DETAILED ACTION
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 with traverse of Group II, present claims 2 – 20 in the reply filed on October 7, 2025 is acknowledged. Present claim 1 is therefore withdrawn. The traversal is on the ground(s) that no serious search and examination burden exists because the search for Group II would be co-extensive with that of non-elected Group I. This is not found persuasive because the scope of Group I is much greater than that of Group II.
The preamble of claim 1 recites that the system is for forming organized hybrid carbon solids comprising a core-shell structure, such a limitation merely states the purpose or intended use of the invention. Where the preamble states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020).
Furthermore, the body of claim 1 contains functional limitations that describe steps of a method. The patentability of apparatus/system claims are based on the structures that are recited. The functional limitations present are understood to refer to the functions that the recited structures are capable of performing, not that such functionalities are performed.
As currently claimed, the invention of Group I may be materially used in very different method, such as the example provided in the Restriction Requirement, and additionally exemplified by col 1 line 34 – col 8 line 6 and Fig. 2 of Deegan et al. 7022155 B2, made of record, which would read on many if not all of the claim limitations of Group I as claimed but would be distinct from the claim limitations of Group II. Accordingly, a serious search burden exists for a complete search of Group I.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Analysis
The Examiner notes that elected claims 2 – 20 recite a step of providing the system of claim 1, and then proceeds to recite required manipulative steps that do not reference or necessarily require the particulars of the structures recited in claim 1. While the Examiner notes that parent claim 1 includes “wherein …” clauses that require actions and steps, such “wherein clauses” are functional limitations of the system that is provided is directed to the structure of the system, not what actions are performed with the structure. Consequently, the Examiner interprets such “wherein …” clauses as functional limitations of the provided system. Functional claim limitations by what it does rather than by what it is. See MPEP 2173.05(g). Such functional limitations do not require that the recited steps of the method are performed by the specific structures required in the provided system.
In view of the discussion above, the Examiner interprets the functional limitations to impart only to require that the system as a whole is capable of performing/operating the recited “wherein…” clauses.
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.
Claims 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.
The Examiner notes that in general the deficiencies of the enumerated dependent claims below were due to the amendment of the claims from system claims to method claims without sufficient linking between the limitations of the claims and the manipulative acts such dependent claim limitations elaborate upon.
Regarding claims 16, 7, 8, 9, 10, 11, 12:
Present claim 16 recites “…exposing the gaseous stream to the energy input …”. A recitation of an energy input is found in claim 1, which claim 16 requires in a step of provision. Claim 1 recites the term “an energy input” as part of a “wherein …” clause that describes a function. Within the wherein clause, it is unclear whether the recited energy input is a required structure of the system or a function of the system produced from an unknown structure, rendering claim 16 indefinite and the term “the energy input” with insufficient antecedent basis. For the same reason, claims 7, 8 are indefinite.
Furthermore, the limitation “directing a feed gas comprising a hydrocarbon precursor and directing a plurality of nucleation seeds as a gaseous stream” is unclear in view of the recited limitation “exposing the gaseous stream …” As presented it is unclear if “… as a gaseous stream …” is to modify the clause “… only the nucleation seeds …” both “directing …” clauses because “directing a feed gas comprising a hydrocarbon precursor” is a complete clause. Each of the presented clauses describe a complete manipulative act, and therefore there exists an interpretation where only the plurality of nucleation seeds is required to be directed as a gaseous stream. However, the ”exposing step” references hydrocarbon precursor as being part of the gaseous stream, which is ambiguous in view of the above discussion, rendering the claim indefinite. The instant specification and drawings are also inconsistent in this matter. The instant specification does not expressly describe hydrocarbon precursor and nucleation seeds undergoing decomposition as a gaseous stream, but rather describes a feed gas mixture, suggesting that a step of mixing is missing from present claim 16 to harmonize the “directing …” action and the “exposing …” action. On the other hand, the Examiner notes that Fig. 3 discloses that the nucleation seeds 318 and the hydrocarbon precursors 314 are separately provided, rendering unclear whether “gaseous stream” is meant to be a mixture.
Finally, the Examiner notes that one or more antecedent basis issues arise from the format of claim 16 as a dependent claim, as referenced limitations have multiple initial presentations. For example, the term “a plurality of nucleation seeds” and e.g. dependent claim 4’s “the nucleation seeds comprise …” conflict with an initial presentation of the term “a plurality of nucleation seeds” in claim 1. In view of the above, the Examiner suggests that claim 16 be amended to be a fully independent claim, and that requirements of the provided system be defined within claim 16. Similar conflicts are found as part of claims 9, 10, 11, 12 with respect to the recited quench gas.
Regarding claim 3:
Claim 3 recites the limitation "the feed gas mixture". There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 4, 6:
As discussed above, the issue concerning antecedent basis is aggravated by the recitation of “the nucleation seeds”, as it is unclear whether there is a reference to the required step of the method or the function described as part of the system.
Regarding claims 13, 14, 15:
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. A similar issue occurs regarding the solids collector of claims 14, 15 and 16.
Dependent claims not enumerated above are rejected on the basis of the deficiencies of their parent claims.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 2 – 3, 5 –10, 12 – 14 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), 14:
Luhrs is directed to a process for making core-shell structured nanoparticles, particularly with carbon shells [organized hybrid carbon solids] (Abstract; col 3 lines 4 – 10. As shown in the Figures 2 and 5, Luhrs discloses the provision of an apparatus [reaction chamber], with Fig. 5 reproduced below (col 2 line 45 – col 4).
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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).
Luhrs discloses an embodiment of their method where tin-carbon core-shell nanoparticles are produced [organized hybrid carbon solids] comprising (col 5 line 30 – col 6 line 20):
providing the apparatus as depicted in Fig. 5;
aerosolizing liquid hexane [hydrocarbon precursor] and dry tin particles [plurality of nucleation seeds] to form a gaseous stream that directed by exit tube 330 and then through the apparatus 30 [reaction chamber] (col 5 lines 43 –55; 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); 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.
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).
Regarding claims 2, 3, 6:
Luhrs does not expressly teach that the 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 (within the bounds of indefiniteness) 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, ethane 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.
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 ethane, ethylene or mixtures thereof [thus a second hydrocarbon precursor different from a first] 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).
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luhrs in view of Strumban as applied to claims 2 – 3, 5 – 10, 12 – 14 above, and further in view of Ludwig et al. US 8017237 B2 (hereinafter “Strumban”).
Regarding claim 4:
Luhrs in view of Strumban does not expressly teach that the nucleation seeds comprises one or more organic materials.
In analogous art, Strumban is directed to nano-constructs and methods of using nano-constructs (Abstract). The nano-construct comprises core-nanoshell particles with a core that may be a polymeric material e.g. acrylic polymers [organic material] and the nanoshell may be a carbon-only nanoshell (col 1 lines 40 – 46, col 2 lines 5 – 15, col 4 line 40 – col 5 line 50). In prior art, core substrates of silicon dioxide and semiconductors had been contemplated (col 1 lines 10 – 31). Strumban discloses that such nano-constructs are useful for therapy as such as ameliorating vascular conditions. The nanoshells may be a thin layer having a thickness between e.g. 5 nm – 50nm and the core particles may have a size between 100nm to 150nm (col 2 lines 1 – 5).
Luhrs discloses that their method can result in core-shell structures with outer mean diameters of less than 500 nm and shell wall thicknesses of less than 50nm (col 3 lines 8 –20).
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 to produce core-shell nanoparticles where the core is an organic material because Strumban teaches that carbon shelled particles with a polymeric core are useful for medical treatments such as ameliorating vascular conditions, and a reasonable expectation of success exists to form such core-shell particles by the method of Luhrs in view of Strumban.
Claim 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luhrs in view of Strumban as applied to claims 2 – 3, 5 – 10, 12 – 14 above, and further in view of Detering et al. US 20020151604 A1 (hereinafter “Detering”).
Regarding claim 15:
In view of the indefiniteness of the claim, Luhrs discloses that core-shell structured nanoparticles can be collected from a particle filter [collection filter system] (col 4 lines 7 – 15).
Luhrs in view of Strumban does not expressly teach the presence of a prefilter as part of a solids collector.
Detering is directed to an apparatus for producing hydrogen and elemental carbon from hydrocarbons (Abstract). As part of their system for collecting the elemental carbon and other reaction product particles, Detering discloses that a cyclone separator is attached downstream of a coaxial cooldown chamber [corresponding to annealing zone] of the apparatus ([0062] – [0063]). Detering also discloses that multiple cyclone separators may be used to fully separate elemental carbon from produced hydrogen gas (Fig. 12; [0118], [0120], [0154]), suggesting that full separation and collection is enhanced by having multiple filters.
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 to include the presence of a cyclone separator acting as a prefilter because Detering suggests that the inclusion of multiple separation means (e.g. two or more cyclone separators where the first cyclone separator acts as the prefilter) helps to fully collect the core-shell nanoparticles.
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 2 – 3, 5 – 10, 12 – 14 above, and further in view of Hardman et al. US 2017/0037253 A1 (hereinafter “Hardman”).
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 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 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 teaches that such functionalization allows for desired properties for various applications of carbon-coated particles.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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 16 – 20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 16 – 20 of copending Application No. 18/750064 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. Reference claims 16 – 20 and instant claims 16 – 20 are substantially word-for-word copies of one another, including with the system of claim 1 that is provided.
Claims 2 – 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 – 20 of copending Application No. 18/750064 (reference application) in view of Luhrs, Strumban, Detering, Hardman and Strumban. The reference claims teach the limitations of parent claim 16 but do not teach the claim limitations found in claims 2 – 15. The teachings of Luhrs, Strumban, Detering, Hardman and Strumban in the rejection of the claims under 35 USC 103 also apply to the present provisional rejections. One of ordinary skill in the art would not have considered present claims 2 – 15 of the instant application to be patentably distinct from the reference application for the same reasons set forth in the respective rejection of the claims under 35 USC 103 found above.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717