Detailed Notice
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 .
Election/Restrictions
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/03/2025.
Claims 10-14 are pending examination.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Van Thanh et al. “Plasma-assisted electrochemical exfoliation of graphite for rapid production of graphene sheets” RSC Adv., 2014, 4, 6946 (referring to applicant’s attached copy in the file wrapper) in view of Chae et. al “Synthesis of Few-Layer Graphene by Peeling Graphite Flakes via Electron Exchange in Solution Plasma” J. Phys. Chem. C 2017, 121, 42, 23793–23802.
Regarding Claims 10-14, Van Thanh teaches an electrochemical plasma processing apparatus for the production of graphene sheets (Abstract). Provided is Fig. 1 of Van Thanh below. Van Thanh teaches an apparatus containing a first and second electrode, whereby the first electrode is at least partially submerged in a liquid, and the second electrode is outside and opposing the gas-liquid surface (Page 1, Col. 2, Para. 2; Fig. 1a). Van Thanh teaches that the plasma is provided between only the gas-liquid interface and the second electrode tip, such that no plasma is produced in the space between the first and second electrodes (see Fig.1). Van Thanh teaches that this arrangement of the electrodes advantageously causes a high electric field to be generated at the second electrode tip, resulting in the plasma (Page 1, Col. 2, Para. 1). The courts have held broadly that differences in the relative dimension of a prior art device does not render a patent distinction (see MPEP 2144.04 IV A). In the instant case, it is clear that the combined teaching of Van Thanh in view of Chae teaches to an arrangement where:
a first electrode is partially submerged some depth into a liquid to be acted upon by a plasma
a second electrode is spaced some distance laterally from the first electrode
a second electrode is poised some distance above a gas-liquid interface
Accordingly, it is understood that the combination of Van Thanh in view of Chae teaches to claims 11, 12 and 13.
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However, Van Thanh does not teach the use of a pulsed plasma generator capable of generating 1000 V between the first and second electrode.
Chae teaches a method of exfoliating graphite electrodes in a solution to obtain graphene [abstract]. Chae teaches that graphene was obtained from graphite by a solution phase plasma process, whereby graphite flakes and 1-ethyl-3-methylimidazolium are mixed in water [Pg. 2, Col. 2, Para. 1]. Chae teaches that the exfoliation process occurs by subjecting two electrodes to a bipolar pulsed power supply capable of producing 1 kV at a repetition of 100 kHz and a pulse width of 1 microsecond [Pg. 3, Col. 1, Peeling Process].
Prior to the filing of the present invention it would have been obvious to one of ordinary skill in the art that the base plasma electrochemical device of Van Thanh could incorporate the known method of applying a pulsed plasma electrolysis at 1 kV, as per Chae, with a reasonable expectation of success of arriving at a functional device for exfoliating graphite to graphene. The courts have held broadly that the manner of operating a device does not hold patentable weight over the prior art (see MPEP 2114 II), where in this case the electrodes are merely intended to be positioned and used in relation to the substrate being worked upon in the apparatus. Further, and similarly, the courts have also held that the intended use of an apparatus (in this case, a device for exfoliation and or functionalizing a lamellar object) do not serve to limit the claim (see MPEP 2112.02 II). Lastly, the courts have also held that for an apparatus claim the substrate being worked upon is not to be patentably significant over the prior art device, where the substrate is not functionally related to the apparatus (see MPEP 2112.01 I and III).
Response to Arguments
Applicant’s response dated 3/16/2026 have been considered and are partially persuasive.
Applicant is correct that the previous rejection addressed neither the lamellar object nor the use of a pulsed power generator. Accordingly, the new grounds of rejection have been presented in this office action to address the deficiencies of the previous action. However, applicant is not persuasive in that the present claims require that the prior art teach to an exfoliation or functionalization process of a lamellar object. As stated above, US practice does not require that the substrate being worked upon in an apparatus be given patentable weight where the device in its ordinary function meets the limitations of the apparatus (see MPEP 2112.01 I and III). However, it will be further noted that even in the case where the formation of an exfoliated product is required by the claims, Chae is shown to produce few-layer graphene from graphite using a solution-based plasma method [Abstract and Fig. 1].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANAEL J DOWNES whose telephone number is (571)272-1141. The examiner can normally be reached 8am to 5pm.
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NATHANAEL JASON. DOWNES
Examiner
Art Unit 1794
/NATHANAEL JASON DOWNES/ Examiner, Art Unit 1794
/BRIAN W COHEN/Primary Examiner, Art Unit 1759
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