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 .
DETAILED ACTION
Continued Prosecution Application
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/03/2026 has been entered.
Response to Arguments
Applicant's arguments filed 03/03/2026 have been fully considered but they are not persuasive or are otherwise moot for not being directed at a current ground of rejection.
The examiner notes that the applicant has made so many conflicting statements of record where they are responsible for the accuracy of the content that the examiner now must weigh it as evidence against itself in reaching these conclusions. The fact that the applicant is proffering so many contradictions in their statements of records is itself being considered by the examiner as evidentiary The examiner notes that the applicant’s IDS contained a truncated reference and that the examiner has already made that applicant aware of this issue. In their multiple subsequent filings the applicant has not addressed this matter at all, which is noteworthy as the omissions contain material pertinent information for this examination and is being considered by the examiner as evidentiary. The examiner also notes that the applicants introduced claim material (UV/photon) that broadened their scope beyond the original or priority filings that may lose them the benefit of their filing date, this determination is being held in abeyance presently but is being considered by the examiner as evidentiary. The examiner notes that the inventor Hamoudi, Hicham identified in the application is the author of NPL references materially pertinent to this examination but have not been disclosed by the applicant. The examiner considers whether the applicant should have considered this reference as identifiably in their possession and knowledge, and is being considered by the examiner as evidentiary. The examiner is not alleging any acts of impropriety, but is noting these things are evidence of record. The examiner invites the applicant to offer any explanation or evidence that would like to the examiner to consider.
Lastly, the examiner would like to note that the current prior art rejection is included in this office action the way that it is due to applicant’s own statements of record identifying these claims as possessing elements they have presented in a way here determined as new matter. The examiner has included an explanation on the interpreted patentable weight on the detail of 3d printing. The examiner has determined that detailed feature matching is not necessary as a matter of notice for the ordinary skill in the art, given the application and cited prior art reference share the same common author in the inventor of Hamoudi, Hicham. The examiner has determined that item matching would more likely elevate confusion rather that provide detail, since it would only re-write again the exact same text that the applicant has themselves already themselves written and read in drafting the claims and the prior art reference. Should any help be needed, the examiner is available for interview.
Claim Rejections - 35 USC § 112
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.
Claims 16-30 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims presented in the originally filed application are 1-15 and dated 7/11/2023. All of the originally filed claims were canceled by the applicants on 11/02/2023 in their amendment, and claims 16-22 were introduced and properly indicated as ‘New’ by the applicant in that filing. Presently claims 16-30 are presented for examination including claims 23-30 which are properly indicated as ‘New’ by the applicant in this filing. Applicants remarks clearly state that all of these claims include (either directly or through their dependencies) features that are amended versions of the 11/02/2023 claims 16-22 and derive inherent support from their text as ‘based on the claims as originally filed’. None of these claims are originally filed since they were not presented in the original filing of 7/11/2023, all of them were acknowledged as ‘New’ by the applicant in one or more later filings. The applicant has additionally stated on the record that all of the claims currently presented belong to the same elected group of claims 16-22. Therefore, the applicant has confirmed on the record that all of the claims contain matter that was not presented in the originally filed claims 1-15 and therefore contain new matter. Claims 16-30 all contain language that does not match language of the specification or claims as originally presented on 7/11/2023, and insofar as the applicant has identified paragraphs in the specification for additional support for the current claims, these portions of the specification do not contain the claimed language as currently written. The applicant has not explained how this new or amended language has support beyond this in any way that is consistent with their statement of record that this language enjoys support from the original filing. Therefore the applicants have made permanently binding statements that all of the presented claims contain new matter.
Claim Rejections - 35 USC § 102
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 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 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.
Claim(s) 16-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated Hicham Hamoudi “Bottom-up nanoarchitectonics of two-dimensional freestanding metal doped carbon nanosheet” hereafter referred to as Hamoudi.
Regarding Claim(s) 16-30, Hamoud teaches all of the claimed elements except the 3d printing, which is interpreted as a product by process in an apparatus element, or through a method step of providing the apparatus element. This lacks a structural difference in the claim scope as it does not describe either an actual method step or a difference in the configuration of the apparatus in a way that is currently presented with patentable weight.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN LUCK whose telephone number is (571)272-6493. The examiner can normally be reached 8-5 M-F.
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, Georgia Epps can be reached at (571) 272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN LUCK/Examiner, Art Unit 2878