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
The Amendment filed on 17 April 2026 has been entered; claims 1-6, 20, 21, 25, 31, and 36-45 remain pending, of which claims 20, 21, 25, 31, and 36 were previously withdrawn.
Response to Arguments
Applicant’s arguments, see the Remarks, filed 17 April 2026, with respect to the rejections of the claims 1-5 under 35 USC 102(a)(1) over Hostert and claim 6 under 35 USC 103 over Hostert in view of Al Nafiey have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made under 35 USC 103 as being unpatentable over Hostert in view of Tofan regarding claims 1-5, and for claim 6 under 35 USC 103 over Hostert in view of Tofan and further in view of Al Nafiey, as discussed below and as necessitated by amendment.
Applicant’s arguments, see Pages 8-9, filed 17 April 2026, with respect to the rejections over primary reference Sydlik have been fully considered and are persuasive. The rejection of claims 1-4 under 35 USC 102(a)(1) over Sydlik and claims 5 and 6 under 35 USC 103 over Sydlik and/or Al Nafiey have been withdrawn in light of Applicant’s amendments to the claims.
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 1-5, 38, 41, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Hostert et al. (J. Phys. Mater., 2020, 3, 034003) in view of Tofan et al. (Environmental Engineering and Management Journal, 2010, 9, 113-118: Abstract provided and relied upon), hereinafter “Hostert” and “Tofan”.
With respect to claims 1, 2, 5, and 41, 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.
Hostert teaches that the disclosed graphene scaffold with hydroxamic acid functional groups (“one or more chelating functional groups”) could be used as chelating agents of heavy metals in decontamination areas (see last sentence Conclusion), wherein hydroxamic acid meets the limitations of claim 5, which depends from claim 1, but does not specifically teach that the disclosed decontamination area comprises an aqueous liquid.
Tofan teaches removal of Pb(II) ions from aqueous solutions via hydroxamic acid-functionalized ion exchange resins (Abstract; ionic “bond” between metal and hydroxamic acid).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the decontamination area of Hostert with the aqueous solution of Tofan because Hostert teaches that hydroxamic acid functional groups are known to chelate metals, and because Tofan teaches that hydroxamic functional groups removed 98.64% of the Pb(II) ions in aqueous solution (see Abstract). In view of Tofan, the ordinary artisan would have a reasonable expectation that the metal chelating from decontamination areas as taught by Hostert could be successfully applied to aqueous solutions.
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 an embodiment that was not selected in the rejection above, and therefore is considered to be optional.
With respect to claims 38 and 43, Hostert in view of Tofan teaches effluent/wastewater treatment (see Abstract; keywords of Tofan).
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 Tofan et al. (Environmental Engineering and Management Journal, 2010, 9, 113-118: Abstract provided and relied upon) as applied to claim 1, and further 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 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).
Claims 39 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Hostert et al. (Journal of Physics: Materials, 2020, 3, 034003) in view of Tofan et al. (Environmental Engineering and Management Journal, 2010, 9, 113-118: Abstract provided and relied upon) as applied to claims 1 and 41, and further in view of Biegelsen et al. (U.S. Patent Publication # 2019/0275470), hereinafter “Hostert”, “Tofan”, and “Biegelsen”.
With respect to claims 39 and 44, Hostert in view of Tofan does not specifically teach that the graphene scaffold is attached to a porous substrate to form the recited porous structure.
Biegelsen teaches sandwiching graphene media layers within porous substrates (see Abstract; Paragraphs [0017, 0018, 0020]), wherein the layers are positioned in a in nanofiltration device which receives aqueous solutions in treatment applications which include desalination (includes metal cation removal) and seawater purification (Abstract; Paragraph [0015]).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the porous substrate of Biegelsen to the graphene scaffold of Hostert in view of Tofan because Biegelsen teaches that the porous substrate can applied to the graphene scaffold in a manner which allows for adjustment and optimization of interlayer gap size and filtration cutoff, while allowing for near frictionless flow of water through the graphene layers (see Abstract; Paragraphs [0014, 0015]).
Allowable Subject Matter
Claims 37, 40, 42, and 45 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, as none of the prior art teaches or suggests the N-alkoxylamine chelating functional groups as recited in claims 40 and 45, or the chelation of aluminum from acid mine drainage as recited in claims 37 and 42.
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 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 18 May 2026
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