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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 22, 2025 has been entered.
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 1-10 and 12-15 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.
Specifically, the limitation requiring “an aspect ratio of the average planar dimension to the orthogonal thickness between 25 and 14,285” is not supported by the instant Specification. The instant Specification mentions the aspect ratio of the claimed component in paragraph [0023] and mentions the incorporation of values falling within the claimed range in paragraph [0009], however the described aspect ratio in paragraph [0023] concerns a ratio between “the maximum linear extent and the minimum linear extent, synonymously referred to herein as thickness.” Therefore, the numerator of the aspect ratio within the specification is a maximum value for the claimed graphene, while the aspect ratio as claimed uses an “average planar dimension” as the numerator. The Examiner notes that the term “average planar dimension” is not referenced in the specification, and no mention is provided of an aspect ratio involving the same.
Furthermore, the Examiner notes that the claimed “average planar dimension of 1 to 5 microns” also appears absent from the disclosure. To the contrary, the Specification indicates that the “graphene as used in the present invention have a maximal linear extent in the three orthogonal X-Y-Z directions between 3 and 50 nm.” These dimensions are orders of magnitude smaller than the claimed range, and therefore the claimed range is unsupported by the Specification. The only mention in the Specification of graphene dimensions falling within the claimed range appears to be in paragraph [0045], Example 2, wherein the purportedly representative composition utilizes “graphene nanoplatelets having an average domain size of 5 microns.” This recitation merely includes a value of 5 microns, but does not support the full range of sizes (1 to less than 5 microns are not supported). Furthermore, it is not clear that the “average domain size” of this exemplified material is equivalent to the “average planar dimension” as claimed.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 and 12-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 6, the amended claim now requires that the claimed graphene have an aspect ratio, defined as the ratio of the “average planar dimension” and “orthogonal thickness” values of the claimed graphene, falling within the range of about 25 to about 14,285. Furthermore, “graphene” as defined by the Applicant within the context of the present application includes single layer graphene, few-layer graphene, or multi-layer graphene nanoplatelets (see instant Specification at [0025]). Furthermore, the instant Specification describes the graphene as nanoplatelets ([0025]) and specifically states that the graphene has “a maximal linear extent in the three orthogonal X-Y-Z directions of between 3 and 50 nm” ([0023]).
Firstly, one having ordinary skill in the art would be unable to determine what sizes of graphene materials are included within the claimed formulations because the claimed particle sizes directly contradict those within the disclosure (i.e., the claim requires that the graphene have an “average planar dimension of 1 to 5 microns, while “graphene” as defined within the specification is indicating nanoplatelets with nanoscale dimensions as described in the above paragraph).
Secondly, one having ordinary skill in the art would be unable to determine what aspect ratios of the graphene materials are included within the claimed formulations. This is because the planar (i.e., non-thickness) dimensions of the graphene combined with a defined aspect ratio place physical limitations on the thickness of the graphene. The planar dimensions and aspect ratios as claimed define a range of included graphene thicknesses which are impossible. For example, a hypothetical graphene component having an average planar dimension of 1 micron and an aspect ratio of 14,285 would have an orthogonal thickness of 0.00007 microns, or approximately 0.07 nanometers. Given that the atomic radius of a carbon atom is approximately 0.154 nm, the claimed ranges include hypothetical graphene materials which are impossibly thin (i.e., graphene as defined in the instant Specification is at least one layer thick, and graphene therefore cannot possibly be composed of less than a single layer of carbon atoms). One having ordinary skill in the art would therefore be unable to determine which planar dimensions and/or aspect ratios are actually included in the claimed composition. Assuming arguendo that the Applicant amends the claimed composition to require graphene dimensions on the scale of nanometers instead of microns (pursuant to overcoming the 112(a) rejections, above), this indefiniteness issue will persist because smaller maximal dimensions will place further limitations on which aspect ratios may possibly be present in a graphene material.
Regarding claims 2-5, 7-10, and 12-15, the claims are rendered indefinite because they depend, either directly or indirectly, on claims 1 or 6, which are indefinite as described above.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed December 22, 2025, with respect to the rejections of claims 1-10 and 12-15 under 35 USC 112(b) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection based on 35 USC 112(a) and 35 USC 112(b) have been applied to the amended claims, as described above.
As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06(II). Given the new grounds of rejection based on 35 USC 112(a) and 35 USC 112(b), above, the presently amended claim set would require considerable speculation for the purpose of applying prior art. The application of prior art is therefore found improper, and the previously applied 35 USC 103 rejections are withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762