DETAILED ACTION
Claims 1-17 were subject to restriction requirement mailed on 05/16/2025.
Applicant filed a response, and elected Group I, claims 1-3, and withdrew claims 4-17, without traverse on 08/13/2025.
The elected Group I contains species (a) and species (b).
Applicant made a provisional election of species (a), claims 1-2 without traverse on 10/30/2025.
Claims 1-17 are pending, and claims 3-17 are withdrawn.
Claims 1-2, 4, 7-10 and 14 are rejected.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 17936122 (copending). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The present claims require a composition comprising: a network of one or more 2D non-carbon nanomaterials having a lattice structure.
The co-pending claims meet all limitations of the present claims.
Specifically, regarding claim 1, claim 1 of copending recites A composition, comprising: a network of one or more nanostructures having a lattice structure formed by (ASU)n; wherein ASU is an asymmetric unit, n>0, wherein the one or more nanostructures of the present invention comprise a selection including 2D.
Claims 4, 7-10 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of U.S. Patent No. 11,479,466 B2 (patent). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 4 and 14, claim 20 of patent recites a dispersant method for making the composition, comprising the steps of: providing an asphaltene composition; refluxing the asphaltene composition with one or more additives to form a refluxed solution, and adding a modifying agent to the refluxed solution to form a modified solution.
Furthermore, the recitation in the claims that the method is for synthesis of non-carbon nanomaterial is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that patent discloses the method as presently claimed, it is clear that the method of patent would be capable of performing the intended use, i.e. for synthesis of non-carbon nanomaterial, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 7-10, claim 38 of patent recites wherein the one or more additives can be for example one or more dispersing agents, one or more oxidants, water and combinations thereof.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 17/931,102 (copending). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The present claims require a method for synthesis of non-carbon nanomaterial comprising:providing an asphaltene composition, performing one or more processing steps selected from:refluxing the asphaltene composition with one or more additives to form a refluxed asphaltene derivative, contacting the refluxed asphaltene derivative with one or more reducing agents to form a reduced asphaltene derivative; purifying the refluxed asphaltene derivative or the reduced asphaltene derivative.
The co-pending claim meets all limitations of the present claims. Specifically, claim 3 of copending recites a method for synthesis of graphene comprising: Contacting an asphaltene derivative with one or more reducing agents; and claim 5 of copending recites wherein the asphaltene derivative is a refluxed asphaltene derivative formed by refluxing a mixture of an asphaltene material and one or more additives.
Furthermore, the recitation in the claims that the method is for synthesis of non-carbon nanomaterial is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that copending discloses the method as presently claimed, it is clear that the method of copending would be capable of performing the intended use, i.e. for synthesis of non-carbon nanomaterial, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 17/931,106 (copending). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The present claims require a method for synthesis of non-carbon nanomaterial comprising:providing an asphaltene composition, performing one or more processing steps selected from:refluxing the asphaltene composition with one or more additives to form a refluxed asphaltene derivative, contacting the refluxed asphaltene derivative with one or more reducing agents to form a reduced asphaltene derivative; purifying the refluxed asphaltene derivative or the reduced asphaltene derivative.
The co-pending claim meets all limitations of the present claims. Specifically, claim 3 of copending recites a method for synthesis of carbon nanotubes comprising: contacting an asphaltene derivative with one or more reducing agents; and claim 5 of copending recites wherein the asphaltene derivative is a refluxed asphaltene derivative formed by refluxing a mixture of an asphaltene material and one or more additives.
Furthermore, the recitation in the claims that the method is for synthesis of non-carbon nanomaterial is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that copending discloses the method as presently claimed, it is clear that the method of copending would be capable of performing the intended use, i.e. for synthesis of non-carbon nanomaterial, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Election/Restrictions
Applicant’s election without traverse of claims 1-3 in the reply filed on 08/13/2025 is acknowledged.
Claims 3-17 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 08/13/2025.
Upon further consideration, the elected Group I contains additional species, as set forth below.
This application contains claims directed to the following patentably distinct species:
Category A
Species (a) – The lattice structure comprising an asymmetric unit (Na2S2O8).
Species (b) – The lattice structure comprising a network of one or more 2D nanostructures having an asymmetric unit of NaSO5H.
NOTE: If applicant elects Invention I, applicant must also elect one of the species in Category A as set forth above.
The species are independent or distinct because species (a) and species (b) are drawn to different chemical compounds, represented by different chemical formulas. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1 and 4-17 are generic.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter
the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Olanrewaju Tanimola on 10/30/2025 a provisional election was made without traverse to prosecute the invention of species (a), claims 1-2. Affirmation of this election must be made by applicant in replying to this Office action. Claim 3 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Specification
Specification, page 1, discloses that a date of deposit on August 10, 2015. However, this appears to be an error, given the present invention is filed on 09/09/2022. Correction is requested.
Specification, [0001] discloses “This application claims the benefit of the filing date of and priority to: U.S. Provisional Application Serial No. 62/035,140 entitled "Methods for Synthesis of Graphene Derivatives and Functional Materials from Asphaltenes", filed 08/10/2015, Confirmation No. 9603; the entire contents of the said provisional application is hereby incorporated by reference.”. However, this appears to be an error, given that there is no claim of such priority on Application Data Sheet. Correction is requested.
Specification, page 2, bottom paragraph is missing paragraph number. Correction is requested.
Claim Objections
Claim 2 is objected to because of the following informalities:
Claim 2, line 2, it is suggested to amend “(Na2S2O8)” to “Na2S2O8”, as parenthesis is not required.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-2 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
It is noted that claim 1 recites multiple sentences ending with a period. It is unclear if the following sentence after the first sentence ending with period are required in claim 1 or not.
The examiner interprets that the following sentence after the first sentence are not required in claim 1. Interpretation is speculative. Clarification is requested.
If the following sentences after the first sentence ending with period are required in claim 1, it is unclear when ASU is (TxLyMz)n where T is an alkaline metal, L is a chalcogen, 0 is oxygen, x>=5 (emphasis added), y>=2, z>=8, the composition would comprise Na2S2O8, as described in specification [0016] and claim 2. Clarification is requested.
Furthermore, claim 1, lines 4 and 6, each recites a phrase “0 is oxygen”. However, there is no symbol of “0” in each respective formula. The examiner interprets that the phrase refers to “M is oxygen”. Interpretation is speculative. Clarification is requested.
Regarding dependent claim 2, this claim does not remedy the deficiencies of parent claim 1 noted above, and is rejected for the same rationale.
Claim 2, recites a phrase “further comprise an asymmetric unit (Na2S2O8)”. However, it is unclear that the phrase refers to, i.e., comprising a second asymmetric unit in addition to the asymmetric unit of claim 1, or wherein the asymmetric unit of claim 1 comprises Na2S2O8.
The examiner interprets that the phrase refers to wherein the asymmetric unit of claim 1 comprises Na2S2O8. Interpretation is speculative. Clarification is requested.
Furthermore, claim 2 recites a phrase “of present invention”. It is unclear what this phrase refers to, i.e., what additional limitations are required to be considered of present invention.
The examiner interprets that this phrase does not require any additional limitation and applicant is advised to delete this phrase. Interpretation is speculative. Clarification is requested.
Claim Rejections - 35 USC § 102
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 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gedda et al., Antibaterial effect of calcium oxide nano-plates fabricated from shrimp shells, Green Chem., 2015 (Gedda).
Regarding claim 1, Gedda discloses calcium oxide nano-plates ranging from 40 to 130 nm (reading upon a network of one or more 2D non-carbon nanomaterials) (Gedda, Abstract).
Gedda further discloses the XRD pattern of CaO showed a different set of diffraction peaks of the crystal planes (reading upon having a lattice structure) (Gedda, paragraph spanning between pages 3277-3278).
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 2, Gedda does not disclose or suggest the asymmetric unit comprises Na2S2O8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELING ZHANG whose telephone number is (571)272-8043. The examiner can normally be reached Monday - Friday: 9:00am-5:00pm 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, Ching-Yiu Fung can be reached at 571-270-5713. 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.
/KELING ZHANG/Examiner, Art Unit 1732