DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶) where # denotes the page number and ¶ denotes the paragraph number of the pre-grant publication corresponding to this application: US 2024/0034630. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application; Restriction
Applicant’s election without traverse of Group I (Claims 1-15 and 17-20) in the reply filed on 5/28/2026 is acknowledged.
The response is non-compliant. Specifically, Claim 16 is listed as “(Previously Presented),” when it should be “(Withdrawn).” The requirement for correct status identifiers is waived for this reply only. MPEP 714 II. C. (E). Future replies should adopt correct status identifiers.
Claim(s) 1-20 is/are pending.
Claim(s) 16 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/28/2026.
Claim(s) 1-15 and 17-20 is/are currently amended.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
A number of issues were identified in the Notice to File Missing Parts dated 4/19/2023 and Notice of Incomplete Reply dated 9/21/2023. The Applicant has responded. Great weight was placed on the “[p]lease note that no new matter was included” statement made in the Remarks dated 10/19/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/22/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Construction
Numerous terms have been defined. The following are made of record as relevant to the claims and rejections, and are so adopted:
“A ‘stratified’ perimorphic framework, as defined herein, comprises a multiphase framework in which the two or more distinct perimorphic strata can be identified within the perimorphic wall. When describing a stratigraphic pattern, the present disclosure describes the pattern with a string of letters in which each distinct stratum is represented by a letter, the position of a stratum in relation to other strata is represented by the position of its letter with respect to the other letters in the string, and compositionally similar strata are designated by the same letter. Hence, the string AB represents a perimorphic wall comprising two distinct and compositionally dissimilar strata, while the string BAB represents a perimorphic wall comprising three distinct strata, wherein one inner stratum is sandwiched between two outer strata, the outer strata being compositionally similar.” (S. 12: [0267]) (emphasis added).
Stratified perimorphic framework is interpreted as meaning containing distinct strata, and distinctness is interpreted as meaning compositionally dissimilar.
“A ‘perimorph’ or ‘perimorphic’ material is a material formed in or on a solid-state or “hard” template material.” (S. 25: [0409]).
It noted that the Specification has departed from the ordinary and customary meaning of the term “perimorph.” Perimorph means “a crystal of one species enclosing one of another species.” Definition of “perimorph,” accessed online at https://www.merriam-webster.com/dictionary/perimorph on 7/30/2026.
Note that the Applicant’s definition does not require a crystal or the crystal to enclose another species. The definition only requires a material formed in or on a solid-state or “hard” template material.
“A ‘solventless precipitation,’ as defined herein, comprises the precipitation of a template precursor in the Precursor Stage, wherein the precipitation is substantially driven by a solution destabilization mechanism that does not require the introduction of a miscible antisolvent into the process liquid. As a first example of a solventless precipitation technique, a stock solution may be spray-dried. As a second example of a solventless precipitation technique, a metastable metal bicarbonate stock solution may be depressurized to reduce CO2 solubility, causing CO2 gas to be released and a metal carbonate to be precipitated. We note that the term “solventless precipitation” does not imply the absolute absence of a miscible liquid or solvent during precipitation, but rather indicates that precipitation is not principally driven by mixing a miscible liquid into the stock solution. One scenario that could be envisioned is a miscible liquid mixed with the process liquid that remains at substantially the same concentration throughout the Liquid Cycle.” (S. 27: [0445]).
Claim Rejections - 35 USC § 112
112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
I. Claims 1-15 and 17-20 – or as stated below – is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The analysis for determining whether a claim is supported by the disclosure is cast in terms of whether “undue experimentation” is necessary to practice the invention. See MPEP 2164.01. In examining the claims in light of the supporting disclosure, the Federal Circuit has provided a non-exclusive list of factors to consider in determining whether a disclosure is enabling. See generally In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These factors include:
The breadth of the claims;
The nature of the invention;
The state of the prior art;
The level of one of ordinary skill;
The level of predictability in the art;
The amount of direction provided by the inventor;
The existence of working examples; and
The quantity of experimentation needed to make or use the invention based on the content of the disclosure
Id. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” Id. The Examiner has considered all factors in light of all claims rejected makes the following findings of fact:
The breadth of the claims
Claim 1 is in the file and is not repeated here. At issue is the broadly phrased “III. Using the template to form a stratified perimorphic framework” language. The “using” language is indefinite for not actually reciting a process or method step and is rejected elsewhere on these grounds. As discussed above, the “stratified perimorphic framework” language is construed to mean “containing distinct strata,” with “distinctness interpreted as meaning compositionally dissimilar.” Thus, the claim requires “using” a template to form something with compositionally dissimilar strata.
If Applicants disagree, construing the term on the record would be helpful in withdrawing the rejection.
The nature of the invention
According to the Specification, “[t]his disclosure relates to a method for the scalable production of diverse perimorphic materials, including stratified perimorphic materials comprising two or more perimorphic strata.” (S. 1: [0002]). The PGPUB of this application is nearly 500 pages long. Other characterizations of the “invention” could certainly be made. To the extent it matters, Applicants are invited to characterize their invention differently.
The state of the prior art
The closest prior art, as presently understood, is that of the inventors. The following are made of record:
WO 2019/083986 to Thomas, et al. Thomas was applied by the International Search Authority in the international application related to this application, PCT/US2021/053316. The Written Opinion has not been made of record, but is made of record with this Office Action (hereinafter “Opinion at __”). The analysis in the Written Opinion is incorporated herein by reference. As understood, the Opinion relies upon paragraph [0110] of Thomas and the deposition of a carbon layer over another carbon layer. (Thomas 34: [0110]) (The conditions chosen for B3 were such that a thin stratum of defective carbon (˜14% of the overall mass) would be grown over B2, but also produce a dramatic change in hydrophilicity. Sample B3 is therefore a stratified multilayer structure consisting of a reactive “skin” formed over an inert stratum.”). Note that B2 involves depositing a carbon layer on a template. (Thomas 30: [0101]). Thus, the two stratum (B2 and B3) are both carbon, i.e. they are not of a dissimilar composition. Note also that Thomas dissolves the template, i.e. the template is not ““used”” to create dissimilar stratum.
Wang, et al., Creation of nanopores on graphene planes with MgO template for preparing high-performance supercapacitor electrodes, Nanoscale 2014; 6: 6577-6584 (hereinafter “Wang at __”). Wang teaches what is understood to be solventless precipitation of an MgO template, followed by CVD growth of graphene and dissolution of the template. (Wang at 6578, col. 1 – Experimental). As understood, the template is not ““used”” to create dissimilar stratum.
Chesnokov, et al., Template Synthesis of Graphene, Doklady Physical Chemistry 2019; 488(2): 154-157 (hereinafter “Chesnokov at __”). Chesnokov teaches what is understood to be solventless precipitation of an MgO template, followed by CVD growth of graphene and dissolution of the template. (Chesnokov at 155, col. 1 – Experimental). As understood, the template is not ““used”” to create dissimilar stratum.
The level of one of ordinary skill
The level of skill in the art, reasonably inferred from the prior art, is resolved as a masters or doctorate level chemist or chemical engineer.
The level of predictability in the art
The level of predictability in the art requires a threshold inquiry of what is being predicted. Here, it is the ability to ““use”” a template to create compositionally dissimilar strata. The prior art reflects the template functioning as a substrate for whatever is deposited upon it. The template has no role ““forming”” the composition. The composition “is what it is,” and it is deposited on the template. The template does not form the compositionally dissimilar strata, as claimed. As such, the art is unpredictable. Alternatively, it is predictable and the claim is inoperative.
The amount of direction provided by the inventor
The Specification is voluminous, incorporating other applications by reference and then reproducing some of these applications, with alterations. (S. 1: [0001]; 12: [0260] et seq.). As best understood, the Specification does not teach ““using”” a template to form something with compositionally dissimilar strata. Rather, the Specification teaches that taught in the prior art: deposition of a substance onto the template. (S. 15: [0301] et seq.). The Specification states:
[0304] In some variants, the PC structure formed by adsorption of the adsorbate may comprise at least one of a single perimorphic phase, two or more distinct perimorphic phases, and two or more perimorphic phases arranged in distinct perimorphic strata. In some variants, the distinct strata may be applied via multiple, sequential surface replication procedures occurring prior to or following endomorphic extraction. In some variants, a perimorphic stratum may be sandwiched between two z-adjacent strata.
(S. 15: [0304]). This would seem to suggest that the “stratified perimorphic framework” is actually formed by “adsorbing” the adsorbate by the techniques described at (S. 15: [0301]), and not ““using”” the template, as claimed.
The existence of working examples
Passages styled as examples were presented. (S. 19: [0353] et seq.). It isn’t entirely clear which examples are “working” examples. Many if not most are written in the future or conditional tense, versus the past tense indicating work actually done.
As understood, the examples for this application (prophetic and/or working) begin at (S. 19: [0353] – 24: [0397]). As best understood, the prophetic example refers to depositing carbon on a template. (S. 19: [0356]). It is unclear whether “the general method and the preferred method” referenced refer to removing the template. From the context, it would seem as if the template is removed, as the remainder of the example recites mixing the carbon with various substances. (S. 19: [0357] et seq.). Somehow, a “silica-like perimorphic material” is produced. (S. 20: [0359]). The Specification goes on to recite “On the other hand, the inert atmosphere of the thermal treatment utilized in Example P24 preserves the carbon perimorphic stratum and results in SiOxCy strata, arranged in a BAB stratigraphic arrangement where the A stratum is carbon and the B strata comprise SiOxCy.” (S. 20: [0359]). Regardless of how this stratigraphic arrangement occurs, it would not appear to involve ““using”” the template.
The remaining examples were considered. As understood, none teach ““using”” the template to make a stratified perimorphic, as could be discerned from all of the incorporated and cross-referenced preferred/general methods. See (S. 20: [0363]: “Other exemplary templates and procedures described in References A and B may be readily utilized in concert with the approach described in Example P24 and Example P25.”).
The quantity of experimentation needed to make or use the invention based on the content of the disclosure
Those factors supporting a conclusion of enablement include the level of skill in the art. Those factors supporting a conclusion of non-enablement include all other factors. Arguably infinite and certainly undue experimentation is needed to practice the claimed invention.
112(b)
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.
I. Claim(s) 1-15 and 17-20 – or as stated below – is/are 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 1 recites “[u]sing the template to form a stratified perimorphic framework.” “Use,” and all its permutations (using, used, etc.) are problematic insofar as they do not set forth any process steps. See MPEP 2173.05(q). It is unclear how the template is ““used”” to form the stratified perimorphic framework, as construed above. The Specification is lacking in providing meaningful context, as discussed above.
Claim 1 recites “substantial portions.” This is a relative term for which the specification provides no means for ascertaining the requisite degree. What is the difference between a substantial portion and an insubstantial portion?
All instances of “substantially” in all claims – see e.g. Claim 10 – are similarly rejected.
Claim 9 recites “a portion of …. Is stratigraphically encapsulated.” It is unclear how only a portion can be encapsulated. Encapsulated suggests the entire framework is surrounded yet only a portion is required to be encapsulated. What is the difference between a portion being encapsulated and a layer?
Claim 13 recites “a polymeric preceramic material.” As understood, the only time this language was used in the Specification was in the claims. As such, it is unclear how to construe this term.
Dependent claims not specifically addressed import the issues of the claims from which they depend.
112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
I. Claim(s) 17 – or as stated below – is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 17 recites “deriving of the precursor from the first stock solution comprises at least one of: a solventless precipitation, a dissolution, a decomposition.” In discussing proper dependent claims, MPEP 608.01(n) III states “if claim 1 recites the combination of elements A, B, C, and D, a claim reciting the structure of claim 1 in which D was omitted or replaced by E would not be a proper dependent claim, even though it placed further limitations on the remaining elements or added still other elements.” Here, the “dissolution” and “decomposition” replaces the solventless precipitation of Claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
I. Claim(s) 1-15, 17 and 20 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/083986 to Thomas, et al. (2019-05-02; C01B 32/186) in view of:
(i) Wang, et al., Creation of nanopores on graphene planes with MgO template for preparing high-performance supercapacitor electrodes, Nanoscale 2014; 6: 6577-6584 (hereinafter “Wang at __”), and further in view of:
(ii) Shi, et al., van der Waals Epitaxy of MoS2 Layers Using Graphene As Growth Templates, Nano Lett 2012; 12: 2784-2791 (hereinafter “Shi at __”).
With respect to Claim 1, this claim requires “I. Deriving a precursor from a first solution of ions in a process liquid via solventless precipitation.” Thomas teaches a MgO template, but does not go into detail as to how it was produced. (Thomas 20: [0076]). In a similar process, Wang teaches making MgO with what is understood to be solventless precipitation. (Wang at 6578, col. 1 – Experimental). Use of a known method for making MgO, especially in a similar application (to make a template for graphene growth) does not impart patentability. MPEP 2143; KSR.
Claim 1 further requires “II. Forming a template from the precursor.” A template is formed. (Thomas 20: [0076). See also (Wang at 6578, col. 2: “The magnesium oxide was applied as the template…”)
Claim 1 further requires “III. Using the template to form a stratified perimorphic framework.” Both Thomas and Wang teach forming carbon/graphene on the template. See e.g. (Thomas 20-21: [0077]); (Wang at 6578, col. 2 - Experimental). As discussed above, “stratified perimorphic framework” is interpreted as something with compositionally dissimilar strata. To the extent neither Thomas nor Wang teach this, this does not impart patentability. The difference is merely a second deposition step. This is well within the skill in the art. As but one example, Shi teaches CVD of MoS2 on graphene. (Shi at 2875, col. 2 – Results and Discussion; passim). This reflects application of known techniques to achieve predictable results. This does not impart patentability. MPEP 2143; KSR. Alternatively or additionally, one of skill in the art would be motivated to apply a coating of MoS2 to make optical or electronic devices, for the reasons as stated. (Shi at 2784; passim).
Claim 1 further requires “IV. Dissolving the template to form a second solution of ions in the process liquid, such that substantial portions of the ions and the process liquid are conserved and recycled.” The template is dissolved. (Thomas 21: [0077]); (Wang at 6578, col. 2 - Experimental). Recycling is an obvious expedient to save money, dispose of less acid, etc.
As to Claim 2, the discussion accompanying Claim 1 is relied upon.
As to Claim 3, AB is taught by the combination (graphene + MoS).
As to Claim 4, MoS2 is semiconducting. (Shi at 2784, col. 2).
As to Claim 5, one layer on top of another would “stratigraphically occlude” the other one. The discussion accompanying Claim 1 is relied upon.
As to Claim 6, one layer on top of another would “stratigraphically shield” the other one. The discussion accompanying Claim 1 is relied upon.
As to Claim 7, one layer of MoS2 on top of graphene would “stratigraphically shield” the graphene or carbon. The discussion accompanying Claim 1 is relied upon.
As to Claim 8, see discussions of Claims 5-7.
As to Claim 9, “a portion” is interpreted broadly. See discussions of Claims 5-8.
As to Claim 10, see discussions of Claims 5-9.
As to Claim 11, MoS2 is taught. (Shi Title; passim).
As to Claim 12, graphene is taught. (Thomas 5: [0015]; passim).
As to Claim 13, notwithstanding the issues above, graphene is interpreted as a polymeric preceramic material. (Thomas 5: [0015]; passim).
As to Claim 14, sodium is taught. (Thomas 56: [0177])
As to Claim 15, graphene is taught. (Thomas 5: [0015]; passim).
As to Claim 17, solventless precipitation has been addressed above.
As to Claim 20, a “change” (broad language) is taught. (Wang at 6578, col. 2: “converted it into flake-like porous magnesium oxide.”).
II. Claim(s) 18-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/083986 to Thomas, et al. (2019-05-02; C01B 32/186) in view of:
(i) Wang, et al., Creation of nanopores on graphene planes with MgO template for preparing high-performance supercapacitor electrodes, Nanoscale 2014; 6: 6577-6584 (hereinafter “Wang at __”), and further in view of:
(ii) Shi, et al., van der Waals Epitaxy of MoS2 Layers Using Graphene As Growth Templates, Nano Lett 2012; 12: 2784-2791 (hereinafter “Shi at __”), and further in view of:
(iii) Nemade, et al., Synthesis of MgO Nanoparticles by Sovent Mixed Spray Pyrolysis Technique for Optical Investigation, International Jouranl of Metals 2014; 389416: pp. 1-4 (hereinafter “Nemade at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 18, to the extent neither Thomas, Wang, nor Shi teaches the atomization, Nemade teaches spray pyrolysis to make MgO. (Nemade Abstract, passim). The combination reflects application of known techniques to achieve predictable results. This does not impart patentably. MPEP 2143; KSR. Alternatively or additionally, one of skill in the art would be motivated to employ atomization / spray-pyrolysis for any number of reasons, for example the “excellent crystal structure.” (Nemade “Abstract”).
As to Claim 19, spray pyrolysis is taught. (Nemade “Abstract,” passim).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony J. Zimmer can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
Prosecution Insights