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 Amendments
Applicant’s amendments filed 18 March 2026 have been fully considered.
Regarding the Drawings Objections of FIGs. 1, 3B, and 12, the drawings remain objected to because features and/or text are illegible or indiscernible in FIGs. 1 (poor resolution, missing molecules), 11 (scale bars), and 12 (scale bars).
Regarding the Claim Objections of Claims 1 and 4-7, Applicant’s amendments are sufficient; these objections have been withdrawn.
Regarding the rejections of Claims 2-7 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, Applicant’s amendments are sufficient; these rejections have been withdrawn.
Response to Arguments
Applicant’s arguments filed 18 March 2026 have been fully considered and are persuasive. The rejections of Claim(s) 1-3 and 6 under 35 U.S.C. 103 as being unpatentable over REN et al. (CN 115010119 A) and Claim(s) 7 under 35 U.S.C. 103 as being unpatentable over REN et al. (CN 115010119 A) with evidentiary support from ATES et al. (Diamond & Related Materials, 147, 2024, 111230) are withdrawn. However, upon further search and consideration, new grounds of rejection have been made for Claim(s) 1-7 under 35 U.S.C. 103 as being unpatentable over LUO et al. (ACS Sustainable Chem. Eng. 2016, 4, 1404-1413) in view of HEGAB et al. (Desalination 385, 2016, 126-137).
The indicated allowability of Claims 4 and 5 are withdrawn in view of the reference(s) to LUO et al. (ACS Sustainable Chem. Eng. 2016, 4, 1404-1413) in view of HEGAB et al. (Desalination 385, 2016, 126-137). Rejections based on the newly cited reference(s) follow.
Drawings
The drawings are objected to because features and/or text are illegible or indiscernible in FIGs. 1 (poor resolution and missing molecules), 11 (scale bar text are not legible), and 12 (scale bar text are not legible). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over LUO et al. (ACS Sustainable Chem. Eng. 2016, 4, 1404-1413) in view of HEGAB et al. (Desalination 385, 2016, 126-137).
Regarding Claim 1, LUO discloses a three-dimensional graphene-based multifunctional material with tannic acid (abstract). Briefly, a graphene hydrogel monolith was prepared via a one-step chemical reduction induced assembly of graphene oxide nanosheets (2.0 mg/mL) with the aid of tannic acid (1.0 mg/mL; pg. 1406, par. 3). The multicatechol groups in tannic acid promoted the cross-linking of graphene oxide nanosheets (pg. 1406, par. 2) and are found adsorbed onto the surfaces of overlapping nanosheets (i.e., an NPG nanosheet modified with a polyphenolic; the polyphenolic… [is attached] to the NPG nanosheet; pg. 1408, par. 2). LUO discloses pore sizes in the graphene oxide nanosheets have diameters ranging from 3.5 to 50 nm (i.e., nanoporous; pg. 1408, par. 1). LUO is deficient in disclosing the nanoporous graphene nanosheets are further modified with a polyphenolic.
HEGAB discloses modifying graphene oxide nanosheets with polydopamine (abstract). Briefly, graphene oxide nanosheets (at 40, 80, or 120 µg/mL) were mixed with a prepared dopamine solution dissolved in Tris buffer (2 g/L) (§2.3). Dopamine was observed deposited as loose agglomerates on the nanosheets (i.e., an NPG nanosheet modified with… a catecholamine; the catecholamine [is attached] to the NPG nanosheet; §3.2.5; FIG. 5). Advantageously, the formed polydopamine-modified GO-nanosheets showed enhanced biofouling resistance while maintaining flux over prolonged periods of time (§3.4.1). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify the TA-treated graphene oxide nanosheets of LUO with polydopamine as taught by HEGAB to produce a multi-functionalized nanoporous graphene nanosheet modified with a polyphenolic and a catecholamine.
Regarding Claim 2, modified LUO makes obvious the nanosheet of Claim 1. LUO further discloses tannic acid (i.e., the polyphenolic is tannic acid).
Regarding Claim 3, modified LUO makes obvious the nanosheet of Claim 1. HEGAB further discloses dopamine hydrochloride (i.e., the catecholamine is dopamine hydrochloride; §2.3).
Regarding Claim 4, modified LUO makes obvious the nanosheet of Claim 1. As noted earlier, LUO discloses mixing graphene oxide nanosheets (2.0 mg/mL) with tannic acid (1.0 mg/mL; pg. 1406, par. 3). LUO also explored different graphene oxide concentrations, including 0.5 and 1.0 mg/mL, and different tannic acid to graphene oxide mass ratios of 0, 0.10, 0.25, 0.50, 0.75, and 1.0 (pg. 1406, par. 3). Similarly, HEGAB discloses investigating mixing graphene oxide nanosheets (at 40, 80, or 120 µg/mL) with prepared dopamine solution dissolved in Tris buffer (2 g/L) (§2.3). Although the prior art is deficient in explicitly disclosing “a weight ratio for the polyphenolic to the catecholamine is about 1:1”, such a ratio would have been obvious to any one of ordinary skill in the art. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation absent unexpected results or evidence indicating such optimum or workable ranges are critical (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP§2144.05). The prior art has shown that the relative ratios of dopamine or tannic acid to graphene oxide can be varied and can produce different results; such an optimization of these ratios would be obvious and routine to any one of ordinary skill in the art to practice.
Regarding Claim 5, modified LUO makes obvious the nanosheet of Claim 1. Although the prior art is deficient in disclosing that “a volume ratio of the polyphenolic to the NPG nano sheet is between about 100:1 and about 5:1, and a volume ratio of the catecholamine to the NPG nano sheet is between about 100:1 and about 5:1”, such a limitation is construed to be describing method steps by which the claimed nanosheet is prepared. This interpretation is supported by Applicant’s specification, namely p0036 and p0093-0095:
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The resultant membrane is considered to not have the claimed “volume ratio[s]” of 100:1 to 5:1 of polyphenolic to NPG and catecholamine to NPG as such a limitation would render such a membrane unusable. As such, the instant limitation is considered to be directed to a process step by which the claimed nanosheet is produced and thus, is not subject to patentable weight. Because the prior art discloses a product that appears to be the same as the product set forth in this product-by-process claim, although produced by a different process, the claim is directly read on by the prior art (see In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985); MPEP §2113). Additionally, although the immediate claim is a product-by-process claim and is limited by and defined by its process, the determination of patentability is based on the product itself, not on the method of production. Thus, these process limitations do not further limit the claimed product.
Regarding Claim 6, modified LUO makes obvious the nanosheet of Claim 1. Modified LUO is deficient in disclosing “the NPG nanosheet is mixed with the polyphenolic and the catecholamine in a Tris buffer solution to form the multi-functionalized NPG nanosheet”. However, such a limitation is directed toward a process step by which the claimed nanosheet is produced and thus, is not subject to patentable weight. Because the prior art discloses a product that appears to be the same as the product set forth in this product-by-process claim, although produced by a different process, the claim is directly read on by the prior art (see In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985); MPEP §2113). Additionally, although the immediate claim is a product-by-process claim and is limited by and defined by its process, the determination of patentability is based on the product itself, not on the method of production. Thus, these process limitations do not further limit the claimed product.
Regarding Claim 7, modified LUO makes obvious the nanosheet of Claim 1. LUO further discloses pore sizes in the graphene oxide nanosheets have diameters ranging from 3.5 to 50 nm (pg. 1408, par. 1). Similarly, HEGAB acknowledges the presence of “nano-channels” formed between stacked GO nanosheets (§3.1, par. 2). Such a disclosure by LUO overlaps with the claimed range of diameters ranging between about 10 nm and about 25 nm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1777
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