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 .
Priority
While priority claims are acknowledged, as the present case is a continuation of a PCT Application, Applicant is reminded that both the PCT and the foreign priority documents need to be perfected, in order for the pending claims to be considered effectively filed as of the filing date of the foreign priority application. Applicant is directed to MPEP 1895.1 regarding relevant procedure concerning U.S. applications filed as continuation of PCT applications (which is different from the procedure for PCT applications entering national phase under 35 U.S.C. § 371).
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 of this title, 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 5 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2021/167747 A2 (“Mathis”).
It is noted that the portions of Mathis discussed below are fully supported in Provisional Application 62/965,208 at ¶¶ 0034-0057 and 0071-0077 thereof.
Considering claim 5, Mathis discloses a free-standing MXene film having conductivity of 10,000 to 20,000 S/cm, the MXene film comprising a plurality of single-layered Ti3C2 (a particular species of MXene) particles. (Mathis ¶¶ 0091 and 0105-0111). Mathis is analogous art, for it is directed to the same field of endeavor as that of the instant application (conductive film formed of MXene particles). As noted in the reference, all MXene materials have surface terminations. (Id. ¶¶ 0082-0083). Mathis thus discloses all limitations of claim 5 except that re: the rocking curve half-value and surface roughness.
It is noted that in the Instant Application, the claimed rocking curve half-value is obtained via a refined method of preparing MXene particles, wherein the primary (and sole) difference between comparative procedures and procedures used in the Instant Application is the number of times a solution containing MXene particles is subject to centrifugation treatment. (Spec. ¶¶ 0167-0169). It is noted that the procedure used in Mathis is substantially similar to those described for the working examples of the Instant Application, namely that a crude suspension of MXene is first wash takes place at centrifugation of 3,500 rpm of 3 to 5 minutes, followed by subsequent washes, each of which at centrifugation of 3,500 rpm for 1 hour, with an example having been washed four times total. (Mathis ¶¶ 0108-0111). In comparison, the crude suspension of MXene of the Instant Application is initially washed at centrifugation of 3,500 for 3 minutes, followed by two subsequent centrifugation steps, the first one for 15 minutes and the second one for 30 minutes, with an optional further centrifugation at 45 minutes. (Spec. ¶¶ 0167-0169).
From the foregoing, it can be concluded that the purification procedures used in Mathis is substantially similar to, if not more stringent than, the purification procedure of the Instant Application. Further, the improved properties (e.g. increased conductivity and decreased surface roughness) of working examples of the Instant Application manifest solely as a result of increased number of centrifugation steps. (Spec. Tables 3-5). Given that the purification procedure disclosed in Mathis is substantially similar to, if not more stringent than, the purification procedure of the Instant Application, and given that the resulting Ti3C2 film of Mathis also exhibits conductivity significantly higher than that of Ti3C2 prepared according to existing procedures and are entirely single flakes (another benefit of the multi-step centrifugation), it stands to reason that the Ti3C2 film of Mathis also possesses other properties that are obtained from additional centrifugation time (e.g. the recited rocking curve half-value and reduced surface roughness).
Furthermore, even were the steps disclosed in Mathis per se insufficient to obtain these properties, it is clear by comparing procedures in Mathis versus existing procedures (e.g. those disclosed in ¶ 0085 of the reference, all of which incorporated by reference) that the purification procedure in Mathis is more involved, as it requires more centrifugation steps. For instance, WO 2016/049109 A2 (publication of PCT/US2015/051588 mentioned in ¶ 0085 of Mathis) discloses at most one additional centrifugation after the reaction mixture containing formed Ti3C2 has been neutralized, wherein films made of such Ti3C2 has conductivity of upward of 8,000 S/cm. In contrast, the Ti3C2 films of Mathis has conductivity of 10,000 S/cm to 20,000 S/cm, with some having even greater values. Person of ordinary skill in the art would readily conclude that Ti3C2 having improved properties such as increased conductivity can be obtained from additional centrifugation steps and would be motivated to increase the number of steps and/or duration of each step beyond what is expressly disclosed in Mathis. Such additional refining would also lead to particles having the claimed properties.
In summary, as the MXene particles of Mathis are made according to a process that is even more rigorous (in terms of treatment time) than what is disclosed in the Instant Application, as such added rigorousness is shown to be directly responsible for improvements in various properties (including lower surface roughness and higher conductivity), even though surface roughness is not expressly disclosed in Mathis, it follows from the principle of same type of starting materials treated in the same (or more rigorous) conditions yielding the same (or improved) products that the free-standing MXene film of Mathis has or could be made to have the claimed property. Mathis thus anticipates or renders obvious claim 5.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4, 6, 18, and 19; and claim 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/167747 A2 (“Mathis”) and U.S. 2018/0338396 A1 (“Torita”).
Considering claims 1-3 and 6, the relevant portions of Mathis discussed at ¶¶ 6-9 above are not reiterated and are instead incorporated by reference. Mathis discloses that its MXene film can be used as EMI shield. (Mathis ¶ 0082). However, Mathis is silent re: thickness needed to form such an EMI shielding material.
In the art of EMI shielding materials that utilize MXene for the EMI shielding property, it is known to make such shielding materials in the form of a coating having thickness of 1 to 40 µm. (Torita ¶ 0074). As such, forming an EMI shielding coating that contains the MXene particles of Mathis and has a thickness of 1 to 40 µm is obvious, as this represents a well-known intended usage of such particles. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular material is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07. The value of 1 to 40 µm overlaps the claimed range of 3 to 5 µm. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Alternatively, as Torita teaches that it is well-known to produce an EMI shielding material having thickness of 1 to 40 µm, such coating using highly conductive MXene particles, and as Mathis teaches MXene particles exhibiting conductivity higher than what is known circa 2020 (almost three years after the invention described in Torita was filed), it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used the highly conductive MXene particles taught in Mathis to form an EMI shielding coating.
Mathis and Torita renders obvious claims 1-3 and 6.
Considering claim 4, density is another property that increases with prolonged centrifugation. As such, it stands to reason that the coating of Mathis and Torita also exhibits or could be made to exhibit (via even longer centrifuge step) the claimed density.
Considering claims 18 and 19, it is noted that the claimed thickness properties (whether maximum thickness of any particle or minimum percentage of particles being less than a thickness) are also described in the Instant Application as being result of the improved washing and centrifuging steps. (See, e.g. Spec. Tables 2 and 3). As such, in view of the rationale set forth in ¶¶ 6-10 above, the EMI shielding coating of Mathis and Torita is considered to possess the claimed properties. Furthermore, the low thickness values are expressly associated with the presence and prevalence of single layer MXene particles, and Mathis expressly discloses that its washing and centrifuging process is intended to produce single layer Ti3C2 flakes of narrow particle size distribution, particularly noting that high conductivity values are associated with greater prevalence of single layer MXene particles. (Mathis ¶¶ 0089-0091). As such, with single layer MXene particles having thickness of 5 nm, and with Mathis particularly concerned with increasing proportion of particles that are single layered, the foregoing further demonstrates that the MXene particles of Mathis have the requisite properties.
Considering claim 20, this claim combines the limitations of claims 1 and 5, both of which are rejected above.
Response to Arguments
In view of amendment to claim 1, the previously instated rejection of claims 1-4 and 6-8 have been withdrawn.
Applicant’s argument pertains to the previously instated rejection of claim 5; however, these are not deemed persuasive. Applicant has honed in on only the silence in Mathis re: a certain property; however, a comparison of how the MXene particles are made in Mathis versus how they are made in the Instant Application show that the processes of the former is at least the same as if not more rigorous than what are used in the Instant Application. The same type of starting materials treated in the same (or more rigorous) conditions naturally yields the same (or improved) product, and Applicant has not produced any evidence that this is not the case for the disclosure of Mathis.
Concluding Remarks
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 Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781