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 Arguments
Applicant’s arguments, see Remarks, filed 10/13/2025, with respect to the rejection(s) of claim(s) 17 and 19-38 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US Patent 12,404,179 and US Patent 11,390,529.
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 17 and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 11,390,529 in view of Liu et al (“Largely enhanced oxidation of graphite flakes via ammonium persulfate-assisted gas expansion for the preparation of graphene oxide sheets”, Carbon 146 (2019) 618-626 submitted in the IDs filed 10/09/2024 hereinafter referred to as Liu-1) and Liu et al (“One-step room-temperature preparation of expanded graphite.” Carbon 119 (2017): 544-557 submitted in the IDS filed 12/11/2024 hereinafter Liu-2).
Regarding claim 17, and 36-39, Claim 1 of the ‘529 patent encompasses a method for manufacture of reduced graphene oxide from kish graphite comprising providing kish graphite, pre-treating the kish graphite as claimed, oxidizing the pre-treated kish graphite to obtain graphene oxide. The ‘529 patent does not claim a method comprising an intercalation of the kish graphite with a persulfate salt and an acid at room temperature to obtain intercalated kish graphite, expansion of the intercalated kish graphite at room temperature to obtain expanded kish graphite prior to oxidizing
Liu-1 discloses a method for producing graphene oxide comprising producing expanded graphite flakes by intercalating graphite flakes with ammonium persulfate and sulfuric acid at 35°C and addition of additional sulfuric acid, NaNO3 and KMnO4 to oxidize the expanded flakes. Liu-1 teaches that intercalation enhances the oxidation of the graphite flakes by reducing the diffusion resistance for the oxidizing agents (see Abstract). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method as claimed by the ‘529 patent where the process comprises intercalation to enhance the oxidation of the graphite flakes.
Liu-2 discloses a method for mass preparation of expanded graphite comprising intercalation with sulfuric acid and ammonium persulfate at ambient temperature and expansion of the intercalated graphite at room temperature to form expanded graphite. Liu-2 teaches that the process does not require heating and is therefore simpler, energy-conserving and less polluting approach to producing expanded graphite (see Abstract). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method as claimed by the ‘529 patent where the process comprises room temperature intercalation to be simple, energy conserving, and less polluting.
Claims 17 and 20-24, 26-32, 34-35, and 38-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,390,529. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 2 of the ‘179 patent encompasses a process comprising kish graphite comprising providing kish graphite, pre-treating the kish graphite, intercalating the kish graphite, expanding the intercalated kish graphite, and oxidizing the pre-treated kish graphite to obtain graphene oxide as claimed in claim 17 of the present application.
Regarding claim 20, Claim 3 of the ‘179 patent encompasses the ratio of acid to kish graphite.
Regarding claim 21, Claim 4 of the ‘179 patent encompasses the same group of persulfate salts.
Regarding claim 22, Claim 5 of the ‘179 patent encompasses the same acids.
Regarding claim 23, Claim 6 of the ‘179 patent encompasses the same step D) as claimed.
Regarding claim 24, Claim 7 of the ‘179 patent encompasses the same step E) as claimed.
Regarding claim 26, Claim 8 of the ‘179 patent encompasses the same group of acids.
Regarding claim 27, Claim 9 of the ‘179 patent encompasses the same group of oxidizing agents.
Regarding claims 28-30, Claims 10-12 of the ‘179 patent encompasses the same step for stopping the oxidation reaction.
Regarding claim 31, Claim 13 of the ‘179 patent encompasses the same separation step.
Regarding claim 32, Claim 14, of the ‘179 patent encompasses the same exfoliation step.
Regarding claim 34, Claim 22 of the ‘179 patent encompasses oxidation lasting in an overlapping range.
Regarding claim 35, Claim 24 of the ‘179 patent encompasses intercalation lasting in an overlapping range.
Regarding claim 38, Claim 9 of the ‘179 patent encompasses a process without salt and with the claimed oxidizing agents.
Regarding claim 39, Claim 7 of the ‘179 patent encompasses a process comprising the same step E).
Claims 19 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,390,529 and in further view of and Liu et al (“One-step room-temperature preparation of expanded graphite.” Carbon 119 (2017): 544-557 submitted in the IDS filed 12/11/2024 hereinafter Liu-2).
As applied above claim 2 of the ‘529 patent encompasses a process comprising providing kish graphite, pre-treating, intercalation, expansion, and oxidizing as claimed in claim 17.
Regarding claim 19, Liu-2 discloses adding 1 g of graphite to 5 g of ammonium persulfate and 3 mL of sulfuric acid (5.49g) (see Page 544, ¶5).
Regarding claim 33, Liu-2 discloses adding 1 g of graphite to 5 g of ammonium persulfate and 3 mL of sulfuric acid (5.49g) (see Page 544, ¶5).
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,390,529 and in further view of Liu et al (“Largely enhanced oxidation of graphite flakes via ammonium persulfate-assisted gas expansion for the preparation of graphene oxide sheets”, Carbon 146 (2019) 618-626 submitted in the IDs filed 10/09/2024 hereinafter referred to as Liu-1)
As applied above claim 2 of the ‘529 patent encompasses a process comprising providing kish graphite, pre-treating, intercalation, expansion, and oxidizing as claimed.
Regarding claim 25, Liu-1 discloses a method where the oxidant comprises NaNO3
Claims 36-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,390,529 and in further view of Cruz-Silva et al (US 2015/0111449).
As applied above claim 2 of the ‘529 patent encompasses a process comprising providing kish graphite, pre-treating, intercalation, expansion, and oxidizing as claimed.
Cruz-Silva discloses a method for preparing graphene oxide wherein the oxidizing agent comprises a strong oxidizing agent including but not limited to potassium permanganate, sodium permanganate, ammonia permanganate, potassium chromate, sodium chromate, potassium persulfate, sodium persulfate, ammonia persulfate, potassium nitrate, ammonium nitrate, sodium nitrate, sodium chlorate, potassium chlorate, or ammonium chlorate (see [0037-0039]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the oxidizing step where the salt comprises ammonium nitrate or potassium nitrate since Cruz-Silva suggests they are known equivalents to sodium nitrate in oxidizing graphite to obtain graphene oxide.
Regarding claim 37, claim 22 of the ‘529 patent encompasses oxidation lasting in an overlapping range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738