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 Amendment
Upon entry of the amendment filed on 30 September 2025, Claim(s) 1 is/are amended. The currently pending claims are Claims 1-5.
With respect to the provisional ODP rejection, Applicants state that the rejection be held in abeyance. It is noted that the provisional ODP is maintained until such time Applicants submit a timely filed terminal disclaimer.
Based on applicants’ remarks and amendments (e.g. the specific additive), the 112 rejections are withdrawn. However, they are not found persuasive regarding the 103 rejections and the rejections are maintained.
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.
Claims 1-3 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12320016. Although the claims at issue are not identical, they are not patentably distinct from each other because the selection of the claimed components would have been well within the purview of a skilled artisan since the US patent discloses similar method steps to achieve similar carbon nanotubes. It is noted that the structural variables are expected since the US patent discloses the same starting materials and a similar synthetic route.
Claim Rejections - 35 USC § 103
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(s) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Licht (US-20200032404-A1, cited in the IDS).
Claims 1-4: Licht discloses a process of making various carbon nanomaterials such as carbon nanotubes by heating a molten carbonate salt electrolyte in an electrochemical cell with a nickel anode and a cathode, introducing CO2 as a carbon feedstock, applying a current and collecting the carbon allotrope at the anode (abs, Figs 1, 2 and 8 with accompanying text, ¶9-16, 39-51 and examples). Further, Licht discloses (a) various types of anode and cathode components such as the pure nickel, copper, iridium, composites and/or alloys of the metals at different loading levels and (b) the selection and optimization of the experimental variables (e.g. types and amounts of electrolytes, temperatures, current density, types of anodes and cathodes) to achieve the desired shapes (e.g. nanotubes), diameters and lengths (e.g. 1-100 microns ). See at least Figs 1-4, 8 with accompanying text, ¶9-16, 24, 39-51, 53-57, 68, examples and claims 11-14, 22, 23 and 25.
The Licht reference discloses the claimed invention with the feature of various anodes, cathodes, electrolytes and structural parameters but does not disclose the method with the claimed elements and ranges with enough specificity to anticipate the claimed invention. Nevertheless, given that the Licht reference discloses each of the claimed elements and similar ranges, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components and optimize the experimental variables since the Licht reference teaches each one and is motivated to optimize the experimental to achieve the desired amounts, sizes and shapes (see at least Fig 8). Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor - see MPEP 2143. Here, the Licht reference discloses each of the claimed components with similar loading ranges and is motivated to select and optimize the components to obtain carbon nanomaterials with the desired allotrope and structural features and there is no evidence nor teaching that the selection and/or optimization of the claimed components would be repugnant to a skilled artisan. It is noted that the percentage level is met since Licht discloses collecting specific carbon allotropes.
Claim 5: Licht discloses various current densities such as 0.1 A/cm2 (¶65).
Response to Arguments
Applicant’s arguments, see pg. 4, filed 30 September 2025, with respect to the 112 rejections have been fully considered and are persuasive. The 112 rejections have been withdrawn.
Applicant's arguments filed 30 September 2025 have been fully considered but they are not persuasive.
Applicant asks that the rejection be held in abeyance (pg. 3 and 4).
It is noted that the provisional ODP is maintained until such time Applicants submit a timely filed terminal disclaimer.
Applicant argues that Licht does not provide guidance nor would it be obvious to arrive at the loading amount of 0.05-2 wt. % of the additive via a process optimization (pg. 6 and 7).
The examiner respectfully disagrees and notes that Licht discloses (a) various types of anode and cathode components such as the pure nickel, copper, iridium, composites and/or alloys of the metals at different loading levels and (b) the selection and optimization of the experimental variables (e.g. types and amounts of electrolytes, temperatures, current density, types of anodes and cathodes) to achieve the desired shapes (e.g. nanotubes), diameters and lengths (e.g. 1-100 microns ). See at least Figs 1-4, 8 with accompanying text, ¶9-16, 24, 39-51, 53-57, 68, examples and claims 11-14, 22, 23 and 25. In particular, Licht discloses various loading amounts with specific embodiments at 0.05 and 1 wt. % (¶39-46 and examples). Given that the Licht reference discloses each of the claimed elements and similar ranges, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components and optimize the experimental variables since the Licht reference teaches each one and is motivated to optimize the experimental to achieve the desired amounts, sizes and shapes (see at least Fig 8). Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor - see MPEP 2143. Here, the Licht reference discloses each of the claimed components with similar loading ranges and is motivated to select and optimize the components to obtain carbon nanomaterials with the desired allotrope and structural features and there is no evidence nor teaching that the selection and/or optimization of the claimed components would be repugnant to a skilled artisan.
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.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764