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 Arguments
Applicant's arguments filed June 19, 2026, have been fully considered but they are not persuasive.
Applicant first argues CN Publication 111377443 to Sun et al. (hereinafter Sun; see also previously provided machine translation) and JP Publication 2015-56502 to Kume et al. (hereinafter Kume; see also previously provided machine translation) cannot be combined as they relate to different fields of endeavor (Remarks 9).
It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
Applicant argues, “Sun relates to the field of catalysts” (Remarks 10) and “Sun is concerned with catalysis and not energy storage at all” (Remarks 11). While Sun does indeed relate to catalysts, Sun additionally discloses use as an activated carbon electrode. “[T]he… copper-doped active carbon composite material can be used as catalyst… as adsorbent… separation of carbon monoxide… dry gas adsorption separation, and adsorption desulphurization… as electrode material, it can be used for super capacitor” (Sun page 5, emphasis added).
Regarding Kume, “[T]he present invention relates to activated carbon used for an electrode material of a hybrid capacitor and a method for manufacturing the same” (Kume page 1).
Accordingly, as Sun discloses use as an activated carbon electrode for a super capacitor and Kume teaches an activated carbon electrode material in a hybrid capacitor (a capacitor using both a redox reaction and electric double-layer capacitance to store energy), the two references are in the same field of endeavor or reasonably pertinent to the particular problem with which the inventor was concerned, and may be combined.
In response to applicant's argument that Kume teaches away from the combination (Remarks 10), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Additionally, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references (Remarks 10, e.g., “The process in Kume does not involve metal doping of the activated carbon”). See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Kume is not relied upon to incorporate all of Kume steps S10 through S16 (Remarks 9, e.g., “Kume teaches to wash the activated carbon product extensively”); Kume is relied upon for teaching heat treating activated carbon in a reducing atmosphere (“In the heat treatment step (S16), the secondary pulverized activated carbon is heat-treated in a reducing gas atmosphere to reduce functional groups remaining on the surface of the activated carbon”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings of Kume with Sun to incorporate the heat treatment of Kume with the composition taught by Sun, as one having ordinary skill in the art would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification allows for reducing the functional groups on the surface of the activated carbon (Kume “In the heat treatment step (S16), the secondary pulverized activated carbon is heat-treated in a reducing gas atmosphere to reduce functional groups remaining on the surface of the activated carbon… The activated carbon thus obtained has a smaller amount of basic functional groups remaining on the surface… The obtained activated carbon has a large specific surface area and has appropriate pores… From this, the activated carbon disclosed here can be suitably used as a positive electrode material of a hybrid capacitor (typically a lithium ion capacitor)”).
Applicant argues, “combining Kume with Sun would render Sun unsuitable for its intended purpose” (Remarks 10) and “repeated washing as required by Kume could potentially remove the copper embedded by Sun” (Remarks 11).
As above, Kume is not bodily incorporated into Sun; Kume is relied upon for teaching heat treating activated carbon in a reducing atmosphere.
Regarding, “both references are directed to solving different problems than the problem solved by the presently claimed invention, (Remarks 12), “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Additionally, Attorney argument (e.g., Remarks 10) is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
Accordingly, Applicant’s arguments have been fully considered but are not persuasive.
Applicant’s arguments regarding claim 7 are persuasive.
Information Disclosure Statement
The information disclosure statements (IDS) submitted July 30, 206, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements is being considered by the examiner.
The information disclosure statement filed July 9, 2026, fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. The Korean language copy of KR 100392507 (reference 25) is illegible. It has been placed in the application file, but the information referred to therein has not been considered.
Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
Replacement drawing sheets were received June 19, 2026. The drawings are acceptable and the objection to the drawings is withdrawn.
Claim Rejections - 35 USC § 112
The rejection under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, is withdrawn.
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.
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.
Claims 1-6, 12, 14-15, 18, 20-21, 23, 28-31, and 34-35 35 U.S.C. 103 as being unpatentable over Sun in view of Kume.
Claim 1
Sun discloses a composition comprising activated carbon (“a copper-doped active carbon composite material”), an electro-stabilizing agent (“a copper-doped active carbon composite material”), and a wettability enhancing agent (“the composite material may also contain auxiliary agent, said auxiliary agent is inorganic metal oxide, molecular sieve in the one kind of or more, wherein the inorganic metal oxide is selected from alumina”), wherein the electro-stabilizing agent comprises copper and the wettability enhancing agent comprises aluminum, as recited in claim 1.
Sun does not expressly disclose wherein the activated carbon comprises an oxygen-stripped activated carbon, as recited in claim 1.
Kume teaches heat treating activated carbon in a reducing atmosphere (“In the heat treatment step (S16), the secondary pulverized activated carbon is heat-treated in a reducing gas atmosphere to reduce functional groups remaining on the surface of the activated carbon”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings of Kume with Sun to incorporate the heat treatment of Kume with the composition taught by Sun, as one having ordinary skill in the art would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification allows for reducing the functional groups on the surface of the activated carbon (Kume “In the heat treatment step (S16), the secondary pulverized activated carbon is heat-treated in a reducing gas atmosphere to reduce functional groups remaining on the surface of the activated carbon… The activated carbon thus obtained has a smaller amount of basic functional groups remaining on the surface… The obtained activated carbon has a large specific surface area and has appropriate pores… From this, the activated carbon disclosed here can be suitably used as a positive electrode material of a hybrid capacitor (typically a lithium ion capacitor)”).
Claim 2
Sun discloses a method of producing activated carbon, comprising:
combining activated carbon with an electro-stabilizing agent and a wettability enhancing agent to form an activated carbon mixture (“a copper-doped active carbon composite material… the composite material may also contain auxiliary agent, said auxiliary agent is inorganic metal oxide, molecular sieve in the one kind of or more, wherein the inorganic metal oxide is selected from alumina”), as recited in claim 2.
Sun does not expressly disclose exposing the activated carbon mixture to a sweeping gas at an elevated temperature, wherein the sweeping gas comprises a combination of an inert gas and a reducing gas, as recited in claim 2.
Kume teaches heat treating activated carbon in a reducing atmosphere (“In the heat treatment step (S16), the secondary pulverized activated carbon is heat-treated in a reducing gas atmosphere to reduce functional groups remaining on the surface of the activated carbon”), wherein the sweeping gas comprises a combination of an inert gas and a reducing gas (“The reducing gas may be supplied after being diluted with an inert gas such as nitrogen (N2) or argon (Ar)”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings of Kume with Sun to incorporate the heat treatment of Kume with the composition taught by Sun, as one having ordinary skill in the art would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification allows for reducing the functional groups on the surface of the activated carbon (Kume “In the heat treatment step (S16), the secondary pulverized activated carbon is heat-treated in a reducing gas atmosphere to reduce functional groups remaining on the surface of the activated carbon… The activated carbon thus obtained has a smaller amount of basic functional groups remaining on the surface… The obtained activated carbon has a large specific surface area and has appropriate pores… From this, the activated carbon disclosed here can be suitably used as a positive electrode material of a hybrid capacitor (typically a lithium ion capacitor)”).
Claim 3
Sun discloses a method of producing activated carbon, comprising:
combining activated carbon (“a copper-doped active carbon composite material”) with an electro-stabilizing agent (“a copper-doped active carbon composite material”) and/or a wettability enhancing agent (“the composite material may also contain auxiliary agent, said auxiliary agent is inorganic metal oxide, molecular sieve in the one kind of or more, wherein the inorganic metal oxide is selected from alumina”), to form an activated carbon mixture;
wherein the electro-stabilizing agent comprises Sc, Ti, V, Cr, Mn, Ni, Cu, Zn, Y, Zr, Nb, Mo, Tc, Ru, Rh, Pb, Ag, La, Hf, Ta, W, Re, Os, Ir, Pt, Au, or Ac (“a copper-doped active carbon composite material”), as recited in claim 3.
Sun does not expressly disclose exposing the activated carbon mixture to a sweeping gas at an elevated temperature, wherein the sweeping gas comprises a combination of an inert gas and a reducing gas, as recited in claim 3.
Kume teaches heat treating activated carbon in a reducing atmosphere (“In the heat treatment step (S16), the secondary pulverized activated carbon is heat-treated in a reducing gas atmosphere to reduce functional groups remaining on the surface of the activated carbon”), wherein the sweeping gas comprises a combination of an inert gas and a reducing gas (“The reducing gas may be supplied after being diluted with an inert gas such as nitrogen (N2) or argon (Ar)”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings of Kume with Sun to incorporate the heat treatment of Kume with the method taught by Sun, as one having ordinary skill in the art would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification allows for reducing the functional groups on the surface of the activated carbon (Kume “In the heat treatment step (S16), the secondary pulverized activated carbon is heat-treated in a reducing gas atmosphere to reduce functional groups remaining on the surface of the activated carbon… The activated carbon thus obtained has a smaller amount of basic functional groups remaining on the surface… The obtained activated carbon has a large specific surface area and has appropriate pores… From this, the activated carbon disclosed here can be suitably used as a positive electrode material of a hybrid capacitor (typically a lithium ion capacitor)”).
Claim 4
Sun with Kume teaches the method of claim 2, wherein the inert gas comprises nitrogen, argon or helium (Kume “an inert gas such as nitrogen (N2) or argon (Ar)”); and
wherein the reducing gas comprises hydrogen, ammonia, carbon monoxide, forming gas or syngas (Kume “As the reducing gas… hydrogen gas or a mixed gas containing hydrogen gas or ammonia gas”).
Claim 5
Sun with Kume teaches the method of claim 2, wherein the sweeping gas comprises between about 80% and about 98% of the inert gas and about 2% to about 20% of the reducing gas (Kume “the reducing gas concentration is 1% by volume or more, for example, 1% to 10% by volume (preferably 1% to 5% by volume) is preferred”).
Claim 6
Sun with Kume teaches the method of claim 2, wherein the elevated temperature is between about 750° C. and about 950° C (Kume “the temperature in the heat treatment step is generally appropriately 600° C to 1000° C, preferably 650 °C to 900 °C, and particularly preferably 700 °C to 800 °C”).
Claim 12
Sun with Kume teaches method of claim 2, comprising drying the activated carbon mixture prior to the step of exposing the activated carbon mixture to the sweeping gas or
comprising micronizing the activated carbon prior to the step of exposing the activated carbon mixture to the sweeping gas (Kume “precursor preparation step (S10) for preparing an activated carbon precursor…. the primary pulverization step (S11) in which the precursor is pulverized so that the average particle size is 80 μm to 120 μm, the activation step (S12) in which the activated carbon precursor is activated to obtain activated carbon”).
Claim 14
Sun with Kume teaches a composition made by the method of claim 2 (Sun and Kume: Abstract).
Claim 15
Sun with Kume teaches the method of claim 2,
wherein the electro-stabilizing agent comprises a conductive metal (Sun: copper),
wherein the electro-stabilizing agent comprises a transition metal, or
wherein the electro-stabilizing agent comprises Sc, Ti, V, Cr, Mn, Co, Ni, Cu, Zn, Y, Zr, Nb, Mo, Tc, Ru, Rh, Pb, Ag, La, Hf, Ta, W, Re, Os, Ir, Pt, Au, or Ac (Sun: copper).
Claim 18
Sun with Kume teaches the method of claim 2,
wherein the electro-stabilizing agent comprises copper (Sun: copper) or
wherein the wettability enhancing agent comprises aluminum (Sun: alumina).
Claim 20
Sun with Kume teaches the method of claim 2,
wherein the electro-stabilizing agent comprises copper (Sun: copper) and
wherein the wettability enhancing agent comprises aluminum (Sun: alumina).
Claim 21
Sun with Kume teaches the composition or method of claim 2, wherein:
the wettability enhancing agent comprises alumina or activated alumina (γ-Al2O3)(Sun: alumina);
the wettability enhancing agent comprises a compound that provides enhanced interactions between polar and non-polar substances; or
the electro-stabilizing agent and the wettability enhancing agent are non-combustible (Sun: copper and alumina).
Claim 23
Sun with Kume teaches the method of claim 2, wherein:
the electro-stabilizing agent is present in the composition in an amount of about 0.5% to about 4.0% by weight based on the elemental content of the electro-stabilizing agent (Sun: “the content of Cu is 1% ~ 30%, preferably 5% ~ 20%”), optionally about 1% to about 3.5% by weight based on the elemental content of the electro-stabilizing agent;
the wettability enhancing agent is present in the composition in an amount of about 0.15% to about 1.5% by weight based on the elemental content of the wettability enhancing agent (Sun: “the content of auxiliary agent is 1% to 10%, preferably 3% to 8%”), optionally about 0.45% to about 1.0% by weight based on the elemental content of the wettability enhancing agent;
the activated carbon is produced from lignin,
wherein the electro-stabilizing agent is present in an amount of between about 2.75% and 3.25% by weight, and
wherein the wettability enhancing agent is present in an amount of between about 0.50% and 1.25% by weight; or
the activated carbon is produced from coconut husk (Kume: “coconut shells”),
wherein the electro-stabilizing agent is present in an amount of between about 2.75% and 3.25% by weight (Sun: “the content of Cu is 1% ~ 30%, preferably 5% ~ 20%”), and
wherein the wettability enhancing agent is present in an amount of between about 0.25% and 1.0% by weight (Sun: “the content of auxiliary agent is 1% to 10%, preferably 3% to 8%”).
Claim 28
Sun and Kume teaches the composition produced by the method of claim 2, wherein:
the activated carbon is produced from lignin or a high lignin feedstock and has a BET surface area of at least 2500 m2/g;
the activated carbon has a pore volume of at least 1 cc/g which is predominantly micro-pores;
the activated carbon is produced from lignin or a high lignin feedstock and has a mean particle size of less than about 15 μm without micronization, or less than about 7 μm with micronization (Kume: “plant-based carbonaceous materials include charcoal, coconut shells, sawdust, wood chips, and grass charcoal”; “pulverizing the activated carbon so that the average particle diameter is 1 μm to 5 μm”); and/or
the activated carbon has a bulk density of at least about 0.25 g/cc.
Claim 29
Sun with Kume teaches an activated carbon made by the method of claim 2 (Sun, Kume: Abstract).
Claim 30
Sun with Kume teaches an electrode comprising a composition made by the method of claim 2 (Sun: “can be used as… as electrode material”; Kume: “activated carbon used for an electrode material”).
Claim 31
Sun with Kume teaches a supercapacitor or battery comprising an electrode as defined in claim 30 (Sun: “can be used as… as electrode material, it can be used for super capacitor”; Kume: “electric double layer”), optionally wherein:
the battery is a lithium-sulphur battery and the electrode comprises activated carbon comprising the electro-stabilizing agent at a concentration in the range of about 0.5% to about 3.5% by weight, and/or wherein the electrode comprises activated carbon comprising the wettability enhancing agent at a concentration in the range of about 0.1% to about 0.2% by weight;
or the supercapacitor comprises an electrode that comprises activated carbon comprising the electro-stabilizing agent at a concentration in the range of about 1% to about 3.5% by weight, and/or wherein the electrode comprises activated carbon comprising the wettability enhancing agent at a concentration in the range of about 0.45% to about 1.0% by weight.
Claim 34
Sun with Kume teaches a building or modular building component containing an energy storage system comprising a supercapacitor or battery comprising an electrode as defined in claim 30 (Sun: “can be used as… as electrode material, it can be used for super capacitor”; Kume: “electric double layer”; see also MPEP 2111.II “Preamble statements reciting purpose or intended use”; see also MPEP 2144.I: Manner of Operating the Device Does Not Differentiate Apparatus Claim from the Prior Art”).
Claim 35
Sun with Kume teaches a building or modular building component containing an energy storage system comprising an activated carbon as defined in claim 29 (Sun: “can be used as… as electrode material, it can be used for super capacitor”; Kume: “electric double layer”; see also MPEP 2111.II “Preamble statements reciting purpose or intended use”; see also MPEP 2144.I: Manner of Operating the Device Does Not Differentiate Apparatus Claim from the Prior Art”).
Allowable Subject Matter
Claim 7 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. See also US Application 18/276,694 claim 11.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN MILAKOVICH whose telephone number is (571)270-3087. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Dole can be reached at (571) 272-2229. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN MILAKOVICH/Primary Examiner, Art Unit 2848
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