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 .
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 1-11 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.
The term “low ash content” in claim 1 is a relative term which renders the claim indefinite. The term “low ash content” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The Specification as filed that “Preferably, the asphalt of low ash content has an ash content of not greater than 1 wt%” but since it is described as a preference does not sufficiently define low ash content. Therefore one of ordinary skill in the art would not be reasonably apprised of the boundary of the claim. For purposes of compact prosecution, low ash content is interpreted as being in the range of not greater than 1 wt%.
Regarding claim 2, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation 1 : 1 to 5, and the claim also recites 1: 1 to 2 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 4, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation 1 : 0.5 to 4, and the claim also recites 1: 1 to 3 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 4, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation oxide containing potassium, a potassium salt, KOH, an alkaline-earth metal salt and an alkaline-earth metal oxide, H3PO4, and ZnCL2, and the claim also recites preferably at least one of KOH, K2CO3, KHCO3, KCl, and KMnO4 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 5, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation activation temperature of 600°C to 900°C, and the claim also recites preferably 700°C to 800°C which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 5, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation inert gas, and the claim also recites preferably nitrogen or argon which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 6, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation at least one of hydrochloric acid, a nitric acid and a sulfuric acid, and the claim also recites preferably hydrochloric acid which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 3 and 8-11 depend on claim 1 and are therefore indefinite for the same reasons.
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.
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) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liao (CN104098098) in further view of Liu et al (CN 110482521) and in further view of Qiu (CN109250716).
Regarding claim 9, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Liao teaches a method for producing active carbon microsphere with high specific surface area, the method comprising:
Wet mixing a solution of asphalt carbon microsphere, alkaline activator and non-aqueous organic solvent;
Drying to produce an intermediate product;
Activation under protective gas;
Post-processing with water vapor, filtering, a pickling step, hot water cleaning and drying (see [0035] and Claim 16).
Liao further teaches the active carbon microsphere used as the electrode sheets in a supercapacitor (see [0002]-[0004]). Liao does not teach the electrode sheet comprising hollow activated carbon microspheres.
Here, the prior art Liao discloses electrode sheets comprising asphalt based activated carbon microsphere. The only difference from the implied structure according to claim 9 is that the microspheres are hollow.
Liu teaches a method for preparing hollow carbon ball by taking asphalt as a carbon source, the method comprising:
Preparing crosslinked polymer microsphere capable of pyrolyzing completely;
Dissolving asphalt in tetrahydrofuran, filtering out an insoluble component to obtain asphalt-tetrahydrofuran solution;
Ultrasonic or stirring and dipping the crosslinked polymer microsphere with the asphalt-tetrahydrofuran solution;
High temperature pyrolysis under inert atmosphere to obtain a hollow cavity, an asphalt carbonization to obtain a shell layer of carbon and obtain hollow carbon ball.
Liu therefore teaches a method of preparing hollow asphalt-based microspheres.
Qiu teaches asphalt hollow spherical carbon balls for use in capacitors which lessens the resistance of the electrolyte and electrolyte ion desorbs easily in the process of charging and discharging (see “fifth embodiment”).
It would have been obvious to one of ordinary skill in the art at the time of the invention to prepare the electrode sheet comprising asphalt-based activated carbon microspheres as taught by Liao where the starting asphalt-based carbon microspheres are hollow asphalt-based carbon microspheres as taught by Liu and therefore the electrode sheet comprises hollow asphalt-based activated carbon microspheres since Qiu teaches that asphalt hollow spherical carbon balls improve the charging and discharge characteristics of capacitors. In the event any slight differences can be shown between the two electrode sheets, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Liao in view of Liu and Qiu. See Ex parte Gray, 10 USPQ2d 1922.
Regarding claim 10, Liao teaches the capacitor containing an electrode sheet comprising the active carbon microspheres (see [0002-[0004]).
Regarding claim 11, Liao teaches the active carbon microspheres having a high specific capacity of at least 160 F/g (See [0051]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the supercapacitor as suggested by Liao, Liu, and Qiu where the specific capacitance is in any workable or optimum range overlapping with at least 160 F/g including the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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, Sally A Merkling can be reached at (571)272-6297. 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.
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
