 2; col 4 lines 40 – 50).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Luhrs by using silicon as the nucleation seed because as taught by both Luhrs and Strumban, silicon is a known and suitable core material that can be coated with carbon. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness.
Regarding claim 13 in another interpretation:
Where claim 13 is requiring a separate supplying of quench gas for treating the gaseous stream, the Examiner notes that under the broadest reasonable interpretation, the second quench gas may have the same chemical species/identity as the “a quench gas”. Accordingly, the requirement of treating the gaseous stream with a second quench gas is a splitting of steps into substeps and duplication of parts.
Absent of a showing of unexpected results, a prima facie case of obviousness exists where the difference between the prior art and the claimed method/process is the splitting of steps into substeps of equivalent functionality or effect. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) and In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See also In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) concerning mere duplication of parts).
Claims 11 and 17 – 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luhrs in view of Strumban as applied to claims 16, 2 – 3, 5 – 10, 12 – 13 above, and further in view of Hardman et al. US 2017/0037253 A1 (hereinafter “Hardman’253”).
Regarding claims 11, 17 – 20:
Luhrs in view of Strumban does not expressly teach that the quench gas is a reactive quench gas that affects a chemical property of the organized hybrid carbon solids; particularly a surface chemical property such as hydrophobicity and hydrophilicity by functionalization of the surface.
Hardman’253 is directed to methods of making functionalized carbon black particles after formation of the carbon black particles (Abstract; [0005]). Carbon black particles are produced in plasma/high temperature processes and retain high temperature before exposure to a tail gas [reactive quenching gas] ([0013] – [0014], [0026]). The tail gas may be e.g. CO2, N2, CH4 or C2H4 (Table 1; [0014]). Contacting hot carbon black particles with tail gases functionalizes the carbon black and imparts desirable properties such as reactor mixing, and the ability of CB to bind to other desired materials and thus increase bound rubber in SBR polymer composites in tires ([0014], [0016], [0022]). Hardman’253 also suggests that one such desirable property is hydrophilicity for water uptake ([0014], [0032] – [0033]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Luhrs in view of Strumban by using a reactive quench gas that functionalizes carbon surfaces to improve properties such as e.g. hydrophilicity because Hardman’253 teaches that such functionalization allows for desired properties for various applications of carbon-coated particles.
Claim(s) 22 – 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luhrs in view of Strumban as applied to claims 16, 2 – 3, 5 –10, 12 – 13 above, and further in view of Hardman et al. US 11987712 B2 (hereinafter “Hardman’712”).
Regarding claim 22, 23, 25, 26:
As discussed above, Strumban discloses that suitable carbon precursors for forming a carbon shell include ethane (CH4) [meeting claims 23, 26], ethylene (C2H4) and mixtures thereof (Claim 3; col 3 lines 57 – 67).
Luhrs in view of Strumban does not expressly teach that the second hydrocarbon precursor is acetylene (C2H2).
Hardman’712 is directed to methods of continuously making carbon black particles by providing a hydrocarbon feedstock within a reactor; and exposing the hydrocarbon feedstock to a plasma within the reactor (Abstract; col 1 lines 18 – 40, col 2 lines 1 – 10, col 8 line 59 – col 9 line 20). Hardman’712 discloses that the plasma may comprise/contain hydrocarbons such as C2H4 (ethylene), C2H2 (acetylene), anthracene or mixtures thereof (col 3 lines 1 – 15; Claims 1, 24).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Luhrs in view of Strumban by including e.g. acetylene gas because as taught by Hardman’712, the use of such hydrocarbon precursors is known to be suitable for the purpose forming carbon particles when used as a reactant in plasma formation of carbon black and other carbon-containing particles. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Furthermore with regards to the combination of the individual hydrocarbon gas species, a prima facie case of obviousness exists to combine the use of two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form (and use) a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Double Patenting
The provisional rejections of the claims under the doctrine of non-statutory double-patenting in the previous Office Action are withdrawn due to Applicant amendment are withdrawn. A terminal disclaimer between the present Application and the co-pending Application 18/750064 was filed on June 15, 2026. The terminal disclaimer was approved on June 23, 2026.
Response to Arguments
Applicant's arguments filed June 15, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) Luhrs does not teach that an unsaturated hydrocarbon precursor gas is mixed with nucleation seeds to form a mixture that is exposed to a microwave-induced plasma as required by the present claims.
b.) One of ordinary skill in the art would have had no reason to have combined the teachings of Luhrs and Strumban, let alone to have utilized Strumban's quench gas in Luhrs' method.
In response to the applicant's arguments, please consider the following comments.
a.) During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit' s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Under the plain meaning of the term “unsaturated hydrocarbon gas”, the Examiner noted that the term refers to hydrocarbons naturally/in-ambient found in the gas state that have unsaturated carbons, including aromatic hydrocarbons. However, the plain meaning is not fully consistent with the instant specification. While the instant specification example unsaturated hydrocarbon gases such as ethylene, propene and acetylene ([0024]), the instant specification also recites that other precursors can include short-chain hydrocarbons such as isoprene ([0024]) and that aromatic compounds such as naphthalene can be included in the feed gas ([0028]). Isoprene is naturally a liquid at standard conditions and naphthalene is naturally a solid at standard conditions. Thus, a strict reading of the term “gas” would not be fully consistent with the specification under a broadest reasonable interpretation standard.
Accordingly, Luhrs teaching concerning anthracene, an aromatic – and therefore unsaturated – hydrocarbon, would read on the required “unsaturated hydrocarbon” that is part of the “hydrocarbon precursor gas”; contrary to Applicant’s argument that Luhrs does not teach that an unsaturated hydrocarbon precursor gas is mixed with nucleation seeds to form a mixture that is exposed to a microwave-induced plasma.
b.) In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the reason to modify the teachings of Luhrs with the specific teaching of providing a quench gas to affect a physical or chemical property of the organized hybrid carbon solids is that Strumban teaches that the act of quenching with a quench gas further aids in forming organized hybrid carbon solids of a desired size, which in turn vastly affects physical properties such as thermal and/or electrical conductivity, as cited in col 1 lines 19 – 45 of Strumban. The Examiner notes that the taught step of treating the gaseous stream with a quench gas is downstream of the exposure of precursors and/or powders to plasma, and therefore separate from any differences between Luhrs and Strumban concerning how precursors are supplied to be part of the plasma that forms the organized hybrid carbon solids from the reaction of the precursors with plasma. "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached on (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
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