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 .
Status of Application
Claims 1-16 are pending and presented for examination.
Response to Arguments
Applicant’s remarks dated 23 January 2026 (hereinafter, “Remarks at __”) are acknowledged and entered.
The rejection of claims 1-8 and 10-16 under 35 U.S.C. 102(a)(1) is MAINTAINED and updated to include a rejection under 35 U.S.C. 103 over the same.
The traversal is that the usage of the correlation language implies that the claim is a “functional process step” which the Office is construing as being akin to the “step plus function” aspect. The Instant Specification sets forth that the only correlation developed and performed is that outlined in Figure 4 which correlates the property of the La size to that of the oxygen content of the GO. If this is indeed Applicant’s desire then this should have been specifically claimed. No other properties are supported by any equation, graph, etc., so there given that Applicants have put on the record that the correlation is to be construed as a “functional process step”. Zhang discloses in “Figure 1d” GHC50, 80, 150 and 300 which have 2 down to 0.67% of GO in them and this does show a relationship between the ID/IG and the amount as the amount of GO present (highest in GHC50 is 1.925 down to 0% at 2.198), and this clearly from that Figure shows that indeed there is a correlation between the ID/IG vis a vis degree of graphitization which is a property, and the amount of GO added, but it does not appear to be tied to the crystallite size which is persuasive as this is the only way the claim can at present be construed due to the step-plus-functional aspect. Zhang at 3 L discloses that the La and Lc values correlate with the amount of GO present.
The traversal continues regarding that Zhang does not disclose graphitization as it only heats to 1000 C and Vander Wals discloses at least 1600 C is necessary (Remarks at 7) but this is not persuasive as Zhang does disclose the production of graphite domains (Zhang at 3 L col). The degree of graphitization may not be the same as that which Applicants regard as being present at 3000 C but this is not claimed. Furthermore, the fact Zhang discloses hard carbon vs. Applicants unclaimed soft carbon structure is noted but is immaterial to the discussion at hand as Zhang discloses that there is a level of graphitization. If graphitizing at 3000 C yields a specific ID/IG ratio, then this may be a particular ID/IG that Applicants can amend and provide support for such via a Declaration under 37 C.F.R. 1.132.
The traversal continues arguing that there is an unexpected result of non-monotonic which for the La is clearly shown in Instant Figure 4, which since claim 1 is only limited. However, Zhang discloses that the La/Lc values are 5.02/1.69 A for the 2% and that it decreases with decreasing GO amount which does imply a correlation (Zhang at 3 L col).
The traversal against claim 11 is that Zhang does not derive a predictive mathematical model like an equation, or fit-line (the instant specification does not discuss any table so this is not considered to be persuasive for that aspect) that serves as a functional basis for future material synthesis. Zhang clearly shows a correlation and simply re-performing these experiments would have a predictable result. However, it is noted that in Zhang the amount of GO present is only up to 2% whereas the instant specification Figure 4 discloses the unexpected result is not present until after 15% to see the non-monotonic aspect and the claim is not commensurate in scope with this and since Zhang does not test that far one of ordinary skill in the art would have been unable to determine if the result was indeed unexpected, thusly limiting the GO value after the inflection point would be persuasive.
Lastly, and this applies to all of these traversals, the correlation is not actually used to do any further growth, for instance merely developing the table in Zhang establishes the correlation. There is no claimed requirement that the growth then be performed at the optimized conditions determined from the correlation.
The rejection of claims 1-7, 11 and 13-16 under 35 U.S.C. 102(a)(1) over Si is MAINTAINED.
The traversal is that the usage of the correlation language implies that the claim is a “functional process step” which the Office is construing as being akin to the “step plus function” aspect. The Instant Specification sets forth that the only correlation developed and performed is that outlined in Figure 4 which correlates the property of the La size to that of the oxygen content of the GO. If this is indeed Applicant’s desire then this should have been specifically claimed. No other properties are supported by any equation, graph, etc., so there given that Applicants have put on the record that the correlation is to be construed as a “functional process step” though Si does note that there is a correlation between ID/IG and the graphitized sizes (Zhang at 172 L col). Accordingly, Si actually does establish a correlation between the ID/IG and the crystallite size and Si also discloses explicitly a connection between thermal properties and the amount of GO added (Zhang at 172 L col) as the higher the GO content the higher the degree of graphitization which Applicants have agreed is shown by the ID/IG ratio. Given this, Si discloses that the crystallite size is actually tied to the amount of GO added vis a vis the degree of graphitization.
The traversal continues arguing that Si does not teach graphitization (Remarks at 8) though as discussed supra there is indeed a degree of graphitization. Nothing in the claims explicitly requires that the material produced be fully graphitized or to any degree graphitized. If anything, claim 2 as presented implies that there is clearly a degree of graphitization, if Applicants are trying to achieve a specific amount of graphitization that should have been claimed. Citing to Vander Wal to support the temperature of graphitization is noted but is immaterial. The further fact that Si discloses an amorphous carbon, which is amorphous, does not at all preclude the presence of graphitic domains contained therein. If anything, Si desires graphitic domains (Si at 167 R col). While Applicants are after a “soft carbon”, this is not claimed nor disclosed in the Instant Specification. If graphitizing at 3000 C yields a specific ID/IG ratio, then this may be a particular ID/IG that Applicants can amend and provide support for such via a Declaration under 37 C.F.R. 1.132.
The traversal continues in arguing that Fig. 4 is “non-monotonic” and as such a result-effective variable cannot exist as “A person of ordinary skill in the art would have expected a simple linear trend (as suggested by Si)”. Given that this data is not used to actually do anything other than being graphed, it is unclear how this can even show an unexpected result as this data is not then used to further produce the material.
The rejection of claims 1, 3 and 5 under 35 U.S.C. 102(a)(1) over Vander Wal is WITHDRAWN over the instant traversal.
The traversal is that in Vander Wal inter alia only a fixed point is utilized which is not enough to establish any correlation (Remarks at 11) which is persuasive as a single point cannot support any actual correlation.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Given Applicants regard the step of “correlation” to be a functional limitation, the claims are being construed as the correlation/derivation thereof to be limited to the means for doing such laid out in the instant specification that the property correlated is La versus the oxygen content of the graphene oxide. Given this, the correlated property is being specifically limited under the broadest reasonable interpretation of La crystallite size versus oxygen content of the GO-novolacs.
Claim Rejections - 35 USC § 112
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.
Claims 1-16 are rejected under 35 U.S.C. 112(b) due to be indefinite. The claim limitation correlating/deriving has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because Applicants state that the limitation is a functional process step but the claims do not recite "means/step for" and the specification only sets forth one single means (a graph derived best fit equation) to determine one single property of La vs. graphene oxide content. It thusly appears that the claim should be interpretated as a step (correlating/deriving) plus function (a determined property), but it is unclear if this is actually the intent of Applicants.. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
The limitation is being construed to being specifically limited to a correlation means for determining the
La vs. graphene oxide best fit equation.
Claim 2 is broader in scope than that single correlation means supplied as stated in the “Claim Interpretation” section. As such, this claim is indefinite as the only means to correlate is via a graph or best-fit line for La vs. oxygen content.
As to claim 9, “of less than 1 nm to about 25 nm” is indefinite as to if it is covering from exclusive of 0 nm to 25 nm or if it means to cover about 1 to about 25 nm which is how it is being construed for the purposes of compact prosecution.
As to claim 14, the instant specification does not provide a correlation means of a table or “other mathematical representations”.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 11-16 are rejected under 35 U.S.C. 101 because the claim sets forth “deriving a correlation between (a) the amount of OGN and/or the oxygen content of the OGN and (b) the at least one property of the graphitized carbons”. While the claim is broadly drawn to a method, and this method involves steps of preparing graphitized carbon via the carbonization and graphitization of OGN-doped novolacs with varied OGN or oxygen content of the OGN, the correlating aspect is not considered to result in something “significantly more” in the process as the derived correlation is not applied to the process but is merely done after the graphitized carbons are produced. As there is no usage of the correlation it fails “Step 2A Prong Two” of the eligibility requirements for 35 U.S.C. 101 as it invokes a judicial exception (method of making) and since the claim is to be viewed not in a vacuum but on how the claim limitations interact with and impact each other, there is no usage of the derivation/correlation to materially affect the preparation steps and nor does the correlation improve the process. Accordingly, claim 11 (and those dependent thereon) fail to satisfy the three prong analysis under the eligibility guidelines in 35 U.S.C. 101.
Claim Rejections - 35 USC §§ 102/103
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.
Claims 1-8 and 10-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or in the alternative, under 35 U.S.C. 103 as being unpatentable over Zhang.
Regarding claims 1-5, Zhang discloses a method comprising:
Synthesizing an oxygen-containing graphenic nanomaterial (graphene oxide via the Hummer’s method, Zhang at 2 L col)-doped novolac polymer (phenolic resin which novalac is) wherein an amount of graphene oxide is 2%, 1.25%, 0.667%, or 0.05% (Id.) and a correlation between the amount of OGN versus the degree of graphitization is established (Zhang 3 L col presents that the higher amount of GO yields a higher degree of graphitization and this is shown in “Figure 3a” which shows a lower weight loss as the amount of GO loading increases) and then carbonizing and graphtizng the OGN-doped novolac polymer to yield a graphitized carbon (Heated to 1600 C which carbonizes and induces graphitization, 2 L col). See also “Table S1” of Zhang as reproduced herein:
PNG
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564
1094
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Greyscale
To the extent Zhang does not anticipate the correlation means between La and GO presence, it is clear that the amount of GO added influences the La crystallite size and as such one of ordinary skill in the art would understand that the correlation is present owing to the direct proportional relationship between the two values and one of ordinary skill in the art could easily practice this predictable result in further production as obvious to try under KSR v. Teleflex 550 US 398 (2007).
As to claim 6, Hummer’s method has a C/O ratio of 2.1.2.9:1 which is 47.6-34.5% oxygen.
Concerning claim 7, the degree of graphitization is 0.85 (ID/IG of natural graphite) divided by 2.248 which is 37.8%.
With respect to claim 8, given application of the same method, and absent evidence to the contrary, the instant specification sets forth in “Table 2” that the percent crystallinity is between ~50 (49%) and 76%, though the Office cannot test for this/ See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
Turning to claim 10, the La is ~5 nm (4.77, Zhang at “Table S2”).
As to claims 11-15, Zhang discloses a method comprising:
Preparing a plurality of oxygen-containing graphemic nanomaterial (GO) doped novalac polymers that vary in their amount (Zhang at 2);
Carbonizing and graphitizing the plurality of OGN-doped novalac polymers to yield a plurality of graphitized carbons (Id.);
Measuring at least one property (ID/IG and degree of graphitization, 3 L col & “Fig. 3a”); and
Deriving a correlation between the amount of OGN and that property via setting forth a graph or table (Id. & supra).
As to claim 16, Hummer’s method inherently results in differing degrees of C/O as stated supra. Furthermore, as the claim is written such that it does not explicitly limit to varying the O/C the claim is considered to be met.
Claims 1-7, 11 and 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or in the alternative, under 35 U.S.C. 103 as being unpatentable over Si.
Regarding claims 1-5, Si discloses a method comprising:
Synthesizing an oxygen-containing graphemic nanomaerial (graphene oxide) which has a varied amount of C/O (vis a vis reduction degree via temperature, Si 167 L col)-doped novolac (from the phenolic resin which novolac is) wherein the synthesis is based on a desired degree of graphitization as longer reduction temperature (250 C) results in a higher degree of graphitization (172 L col)) and also different amounts of 0.1-2 wt% of GO is added to the PF which effects the thermal properties (Si at 169 R col) and carbonizing and graphitizing the polymer to yield a graphitized carbon (1000 C, 170 R col) which results in a degree of graphitization (ID/IG of 1.94).
To the extent Si does not anticipate the correlation means between La and GO presence, it is clear that the amount of GO added influences the La crystallite size and as such one of ordinary skill in the art would understand that the correlation is present owing to the direct proportional relationship between the two values (supra) and one of ordinary skill in the art could easily practice this predictable result in further production as obvious to try under KSR v. Teleflex 550 US 398 (2007).
As to claim 6, Hummer’s method has a C/O ratio of 2.1.2.9:1 which is 47.6-34.5% oxygen.
Turning to claim 7, the ID/IG is 1.94 which is 0.85/1.94=43.8% degree of graphitization.
As to claim 11, 13, 14, 15 and 16, Si discloses a method comprising:
Preparing a plurality of oxygen-containgn graphemic nanomaterial-doped novolac polymers that vary in at least one of an oxygen content or amount of the OGN added (Si at 167 L col);
Carbonizing and graphitizing (1000 C) to plurality of polymers to yield a plurality of graphitized carbons (Si at 170 R col); and
Deriving a correlation between the amount of OGN and oxygen content of the OGN versus the DTG via a graph in “Fig. 8”.
Conclusion
Claims 1-16 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/ Primary Examiner, Art Unit 1759
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