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
Applicant’s amendments, filed 1/15/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendments to claims 1 and 2, cancellation of claim 22. Claims 1-2, 4-7, 9-11, 13-16, 19-21 are pending. In view of the amendment to the claims, the examiner has withdrawn the 35 USC 112(a) and 112(b) rejections of record.
Response to Arguments
Applicant’s arguments have been considered but have been deemed unpersuasive as they are directed to newly added claim requirements that are specifically addressed hereinafter.
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.
Claims 13-14 and 21 are 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.
Claims 13-14 requires the scaffold comprises a microlattice template; however, claim 1 from which claim 13 depends requires the scaffold is created using VLS process. A full and fair reading of the specification illustrates that the instant claims 13-14 is an alternative embodiment of the VLS process and the examiner cannot locate any disclosure that would support creating the scaffold by using VLS in combination with the scaffold having a micro lattice template formed by the claimed process (compare specification paragraph 0015 “in one embodiment, a nanowire-templated . . . by . . . vapor-liquid solid (VLS) process”) and 0018, stating “in an alternative embodiment the scaffold 202 comprises a microlattic template”). Here, there is insufficient disclosure that these two alternatives are used together or are even capable of being used together.
Claim 21 requires the electronic property of the scaffold is altered utilizing the p-type substrate or PH3; however, the examiner cannot locate support for such a requirement.
If the applicant can provide explicit or implicit support for any of these limitations, the examiner will withdraw those rejections.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20070212538 A1 by Niu et al.
Niu discloses an interconnected SiNW grown on a highly doped Si substrate to form a hydrid nanomaterial/three dimensional scaffold that includes a plurality of Si NW forming from a portion of the substrate (VLS growth) and depositing a graphene coating (a single or few layers) onto the scaffold (0180-0181, see “semiconductor wafer platform (e.g., Si) using the nanowires, bird's nest structures and interconnected nanowire networks described throughout”, “a highly doped silicon wafer”, “For example, metallic catalyst nanoparticles, e.g., Au nanoparticles, can be deposited in the channels 2204, and then Si nanowires can be grown by using a VLS growth process”, “Further deposition of carbon on the surface of the nanowires results in the growth of graphene layers or sheets, as described herein”). P-type doping is specifically taught at paragraph 100. The product as claimed is thus anticipated by the prior product even if the product is made by a slightly different process.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1, 4-7, 11, 15-16, 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niu taken with Bo (Nanoscale, 2013, 5, 5180-5204, as supplied by applicant).
Claim 1: Niu discloses a method of fabricating a three-dimensional graphene hybrid nanomaterial comprising: creating a scaffold having a three-dimensional surface in a vapor-liquid-solid process, wherein the scaffold comprises a plurality of interconnected wires with a sub-micron diameter grown from a surface of a substrate, wherein the plurality of interconnected wires comprises silicon (0180-0181)
Niu discloses during the vapor-liquid-solid process, providing a substrate comprising p-type silicon (180, “a highly doped silicon wafer” and p-type doping taught at 100) or at the very least, as Niu discloses the highly doped silicon wafer and also discloses that known doping include p-type, it would have been obvious to have utilized a p-type doped silicon wafer.
Niu discloses growing graphene on the scaffold comprises single- to few-layer graphene nanostructures grown vertically out-of-plane from a surface of the scaffold with edges terminating in single- to few-layer graphene sheets (0122, 0181) and discloses using known methods for forming of graphene; however, fails to disclose the claimed PECVD method. However, Bo, in the art of depositing graphene onto substrate discloses method of fabricating a three-dimensional fuzzy graphene hybrid nanomaterial (Page 5196 Col 2) Two methods of producing graphene on wires (as seen in figures 19A-C, the graphene being formed appears to be fuzzy. The process for making them comprises: providing a scaffold having a three-dimensional surface (Figures 19A- 3D surface where the graphene is growing outwards as opposed to the surface being planar); and growing fuzzy graphene on the scaffold in a plasma-enhanced chemical vapor deposition process (Figures 18 A-D, optical image of the stainless steel wire (a 3D surface) after 3 min dynamic mode VG synthesis in a modified normal glow PECVD (Plasma-Enhanced Chemical Vapor Deposition) process wherein the fuzzy graphene is grown out-of-plane from a surface of the scaffold (Figures 18A-D) It can be seen here that the fuzzy graphene is growing outward from the wire, the name of the grown graphene even being vertically-oriented graphene.
Bo teaches that if the fuzzy graphene growth duration is too long, a thick layer of amorphous carbon can form, which (since it is thicker), will affect the specific surface area of the fuzzy graphene structure (i.e. duration will affect the structural feature of the graphene), since larger plates increase the specific surface area of the structure (page 5200). Bo discloses depositing graphene onto Silicon (Figure 6A, Top view of VG nanosheets deposited on a Si substrate...).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Niu to deposit the graphene onto the Si via PECVD as suggested and disclosed by Bo, as Niu discloses using various and known method for contacting the nanowires for forming graphene layers thereon and Bo discloses a known method for growing graphene on nanowire substrates includes the PECVD process and predictable results would follow because Bo discloses PECVD of graphene onto silicon will be expected to provide graphene nanosheet on the silicon substrate.
Claim 4: Niu discloses graphene with less than 100 sheets (0122) and thus overlaps the makes obvious the value as claimed. Additionally Bo further teaches wherein the fuzzy graphene is grown in a single layer surface-bound single layer of graphene, and the orientation could be either horizontal or vertical (Page 5181 Col 1) and thus using a single layer would have been obvious in view of Bo.
Claim 5: Niu discloses 2-15 layers (see 0122) and thus meets this requirement. Additionally, Bo further teaches wherein the fuzzy graphene is grown in a plurality of layers (Page 5181 Col 1, For surface-bound stacks of graphene sheets each nanosheet consists of
fewer-layer graphene...)
Claim 6: Bo further teaches wherein the fuzzy graphene on the scaffold comprises:
controlling the flow ratio of at least one of CH4 and H2 (Figure 12, deposits obtained from a TE-MW system at different H2/CH4 flow rate ratios images of VG grown with an ICP reactor...). As such, using this control would have been obvious in view of Bo to reap the benefits as outlined therein.
Claim 7: Niu with Bo does not disclose wherein growing fuzzy graphene on the scaffold comprises adjusting the partial pressure of CH4. However, Bo discloses testing different pressures for growing the graphene (Figures 15A-D, height of the grown VG as a function of the total pressure during the formation of VG grown by pressures of 13.3, 53.3, and 80.0 Pa...) it would have been obvious to one skilled in the art to, through routine experimentation, optimize the growth of graphene by varying the partial pressure of the components. MPEP 2144.05 (II) states: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. '[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
Claim 11: Niu discloses what can reasonably be considered a mesh, interconnected nanowires, see Figure 9A and accompanying text. See also discussion above regarding interconnected nanowires, see abstract stating “ nanowire structures and interconnected nanowire networks comprising such structures” which can reasonably be considered a mesh as claimed.
Claim 15-16: Niu with Bo discloses an interconnected SiNW grown on a highly doped Si substrate to form a hybrid nanomaterial/three dimensional scaffold that includes a plurality of Si NW forming from a portion of the substrate (VLS growth) and depositing a graphene coating (a single or few layers) onto the scaffold (0180-0181, see “semiconductor wafer platform (e.g., Si) using the nanowires, bird's nest structures and interconnected nanowire networks described throughout”, “a highly doped silicon wafer”, “For example, metallic catalyst nanoparticles, e.g., Au nanoparticles, can be deposited in the channels 2204, and then Si nanowires can be grown by using a VLS growth process”, “Further deposition of carbon on the surface of the nanowires results in the growth of graphene layers or sheets, as described herein”). P-type doping is specifically taught at paragraph 100. The product as claimed is thus anticipated by the prior product even if the product is made by a slightly different process.
Claim 19: Bo teaches that if the fuzzy graphene growth duration is too long, a thick layer of amorphous carbon can form, which (since it is thicker), will affect the specific surface area of the fuzzy graphene structure, since larger plates increase the specific surface area of the structure (page 5200).
Claim 20: Bo discloses the temperature, flow rate of CH4 and growth pressure are adjusted and each is a result effective variable, directly affecting the graphene synthesis (see Table 1, section 4, section 5, section 3.5 gas proportion). As such it would have been obvious to one skilled in the art to, through routine experimentation, optimize the growth of graphene by varying the partial pressure of the components, temperature, and pressure. MPEP 2144.05 (II) states: "Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. '[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
Claim 21: Niu discloses a substrate comprising p-type silicon (180, “a highly doped silicon wafer” and p-type doping taught at 100) or at the very least, as Niu discloses the highly doped silicon wafer and also discloses that known doping include p-type, it would have been obvious to have utilized a p-type doped silicon wafer. While the reference fails to disclose the electronic properties are altered by the presence of the p-type doping, the examiner notes that the instant claims and the prior art grow a SiNW from a doped silicon wafer and therefore must necessarily have the same results as the instant claims, and therefore by creating the scaffold by VLS from the highly doped substrate, it would necessarily alter the electronic properties of the scaffold relative to non-doped or lightly doped as instantly claimed. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niu taken with Bo as applied above in view of Lin ("Graphene and its Hybrid Nanostructures for Nanoelectronics and Energy Application" PhD diss., UC Riverside, 2011, as supplied by applicant).
Niu with Bo does not disclose further comprising: increasing the wettability of the three dimensional fuzzy graphene hybrid. However, Lin discloses it is desirable to increase the wettability of graphene (Page 1 para[0002],.Highly concentrated HNO3 is employed to improve the conductivity and surface wettability of graphene layers...).
Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to increase the wettability of the nanomaterial by treating it with HNO3 because it was taught to be a desirable treatment for graphene in the prior art in order to improve wettability and conductivity of graphene.
Claim 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niu with Bo as applied above and in view of Ghaemi (nanoscale research letters 11, no. 1 (2016) pp 506, as supplied by applicant).
Niu with Bo does not explicitly disclose wherein the scaffold comprises a microlattice template. However, as discussed previously, Ghaemi discloses wherein the scaffold comprises a microlattice template (Page 2 para[0002], ...In this work, stainless steel...150 meshes...that comprises of 50 micron diameter fibers was purchased and applied as a substrate to synthesize the graphitic structures... The composition of the SS (stainless steel!) mesh was obtained...). It would have been obvious to one skilled in the art to combine these references and incorporate a microlattice template through routine experimentation because Bo already discloses a lattice like structure for growing graphene (see Bo Figure GE, ...micrograph of...VG nanosheets grown directly on a Cu grid...) and Ghaemi also discloses a method of fabricating three-dimensional fuzzy graphene nanomaterial (Title, Synthesis of...graphene on stainless steel using the CVD method...Figures 1A-C, ...in A, the mesh is neat stainless steel, while in C, the graphene is coated on it, which looks "fuzzy") . providing a scaffold having a three-dimensional surface (Figures 1A-C, the mesh is a 3D surface); and growing fuzzy graphene on the scaffold in a chemical vapor deposition process (Title, ...Synthesis of...graphene on stainless steel using the CVD method) wherein the fuzzy graphene is grown out-of plane from a-surface of the scaffold (Figures 1A-C, ...the graphene being grown is outwards from the mesh, which is a 3D surface (not planar), which means that the graphene is grown out-of-plane). However, since Bo already discloses a lattice-like structure for growing the graphene (see Bo Figure 6E, ... micrograph of...VG nanosheets grown directly on a Cu grid...(it is not specified whether the grid is 3D, nor does it show an image of the grid itself, so it would not be considered a scaffold with a 3D surface), it would have been obvious to one skilled in the art to, through routine experimentation, provide a microlattice template.
Claims 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niu with Bo and Ghaemi in view of US 2015/0190971(hereafter referred to as the ‘971 reference).
Niu with Bo and Ghaemi disclose the method of claim 13, but do not disclose wherein the microlattic template is formed from a process selected from the group consisting of aerosol jet printing, inkjet printing, laser writer, and additive manufacturing.
‘971 teaches that it was known in the art that additive manufacturing can be used to print lattice structures para[0005}, ...Additive manufacturing enables fabrication of products with complex internal lattice structures, which are repeated arrangements of shapes in a grid-like pattern or other pattern of repeated shapes that replace a solid volume...)
Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to use additive manufacturing to form the microlattice template because it was a known technique for doing so that would produce no more than predictable results.
Allowable Subject Matter
Claim 2 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.
The following is a statement of reasons for the indication of allowable subject matter: Niu discloses forming the SiNW using Au catalyzed VLS process (See 0181); however, none of the prior art cited or reviewed by the examiner alone or in combination reasonably discloses or makes obvious the collapsing the Au catalyzed VLS using liquid nitrogen and thereafter annealing mesh with hydrogen as instantly claimed.
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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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/DAVID P TUROCY/ Primary Examiner, Art Unit 1718