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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 102
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.
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 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0385516 A1 [Nakasuga].
Regarding Claim 1:
Nakasuga discloses a graphene grid having a graphene surface treated with a halogen oxide radical so as to modify the graphene surface and introduce at least one substituent (see Formulae 1 and 7 below),
wherein a functional group is introduced to the modified graphene surface through the substituent being reacted. See Formulae 1 and 7 below.
Both the “treated with…” and the “…being reacted” limitations are product-by-process limitation. Regarding these product-by-process limitations, the applicant is advised that, even 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, (Fed. Cir. 1985). In this case, the cited limitations failed to distinguish the claimed structure from Formulae 1 and 7 of Nakasuga. See MPEP § 2113. This is because the chemical appears to be identical to the claimed chemical apart from their respective methods of manufacture, and there is no evidence that the claimed chemical would exhibit materially different characteristics than the chemical of Nakasuga due to the claimed method of manufacture.
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Regarding Claim 2:
Nakasuga discloses the graphene grid according to claim 1, having a graphene surface into which at least one substituent selected from the group consisting of a hydroxy group, a carboxy group, and an aldehyde group is introduced, and the functional group is introduced by a reaction of the substituent. As described in paras 75-76.
Regarding Claim 3:
Nakasuga discloses the graphene grid according to claim 1, wherein
the functional group is at least one group selected from the group consisting of a hydroxy group, a carboxy group, an aldehyde group, a carbonyl group, an ether bond, an ester bond, an amino group, an imino group, a sulfonyl group, a sulfonyloxy group, and a fluoroalkyl group. Paras 56, 66, 70.
Claim Rejections - 35 USC § 103
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.
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.
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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Nakasuga in view of US 9,040,013 B2 [Sadana]
Regarding Claim 4:
Nakasuga teaches the graphene grid according to claim 1, but does not specify that
the functional group is an ether bond. Sadana teaches a graphene grid with an ether bond as a functional group. 4:40-43. It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the ether bond functional group taught by Sadana to the graphene of Nakasuga, since Sadana demonstrates that this is an effective functionalization and Nakasuga explains that the selected functional group is not particularly limited (Nakasuga para 38).
Regarding Claim 5:
Nakasuga teaches the graphene grid according to claim 1, but does not specify that
the functional group is an epoxy group. Sadana teaches a graphene grid with an epoxy group as a functional group. 4:40-43. It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the epoxy group functional group taught by Sadana to the graphene of Nakasuga, since Sadana demonstrates that this is an effective functionalization and Nakasuga explains that the selected functional group is not particularly limited (Nakasuga para 38).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 12,125,668 [Van Putte] in view of Nakasuga.
Regarding Claim 6.
Van Putte teaches a grid for cryo-electron microscopy (abstract) being a graphene grid (6:54-55) and a structural analysis target substance to be analyzed by cryo-electron microscopy 6:18-21 – analyte), wherein the structural analysis target is bonded to the graphene grid (6:18-21 – bonded by the linkers).
However, Van Putte does not specify using the grid according to claim 1. Nakasuga teaches a functionalized graphene grid. See above. It would have been obvious to one of ordinary skill in the art before the effective time of filing to substitute the generic graphene film of Van Putte with the functionalized graphene of Nakasuga noted above, since substituting one graphene film with another would yield predictable results to one of ordinary skill in the art. Further, one would have been motivated to make such a substitution since the functionalized nature of the Nakasuga graphene could provide an opportunity to manipulate analyte attachment in a desirable fashion. Van Putte 10:48-58.
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 WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881
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