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. Claims 1, 2, 9, 11 and 14 were amended via the instant amendment dated 29 May 2026 which is acknowledged and entered.
Response to Arguments
Applicant’s remarks dated 29 May 2026 (hereinafter, “Remarks at __”) are acknowledged and entered.
The rejection of claims 1-11 under 35 U.S.C. 112(b) is WITHDRAWN over the instant amendmetm which recites “determining . .. “ in lieu of the means plus function-esq language of correlating.
The rejection of claim 9 under 35 U.S.C. 112(b) is WITHDRAWN as 1-25 nm is now claimed.
The rejection of claim 14 under 35 U.S.C. 112(b) of claim 14 is WITHDRAWN as “other mathematical representations” has been removed.
The rejection of claims 11-16 under 35 U.S.C. 101 is WITHDRAWN over the instant amendment which now ties the abstract idea to something “significantly more”, in this case the actual process of forming the material so it now passes Step 2A Prong 2. Stated differently, the determined property from the values is utilized to form a final product.
The rejection of claims 1-8 and 10-16 under 35 U.S.C. 102(a)(1) over Zhang is WITHDRAWN over the instant amendment positively requiring the determination aspect and then final product formation, but that under 35 U.S.C. 103 is MAINTAINED.
The traversal is that the claims require a “multivariable determination” (Remarks at 9) involving “the amount of OGN” and “the oxygen content of the OGN” (Id.). The claims merely require a “known” oxygen content in the GO, it is not actually positively stated to also be a value controlled (even if so, it would be controlled to a specific value so that is immaterial). A required amount of the OGN is something Zhang actually does modify as laid out in the Office Action dated 6 April 2026. With respect to claim 11, again as the oxygen content is constant it is not necessary to be a multivariable correlation. It is also noted that claim 11 does not require preparing a plurality of OGNs with varying oxygen content as “or” is recited not “and” so the claim is still met for that reason.
The rejection of claims 1-7, 11 and 13-16 under 35 U.S.C. 102(a)(1)/103 over Si is WITHDARWN over the instant amendment requiring tying the determination and the method of making together and that Si discloses the thermal resistance of the FR/GO, not of the graphitized material finally obtained as there is no graphite formation in Si.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8 and 10-16 are rejected under 35 U.S.C. 103 over Zhang.
Regarding claims 1-5, Zhang discloses a method comprising:
Utilizing an oxygen-containgin graphenic nanomaterial having a known oxygen content (Zhang at 2 L col discloses GO made by the Hummer’s method);
Utilizing different mass ratios of PF/GO (50:1, 80:1, 150:1, 200:1, Id.) which is then utilized to determine the amount of OGN necessary to arrive at particular Lc values as shown in “Table S1” as discussed in the Office Action dated 6 April 2026 which is hereby incorporated by reference in its entirety);
Synthesizing a OGN-doped novolac polymer which is then carbonized and graphitized to form a graphitized carbon (Id.).
While the claims recite that a target value of a property of a resultant graphitized carbon is done and that the determination from the table then occurs and synthesis of the desired property in the graphite is then performed based on the required amount of OGN, this is something well within the level of ordinary skill in the art would one would find it “obvious to perform” the reaction again given that they now know variables to routinely and consistently produce the same desired property, i.e., a Lc of 1.59 nm is produced via mixing PF/GO at 50:1, heating it ultimately to 1400 C. This does not impart patentability (see KSR v Teleflex 550 US 398 (2007)).
As to claim 6, Hummer’s method has a C/O raito of 2.1-2.9:1 which is 47.6-34.5% O.
Concerning claim 7, the degreeof graphitization is 0.85,s o 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”).
With respect to claim 11, Zhang discloses a method comprising:
Preparing a plurality of oxygen-containing graphenic nanomaterial-doped novolac polymers that vary in at least the amount (“Table S1”);
Carbonizing and graphitizing the plurality of OGN-doped novolac polymers to yield a plurality of graphitized carbons (Id.);
Measuring at least one property of the graphitized carbons;
Deriving a correlation by the formation of “Table S1” to show a relationship between the PF/GO amount and the Lc.
It would be well within the level of ordinary skill in the art, given that a table was produced which shows that when 50:1 PF:GO is utilized a Lc of 1.69 nm is obtained, and then determining the amount of the PF:GO to mix together as stated therein followed by synthesizing of the OGN-doped novolac polymer which is then carbonized and graphitized, so one of ordinary skill in the art wishing to further produce a graphite material having that same value would thusly perform the process steps again given this predictable result based on the correlation and thusly would find this “obvious to perform” which does not impart patentability (see KSR v Teleflex 550 US 398 (2007)).
Claims 12-16 are the same as that of claims 2-8.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to claim 9, Zhang is the closest piece of prior art and all of the Lc values are below 5 nm.
Conclusion
Claims 1-8 and 10-16 are finally rejected. Claim 9 is objected to.
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 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.
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, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/ Primary Examiner, Art Unit 1759
Prosecution Insights