DETAILED ACTION
Response to Amendment
Amendments, filed on October 23, 2025, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 8 — 10 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Patel (U.S. Patent App. No. 2018/0057359 A1) for the reasons of record as set forth in Paragraph No. 5 of the Office Action mailed on July 24, 2025.
Regarding the added amended language, these limitations are product-by-process limitation and are not further limiting in so far as the structure of the product is concerned. “[E]ven 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.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
In the instant case, there is insufficient evidence that the broad scope of the methodology recited in claim 8 results in a non-obvious structural difference. E.g. the only potential structural aspect recited is the broad recitation of a ‘plasticized substrate’, but this term can be given a broad definition to, essentially, cover any substrate that has been subject to any aspect of stress or strain; e.g. such as a wire inside a carbon nanotube. The Examiner notes that Applicant’s argument that this limitation results in “the graphene sheets and the columnar substrate being uniformly distributed without phase separation” (page 3 of response) is not found persuasive for a structural difference for two reasons. First, this actual structure is not recited in the claim and, second, a rotational rubbing of 0.3 seconds at almost no shear force (which is covered by the present claim language) would not be expected to produce the same, alleged physical structure as a rotational rubbing at the magnitudes in the examples (and shear forces/temperatures in the examples). As such, the broadly cast language in claim 8 is not deemed to intrinsically result in the alleged structure, which then fails to distinguish over the nanowire construct of the prior art.
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 of this title, 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.
Claim 10 is rejected under 35 U.S.C. 103(a) as being unpatentable over Patel as applied above for the reasons of record as set forth in Paragraph No. 7 of the Office Action mailed on July 24, 2025.
Claims 8 — 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Schulze et al. (U.S. Patent App. No. 2016/0190446 A1) as evidenced by Hasegawa et al. (WO 2014/033934 A1) for the reasons of record as set forth in Paragraph No. 8 of the Office Action mailed on July 24, 2025. See Machine Translation of WO ‘934 A1.
Regarding the added amended language, these limitations are product-by-process limitation and are not further limiting in so far as the structure of the product is concerned. “[E]ven 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.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
In the instant case, there is insufficient evidence that the broad scope of the methodology recited in claim 8 results in a non-obvious structural difference. E.g. the only potential structural aspect recited is the broad recitation of a ‘plasticized substrate’, but this term can be given a broad definition to, essentially, cover any substrate that has been subject to any aspect of stress or strain; e.g. such as a wire inside a carbon nanotube or the structure taught by Schulze et al. or evidentiary art Hasegawa et al. (see citations in prior office action). The Examiner notes that Applicant’s argument that this limitation results in “the graphene sheets and the columnar substrate being uniformly distributed without phase separation” (page 3 of response) is not found persuasive for a structural difference for two reasons. First, this actual structure is not recited in the claim and, second, a rotational rubbing of 0.3 seconds at almost no shear force (which is covered by the present claim language) would not be expected to produce the same, alleged physical structure as a rotational rubbing at the magnitudes in the examples (and shear forces/temperatures in the examples). As such, the broadly cast language in claim 8 is not deemed to intrinsically result in the alleged structure, which then fails to distinguish over the graphene composition of the prior art.
Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Heeder et al. (U.S. Patent App. No. 2016/0351288 A1).
Regarding claim 8, Heeder et al. disclose a graphene composite material (Title; Abstract; Figures; and at least Paragraphs 0022 – 0026) comprising a columnar substrate (ibid) and graphene sheets (ibid; but also noting Figures 2B, 5 and 9C and Paragraph 0031), wherein the graphene sheets form a plurality of circular patterns of different radii on a radial section of the columnar substrate (ibid, esp. noting Figure 2B).
Regarding the added amended language, these limitations are product-by-process limitation and are not further limiting in so far as the structure of the product is concerned. “[E]ven 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.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
However, in the instant case, Heeder et al. disclose a substantially identical process wherein the polymeric substrate is subject to deform (plasticize) the substrate material and orient the graphene sheets via shearing force and rotation along the radial periphery of the plastic substrate materials (Title; Abstract; Figures; and especially Paragraphs 0022 – 0034). While the process is not necessarily 100% identical, it is deemed sufficiently close to provide clear teaching and suggestion of any structural aspects that Applicant’s may allege from the claimed process limitations.
Heeder et al. fail to disclose the weight percent of the two components, instead teaching 0.2 – 5 volume percentage graphene (Figures and at least Paragraph 0040). The Examiner notes that graphene and most polymers will have reasonably similar densities, so a volume percentage teaching – while not identical to a weight percentage teaching – is, at the very least, comparable. And, just like in the present claims, the vast majority of the material is taught to be the substrate material, not the graphene (0.1 – 10 wt% claimed versus 0.2 – 5 volume% taught in Heeder et al.).
Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amount of graphene to substrate in terms of weight percentage meeting the claimed limitations through routine experimentation, especially given the teaching in Heeder et al. regarding the relative volume percentages of the two materials. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Heeder et al. to meet the claimed weight percentages as claimed as taught by Heeder et al., as they teach comparable volume percentages and optimization of weight or volume percentages are well within the knowledge of a person of ordinary skill in the art.
Regarding claim 9, Heeder et al. disclose plastic materials as the substrate (see citations above).
Response to Arguments
The rejection of claims 8 - 10 under 35 U.S.C § 102/103 – Patel and/or Schulze
Applicants’ arguments have been considered but are moot in view of the new ground(s) of rejection. In so far as they apply to the present rejection of record, Applicant(s) argue that the added language distinguishes over the prior art because it results in structural differences, pointing (and bolding) the phrase found in Paragraph 0018 of the specification that “the graphene sheets and the columnar substrate being uniformly distributed without phase separation”. This is not found persuasive because this aspect is NOT claimed and there is no guidance on the rotation speed, pressure, etc. and/or shear force needed to result in this structure. Amendment to positively recite this structural aspect; e.g. “the graphene sheets and the columnar substrate are substantially uniformly distributed without phase separation” would appear to provide sufficient structure that these rejections would be overcome, but such language would require further search and/or consideration.
Regarding the allegation of unexpected results, without specific processing aspects that are clearly shown to support the unexpected behavior, the Examiner does not find this argument convincing as the claims are not reasonably commensurate in scope to any alleged showing of unexpected results.
The rejection of claims 8 and 9 under 35 U.S.C § 103(a) – Heeder et al.
Applicants’ arguments have been considered but are moot in view of the new ground(s) of rejection. In so far as they apply to the present rejection of record, Applicant(s) argue that the present invention has a unique structure due to the processing. The invention of Heeder et al. is produced in a very similar manner and the Examiner questions whether there would be any structural differences between the Heeder et al. and taught invention, in so far as claims 8 and 9 are concerned vis a vis plastic substrates. The Examiner acknowledges that Heeder et al. fails to teach metal or alloy substrates and also fails to teach the dimensions in claim 10 (teaching much thicker graphene in their embodiments and also no clear teaching of diameters of the graphene). The Examiner notes that it is unclear if claim 10 refers to the graphene prior to the processing steps added in claim 8 or after (or both) and suggests clarifying on the record should claim 10 be incorporated into claim 8 to overcome the Heeder et al. disclosure (which could be simply by the location of said incorporation).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The Examiner also notes that claims 1 – 7, elected without traverse, are not currently subject to rejoinder given the differences between claim 1 and claim 8. Should claim 8 and its dependents be found allowable and applicant desire rejoinder, claims 1 – 7 should be evaluated and amended to insure claim 1 is a proper process of producing an allowable product (noting that claim 4 recites the weight percentages in claim 8, for example, etc.).
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.
Applicants’ amendment resulted in embodiments not previously considered (i.e. the added process limitations) which necessitated the new grounds of rejection, and hence the finality of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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, Mark Ruthkosky can be reached at 571-272-1291. 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.
/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
December 3, 2025