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 .
Election/Restrictions
Applicant’s election of group II invention (claims 8-20) in the reply filed on 11/13/2025 is acknowledged. The traversal is on the ground(s) that multiple groups can be searched and examined without undue burden. This is not found persuasive because different group of invention directs to patentable distinct inventions, wherein different class/subclass, different search queries will be needed for different inventions. Furthermore, prior art applicable to one invention not necessarily applicable to a patent distinct invention. Furthermore, different patentable distinct inventions would require considerable amount of time to considered as compared to one invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/13/2025.
Claim Interpretation
Claim 8 recites “a content ratio between the pyridinic N and the pyrrolic N ranges from 0.50 to 1.30”, for broadest and reasonable interpretation, such content ratio is interpreted as a content ratio of the pyridinic N/the pyrrolic N as well as a content ratio of the pyrrolic N/ the pyridinic N.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this case, claim 9 recites “N doped in the carbon support comprising pyridinic, pyrrolic N and graphitic N, wherein amount of the pyridinic N or the pyrrolic N is greater than the graphitic N”, such limitation is not described in the original disclosure at all. Rather, instant specification only discloses “N doped on a final carbon may being present in form of pyridine, pyrrole and/or graphite” (page 9 lines 7-9), but nowhere in specification describes “amount of the pyridinic N or the pyrrolic N is greater than the graphitic N” as that of instantly claimed at all. Furthermore, the specification only shows pyridinic content being 46.6%, while pyrrolic content being 44.8% (table 1) but does not show any amount or content of graphitic N at all.
Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this case, claim 14recites “amount of nitrogen doped in the carbon support is 1 at% to 3 at%”, but such limitation is not described in the original disclosure, rather instant specification only describes nitrogen doped in carbon support being 2.4 at% (table 1).
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this case, claim 15 recites “amount of pyridinic N is 35% or more and an amount of pyrrolic N is 35% or more”, such limitation is not supported in its original (parent application) disclosure) because amount of pyridinic N is 35% or more encompasses any amount being 35% or more of pyridinic N, similarly, an amount of pyrrolic N is 35% or more encompasses any amount being 35% or more of pyrrolic N. However, the original disclosure only discloses pyridinic content being 46.6%, while pyrrolic content being 44.8% (table 1).
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.
Claim 11-13 and 16 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. In this case, claim 11-13 respectively recites “in the pretreating”, but there is insufficient antecedent basis for this limitation in such claim because their parent claim 8 does not require any pretreating at all. Similarly, claim 16 recites “the acid solutions” but there is insufficient antecedent basis for this limitation in the claim because its parent claim 8 does not require any acid solutions.
Claim 14 and 15 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. In this case, claim 14 recites “amount of nitrogen doped in the carbon support is 1 at% to 3 at%”, but one of ordinary skill in the art is uncertain such recited 1 at% to 3 at% is based on what, i.e. the total content of carbon and nitrogen or based on the carbon support amount? Similarly, claim 15 recites “amount of pyridinic N is 35% or more and an amount of pyrrolic N is 35% or more”, but one of ordinary skill is uncertain such recited “amount of pyridinic N is 35% or more”, “an amount of pyrrolic N is 35% or more” is based on what content, such as the carbon support content or nitrogen content? Therefore, such limitations render such claims indefiniteness.
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 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 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 between pyridine and pyrrole 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% (para. [0100], [0105], [0122]).
It would have been obvious for one of ordinary skill in the art to adopt nitrogen having pyridine and pyrrole ratio being 1:1 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 ratio of pyridine and pyrrole 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 15 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 Livingston (CN107922193) (for applicant’s convenience, Machine translation has been used hereof for citations).
Regarding claim 15, Wang et al in view of Wu does not expressly teach the amount of pyridinic N is 35% or more and amount of pyrrolic N is 35% or more.
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 o pyrrolic N respectively as those of instantly claimed (See MPEP §2144. 05 I).
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 in view of Wu 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).
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).
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 20, please referring to Livingston reference for teachings and similar motivations for such modification as set forth in the prior art rejections.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732