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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 8-14 and 16, 18-20 are rejected under 35 U.S.C. 103 as obvious over Wang et al (CN111725524A) (for applicant’s convenience, Machine translation has been used hereof for citations) in view of Wu et al. (CN108630953 A) (for applicant’s convenience, Machine translation has been used hereof for citations).
Wang et al. teaches a method of producing a carbon support comprising activating a conductive carbon carrier with an acid solution, then mixing the carbon carrier with a nitrogen containing compound, heating treating at 500 -1000 ºC to obtain a nitrogen doped carbon support (claim 2, para. [0011], [0047]-[0049], example 1-8), wherein nitrogen compound preferably being urea or ammonia (para. [0050]), specifically urea (example 5-8).
Since Wang et al already teaches same or substantially the same method of mixing carbon with nitrogen containing organic compound, then heat treated, therefore, same or substantially the same carbon support interior being doped with nitrogen as that of instantly claimed would be expected.
Regarding claim 8, Wang et al. does not expressly teach the carbon support doped nitrogen comprising pyridine and pyrrole, or a content ratio of pyridinic N/pyrrolic N being 0.5 to 1.3.
Wu further teaches nitrogen can be bonded onto carbon support via mixing carbon precursor and organic nitrogen material wherein nitrogen presented as pyridine and pyrrole, wherein pyridine being 26% and pyrrole being 26%, i.e. a content ratio of pyridinic N/pyrrolic N being 1 (para. [0100], [0105], [0122]).
It would have been obvious for one of ordinary skill in the art to adopt nitrogen having a content ratio of pyridinic N/pyrrolic N as shown by Wu to modify the nitrogen doped carbon support of Wang et al. because by doing so can help increasing the pyridine content thus help improving the obtained electrocatalyst performance as suggested by Wu (para. [0099]). Furthermore, adopting such well-known content ratio of pyridinic N/pyrrolic N in nitrogen modified carbon support thus help improving nitrogen modified carbon support for intended use as electrode catalyst would have predictable results (See MPEP §2143 KSR).
Regarding claim 9, Wu et al. further teaches pyridinic N content being preferably 30-50%, graphitic nitrogen content being from 40-60% (para. [0105]). It is readily apparent that when pyridinic N content being 50%, while graphitic nitrogen content being 40%, Wu et al. disclosed pyridinic N is higher than graphitic nitrogen content.
Regarding claim 10, 13 and 16, Wang et al already teaches pretreating the carbon support with acid, specifically using specific mixed (H2SO4/ HNO3) solution treating carbon support and acid treatment for 1 to 12 hours (para. [0064]).
Regarding claim 11, as for the claimed weight ratio of the conductive carbon support to the acid solution being about 1:40 to 50, Wang et al. further teaches using specific mixed (H2SO4/ HNO3) solution treating 200 mg conductive carbon support (example 1-8), wherein a weight ratio between conductive carbon support to the acid solution apparently existed. It would have been obvious for one of ordinary skill in the art to adopt a same conductive carbon to the acid solution weight ratio as that of instantly claimed via routine experimentation (see MPEP §2144. 05 II) for obtaining an activated conductive carbon support with desired increased functional group and surface defects as suggested by Wang et al. (para. [0049]).
Regarding claim 12, as for the claimed pretreatment being performed at temperature ranging from about 130 ºC to about 150 ºC for one to two hours, Wang et al. further teaches acid treatment under temperature of 50 to 80 ºC for 1 to 12 hours (para. [0064]). It would have been obvious for one of ordinary skill in the art to adopt a same heating temperature as that of instantly claimed via routine experimentation (see MPEP§ 2144. 05 II) for obtaining carbon support with desired increased functional group and surface defects as suggested by Wang et al. (para. [0049]) in a shorter time.
Regarding claim 14, Wang et al. further teaches the mass ratio of nitrogen in the nitrogen-doped carbon carrier is 1% to 30%, wherein such teachings suggesting overlapping atomic% nitrogen as that of instantly claimed thus renders a prima facie case of obviousness (See MPEP §2144. 05 I).
Regarding claim 18-19, Wang et al already teaches such limitations as discussed above.
Regarding claim 20, Wang et al does not expressly teach washing and drying after heating the admixture.
However, Wang et al. already teaches forming an admixture comprising organic nitrogen containing material and conductive carbon carrier for heat treating. Apparently, there would have remaining unreacted organic nitrogen or conductive carbon carrier, and/or undesired byproduct, it would have been obvious for one of ordinary skill in the art to adopt washing to remove such unreacted raw materials and undesired byproduct after heating the admixture, then drying to obtain a desired carbon support material.
Claim 17 is rejected under 35 U.S.C. 103 as obvious over Wang et al (CN111725524A) (for applicant’s convenience, Machine translation has been used hereof for citations) in view of Wu et al. (CN108630953 A) (for applicant’s convenience, Machine translation has been used hereof for citations) as applied above, and further in view of Kim (US2017/0005342).
Wang et al. in view of Wu has been described as above, wherein Wang et al. already teaches preparing the admixture via physically mixing (e.g. example 1-8).
Regarding claim 17, Wang et al does not expressly teach a weight ratio of the pretreated conductive carbon support to the organic material containing N being about 1:5 to 10.
Kim teaches a method of producing a carbon support for fuel cell comprising mixing a conductive carbon support with a nitrogen-containing organic material, annealing (i.e., heat-treating) the mixture (claim 1, 7-8, para. [0043], [0045], [0048]- [0050], [0053], [0055], [0057], example 1). Kim specifically discloses conductive carbon support and nitrogen containing material weight ratio being 1:1 (example 1). Kim also broadly discloses the conductive carbon support is mixed with the nitrogen-containing organic material in a weight ratio of 1:0.5-3, preferably 1:1-2 (para. [0046]).
It is noted that Wang et al. already teaches pretreating the conductive carbon support, then mixing with the nitrogen containing organic material for obtaining nitrogen dopant onto carbon support. It would have been obvious for one of ordinary skill in the art to adopt such well-known conductive carbon support to nitrogen-containing organic material weight ratio as shown by Kim to modify the admixing of pretreated carbon with nitrogen containing compound of Wang et al. in view of Wu because by doing so can help obtaining a carbon support with desired effects and electrical conductivity as suggested by Kim (para. [0046]). It would have been obvious for one of ordinary skill in the art to adopt a same weight ratio of pretreated carbon support to nitrogen containing organic material as that of instantly claimed via routine optimization (MPEP §2144. 05 II) for help obtaining a carbon support with desired effect and electrical conductivity as suggested by Kim (para. [0046]).
Claim 20 is rejected under 35 U.S.C. 103 as obvious over Wang et al (CN111725524A) (for applicant’s convenience, Machine translation has been used hereof for citations) in view of Wu et al. (CN108630953 A) (for applicant’s convenience, Machine translation has been used hereof for citations) as applied above, and further in view of Arihara et al (US2018/0248200).
Regarding claim 20, in arguendo about Wang et al in view of Wu not expressly teach washing and drying after heating the admixture.
However, Wang et al. already teaches forming an admixture comprising organic nitrogen containing material and conductive carbon carrier for heat treating.
Arihara et al. further teaches washing and drying the carbon support (para. [0107], [00118]) under temperature preferably 20 to 80 ºC for (preferably) 3 to 48 hours.
It would have been obvious for one of ordinary skill in the art to adopt such well-known washing and drying under such temperature and time as shown by Arihara et al. to modify the carbon support producing process of Wang et al. in view of Wu because adopting such well-known washing and drying under such temperature can help remove undesired impurities thus obtaining needed dried final carbon support product (See also MPEP §2143 KSR rationale C, D).
Claim 8 and 15 are rejected under 35 U.S.C. 103 as obvious over Wang et al (CN111725524A) (for applicant’s convenience, Machine translation has been used hereof for citations) in view of Livingston (CN107922193) (for applicant’s convenience, Machine translation has been used hereof for citations).
Wang has been described as above wherein Wang already teaches a carbon support comprising doped nitrogen.
Regarding claim 8, Wang et al. does not expressly teach the nitrogen comprising pyridine and pyrrole, or a content ratio of pyridinic N/pyrrolic N being 0.5 to 1.3.
Livingston teaches carbon film can contain 0.05 atom%-1.5 atom% of pyridine nitrogen atoms and/or 0.02 atom%-1.2 atom% of pyrrole nitrogen atoms and/or 0.5 atom %-2.5 atom% of quaternary nitrogen atom (noted graphitic nitrogen is a type of quaternary N) (page 5 lines 15-19), wherein such carbon film can be used in an electrode of fuel cell (page 3 the para. right before “THE INVENTION”). Livingston disclosed carbon film containing overlapping amount of pyridinic N and overlapping amount of pyrrolic N respectively as those of instantly claimed, correspondingly overlapping content ratio of pyridine nitrogen/pyrrole nitrogen as that of instantly claimed thus renders a prima facie case of obviousness (See MPEP §2144. 05 I).
It would have been obvious for one of ordinary skill in the art to adopt nitrogen having a content ratio of pyridinic N/pyrrolic N as shown by Livingston to modify the nitrogen doped carbon support of Wang et al. because adopting such well-known content ratio of pyridinic N/pyrrolic N in nitrogen modified carbon support to modify a well-known nitrogen doped carbon support for improvement would have predictable results (See MPEP §2143 KSR).
Regarding claim 15, Livingston already teaches amount of pyridinic N is 35% or more and amount of pyrrolic N is 35% or more in the nitrogen.
It would have been obvious for one of ordinary skill in the art to adopt such amount of pyridine and pyrrole in the carbon film as shown by Livingston to modify the carbon support Wang et al i because adopting such well-known amount of pyridinic N and such well-known amount of pyrrolic N to modify a well-known process of producing nitrogen doped carbon supported for improvement would have predictable results (see MPEP §2143 KSR).
Double Patenting
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.
Claim 8-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of U.S. Patent No.12206116. Although the claims at issue are not identical, they are not patentably distinct from each other because US’116 already teaches a same or substantially the same method of pretreating the carbon support, admixing the carbon support with organic material and then heating to obtain a carbon support having nitrogen inside the carbon, wherein the N being pyridinic N, pyrrolic N and graphitic N. As for weight ratio of the pretreated conductive carbon support to the organic material containing N being about 1:5 to 10 recited in claim 17, please referring to Kim reference for teachings and similar motivations for such modification as set forth in the prior art rejections. As for the claimed pyridinic N and pyrrolic N amount in claim 15, please referring to Livingston reference for teachings and similar motivations for such modification as set forth in the prior art rejections.
Response to Arguments
Applicant's amendments filed on 05/04/2026 have been acknowledged thus previous 112 rejections have been withdrawn.
Applicant's arguments filed on 05/04/2026 have been fully considered but they are not persuasive. In response to applicant’s arguments about Wu does not correlation between pyridinic N and pyrrolic N (Wu example 4), it is noted that non-preferred and alternative embodiments constitute prior art MPEP 2123, and a reference is good not only for what it teaches but also for what one of ordinary skill might reasonably infer from the teachings. In this case, Wu’s teachings not limited by its example 4, while in other embodiment (example 1) Wu expressly teaches nitrogen comprising pyridine being 26% and pyrrole being 26%, i.e. a content ratio of pyridinic N/pyrrolic N being 1 (para. [0100], [0105], [0122]). In response to applicant’s arguments about Wu explicitly teaches pyrrolic N not being a doping form that plays a major role in improving catalytic performance, it is noted that Wang already teaches nitrogen including all nitrogen form, e.g. pyridinic, pyrrolic etc. can be doped in the carbon support. The instant claims do not recite pyrrolic N having any catalytic performance as applicant alleged either, but only a content ratio between pyridinic N/pyrrolic N. In response to applicant’s arguments about a content ratio of pyridinic N/pyrrolic N from 0.5 to 1.5 providing unexpected results (example 1 v.s. comparative example 2), the examiner would like to remind the applicant that evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (See MPEP § 716.02(d) - § 716.02(e)). In the instant case, comparative example 2 carbon support not being acid pretreated as compared to example 1 disclosed acid pretreatment and Wang teaches acid pretreatment as that of instantly claimed. Therefore, one of ordinary skill in the at is uncertain such alleged improved results are due to lack of acid pretreatment or alleged a content ratio between pyridinic N/pyrrolic N. Secondly, even if assuming such example showing improved results, example 1 using a specific content ratio between pyridinic N/pyrrolic N, i.e., such content ratio being 1.04 to compare a comparative example 2 content ratio between pyridinic N/pyrrolic N being 1.33, it is not readily apparent to one of ordinary skill in the art that such alleged improved results would occur over the entire claimed range, i.e. a content ratio of pyridinic N/pyrrolic N from 0.5 to 1.5. Hence, such arguments are not found convincing.
As for the double patenting rejections, it is noted that applicant does not specifically address how US’116 claimed method being patentable distinct as compared to instantly claimed invention, therefore, similar reasons as set forth for sustaining such double patenting rejections.
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 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 JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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/JUN LI/ Primary Examiner, Art Unit 1732
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