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 § 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.
Claims 1-3, 7, 14-16 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (“Enhancing the magnetism of 2D carbide MXene Ti3C2Tx by H2 annealing”, Carbon, 10/12/2019, No. 157, pp. 90-96).
Regarding claim 1-2, 7, 14-16 and 21, Zhang teaches providing a MAX phase material and etching in LiF/HCl at 40C for 96h (see section 2.1) wherein magnetic properties are imparted on the material produced as a result of the etching (abstract). Further it is noted that the product of has an AFM-PM transition temperature as a material quality. As such, it is presumed that the provided product of the process of Zhang is his target product that also has all of his target qualities. As such, any extent of etching performed by Zhang would read upon a target amount for his desired AFM-PM phase transition temperature. Further it is noted that the etching of Zhang would effectively change the AFM-PM phase transition temperature in the same way currently claimed.
Regarding claim 3, the current specification largely revolves around the formation of Ti3C2 derived from etched Ti3AlC2. This is the same process used in Zhang and therefore the material properties of the product produced would be presumed to the same. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
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.
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.
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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (“Enhancing the magnetism of 2D carbide MXene Ti3C2Tx by H2 annealing”, Carbon, 10/12/2019, No. 157, pp. 90-96) as applied to claims 1-3, 7, 14-16 and 21 above and further in view of Chen et al. (“Synthesis and formation mechanism of high-purity Ti3AlC2 powders by microwave sintering”, Applied Ceramic Technology, 2020, No. 17, pp. 778-789).
Regarding claims 4-5, the teachings of Zhang are as shown above. Zhang fails to teach wherein the MAX phase material is microwave processed before treatment. However, Chen teaches that a known method of obtaining high purity MAX phase materials (see Conclusions) like the material of Zhang is to form them using microwave sintering for a given time and at a given power (see section 2.1). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to form the material of Zhang using the microwave sintering method of Chen in order to provide high purity material for further processing according to the methods of Zhang.
Claims 6, 9-12 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (“Enhancing the magnetism of 2D carbide MXene Ti3C2Tx by H2 annealing”, Carbon, 10/12/2019, No. 157, pp. 90-96) as applied to claims 1-3, 7, 14-16 and 21 above and further in view of Shao (“2D Ti3C2Tx MXenes for electrochemical energy storage” HAL Open Science, 11/2020, pp. 1-229).
Regarding claim 6, the teachings of Zhang are as shown above. Zhang fails to teach the use of sonication, although vortexing was employed. However, Shao teaches that delamination of MXenes may further alter the structures of MAX phase materials and improve the formation of MXenes therefrom by incorporating a delaminating step performed via sonication (see section 2.1, p.108). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the sonication technique of Shao into the MXene production method of Zhang in order to better provide delaminated MXene materials as is performed by Shao or as an application of a known technique applied to a known method in the same way.
Regarding claims 9-10, the teachings of Zhang are as shown above. Zhang fails to teach the use of NaF/HCl solution or HF solutions as the MAX phase etchants. However, Shao teaches that NaF/HCl solutions and HF solutions are known to be used as etchants for forming MXenes (see section 3.1.2, p. 42) similar to the LiF/HCl solution also shown to be used by Shao (see section 2.1, p.108) and Zhang (as shown above). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the NaF/HCl or HF solutions of Shao in place of the LiF/HCl solution of Zhang as a simple substitution of one known etchant for the formation of MXenes for another wherein the results of said substitution would be predictable based on the teachings of Shao.
Regarding claims 11-12, Shao further teaches wherein the MXenes are ultracentrifuged at a speed that reads on “about 4000 RPM”. Although it is noted stated that layers are “rolled”, it is also not apparent how the method of Shao could prevent the rolling of the layers as is performed by the
Regarding claim 17, Shao further teaches that the process results in delamination of the product (see section 2.1, p.108).
Regarding claims 18-19, Zhang is largely silent regarding the particular uses of the materials formed. However Shao teaches using the formed MXenes to spin coating films formed from the generated MXenes, which implies to those of ordinary skill in the art the use of a solution of the powder formed (see section 3.1.1, p. 40-41), wherein the product formed inherently has antiferromagnetic properties at selected temperatures. Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the formed products of Zhang in view of Shao in some manner which may be the use shown to be valuable for the specifically manufactured products of Zhang in view of Shao. Further this would be considered the combination of a known MXene formation method and a MXene use method according to known methods described by Shao in order to yield predictable results and products.
Claims 8 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (“Enhancing the magnetism of 2D carbide MXene Ti3C2Tx by H2 annealing”, Carbon, 10/12/2019, No. 157, pp. 90-96) as applied to claims 1-3, 7, 14-16 and 21 above and further in view of Naguib et al. ("Two-Dimensional Nanocrystals Produced by Exfoliation of Ti3AlC2" Advanced Materials, 2011, Vol. 23, pp.4248-4253).
Regarding claim 8, the teachings of Zhang are as shown above. Zhang fails to teach wherein the MAX phase material is milled to nanoscale prior to etching. However, Naguib teaches that it is known to mill MAX phase materials prior to etching treatment in order to obtain nanoscale products (see Experimental Section and Fig. 3) thereby controlling the final size of the products produced. Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to mill the powders of Zhang according to the methods of Naguib in order to control the size of the powders produced by the process of Zhang. ). Naguib is silent as to the size the powder is milled to. However, it is noted that in general the products formed from the milled powder are nanometric in scale (see Fig. 3). As such one of ordinary skill in the art would generally be guided to milling to the general nanometric size. Further those of ordinary skill in the art would readily recognize that the milling of the initial products and the size obtained would directly control the size of the products produced. Therefore in the absence of criticality of the specific range of “nanoscale” it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the milling size of the powder formed of Naguib in order to control the size of the final product produced. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 8, the teachings of Zhang are as shown above. Zhang fails to teach wherein the etching of the MAX phase materials is performed at room temperature. However, Naguib teaches that the etching of MAX phase materials may be performed at room temperature (see Experimental Section). Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to etch the MAX phase materials of Zhang at room temperature as guided by Naguib as a simple substitution of one known MAX phase material etching temperature for another wherein the results of the change would be predictable based on the disclosure of Naguib. Further, Naguib generally shows that temperatures in the range claimed are known to be suitable for the etching of MAX phase materials and therefore obvious to use in MAX phase etching processes employed to yield MXenes.
Response to Arguments
The applicant argues that the prior art fails to effectively pre-acknowledge a target AFM-PM phase transition temperature and then etch a MAX phase material so as to provide said pre-acknowledged target temperature. The examiner acknowledges that the prior art of record does not acknowledge a target AFM-PM phase transition temperature. However, several points should addressed.
First, Zhang provides a known and identified target product. This target has a host of material properties, most of which are not addressed by Zhang. However, lack of acknowledgement of the properties present or concern for them does not cause them to fail to exist.
For example in a less complex example, if a sawmill were to provide wood of varying dimensions and run that wood through a saw it can be expected that the desired dimensions that come out on the other end of the saw will be as expected. This wood would have a moisture content that is a material property of that wood regardless of whether it was acknowledged previously and it would presumably be unchanged from the originally provided moisture content of the wood. However, it must be acknowledged that by the mere existence of wood employed from the beginning, the moisture content was in a range that was suitable and desired by the sawmill. If for example, the wood had such moisture content that was so high that the wood could not hold its shape, this would not be desirable but because the saw mill even creates a product that had their desired outcome even without statement of a desired moisture content, the provided sawn wood product has a moisture content within the acceptable, intended and desired range of that particular manufacturer. It may be that some end user, for example a cabinet maker, may want wood that has a specific moisture content and the wood of the sawmill in question may not be suitable or it may require additional treatment but this does not affect whether or not the sawmill is providing a product with a target moisture content.
The same is true in the current application. Because the prior art product is as intended to be manufactured by the manufacturer, it is implicit that all of the material qualities of that product are within acceptable ranges or tolerances for whatever it is that they intend to do with the product. The prior art in this case may desire a phase transition temperature that encompasses the entire scope of all possible temperatures because this factor is not of significant importance to them. However, it is necessary that whatever the end result of the prior art production is, this product and all of its properties must be regarded as the targeted end result of the production of manufacturing process employed without some explicit statement from the inventor that would indicate that the prior art was unable to achieve its intended goals. Further this concept is supported by case law. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112. Regrading this, it can be stated that merely selecting a material property not acknowledged by the prior art does not make the selection of that property patentable if that property is inherent.
Therefore reasonably the claim limitations are met as follows: 1) the prior art provides a MAX phase material, 2) the prior art determines a target phase transition temperature by determining an intended product of manufacture inherently having some phase transition temperature, wherein said inherently phase transition temperature is an unacknowledged yet targeted by the prior art, wherein 3) the prior art etches at a reaction time and temperature that produces their targeted product wherein all of the etching solution selection, etching time and etching temperature inherently determine the extent of etching in the targeted product wherein 4) the phase transition temperature of the prior art product would be expected to change due to etching in the same manner as the current application because the same material and methods are employed wherein 5) the prior art produces an MXene that is their targeted MXene having all of the material properties considered to be both suitable, intended and targeted by the prior art inventors, at least for their intended purposes.
Further the applicant argues that the etching technique of Zhang is “generic” and therefore could or would not be changed in order to impart tuned control of magnetic properties. However, this is not relevant to what is claimed. It is not a requirement that etch be changed or altered as in for example a first and second step. The applicant is claiming the selection of an etching step that provides a desired outcome wherein the prior art does the same.
Further the applicant seemingly acknowledges that the prior art would inherently have a specifically measurable AFM-PM phase transition temperature. Further logically the AFM-PM phase transition temperature of Zhang would change with etching treatment as takes place in the current application because of the use of the same materials and methodologies. It cannot reasonably be argued that any material property of the targeted outcome of the invention of Zhang was not also targeted, whether stated or not. As described above, case law generally supports the concept that unstated but necessarily present material properties newly discovered and acknowledged by an application do not make that application and its claims allowable over the prior art.
Further the presence of H2 annealing in the invention of Zhang is in no way contrary to or excluded from the currently claimed process. The applicant repeatedly argues that Zhang modifies ferromagnetism using the annealing process but fails to acknowledge that Zhang also teaches the same etching step claimed that would logically also modify AFM-PM phase transition temperature in the same manner claimed.
Further the applicant argues that the current claims (presumably claim 3) are drawn to the changing the AFM-PM transition temperature from 50K to over 300K. This is not exactly what is claimed but the examiner acknowledges the assumed point of the statement. The applicant argues that this it cannot be stated that this is merely an inherent property associated with all etching processes “and is certainly different from an etching process concerned with ferromagnetism”. How? The applicant does not elaborate. Factually the prior art uses the same materials and etches in the same way. The examiner does not have means to test the proposed results and it is not the burden of the Office to show that the same etching process performed on the same material would have a different outcome. The prior art takes the same material and forms an MXene from a MAX phase material by etching. Therefore the burden is on the applicant to at least logically show or argue that the etching process of the prior art would not form the same product given that the Office has at least provided logical reasoning to support an initial assertion that the two processes would provide the same outcome. The applicant argues that the process of Zhang cannot be the same because Zhang didn’t state a desired outcome ahead of time although he followed the same steps on the same starting material.
Further it is noted that the “determination” step described in the claims would reasonably be considered an “abstract idea” or “mental process”. "‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978). Herein the Court is seemingly acknowledging that a mental “determination” step is not a defined concept (abstract) such that it can be stated what action step has been taken so as to patent the process. It is unclear what “determining” implies in the context of the claim. It is saying it out loud? Can it be perhaps choosing a specific desired product having a certain specific physical structure or arrangement of atoms such that certain qualities are present in that product, wherein those qualities necessarily define other unknown or unstated qualities? The examiner would argue that both would read upon “determining” and the process of Zhang would encompass the second question.
As relates to Naguib the examiner applicant argues that Naguib does not teach “partial etching”. However, this is not claimed. Further it is noted that claim 1 states that “wherein at least one of … the etching solution determine an extent of etching”, wherein as described Naguib teaches the use of the same etchant solution claimed in dependent claims in the current application. As such, Naguib the combination of references would reasonably teach controlling the extent of etching in the same manner claimed.
Further the applicant argues that Shao fails to teach rolling of the MXenes. However, the examiner explicitly made this same statement in the rejection. However, the examiner also stated that because Shao uses the same centrifugation speed claimed to produce the rolling effect, it is not apparent how it could be prevented in the invention of Shao. The applicant did not reasonably address this important point herein.
Further regarding the teachings of Chen, it is noted that if microwave etching possibly affects the product of Zhang in some way, presumably it would affect it in the same way as is done in the current application. It is acknowledged that the microwave radiation process of Chen is a purification process. However, the applicant claims the use of this in claim 4. Claim 1 is drawn to a broader invention that would not presumably contain the benefits of this purification process. However, claim 1 was not rejected using Chen. If the microwave radiation steps claimed are required to provide the properties argued (i.e., a temperature from 50K to 300K) then those steps should be claimed in conjunction with those claimed properties. Furthermore, each claim must include all elements which applicant has described as essential. See, e.g., Johnson Worldwide Assoc. Inc. v. Zebco Corp., 175 F.3d at 993, 50 USPQ2d at 1613; MPEP 2163, Section II, Subsection A, Subsection 3, Subsection (b).
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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717