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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/06/2025 has been considered by the examiner.
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.
Claims 16-17, 20-22, 24 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Veerasamy (US 2011/0030991).
Regarding claim 16, Veerasamy teaches thin films comprising graphene (Paragraph [0001]). The thin films may be formed, debonded and transferred from a mother substrate as illustrated in figure 7 (Paragraph [0027]). The techniques involve a stacked sequence of a back support (“carrier base substrate”), a release layer (“release layer”), a catalyst layer (“protective layer”), a graphene layer (“transfer layer”) and a polymer layer (“contact layer”) (Paragraph [0055]; Fig. 7). The catalyst layer is preferably formed from nickel in order to facilitate graphene crystallization (“the transfer layer is grown on the protective layer”) (Paragraph [0040]). Furthermore, one of ordinary skill in the art would recognize that the catalyst layer shields the graphene layer from the release layer and the back support (“the protective layer shields the transfer layer”).
Veerasamy is silent with respect to the carrier base susbtrate being at least partially transparent and configured to transmit electromagnetic radiation therethrough, the release layer being configured to absorb the transmitted electromagnetic radiation, and the protective layer being configured to shield the transfer layer form the transmitted electromagnetic radiation that is not absorbed by the at least one release layer.
However, one of ordinary skill in the art would recognize that if the back support, the release layer, and the catalyst layer, equivalent to the protective layer, are all formed from the same materials as applicant’s invention, then they must have identical properties as well. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
In the instant case, the preferred material for the carrier base susbtrate is glass in order to be at least partially permeable for electromagnetic radiation (PGPUB, Paragraph [0033]). The release layer may be formed from a selective group of materials including ZnO (PGPUB, Paragraphs [0133]-[0139]). The protective layer is preferably formed from nickel (PGPUB, Paragraph [0194]).
Veerasamy teaches the back support layer being formed from glass products (Paragraph [0039]). The release layer is formed from ZnO (Paragraph [0055]). The catalyst layer may be formed from nickel (Paragraph [0040]).
As such, the layers of Veerasamy are formed from the same materials as applicant’s invention. Therefore, one of ordinary skill in the art would recognize that the layers would have identical properties or would be configured in such a way to have identical properties, including the carrier base susbtrate being at least partially transparent and configured to transmit electromagnetic radiation therethrough, the release layer being configured to absorb the transmitted electromagnetic radiation, and the protective layer being configured to shield the transfer layer form the transmitted electromagnetic radiation that is not absorbed by the at least one release layer.
Regarding claim 17, Veerasamy teaches the thin films as discussed above with respect to claim 16. As discussed above, the graphene layer is considered the transfer layer.
Regarding claim 20, Veerasamy teaches the thin films as discussed above with respect to claim 19. The release layers function to debond the catalyst layer, the graphene layer and the polymer layer from the back support (Paragraph [0057]).
Regarding claim 21, Veerasamy teaches the thin films as discussed above with respect to claim 16. As discussed above, the catalyst layer is formed from nickel, which is appreciated as being a preferred material having a solubility for carbon in applicant’s specification (PGPUB, Paragraph [0032]-[0033]; [0035]-[036]).
Regarding claim 22, Veerasamy teaches the thin films as discussed above with respect to claim 16. As discussed above, the catalyst layer is formed from nickel, which is appreciated as being a preferred material having impermeability to electromagnetic radiation (PGPUB, Paragraph [0032]-[0033]; [0035]-[036]).
Regarding claim 24, Veerasamy teaches the thin films as discussed above with respect to claim 16. As discussed above, the catalyst layer may be formed from nickel (“monocrystalline metal layer”).
Regarding claim 34, Veerasamy teaches the thin films as discussed above with respect to claim 16. As discussed above, the catalyst layer may be formed from nickel.
Claims 18 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Veerasamy (US 2011/0030991) as applied to claim 16 above, and further in view of Chiba et al. (US 2014/0353278).
Regarding claims 18 and 32-33, Veerasamy teaches the thin films as discussed above with respect to claim 16. Veerasamy further teaches the catalyst layers being formed from an alloy of nickel and copper (Paragraph [0040]). Additionally, after the debonding of the catalyst and graphene layer from the back support, the catalyst layer may be also released from the graphene layer allowing the polymer layer to act as the support for the graphene layer (Paragraph [0055]-[0057]).
Veerasamy is silent with respect to the roughness between the catalyst layer and the graphene layer being less than 100 microns (claim 18), being less than 10 microns (claim 32) and being less than 1 micron (claim 33).
Chiba teaches a copper foil for producing graphene (Paragraph [0001]). The copper foil has a roughness of less than 0.25 microns in order to ease transfer of the graphene sheet (Paragraph [0030]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the nickel/copper alloy catalyst layer to be later removed with a surface roughness of less than 0.25 microns in order to ease transfer of the graphene layer as taught by Chiba.
Response to Arguments
Applicant's arguments filed 01/23/2026, with respect to the 35 U.S.C 103 rejection of claim 16 have been fully considered but they are not persuasive.
On pages 5-8, applicant argues that the amendments of the carrier base substrate being at least partially transparent and configured to transmit electromagnetic radiation therethrough, the release layer being configured to absorb the transmitted electromagnetic radiation, and the protective layer being configured to shield the transfer layer form the transmitted electromagnetic radiation that is not absorbed by the at least one release layer overcome the teachings of Veerasamy and Dimitrakopoulos. Specifically, neither of the references teach each of the layers being configured to either transmit or absorb electromagnetic radiation.
The examiner is not persuaded by applicant’s arguments. Specifically, while Veerasamy fails to teach each of the layers being configured to transmit electromagnetic radiation (the carrier substrate layer) or absorb electromagnetic radiation (the release layer and the protective layer), each of the materials taught for the corresponding layers in Veerasamy are all taught to be suitable materials for the layers in applicant’s invention. The back support layer of Veerasamy and the carrier base substrate are both formed from glass. The release layer of Veerasamy and the release layer of applicant’s invention are both suitably formed from materials including ZnO. Lastly, the catalyst layer and the protective layers are both formed from nickel. Each of the materials are described in the rejection above. MPEP 2112.01 indicates that materials and their properties are not mutually exclusive. Therefore, the examiner contends that while the materials are not taught to be configured as specifically claimed, they still have identical properties and would act in identical manners, including transmitting or absorbing electromagnetic radiation as required.
The current rejection is made FINAL in view of the amendments to the claims.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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