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 .
DETAILED ACTION
Claims 2, 4-5 canceled
Claims 1, 3, 6-9 amended
Claims 1, 3, 6-20 pending
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/29/2026 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, 3, 6-20 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 1 and 3 states “wherein the graphene precursor comprises at least one moiety”. However, there is not support in the spec as filed for graphene precursor having a “moiety” as claimed. Where the “moiety” acts as a branch extending from the backbone of a hydrocarbon molecule, or a chemical group, and not a chemical structure (for example C18H12X2) as claimed.
For the sake of expedite prosecution the examiner interprets this “moiety” as chemical structure.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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 7 state that chemical structure (C42H26X2) the “X is selected from Cl, Br, I or a combination thereof”, where Claim 7 depends on Claim 3, which state(C42H26X2) the “X is selected from Cl, I or a combination thereof”, where the “Br” is deleted from claim 3.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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) 1, 3, 7, 10-11, 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fasel’850 (PG Pub 2015/0158850 A1).
Consider Claims 1 and 3, Fasel’850 teaches the process of forming graphene sheet [0089] 5,5'-(6,11-Dihalo-1,4-diphenylt riphenylen-2,3-diyl)dipyrimidine (C42H26X2) having a carbon substituted with element from group 15, such as nitrogen, where X is Iodide [0046], [0089].
PNG
media_image1.png
428
508
media_image1.png
Greyscale
PNG
media_image2.png
464
622
media_image2.png
Greyscale
Fasel’850 teaches step (A) process of providing polycyclic aromatic monomer (graphene precursor) onto a solid substrate and subsequently polymerizing to a linear polymer on the surface of the substrate [0066], performing the process of depositing of the polycyclic monomer compound on a flat metal surface (catalyst) such as copper [0067], using a vacuum sublimation deposition processor (where the sublimation process change the chemical compound from solid phase into vapor phase) as chemical vapor deposition (CVD) [0072]-[0073]. Fasel’850 teaches the step (B) process of polymerizing is induced by thermal activation at a temperature range from 0℃ to 500°C [0076]-[0077], and performing complete cyclodehydrogenation as part of step (B) [0081], where this inducting polymerization step using cyclodehydrogenation reaction forms graphene sheet on the metal substrate surface [0083]. Fasel’850 teaches the polycyclic aromatic monomer (graphene precursor) to include the compound having the following formula 1, where X is iodine [0046].
Consider Claim 7, Fasel’850 teaches the polycyclic aromatic monomer (graphene precursor) to include 6,11-dihalo-1,2,3,4-tetraphenyltriphenylene (C42H26X2) having carbon (C) atoms specifically substituted with group 15 elements, where X is Iodide [0046].
PNG
media_image2.png
464
622
media_image2.png
Greyscale
Consider Claims 10-11, Fasel’850 teaches the depositing of the polycyclic monomer compound on a flat metal surface (catalyst) such as copper [0067].
Consider Claim 16, Fasel’850 teaches the depositing graphene monolayer [0108].
Consider Claims 17-20, Fasel’850 teaches the polycyclic monomer compound (graphene precursor) having doped Boro, Sulphur and nitrogen, or a combination thereof [0043].
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.
Claim(s) 1, 3, 7, 10-11, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fasel’850 (PG Pub 2015/0158850 A1).
Consider Claims 1 and 3, Fasel’850 teaches the process of forming graphene sheet [0089] 5,5'-(6,11-Dihalo-1,4-diphenylt riphenylen-2,3-diyl)dipyrimidine (C42H26X2) having element from group 15, such as nitrogen, where X is Iodide [0046], [0089].
PNG
media_image1.png
428
508
media_image1.png
Greyscale
PNG
media_image2.png
464
622
media_image2.png
Greyscale
Fasel’850 teaches step (A) process of providing polycyclic aromatic monomer (graphene precursor) onto a solid substrate and subsequently polymerizing to a linear polymer on the surface of the substrate [0066], performing the process of depositing of the polycyclic monomer compound on a flat metal surface (catalyst) such as copper [0067], using a vacuum sublimation deposition processor (where the sublimation process change the chemical compound from solid phase into vapor phase) as chemical vapor deposition (CVD) [0072]-[0073]. Fasel’850 teaches the step (B) process of polymerizing is induced by thermal activation at a temperature range from 0℃ to 500°C [0076]-[0077], and performing complete cyclodehydrogenation as part of step (B) [0081], where this inducting polymerization step using cyclodehydrogenation reaction forms graphene sheet on the metal substrate surface [0083]. Fasel’850 teaches the polycyclic aromatic monomer (graphene precursor) to include the compound having the following formula 1, where X is iodine [0046]. In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05).
Consider Claim 7, Fasel’850 teaches the polycyclic aromatic monomer (graphene precursor) to include 6,11-dihalo-1,2,3,4-tetraphenyltriphenylene (C42H26X2) having carbon (C) atoms specifically substituted with group 15 elements, where X is I [0046].
PNG
media_image2.png
464
622
media_image2.png
Greyscale
Consider Claims 10-11, Fasel’850 teaches the depositing of the polycyclic monomer compound on a flat metal surface (catalyst) such as copper [0067].
Consider Claim 16, Fasel’850 teaches the depositing graphene monolayer [0108].
Consider Claims 17-20, Fasel’850 teaches the polycyclic monomer compound (graphene precursor) having doped Boro, Sulphur and nitrogen, or a combination thereof [0043].
Claim(s) 1, 3, 6, 10-11, 13-14, 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schwab (PG Pub 2017/0081192 A1).
Consider Claims 1 and 3, Schwab teaches the process of forming graphene sheet (figure 7).
PNG
media_image3.png
444
642
media_image3.png
Greyscale
PNG
media_image4.png
386
612
media_image4.png
Greyscale
Schwab teaches the process of deposition polymeric precursor layer using vacuum sublimation deposition process on a catalytic substrate (such as copper) [0032]-[0033], where the vacuum sublimation process change the chemical compound from solid phase into vapor phase as chemical vapor deposition. Schwab teaches the cyclodehydrogenating the polymeric precursor layer to form the graphene nanoribbons/sheets in a temperature range 200-500℃ [0037]. Schwab teaches the polymer precursor having the formula (8) 3',6'-dibromo-1,1':2',1"-terphenyl (C18H12Br2) [0082]-[0083]. Schwab teaches the polymer precursor having the general formula (I) where X and Y include Cl, Br, or I, and where any CH2 group are replaced with groups includes -NH- and or -S- (abstract). In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05).
Consider Claim 6, Schwab teaches the polymer precursor having the formula (8) 3',6'-dibromo-1,1':2',1"-terphenyl (C18H12Br2) [0082].
Consider Claims 10-11, Schwab teaches the catalytic substrate such as Cu, Ni, Au, Al, Pb, and or Pt [0032]-[0033].
Consider Claim 13, Schwab teaches the process of forming graphene sheet (such as raising the temperature to 200-500°C including temperature of 670°K), which would result in a fully planar graphene sheet [0037].
Consider Claim 14, Schwab teaches on the catalytic substrate surface the graphene is grown under high vacuum conditions [0030].
Consider Claim 16, Schwab teaches the graphene sheet is monolayer (figure 7).
PNG
media_image3.png
444
642
media_image3.png
Greyscale
Consider Claims 18-20, Schwab teaches the graphene sheet is dopped with N and or S (abstract).
Claim(s) 1, 3, 7-11, 13-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fasel’023 (PG Pub 2014/0315023 A1).
Consider Claims 1 and 3, Fasel’023 teaches the process of forming graphene sheet (abstract). Fasel’023 teaches the process of forming graphene sheet by step (A) depositing polycyclic monomer (graphene precursor) onto a solid substrate [0090] and step (B) the polymerizing of the poly cyclic monomer forming polymer on the solid substrate [0091] as a polymer layer, where the deposition process is performed using vacuum sublimation/evaporation deposition process [0109] as chemical vapor deposition, and where the solid substrate has a flat surface of metal surface such as gold, silver, nickel, copper, aluminum, platinum, or palladium [0103]-[0104] as catalytic substrate.
PNG
media_image5.png
478
676
media_image5.png
Greyscale
Fasel’023 teaches the polycyclic aromatic monomer (graphene precursor) to include 6,11-dihalo-1,2,3,4-tetraphenyltriphenylene (C42H26X2) having carbon (C) atoms specifically substituted with group 15 elements, wherein X is halogen (Br, Cl, I) as seen in formula 8 [0039]. Fasel’023 teaches cyclodehydrogenation of the polymer layer [0120], where the cyclodehydrogenation process is performed by rising the temperature to a range between 50°C- 600°C [0120]. In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05). Fasel’023 teaches polycyclic monomer compound (graphene precursor) to include structure Ia with X substitution and R substitution [0039], where X independently includes halogen; and R is a phenyl which is substituted by one or more such as NR1R2 [0039]. Therefore, the formed graphene sheet would include naturally flow resulting a doping with halogen (in at least one of X groups) and a with group 15 element such as nitrogen (in at least one of the R groups) substituted of the carbon in the phenyl. Therefore it would be obvious for skilled person in the art to pick and choose the combination where the nitrogen (of the NR1R2) as substitute any carbon of phenyl of the R group, using known routine experimentation and know principles engineering in the art.
Consider Claim 7, Fasel’023 teaches the polycyclic aromatic monomer (graphene precursor) to include 6,11-dihalo-1,2,3,4-tetraphenyltriphenylene (C42H26X2) having carbon (C) atoms specifically substituted with group 15 elements, wherein X is selected from Br as seen in formula 8 [0039].
Consider Claim 8, Fasel’023 teaches the polycyclic aromatic monomer (graphene precursor) to have the general formula (8) where R include phenyl [0039], leading to having the chemical structure of;
PNG
media_image6.png
590
626
media_image6.png
Greyscale
With X being halogen, having carbon (CH2) atoms specifically substituted with group 15 elements as stated above. Leading to the chemical structure 2,3-di([1,1′-biphenyl]-4-yl)-6,11-dihalo-1,4-diphenyltriphenylene (C54H34X2).
Consider Claim 9, Fasel’023 teaches the polycyclic aromatic monomer (graphene precursor) to have the general formula (8) where R include phenyl [0039], leading to having the chemical structure of;
PNG
media_image7.png
588
624
media_image7.png
Greyscale
With X being halogen, having carbon (CH2) atoms specifically substituted with group 15 elements as stated above. Leading to the chemical structure 2-([1,1′:2′,1″-terphenyl]-3′-yl)-6,11-dihalo-1,4-diphenyltriphenylene (C48H30X2).
Consider Claims 10-11, Fasel’023 teaches the catalytic substrate is a metal substrate comprises gold, silver, nickel, copper, aluminum, platinum, or palladium [0103]-[0104].
Consider Claim 13, Fasel’023 teaches the process of forming graphene sheet (such as raising the temperature to 670°K) results in a fully planar graphene sheet [0133].
Consider Claim 14, Fasel’023 teaches the process of forming graphene sheet using vacuum system [0109]-[0110].
Consider Claim 16, Fasel’023 teaches the graphene layer is monolayer (figure 5).
Consider Claims 17-20, Fasel’023 teaches polycyclic monomer compound (graphene precursor) to include structure Ia with X substitution [0039], where X independently includes SH, B(R3)2, and NR1R2 [0039]. Therefore, the formed graphene sheet would include doping element such as N, B, S, and a combination of.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fasel’850 (PG Pub 2015/0158850 A1) in view of Grobert (PG Pub 2015/0064098 A1).
Consider Claim 12, Fasel’850 teaches the process of forming graphene sheet [0046], using copper substrate [0103]-[0104].
Fasel’850 does not teach the copper substrate is polycrystalline copper.
However, Grobert is in the prior art of forming graphene using CVD [0014], graphene such as graphene sheet [0033], teaches in the process of forming graphene using polycrystalline copper substrate [0007].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Fasel’850 with Grobert to orient the graphene domains based on the crystallographic orientation of the polycrystalline copper [0064].
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over Fasel’850 (PG Pub 2015/0158850 A1) in view of Ahn (PG Pub 2012/0282419AA1).
Consider Claim 15, Fasel’850 teaches the process of forming graphene sheet [0046], using catalytic substrate [0103].
Fasel’850 does not teach the substrate to be flexible substrate.
However, Ahn is in the prior art of forming graphene film (abstract), teaches the process of forming graphene layer on metal such as Copper, where the metal catalyst on the flexible substrate [0042], where the flexible substrate is polymeric material [0043].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Fasel’850 with Ahn to use copper layer on plastic flexible as a graphene substrate, to provide graphene synthesis with roll-to-roll process [0008].
Response to Arguments
Applicant’s arguments, filed 01/29/2025, with respect to the rejection(s) of claim(s) 1, 3, 6-20 under 102/103a 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 Fasel’850, Fasel’023 and Schwab.
The previously applied 112 claims rejection, in light of the amended claim are now withdrawn. However, in light of the currently amended claims, new 112a claim rejection are now applied.
The applicant argued against the prior arts based on the addition of dependent claims 6-9 into claims 1 and 3, while deleting the Br as a choice from chemical structure C42H26X2, to overcome the rejection based on figure 15C of Fasel’850.
However, the same art of prior art of Fasel’850 discloses in [0089], that the chemical structure (I) having X, where X is Br or I. Meeting the chemical structure (C42H26X2) independent claims 1, 3 and 7.
Additionally, the newly applied art of Schwab discloses chemical structures which are discloses to be modified, meeting the claimed structures in 1, 3, and 6, as in the above rejection. See formula 8.
Moreover, the prior art of Fasel’023 also disclose chemical structures which are discloses to be modified, meeting the claimed structures in 1, 3, and 7-9. See formula 8.
All other applicant arguments not specifically addressed above are deemed unpersuasive as either not commensurate in scope with the broadly drafted claims or are unsupported by factual evidence and are deemed mere attorney speculation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 11:00AM-7:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718