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 .
Claim Status
Claims 1-6, 8, 9, 11-16, 18, 20, 21, 25, 31, and 36 are pending. Applicant’s election without traverse of Group I, Claims 1-6 in the reply filed on 03 October 2025 is acknowledged. Claims 8, 9, 11-16, 18, 20, 21, 25, 31, and 36 are withdrawn.
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hostert et al. (Journal of Physics: Materials, 2020, 3, 034003), hereinafter “Hostert”.
With respect to claims 1, 2, and 5, Hostert teaches a hydroxamic acid-functionalized graphene oxide thin film, wherein the hydroxamic acid groups are covalently boded to the graphene scaffold (see Abstract; Fig. 1), and the hydroxamic group corresponds to the structure recited in claim 5 when R1 = R2 = H.
With respect to claim 3, Hostert teaches that the graphene scaffold comprises graphene oxide, but is silent with respect to whether the graphene scaffold comprises Claisen graphene oxide; however, the Examiner submits that “Claisen graphene oxide” is considered to be a product-by-process limitation that refers to a step of obtaining graphene oxide, which is then covalently functionalized with identical hydroxamic acid groups. It has been held that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a non-obvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
With respect to claim 4, the limitations are rejected with claim 1 because they further define wherein the “one or more metal chelating functional groups comprise a N-alkoxyamide”, which corresponds to a embodiment that was not selected in the rejection above, and therefore is considered to be optional.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sydlik et al. (Adv. Funct. Mater. 2013, 23, 1873–1882), hereinafter “Sydlik”.
With respect to claims 1-3, Sydlik teaches a hydroxamic acid-functionalized graphene oxide, wherein the functionalization proceeds through a Johnson-Claisen rearrangement (see Scheme 2, compatible with how generation of “Claisen graphene oxide” is obtained as discussed in Paragraph [0049] of the published Specification), and hydroxamic acid groups are covalently bonded to the graphene oxide (see Scheme 5, which depicts that the hydroxamic group corresponds to the structure recited in claim 4 when R1 = H and R2 = a propargyl or dimethylaminopropyl group (see Scheme 5).
With respect to claim 4, the limitations are rejected with claim 1 because they further define wherein the “one or more metal chelating functional groups comprise a N-alkoxyamide”, which corresponds to a embodiment that was not selected in the rejection above, and therefore is considered to be optional.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sydlik et al. (Adv. Funct. Mater. 2013, 23, 1873–1882), hereinafter “Sydlik”.
With respect to claim 5 Sydlik teaches an example “click chemistry” covalent modification on Claisen graphene oxide using desired R- groups (Section 2.1.2.; Scheme 4), which correspond to R2 groups in the formula, with R1 = H, but does not specifically teach wherein R2 = H as claimed.
Although the reference fails to incorporate an R2 group of H, the similarity between the chemical structures and expected properties is sufficiently close that one of ordinary skill in the art would have been motivated to make the claimed hydroxamic acid group with R1 = R2 = H, especially in view of the generalized click chemistry discussion in Section 2.1.2. In re Payne (A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.”) 606 F.2d 303, 203 USPQ 245 (CCPA 1979); In re Dillon (discussed below and in MPEP § 2144 for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds), 919 F.2 d 688, 16 USPQ2d 1897 (Fed. Circ. 1991). See MPEP § 2144.08. Case law holds that homologues (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups vs. H) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hostert et al. (Journal of Physics: Materials, 2020, 3, 034003) in view of Al Nafiey et al. (Chemical Engineering Journal, 2017, 322, 375-384), hereinafter “Hostert” and “Al Nafiey”.
With respect to claim 6, Hostert does not specifically teach wherein the graphene oxide scaffold comprises magnetic nanoparticles.
Al Nafiey teaches an adsorbent comprising graphene oxide comprising immobilized Co3O4 magnetic nanoparticles (Abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the Co3O4 magnetic nanoparticles of Al Nafiey to the graphene oxide scaffold of Hostert because the graphene oxide of Hostert is used in detoxification of water comprising organic compounds including chemical warfare agents and organophosphate pesticides (Abstract), and because Al Nafiey teaches that the CoO4 nanoparticles decorated on the graphene oxide allow for fast adsorption of organic compounds and chromium ions from solution, are obtained in a straightforward one-step synthesis, and allow for effective separation from water following adsorption by simple application of an external magnet (Abstract).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sydlik et al. (Adv. Funct. Mater. 2013, 23, 1873–1882) in view of Al Nafiey et al. (Chemical Engineering Journal, 2017, 322, 375-384), hereinafter “Sydlik” and “Al Nafiey”.
With respect to claim 6, Sydlik does not specifically teach wherein the graphene oxide scaffold comprises magnetic nanoparticles.
Al Nafiey teaches an adsorbent comprising graphene oxide comprising immobilized Co3O4 magnetic nanoparticles (Abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the Co3O4 magnetic nanoparticles of Al Nafiey to the graphene oxide scaffold of Sydlik because the graphene oxide of Sydlik is disclosed as being a functional material that can be used in various applications (see Conclusions Section 3.), and because Al Nafiey teaches that the Co3O4 nanoparticles decorated on the graphene oxide allow for fast adsorption of organic compounds and chromium ions from solution, are obtained in a straightforward one-step synthesis, and allow for effective separation from water following adsorption by simple application of an external magnet (Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779
16 October 2025