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 claims are newly amended.
Response to Arguments
Applicant's arguments filed 2/19/26 have been fully considered but they are not persuasive in-part and newly considered in-part.
The remarks state on page 6, the following:
The Hennighausen reference is the prior work of the current inventor Dr. Hennighausen.
The Examiner states: "Therefore, although Hennighausen does not specifically teach that the product contains a R3m bismuth oxide, since the product is made the same way, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same method of making would make the same product."
The Applicant respectfully submits the Hennighausen reference differs from the current application in significant ways.
The Hennighausen reference demonstrates the material only on a TMD substrate.
"TMD" is cited at least 97 times in the reference.
In contrast, with the currently claimed invention, we synthesized and demonstrated the Bi203 using MBD-grown material that had not interacted with the TMD, it is distinct from the previous publications that demonstrated the material only on a TMD substrate, which stabilized it.
Dr. Hennighausen has stated, "I realized after doing this research that our Bi2O3 publication is different than my previous publications cited by the PTO Rep. Since we synthesized and demonstrated the Bi203 using MBD-grown material that had not interacted with the TMD, it is distinct from the previous publications that demonstrated the material only on a TMD substrate, which stabilized it."
Our Rhombohedral-phase Bi203 is unique for the following reasons:
1. Method - because it is grown using MBD first and then using a laser
converted. The prior art cited did NOT use MDB first to grow the Bi203,
and had the Bi203 stabilized on a TMD.
2. We synthesized the thinnest variant, as far as we can tell. It's ultra thin
(~3nm). In contrast, others are bulk - being several hundred nanometers to
microns thick.
3. Others require some stabilization using doping or a substrate. We do not.
Furthermore, our current invention uses a purely MBD grown material. Others are CVD.
We grow on sapphire. Others grew on TMD.
We convert the MBD grown Bi2Se3 to Bi203 while it's on a TEM grid suspended.
Other variants converted while it is on the TMD.
The remarks are respectfully not persuasive. The claim amendments add a lot of intended use and process features. However, the current claims on file are product claims. These features are newly treated below.
As to Henninghause’s use of a TMD substrate, this is respectfully contended. The Henninghause reference also teaches use of a TEM substrate (see Fig. 2B, 4A, 4B, 4D, 4D, Detailed Description, para. 1 and many other references to use of a TEM substrate).
Nonetheless, a TEM substrate and a TMD substrate differ in that the TMD substate typically contains dichalcogenides. However, these compounds do no make a physical change, either chemically or structurally to the nano-thin BixOySez, but serve as supports for which to grow the thin compounds. The purpose, based on the remarks, of the substrate is to aid in the manufacture of an ultra-thin BixOySez product. Therefore, use of the TEM instead of the TMD does not alter the product.
Furthermore, Applicant argues that MDB is not used to grow the product, but that this is used to grow a thin layer of the product. It is argued that the method used is not required since this is a product-by-process feature. The resulting thin layer is taught by the reference (see below).
Next, the remarks argue the following:
Still furthermore, our material comprises Bi and O and our material has some defects at oxygen sites, where O is missing leaving a gap, allowing oxygen to transport through.
Applicant respectfully submits the material is not a naturally occurring polymorph, and Bi203 in this crystallographic phase and purity level has never before been synthesized or existed.
This feature is newly considered given the claim amendments.
Claim Objections
Claim 4 is objected to because of the following informalities: Claim 4 depends on canceled Claim 3. It will be treated as depending on Claim 1. Appropriate correction is required.
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.
Claim(s) 1, 4, 5, 6, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hennighausen (WO 2020/132152).
The specification of this application explains that BixOySez and R3m bismuth oxide are made by laser processing a few layers of Bi2Se3 in an oxygen environment, which steadily incorporates oxygen by the removal of some selenium in the composition (see published specification, para. 47). Further, the Bi2Se3 is grown by either CVD or molecular beam epitaxy (see published specification, para. 47).
Hennighausen describes a 2D material (abstract and title). The composition can be either a single or several Bi2Se layers grown epitaxially to make a 2D material (page 23, lines 12-13). The compound then uses laser treatment in air brought about that can contain O2 (page 29, lines 5-6, 18-19). The Bi2S3 reacts with O2 to form BixOy (page 37, lines 13-18). This meets the features of the claim because the values of x, y and z of the claimed material: BixOySez can be any variable so that z can be zero. The BixOy formed in Hennighausen can be bismuth oxide, where x can be 2 and y can be 3 (of the claim). The total thickness of the produced composition is 1nm for the first layer and 1-5nm for the second layer (see Claim 24).
Therefore, although Hennighausen does not specifically teach that the product contains a R3m bismuth oxide, since the product is made the same way, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same method of making would make the same product.
As to the method of making features, these are product-by-process features.
Although Hennighausen does not explicitly teach the method steps as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious 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). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Hennighausen meets the requirements of the claimed product, Hennighausen clearly meets the requirements of the present claim.
As to the intended use features, Henninghausen explains that O2 can pass through the membrane through defect-assisted diffusion of oxygen (page 32, lines 8-11). Therefore, since the composition is the same, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition would be effective to be used in the same way.
As to the preamble, these features are intended use features, but additionally, since they are in the preamble, the courts have held that “a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone”. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
As to Claim 4, Hennighausen teaches the features described in Claim 1. That rejection is re-itered here. Claim 4 describes intended use features and properties of the product if used in the way described. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same compound made the same way would produce the same properties if used in the same way.
As to Claims 5 and 6, Hennighausen teaches that a first layer has an average thickness of about 1nm and the second layer has an average thickness of about 1-5nm (page 7, lines 28-30). The first layer can be considered the first material and the second layer can be considered the 2D material that the first layer is combined with. Both layers are 2D materials (page 7, see 19 and then 24 depends from 19).
As to the Bi2O3 modulating and creating changes in the 2D material properties with precision and spatial selectivity, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same compound made the same way would produce the same properties.
As to Claim 7, Hennighausen teaches the features described in Claim 1. That rejection is re-itered here. Claim 7 describes intended use features and properties of the product if used in the way described. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same compound made the same way would produce the same properties if used in the same way.
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 SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30. 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.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 March 18, 2026