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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on September 22, 2025 is acknowledged.
Specification
The Specification recites “This application claims the benefit of the filing date and priority to: U.S. Provisional Application Serial No. 62/035,140 entitled “Method 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, there are no claims to prior-filed applications in the instant application.
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.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites “wherein the one or more nanostructures is selected from the group consisting of 0D-, 1D or 2D, carbon, inorganic and any combinations thereof”; this renders the claim indefinite as it is unclear how the nanostructure is selected from “carbon” or “inorganic”. It appears the claim should recite “wherein the one or more nanostructures is selected from the group consisting of 0D-, 1D- and 2D-”; clarification is requested. Furthermore, claim 1 recites “O is oxygen”; however, there is no O in the formula in claim 1. The Examiner construes this limitation as M is oxygen; clarification is requested. Claims 2-4 are subsumed under the rejection.
Claims 2-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 2-4 recite “further comprising ASU is”; this is unclear as it is unclear if Applicant is intended to claim a second asymmetric unit in addition to the asymmetric unit in claim 1 or if there is one asymmetric unit comprising the formulas in claims 2-4.
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.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 17/931,113 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Patent Application No. 17/931,113 claims a composition comprising a network of one or more 2D non-carbon nanomaterials having a lattice structure selected from orthorhombic, monoclinic, triclinic, wherein the lattice structure is formed by (ASU)n is an asymmetric unit having the formula (TxLyMz)n or (TxLyMzH), T is an alkaline metal, L is a chalcogen, M is oxygen, wherein x≥1, y≥1, z≥5 (Claim 1); NaS2O8 and NaSO5H (Claims 2 and 3). It is clear that all of the elements of the application claims 1-3 are to be found in US Application No. 17/931,113. The difference between the instant claims and US Application No. 17/931,113 lies in the fact that US Application No. 17/931,113 is more specific. Thus, the instant claims are anticipated by claims 1-3 of US Application No. 17/931,113 and are not patentably distinct from claims 1-3 of US Application No. 17/931,113.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanimola (US Patent Application 2016/0039678).
Regarding claim 1, Tanimola teaches nanomaterial comprising a 2D single crystal with asymmetric unit formula Na6O16S4 (Abstract, Paragraph 31). Tanimola further teaches the lattice structure of the single crystals can exist in different polymorphs like orthorhombic, monoclinic and triclinic (Paragraph 226).
Tanimola teaches the limitations of the instant claims; hence, Tanimola anticipates the claims.
Claims 1-2, 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zheng et al (Beam-assisted large elongation of in situ formed Li2O nanowires).
Regarding claims 1-2, 4, Zheng et al teaches Li2O nanowires (which satisfies claimed 1D nanostructure) (Abstract). Zheng et al further teaches Li2O crystals with cubic structure (which satisfies claimed asymmetric unit) (Results, Discussion, Method).
Zheng et al teaches the limitations of the instant claims; hence, Zheng et al anticipates the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 December 13, 2025