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 .
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.
Status of Application
Claims 1-4, 7-9, 11, 13-17 and 19-25 are pending and presented for examination. Claims 1-4, 79, 11 and 13-17 were elected without traverse in the response dated 30 December 2025. As such claims 19-25 are withdrawn by the Examiner as they are non-elected. As such, THIS RESTRICTION REQUIREMENT IS MADE FINAL.
Priority
Acknowledgement is made of applicant's request for foreign priority under 35 U.S.C. §119(a)-(d). Certified copies of the priority documents have been received.
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 4 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 4 is rejected under 35 U.S.C. 112(b) to as it recites an improper Markush grouping “selected from the group comprising . . .” as it is unclear what the alternatives are to be selected from (See MPEP 2173.05(h)). For the purposes of compact prosecution, it should read “the precursor comprises a polyimide, a polybenzimidazole, or the polymeric graphene precursor is selected from the group consisting of polysulfone, . . ., and lignin.”.
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 1-4 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN111099581 to Huang et al. (hereinafter, “Huang at __”; citations made to the attached machine English translation, cited by Applicants).
Regarding claims 1, 3 and 4, Huang discloses a method of making graphene (Huang at “Abstract”) comprising:
Providing a polymeric graphene precursor comprising one or more donor atoms (polyimide, Huang at 2, polyimide has nitrogen atoms in it so it meets “donor atom” and also meets claims 3 and 4);
Subjecting the polymeric graphene precursor to a bulk thermal heat treatment (Huang at 1); and
Subjecting the graphene obtained by the bulk thermal heat treatment to a ball milling step (3).
As to claim 2, given graphitization of polyimide one of ordinary skill in the art would expect some level of nitrogen doping to occur within the graphene formed, absent evidence to the contrary, though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
As to claim 13, milling can occur for 1-24 hours (3).
Claims 1-3, 11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 7071258 to Jang et al. (hereinafter, “Jang at __”).
Regarding claims 1 and 3, Jang discloses a method for producing graphene (Jang at “Abstract”) comprising:
Providing a graphene precursor comprising one or mor donor atoms (polyacrylonitrile which has an N donor atom or phenol-formaldehyde resin which has O);
Subjecting the polymeric graphene precursor to a bulk thermal heat treatment to obtain graphene (300-1000 C, “Summary of the Invention”); and
Subjecting the graphene obtained from the bulk thermal heat treatment to ball milling (Jang at 8:1).
As to claim 2, the graphene has nitrogen or oxygen in it (Jang at 7:60-63).
Concerning claim 11, an inert atmosphere is utilized (3:63).
Turning to claim 13, ball milling occurs for 24 hours (“Example 1”).
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.
Claims 14, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Huang as applied to claim 1 above.
Concerning claims 14, 16 and 17, sonication can be performed in an organic solvent for 24 hours (“Example 6”). Sonication can occur for 24 hours (“Example 6”), while this Example utilizes jet milling, the reference discloses that ball milling can be used in place of jet milling as they are intended for the same purpose and is thusly prima facie obvious (see MPEP 2144.06).
Claim 15 (16 as an alternative) is rejected under 35 U.S.C> 103 as being unpatentable over Huang as applied to claim 14 above, and in further view of US PG Pub No. 20160325543 to Casiraghi et al. (hereinafter, “Casiraghi at __”).
Regarding claim 15, Huang does not expressly state sonication at 80-100 kHz.
Casiraghi in a method of forming graphene discloses usage of a sonication frequency of 10-100 kHz (Casiraghi at [0132]) which overlaps that range instantly claimed such that a prima facie case of obviousness exists (see MPEP 2144.05). 1-4 day sonication is also disclosed as an alternative for claim 16.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to perform the method of Huang in view of the frequency for sonication of Casiraghi. The teaching or suggested motivation in doing so being smaller sizes (Id.).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Jang as applied to claim 1 above.
Regarding claims 7 and 8, Jang discloses heat treating at 300-1000 C which overlaps that range instantly claimed such that a prima facie case of obviousness exists (see MPEP 2144.05).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Jang as applied to claim 1 above, and in further view of “Strengthened PAN-based carbon fibers obtained by slow heating rate carbonization” to Kim et al. (hereinafter, “Kim at __”).
Regarding claim 9, Jang does not expressly state a heating rate.
Kim in a method of carbonizing PAN discloses using a heating rate between 0.5 and 10 C/min which overlaps that range claimed which is prima facie obvious (see MPEP 2144.05).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to perform the method of Jang in view of the heating rate of Kim. The teaching or suggested motivation in doing so being is a La=4 nm Lc=1 nm (“Fig. 1a”).
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Jang as applied to claim 1 above, and in further view of Casigarhi.
Regarding claim 14-16, Jang does not expressly state usage of sonication.
Casigarhi in a method of exfoliating graphite discloses usage of sonication for 3-4 days at 10-100 kHz which overlaps the instantly claimed range of 80-100 kHz which is prima facie obvious ([0132]).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to perform the method of Jang in view of the sonication of Casigarhi. The teaching or suggested motivation in doing so being decrease in size (Id.).
Turning to claim 17, an organic solvent can be utilized (Casigarhi at [0098]).
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US PG Pub No. 20160002046 to Srivastava.
Srivastava discloses a method for producing graphene (Srivastava at “Abstract”) comprising: Providing a polymeric graphene precursor comprising one or more donor atoms (polyphenylenoxadiazoles (POD), polybenzothiazole (PBT), polybenzobisthiazole (PBBT), polybenzooxazole (PBO), polybenzobisoxazole (PBBO), aromatic polyimides (PI), aromatic polyamides (PA), polypyromellitimide, polyphenyleneisophthalimamide, polyphenylenbenzoimidazole (PBI), polyphenylenebenzobisimidazole (PPBI), polythiazole (PT), poly-p-phenylenevinylene which have donor atoms of N. However, Srivastava wants to use a milling technique which is not ball milling.
Conclusion
Claims 1-4, 7-9, 11, 13-17 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/ Primary Examiner, Art Unit 1759