DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fleming.
Regarding claim 1, Fleming teaches a porous composite membrane (¶7) comprising:
a plurality of graphene oxide sheets (¶63, ¶70); and
nanoparticles (spacer elements) bound to at least one surface of the graphene oxide sheets by electrostatic and/or Van der Waals interactions (¶14).
Fleming further teaches where the charge of the nanoparticles affects the functional group function (¶15).
Fleming does not teach wherein the nanoparticles have a positive charge of not less than 30 m V Zeta potentials at pH 7.
MPEP states that where a variable is known to affect a result, a prima facie case of obviousness exists to optimize the variable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nanoparticle charge, such as to where the nanoparticles have a positive charge of not less than 30 m V Zeta potentials at pH 7, in order to optimize the nanoparticle function (Fleming ¶15).
Regarding claim 2, Fleming teaches all the limitations of claim 1. Fleming further teaches a porous composite membrane (¶7) comprising: wherein the composite membrane includes the plurality of graphene oxide sheets in a stacked formation (Figs 2A and 2C, ¶70), and wherein the nanoparticles (16) are intercalated between any two adjacent graphene oxide sheets of the plurality of graphene oxide sheets.
Regarding claim 3, Fleming teaches all the limitations of claim 1. Fleming further teaches wherein the graphene oxide sheets have an average lateral size less than 5 μm (¶26).
Fleming does not teach wherein the graphene oxide sheets have an average lateral size about 200 nm to 15 μm.
MPEP states that where claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the average lateral size (¶26) of the graphene oxide sheets of Fleming to be an average lateral size about 200 nm to 5 μm as an obvious choosing overlapping ranges.
Regarding claim 4, Fleming teaches all the limitations of claim 1. Fleming further teaches wherein the nanoparticles have an average diameter of about 0.5 to 200 nm (¶12).
Fleming does not teach wherein the nanoparticles have an average diameter of about 3 to 10 nm.
MPEP states that where claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the average diameter (¶12) of the nanoparticles of Fleming to be an average diameter about 3 to 10 nm as an obvious choosing overlapping ranges.
Regarding claim 5, Fleming teaches all the limitations of claim 1. Fleming further teaches where the coverage percent of the nanoparticles affects the sheet spacing (¶13).
Fleming does not teach wherein an amount of about 5 to 40 % wt of the nanoparticles are assembled on each individual graphene oxide sheet surface by electrostatic and/or hydrogen bond interactions; and the % wt being expressed based on the total weight graphene oxide sheets plus nanoparticles.
MPEP states that where a variable is known to affect a result, a prima facie case of obviousness exists to optimize the variable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nanoparticle coverage, such as to where an amount of about 5 to 40 % wt of the nanoparticles are assembled on the graphene oxide sheet surface by electrostatic and/or hydrogen bond interactions; and the % wt being expressed based on the total weight graphene oxide sheets plus nanoparticles, in order to optimize the sheet spacing (Fleming ¶13).
Regarding claim 6, Fleming teaches all the limitations of claim 1. Fleming further teaches where the charge of the nanoparticles affects the functional group function (¶15).
Fleming does not teach wherein the nanoparticles have a positive charge of not less than 30 m V Zeta potentials at pH 7.
MPEP states that where a variable is known to affect a result, a prima facie case of obviousness exists to optimize the variable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nanoparticle charge, such as to where the nanoparticles have a positive charge of not less than 30 m V Zeta potentials at pH 7, in order to optimize the nanoparticle function (Fleming ¶15).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fleming as applied to claim 1 above and further in view of Janowska et al. US 2019/0382561 (hereafter Janowaska).
Regarding claim 7, Fleming teaches all the limitations of claim 1. Fleming further teaches wherein the nanoparticles can include any nanoparticles/nanostructures including carbon nanoparticles/nanostructures (¶15).
Fleming does not teach wherein the nanoparticles include nanodiamonds particles having a positively charged surface or polyhedral oligomeric silsesquioxanes particles having a positively charged surface.
Janowska teaches a membrane (¶108) comprising graphene sheets (¶9) and nanoparticles including nanodiamonds where nanodiamonds can catalyze dehydrogenation (¶6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nanoparticle (¶15) of Fleming to comprise the nanodiamonds (¶6) of Janowska in order to catalyze dehydrogenation (¶6).
Fleming further teaches where the charge of the nanoparticles affects the functional group function (¶15).
MPEP states that where a variable is known to affect a result, a prima facie case of obviousness exists to optimize the variable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nanoparticle charge, such as to where the nanodiamonds particles have a positively charged surface, in order to optimize the nanoparticle function (Fleming ¶15).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fleming as applied to claim 2 above.
Regarding claim 8, Fleming teaches all the limitations of claim 2. Fleming further teaches wherein the nanoparticles have an average diameter of about 0.5 to 200 nm (¶12) and where the interlayer distance between the stacks (as shown in Fig 2).
Fleming does not teach wherein at least a part of the interlayer distance between any two adjacent graphene oxide sheets of the plurality of graphene oxide sheets is not more than 0.6nm.
MPEP states that where claimed and prior art ranges overlap, a prima facie case of obviousness exists to choose the overlapping portions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the average diameter (¶12) of the nanoparticles of Fleming to be an average diameter about 0.6nm as an obvious choosing overlapping ranges which would result in wherein at least a part of the interlayer distance between the stacks graphene oxide sheets is not more than 0.6nm.
Response to Arguments
The following is a response to Applicant’s arguments filed 22 Sep. 2022:
Applicant argues that the claim objections are overcome by amendment.
Examiner agrees and the claim objections are withdrawn.
Applicant argues that the 112b claim rejections are overcome by amendment.
Examiner agrees and the 112b rejections are withdrawn.
Applicant argues that Fleming does not teach and would not be obvious for the nanoparticles having an overall positively charged surface.
Examiner disagrees. As noted by Applicant, the ammonium group can have an overall positive charge depending on the pH of the system. Further, Fleming teaches charged spacer elements where the charge affects the function (¶15). Thus, the teachings of Fleming makes obvious the claimed invention.
Applicant argues that a zeta potential of not less than 30mV at pH 7 would not be obvious because Fleming does not teach a relationship between the zeta potential and the presence of the ammonium group.
Examiner disagrees. Fleming teaches where the charge affect the function and therefore it would have been obvious to optimize the charge to be at least 30mV in order to affect the function.
Applicant argues that the modification of Fleming with the nanodiamonds of Janowska would result in the destruction of the porous composite membrane.
Examiner disagrees. Janowska and Fleming each teach the nanoparticles in a graphene sheet, and thus one of ordinary skill would expect the nanodiamonds to be capable of not destroying the graphene sheet.
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 STEPHEN HOBSON whose telephone number is (571)272-9914. The examiner can normally be reached 9am-5pm.
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, Jennifer Dieterle can be reached at 571-270-7872. 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.
/STEPHEN HOBSON/Examiner, Art Unit 1776