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 .
Priority
This application is a 371 of PCT/IB2020/061966 which claims the benefit of Italy 102019000024111 with an effective filing date of 16 December 2019 as reflected in the filing receipt mailed on 18 November 2022.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 19 December 2025 was acknowledged in the previous office action mailed on 09 January 2026. The requirement was deemed proper and was therefore made FINAL. Claims 8-14 and 16 were withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim. Claims 1-7, 15, and 17-20 were examined and are herein examined on the merits.
Status of the Claims
Claims 1-7, 15, and 17-20 are currently pending.
Claims 1-6 and 17-19 are currently amended.
Claims 8-14 and 16 were previously withdrawn.
Response to Amendments
Applicant’s amendments filed on 11 May 2026 are acknowledged.
Claim Objections
Applicant’s amendments to claim 3 are sufficient to overcome the
objections of the claim. The claim has been amended for clarity to correct the typographical mistakes. The objection is withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s amendment to claim 1 is sufficient to overcome the rejection of claims 1-7, 15, and 17-20 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 1 has been amended for clarity and to correct for antecedent basis. The rejections are withdrawn.
Applicant’s amendment to claim 3 is sufficient to overcome the rejection of claim 3 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 3 has been amended to correct for antecedent basis. The rejection is withdrawn.
Applicant’s amendments to claim 4 are sufficient to overcome the rejections of claim 4 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 4 has been amended to correct the unit for the ratio, the correct for the clarity, and the correct for the antecedent basis issues. The rejection is withdrawn.
Applicant’s amendments to claims 5 and 17-19 are sufficient to overcome the rejections of claims 5 and 17-19 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 5 and 17-19 have been amended to correct the clarity, the antecedent basis issues, the indefinite language, and the ending conjunction “and” has been added. The rejections are withdrawn.
Applicant’s amendment to claim 2 is sufficient to overcome the rejection of claim 2 under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 has been amended to correct the thickness range to be within the range recited in claim 1. The rejection is withdrawn.
Response to Arguments
Applicant’s arguments filed on 11 May 2026 have been fully considered but they are not persuasive.
Receipt of the non patent literature Graphene Insider, (“#1. Graphene Vs Graphene Oxide”, published 2026) filed on 11 May 2026 is acknowledged.
Applicant’s argue that Sen, Murzin, and Ahn do not disclose the limitations as recited in the claims. These arguments have been considered but are not persuasive for the reasons set forth in the maintained and modified grounds of rejection below and the response to arguments below.
In response to Applicant’s arguments throughout the remarks filed on 11 May 2026 regarding the intended use and/or product by process limitations in the claims, such as the claim 1 limitations of a “nano-catalyst suitable for processes of vegetable oil hydrogenation for producing bio-lubricants or biodegradable plastics for producing copolymers”, “which selectively hydrogenate triglycerides and enrich vegetable oil in monounsatured cis-isomers, due to steric hindrances”, etc. As stated throughout the previous office action dated 09 January 2026 (hereinafter POA), the intended use of the claimed nano-catalyst is not considered a claim limitation and is not given patentable weight and Sen teaches the product nano-catalyst; therefore, the processes and/or causes involving the nano catalyst are not given patentable weight.
For the reasons indicated above, applicant’s above arguments regarding intended use and/or product by process limitations in the claims are not persuasive.
In response to applications arguments on page 11 of the remarks filed on 11 May 2026 that “the catalyst of Sen comprises an active phase of PdRuNi@GO nanoparticles. The “GO” of this acronym designates graphene oxide (presence of O atoms in the molecular structure) used by Sen as a support for the active phase. That is a different material from the (pure) graphene used as a support in present claims 1-7, 15 and 17-20. The attached literature article explains both the chemical and physical differences between the two materials.”
It is noted, the instant claims and specification make no mention of the purity of the graphene. On the contrary, the instant specification specifically states on page 39, Lns. 1-20, the “elementary analyses carried out for the Ni/Pd, Ni/Pd catalysts dispersed on graphene and Ni/Pd/Ru dispersed on graphene by EDX spectroscopy highlight the presence of carbon, nickel, palladium, ruthenium, and oxygen species”. Therefore, the instantly claimed catalyst comprises oxygen and inherently comprises graphene oxide, see MPEP 2112.
In addition, Sen teaches “the synthesis of novel nanomaterials with the help of different metals and supporting agents is very crucial to obtain very efficient and stable nanocomposites [28-35]. For this purpose, the scientists have used some of the different supporting agents such as carbon nanotubes, graphene, graphene oxide, reduced graphene oxide, polymers, carbon black and metal-organic frameworks, etc. which are chemically stable, electrically and thermally conductive and reusable materials in various applications [36-53] and they provide very high catalytic activity and stability”, see Sen, Pg. 17985, Col. 1.
As stated on pages 15-16 of POA, “patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123” and selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. An “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Sen teaches graphene and graphene oxide as supports, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try either graphene or graphene oxide as the catalyst support in Sen to achieve the desired catalytic properties.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applications arguments on pages 11-14 of the remarks filed on 11 May 2026 that “Sen's catalyst is used to dehydrogenate (produce hydrogen) dimethylamine borane. Sen is not interested in selectively hydrogenating polyunsaturated triglycerides toward the cis configuration”, Murzin is drawn to a differing hydrogenation reaction than instantly claimed, “a person or ordinary skill in the art would have had no apparent reason to combine the two applied references in the manner proposed, absent the teaching of the present application; and, moreover, the applied prior art differs substantially from the claimed kit of instruments such that, even if a skilled artisan had combined the two references, the subject matter of the present claims would not have been achieved”, “Ahn appears to be further remote from the claimed subject matter, as it does not relate to a Ni/Pd + Ru nanocatalyst supported on graphene”, and at “the end of the process described by Ahn, only carbon remains (the graphene layer)”, “therefore, it is believed to be evident that the claims are unobvious in relation to the proposed combination of Sen, Murzin and Ahn”.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
“A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)”, see MPEP 2141.01(a).
In this case, Sen is in the known prior art field of a nano-catalyst comprising “monodisperse PdRuNi nanoparticles decorated with graphene oxide (PdRuNi@GO)”, see Abstract. Sen is not applied to teach the intended use and/or product by process limitations in the claims, as stated above and in the POA, these limitations are not given patentable weight. Sen is also not applied to teach the intended use and/or product by process limitations regarding the hydrogenation reaction. Sen is applied to teach the product nano-catalyst.
Murzin is in the known prior art field of the catalytic hydrogenation of vegetable oils, see Paras. [0002]-[0006];[0029];[0054], as stated on page 13 of the POA, using a nano-catalyst that is “a heterogenous mixture of Pd, Ni, and Ru on a carbonaceous support”, see Para. [0044]. Murzin is not applied to teach the intended use and/or product by process limitations in the claims, as stated above and in the POA, these limitations are not given patentable weight. Murzin is also not applied to teach the intended use and/or product by process limitations regarding the hydrogenation reaction. Murzin is applied to teach the weight ratios of the product nano-catalyst elements of Pd, Ni, and Ru loaded on a carbonaceous support.
Ahn is in the known prior art field of graphene supported nano-catalyst of ruthenium, palladium, and nickel, see Abstract; Paras. [0051]-[0055];[0066]-[0067];[0116]-[0118], where the graphene is in layers, see Para. [0053], and self-assembled polymers, such as “carbon-containing polymer may include at least one polymerizable functional group, such as a carbon-carbon double bond or carbon-carbon triple bond, in a structure thereof”, i.e., oleic acid and linoleic acid, are “coated on the graphitization catalyst metallic layer” surface, where the thermal treatment is performed in order to “substantially reduce or effectively prevent carbon from volatizing during thermal treatment” and “the self-assembled organic materials” bind materials by “a hydrophobic portion of the amphiphilic organic material becomes exposed in a direction away from the substrate, and thus binds to a hydrophobic portion of another amphiphilic organic material that is not bonded to the graphitization catalyst”, see Paras. [0081]-[0086]. Ahn is not applied to teach the intended use and/or product by process limitations in the claims, as stated above and in the POA, these limitations are not given patentable weight. Ahn is not applied to teach the intended use and/or product by process limitations regarding the hydrogenation reaction. Ahn does teach the product catalyst of a graphene supported nano catalyst of ruthenium, palladium, and nickel with oleic acid and linoleic acid on the surface of the graphitization catalyst metallic layer and is applied to teach the same.
As stated on pages 14-15 of the POA, “it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Sen to adjust the concentration of the active metals, see MPEP 2144.05 and Murzin, to adjust the thickness of the graphene, see MPEP 2144.04 IV. and Ahn, and to use a dispersing surfactant, as taught by Ahn with a reasonable predictability of success for the purpose of efficiently manufacturing hydrocarbons from renewable resources, such as vegetable oil, by catalytic hydrogenation with a carbon supported nano catalyst that exhibits high conversion, see Murzin, Paras. [0002]-[0004];[0029];[0044];[0054], Table 1, the optimal charge transfer, and geometrical self-assembly with the graphene carbon support, see Ahn, Paras. [0047];[0058];[0079]-[0080];[0086]”, and since “patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Sen, Murzin, and Ahn all teach nano catalyst of active metals supported on carbon/graphene, a person of ordinary skill in the art has good reason to obtain an active metal supported graphene catalyst by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently manufacturing hydrocarbons from renewable resources, such as vegetable oil, by catalytic hydrogenation with a carbon supported nano catalyst that exhibits high conversion, see Murzin, Paras. [0002]-[0004];[0029];[0044];[0054], Table 1, the optimal charge transfer, and geometrical self-assembly with the graphene carbon support, see Ahn, Paras. [0047];[0058];[0079]-[0080];[0086], and MPEP 2141.”
For the reasons indicated above, applicant’s above arguments are not persuasive.
The rejection of claims 1-7, 15, and 17-20 under 35 U.S.C. 103 as being unpatentable over Sen et al. (“Trimetallic PdRuNi nanocomposites decorated on graphene oxide: A superior catalyst for the hydrogen evolution reaction”, available online 10 August 2018, International Journal of Hydrogen Energy, Vol. 43, Pgs. 17984-17992, hereinafter Sen) in view of Murzin et al. (US20060161032, published 20 July 2006, hereinafter Murzin) and Ahn et al. (US20140034899, published 06 February 2014, hereinafter Ahn) is maintained. Due solely to the claim amendments complying with the previous objection and 35 USC 112(b) rejections, the above 35 USC 103 rejection is modified.
Maintained and Modified Rejections Based on Amendments to the Claims in the reply filed on 11 May 2026
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
For clarity between the modifications within the maintained rejections, the specific modifications below are in italics.
Claim Rejections - 35 USC § 103
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 1-7, 15, and 17-20 stand rejected under 35 U.S.C. 103 as being unpatentable over Sen et al. (“Trimetallic PdRuNi nanocomposites decorated on graphene oxide: A superior catalyst for the hydrogen evolution reaction”, available online 10 August 2018, International Journal of Hydrogen Energy, Vol. 43, Pgs. 17984-17992, hereinafter Sen) in view of Murzin et al. (US20060161032, published 20 July 2006, hereinafter Murzin) and Ahn et al. (US20140034899, published 06 February 2014, hereinafter Ahn).
Sen teaches the known prior art of instant application claim 1 limitations of a nano-catalyst comprising an active phase of PdRuNi@GO nano catalyst made by dispersing palladium (II) chloride, nickel (II) chloride, ruthenium (III) chloride, and ethylene glycol (EG) on graphene oxide for the dehydrogenation of dimethylamine-borane, see Abstract; Pg. 17985, Experimental; Pg. 17986, Table 1, meeting:
The specific nano catalyst and graphene support in instant application claim 1.
In regard to the instant application claim 1 preamble limitations of “a nano-catalyst suitable for processes of vegetable oil hydrogenation for producing bio-lubricants or biodegradable plastics for producing copolymers”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement of “suitable for processes of vegetable oil hydrogenation for producing bio-lubricants or biodegradable plastics for producing copolymers” is regarded as an intended use of the claimed nano-catalyst; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight, meeting the limitations in instant application claim 1.
In regard to the instant application claim 1 limitations of “a nano-catalyst suitable for processes of vegetable oil hydrogenation for producing bio-lubricants or biodegradable plastics for producing copolymers” and “which selectively hydrogenate triglycerides and enrich vegetable oil in monounsatured cis-isomers, due to steric hindrances”, see MPEP 2113(I) stating “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)”. Sen teaches the product nano-catalyst; therefore, the processes of vegetable oil hydrogenation for producing bio-lubricants or biodegradable plastics for producing copolymers and selectively hydrogenate triglycerides and enrich vegetable oil in monounsatured cis-isomers due to steric hindrances are not given patentable weight. In addition, “due to steric hindrances” appears to be the intended use of the surfactant. As stated above, the intended use of the claimed nano-catalyst is not considered a claim limitation and is not given patentable weight, meeting the limitations in instant application claim 1.
In regard to the instant application claim 3 limitations of “wherein said steric hindrances cause a surface functionalization which allows specific double bonds to access the active surface and prevents total hydrogenation”, see MPEP 2113(I) stating “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)”. Sen teaches the product nano-catalyst; therefore, the processes and/or causes are not given patentable weight. In addition, “steric hindrances causes” appears to be the intended use of the surfactant. As stated above, the intended use of the claimed nano-catalyst is not considered a claim limitation and is not given patentable weight, meeting the limitations in instant application claim 3.
In regard to the instant application claim 4 limitations of “wherein the addition of palladium to nickel increases the catalyst activity due to the greater palladium activity and to heterogenization between the two metals, and wherein the presence of ruthenium results in a heterojunction between the metals, which is capable of shifting a transformation reaction towards production of isomers with cis-configuration”, “the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations” has no significance to claim construction”, see MPEP 2111.02 II. The function of the palladium and the ruthenium is regarded as an intended use of the claimed nano-catalyst; therefore, the above limitations are not given patentable weight. In addition, the above limitations appear to provide process limitations to the product nano catalyst. As stated above, Sen teaches the product nano-catalyst; therefore, the processes involving the nano catalyst are not given patentable weight, meeting the limitations in instant application claim 4.
In regard to the instant application claims 5 and 17-19 limitations of “wherein the presence of graphene: stabilizes the catalyst avoiding the aggregation of the nano-particles and connecting the nano-particles electrically; promotes the separation of the nano-catalyst from reaction products; pre-concentrates hydrogen and triglycerides, by utilizing absorbent properties of said graphene which allow contracting diffusion phenomena, thus allowing to always having available molecules to be converted, “the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations” has no significance to claim construction”, see MPEP 2111.02 II. The function of the graphene is regarded as an intended use of the claimed nano-catalyst; therefore, the above limitations are not given patentable weight. In addition, the above limitations appear to provide process limitations to the product nano catalyst. As stated above, Sen teaches the product nano-catalyst; therefore, the processes involving the nano catalyst are not given patentable weight, meeting the limitations in instant application claim 5, in instant application claim 17, in instant application claim 18, and in instant application claim 19.
In regard to the instant application claims 7 and 20 limitations of “wherein the nano-catalyst is regenerable by washing in a solvent by centrifugation and usable in multiple processing cycles without showing activity or selectivity loss”, “the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations” has no significance to claim construction”, see MPEP 2111.02 II. The function of the usability is regarded as an intended use of the claimed nano-catalyst; therefore, the above limitation is not given patentable weight. In addition, the above limitations appear to provide process limitations of regeneration to the product nano catalyst. As stated above, Sen teaches the product nano-catalyst; therefore, the processes involving the nano catalyst are not given patentable weight, meeting the limitations in instant application claim 7 and in instant application claim 20.
Sen does not teach:
The instant application claim 1 limitations of graphene layers with a thickness less than 1 micron, the outer surface of said nano-catalyst being covered with surfactant chains, where the active phase has a Ni/(Pd+Ru) ratio between 1% by weight and 5% by weight;
The active phase ratio in instant application claim 4; and,
The limitations of instant application claims 2, 6, and 15.
Murzin relates to the known prior art of the catalytic hydrogenation of vegetable oils, see Paras. [0002]-[0006].
Murzin teaches the instant application claims 1 and 4 limitations of the catalyst is a heterogenous mixture of Pd, Ni, and Ru on a carbonaceous support, where the loading of the active metals Pd and Ru varies in the range of 0.5-20 wt % and the loading of Ni varies in the range of 2-55 wt %, see Para. [0044], as calculated by the examiner Ni/(Pd+Ru) of 2/(1+1) to 5/(0.5 to 0.5) = 1 to 5 wt%, meeting:
Within the active metal weight percent ratio range in instant application claim 1 and in instant application claim 4.
Ahn relates to the known prior art of graphene supported nano catalyst of ruthenium, palladium, and nickel, see Abstract; Paras. [0051]-[0055];[0066]-[0067];[0116]-[0118].
Ahn teaches the instant application claims 1, 2, and 15 limitations of graphene layers with a thickness of about 2 to 200 Angstroms aka 0.2 to 20 nm, see Para. [0053], meeting:
Within the thickness range in instant application claim 1, in instant application claim 2, and in instant application claim 15.
Ahn teaches the instant application claims 1 and 6 limitations of the graphene nano catalyst is coated with a liquid-phase carbon supply source, such as an amphiphilic polymer including lauric acid, stearic acid, oleic acid, linolenic acid, or a combination thereof, see Paras. [0078]-[0086], meeting:
The surfactant covering in instant application claim 1; and,
The specific surfactant in instant application claim 6.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Sen to adjust the concentration of the active metals, see MPEP 2144.05 and Murzin, to adjust the thickness of the graphene, see MPEP 2144.04 IV. and Ahn, and to use a dispersing surfactant, as taught by Ahn with a reasonable predictability of success for the purpose of efficiently manufacturing hydrocarbons from renewable resources, such as vegetable oil, by catalytic hydrogenation with a carbon supported nano catalyst that exhibits high conversion, see Murzin, Paras. [0002]-[0004];[0029];[0044];[0054], Table 1, the optimal charge transfer, and geometrical self-assembly with the graphene carbon support, see Ahn, Paras. [0047];[0058];[0079]-[0080];[0086].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Sen, Murzin, and Ahn all teach nano catalyst of active metals supported on carbon/graphene, a person of ordinary skill in the art has good reason to obtain an active metal supported graphene catalyst by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently manufacturing hydrocarbons from renewable resources, such as vegetable oil, by catalytic hydrogenation with a carbon supported nano catalyst that exhibits high conversion, see Murzin, Paras. [0002]-[0004];[0029];[0044];[0054], Table 1, the optimal charge transfer, and geometrical self-assembly with the graphene carbon support, see Ahn, Paras. [0047];[0058];[0079]-[0080];[0086], and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[t]he normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as the concentration of the catalyst active metals, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Selection of a known material, such as a dispersing surfactant, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the thickness of the graphene, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
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 Y. Lynnette Kelly-O'Neill whose telephone number is (571) 270-3456. The examiner can normally be reached Tuesday-Friday, 8:30 a.m. - 6:30 p.m., EST, with Flex Time.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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