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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 2, 4, 6, 8, 11, 13, 14, 16, 18, 20, 21, 24, 26, 27, 31-35, and 37 in the reply filed on 12/19/2025 is acknowledged. The traversal is on the grounds that Groups I and II simultaneously would not impose an undue burden on the Examiner. This is not found persuasive because the groups were shown to be distinct for the reasons given in the Restriction Requirement mailed 10/23/2025 and have acquired a separate status in the art because of their recognized divergent subject matter. Additionally, examination is not limited simply to search. In addition to the search, much of the examination is devoted to determining patentability of claims. Said determination requires the formulation of rejections and responding to applicant's arguments with regard to same. The Examiner notes that apparatus and method claims are evaluated differently when determining patentability. For example, the materials worked upon are given patentable weight when evaluating method claims, but not when evaluating apparatus claims. The additional search and the determination of patentability for multiple, patentability distinct inventions would place serious burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claim 38 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/19/2025.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 09/25/2023. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: the instant abstract is 16 words long, which is under the minimum of 50 words in length described below.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Appropriate correction is required.
Claim Objections
Claims 2 and 4 are objected to because of the following informalities: claim 4 recites the limitation “solid-metal material” while claim 2 recites the limitation “solid metal material”. It is suggested to use consistent terminology for clarity. Appropriate correction is required.
Claim Interpretation
Regarding claim 2, the limitation “thereby forming the liquid metal material” is interpreted as a whereby clause expressing the intended result of a claimed process step. A "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" See MPEP § 2111.04 (I). In this case, a method liquifying a solid metal material will necessarily result in the claimed liquid metal material.
Further regarding claim 2, the term “liquifying” is interpreted as any process resulting in a liquid state, including but not limited to heating solids to melt into a liquid form.
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 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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 2, 4, 6, 8, 11, 13, 14, 16, 18, 20, 21, 24, 26, 27, 31-35, and 37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for producing a covetic material combining a liquid metal material and one or more non-metallic precursor materials wherein the one or more non-metallic precursor materials contains carbon, does not reasonably provide enablement for producing a covetic material combining a liquid metal material and one or more non-metallic precursor materials wherein the one or more non-metallic precursor materials contains any non-metal other than carbon. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claims 1, 2, 4, 6, 8, 11, 13, 14, 16, 18, 20, 21, 24, 26, 27, 31-35, and 37 encompasses a method for producing a covetic material by combining any liquid metal material and any non-metallic materials. The claimed “one or more non-metallic precursor materials” is broadly interpreted as any non-metallic material. However, the specification recites “covetics are a novel class of metal-carbon nanocomposites” (page 1, final paragraph, emphasis added). The specification discloses sufficient information for one of ordinary skill in the art to produce a covetic material by combining a liquid metal and a carbon-containing “non-metallic precursor material”. However, the specification does not provide direction on how to produce a covetic material by combining a liquid metal and any non-metallic material other than carbon, including but not limited to hydrogen, nitrogen, or oxygen. Further regarding the claimed non-metallic precursor materials, claim 13 recites the one or more non-metallic precursor materials is carbon or a polymer (emphasis added), claim 14 recites the one or more non-metallic precursor materials is selected from the group consisting of carbon, silicon, sulfur, phosphorous, boron, germanium, tellurium, selenium, and mixtures thereof (emphasis added), and claim 26 recites wherein the non-metallic structures comprise graphene, graphitic ribbons or plates, graphides, graphites, a conductive polymer, a nonconductive polymer, or a combination thereof (emphasis added). The bolded limitations highlight non-metallic precursor materials that do not contain carbon or do not necessarily contain carbon. Inorganic polymers, for example, do not contain carbon but are encompassed by the claimed term “polymer”. At the time of filing, the state of the art was such that covetic materials are known as metal-carbon nanocomposites (emphasis added, page 1, final paragraph of instant specification and also recited in Rana et al., "A review of covetics-current understanding and future perspectives", Nanoscale Advances 5:11-26 2022 as cited in IDS mailed on 09/25/2023). Since covetic materials are metal-carbon composites, combining any liquid metal and any non-metallic precursor material does not necessarily result in a covetic material. Thus, the disclosed guidance provided in the specification does not bear a reasonable correlation to the full scope of the claims. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 1, 2, 4, 6, 8, 11, 13, 14, 16, 18, 20, 21, 24, 26, 27, 31-35, and 37.
Claims 1, 2, 4, 6, 8, 11, 13, 14, 16, 18, 20, 21, 24, 26, 27, 31-35, and 37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “combining under continuous flow conditions a liquid metal material and one or more non-metallic precursor materials”. This limitation renders the claim indefinite since it is unclear what constitutes “continuous flow conditions” and whether the claimed continuous flow refers to a continuous flow of the claimed liquid metal material, the claimed one or more non-metallic precursor materials, both, the continuous flow of a different substance, such as a processing flow, or a different interpretation.
Claims 2, 4, 6, 8, 11, 13, 14, 16, 18, 20, 21, 24, 26, 27, 31-35, and 37 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding claim 1, the limitation “continuously passing an electric current through the liquid covetic precursor material” renders the claim indefinite since it is unclear whether the term “continuously” refers to passing an electric current without stopping at any time, whether “continuously” means along the entirety of the liquid covetic precursor material, or a different interpretation.
Claims 2, 4, 6, 8, 11, 13, 14, 16, 18, 20, 21, 24, 26, 27, 31-35, and 37 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding claim 1, the limitation “continuously depositing the liquid covetic material onto a substrate” renders the claim indefinite since it is unclear whether the term “continuously” refers to depositing the material without stopping at any time, whether “continuously” means depositing along the entirety of the substrate, or a different interpretation.
Claims 2, 4, 6, 8, 11, 13, 14, 16, 18, 20, 21, 24, 26, 27, 31-35, and 37 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claims 20-21 recite the limitation "the electrical current" (emphasis added). There is insufficient antecedent basis for this limitation in the claim because claim 1 recites the limitation “an electric current”.
Claim 16 recites the limitation “blanketing the liquid metal material and one or more non-metallic precursor materials with an inert gas”. The term “blanketing” renders the claim indefinite. The term “blanketing” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Any method including an inert gas in contact with liquid metal material and one or more non-metallic precursor materials will be interpreted as “blanketing” with an inert gas.
Regarding claim 18, the limitation “optionally wherein the anode and the cathode independently comprise carbon, a metal, or another electrically conducting or semiconducting material” renders the claim indefinite since an anode and cathode necessarily have to be made of materials capable of conducting electricity and therefore the limitation is not optional, as currently claimed.
Claim 31 recites the limitation “wherein the covetic material is a single-phase material”. Claim 1, on which claim 31 depends, recites “liquid covetic material comprising metal and a plurality of non-metallic structures”. Since the liquid covetic material comprises a metal and a plurality of non-metallic structures, it is unclear how the covetic material can be considered a “single-phase” material when the material has a metal and a non-metallic structure.
Claim 34 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 34 recites the limitation “wherein the covetic material is a three-dimensional material”. Since the covetic material of claim 1, on which claim 34 depends, is necessarily three-dimensional given its existence in a three-dimensional space, claim 34 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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 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.
Claims 1, 2, 6, 8, 11, 13, 14, 16, 18, 20, 21, 24, 26, 27, 31-34, and 37 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 2020/0071796 A1 of Scherer (as cited in IDS mailed 09/25/2023).
Regarding claim 1, as best understood given the 112(b) rejections in this Office action, Scherer teaches composite materials, apparatuses, and methods (Title). Scherer teaches methods for continuously producing composite materials (continuously producing reads on the claimed continuous flow conditions; composite material reads on the claimed covetic material; examples in [0082] reference a “covetic aluminum” which further reads on the claimed covetic material) where in some embodiments, the methods include providing a reservoir comprising a first feed and a second feed; disposing a liquid metal and a carbon material in the reservoir via the first feed and the second feed, respectively; mixing the liquid metal and the carbon material in a first portion of the reservoir to form a mixture (reads on the claimed (a) combining under continuous flow conditions a liquid metal material and one or more non-metallic precursor materials, thereby forming a liquid covetic precursor material); transporting the mixture from the first portion of the reservoir to a second portion of the reservoir; applying an electrical charge to the mixture in the second portion of the reservoir to form a composite material (reads on the claimed (b) continuously passing an electric current through the liquid covetic precursor material, thereby forming a liquid covetic material comprising metal and a plurality of non-metallic structures); and collecting the composite material (reads on the claimed (c) continuously depositing the liquid covetic material onto a substrate) ([0035], liquid metal reads on the claimed liquid metal material and carbon material reads on the claimed one or more non-metallic precursor materials; mixing step: [0038]-[0040], electrical charge step: [0042]-[0046], collecting step: [0047]).
Regarding step (c) of claim 1, Scherer teaches the composite material then may pass through a control valve 140, which can be opened to take samples of the composite material for quality control or other purposes and the composite material then may pass through a blanket of inert gas before passing into a holding tank where the material can be poured into billets or extruded into shapes ([0050], Fig. 1, pouring into billets and extruding into shapes both further read on the claimed continuously depositing the liquid covetic material onto a substrate). Scherer further teaches extruding samples of the composite material into a rod, then a wire ([0095]-[0099]). One of ordinary skill in the art understands that pouring into billets or extruding into a rod is done on a substrate, such as a mold, plate, or any other surface that can hold the poured or extruded material. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Scherer therefore reads on the limitation a method for producing a covetic material, the method comprising: (a) combining under continuous flow conditions a liquid metal material and one or more non- metallic precursor materials, thereby forming a liquid covetic precursor material; (b) continuously passing an electric current through the liquid covetic precursor material, thereby forming a liquid covetic material comprising metal and a plurality of non-metallic structures; and (c) continuously depositing the liquid covetic material onto a substrate of claim 1.
Regarding claim 2, Scherer teaches the method of claim 1 as described above.
Scherer teaches disposing a liquid metal and a carbon material in the reservoir ([0035]). Scherer teaches the liquid metal is selected from the group consisting of copper, silver, aluminum, lead, zinc, tin, silicon, iron, gold, and a combination thereof ([0017], [0053], listed metals are all solid at room temperature). Since Scherer teaches using a liquid metal and the metals that Scherer teaches are all solid at room temperature, one of ordinary skill in the art understands that solid metal was melted to obtain the liquid metal used in the method of Scherer. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01. In this case, using aluminum as an example, solid aluminum had to be melted to obtain the liquid aluminum used in the method of Scherer and melting a solid metal to obtain a liquid reads on the claimed liquifying a solid metal material.
Scherer therefore reads on the limitation further comprising liquifying a solid metal material, thereby forming the liquid metal material of claim 2.
Regarding claim 6, Scherer teaches the method of claim 1 as described above.
Scherer teaches the carbon material includes graphene which may be in any form, such as a powder, flakes, granules or a combination ([0054], powder, flakes and granules are all solid).
Scherer therefore reads on the limitation wherein the one or more non-metallic precursor materials is a solid or a liquid of claim 6.
Regarding claim 8, Scherer teaches the method of claim 2 as described above.
Scherer teaches a first feed 160 for disposing a liquid metal into the first portion 120 of the reservoir 110 and a second feed 161 for disposing a carbon material into the first portion 120 of the reservoir 110 ([0031], Fig. 1). Since the liquid metal and carbon material are in separate feeds, one of ordinary skill in the art understands the solid metal material molten to obtain the liquid metal will have not been in contact with the carbon material of Scherer before being mixed in the method of Scherer.
Scherer therefore reads on the limitation wherein the solid metal material is not in contact with the one or more non-metallic precursor materials of claim 8.
Regarding claim 11, Scherer teaches the method of claim 2 as described above.
Scherer teaches the at least one metal is selected from the group consisting of copper, silver, aluminum, lead, zinc, tin, silicon, iron, gold, and a combination thereof ([0017], [0053], at least one metal reads on the claimed solid metal material).
Scherer therefore reads on the limitation wherein the solid metal material is selected from the group consisting of aluminum, copper, silver, gold, iron, magnesium, titanium, zirconium, nickel, zinc, palladium, platinum, molybdenum, tin, metallic alloys thereof, and metallic composites of claim 11.
Regarding claims 13, 14, and 26, Scherer teaches the method of claim 1 as described above.
Scherer teaches methods of continuously producing composite materials that include a monophasic blend of a metal and a carbon material ([0005]). Scherer teaches the carbon material used in the methods provided herein includes graphene which may be in any form, such as a powder, flakes, granules or a combination ([0054], graphene is made of carbon and therefore reads on the claimed wherein one or more non-metallic precursor materials is a carbon). Scherer teaches adding one of more additives using boron ([0057], reads on claimed boron), silicon carbide ([0059], reads on claimed carbon, silicon, and mixtures thereof), and piezo electric compounds ([0060]).
Scherer therefore reads on the limitation wherein the one or more non-metallic precursor materials is carbon or a polymer of claim 13, wherein the one or more non-metallic precursor materials is selected from the group consisting of carbon, silicon, sulfur, phosphorous, boron, germanium, tellurium, selenium, and mixtures thereof of claim 14, and wherein the non-metallic structures comprise graphene, graphitic ribbons or plates, graphides, graphites a conductive polymer, a nonconductive polymer, or a combination thereof of claim 26.
Regarding claim 16, Scherer teaches the method of claim 1 as described above.
Scherer teaches including a fourth feed for providing an inert gas to the reservoir where the inert gas forms a “blanket” at the top of a reservoir, thereby preventing or reducing the likelihood of oxygen entering the reservoir ([0026], 164 is fourth feed for providing an inert gas in Fig. 1; first feed 160 disposes liquid metal and second feed 161 disposes carbon material as described in [0031]). Scherer further teaches the holding tank includes an inert gas ([0047]).
Since the liquid metal and carbon material are introduced into the reservoir 110 ([0031]) and inert gas is provided to the reservoir, Scherer reads on the limitation blanketing the liquid metal material and one or more non-metallic precursor materials with an inert gas of claim 16.
Regarding claim 18, Scherer teaches the method of claim 1 as described above.
Scherer teaches an electrical current is provided by the shaft, which may act as an electrode, and that the “shaft electrode” may be either positive or negative, and may apply either alternating or direct current ([0051], shaft electrode either positive or negative reads on the claimed anode or cathode). Scherer further teaches the bottom area of the shaft may host the opposite electrode from the shaft, and its location may permit a material to pass through an area having within a desirable distance of both electrodes ([0051], opposite electrode reads on the claimed anode or cathode). While Scherer does not explicitly disclose which material is used for the shaft and bottom area of the shaft, Scherer teaches they serve as electrodes and an electrical current is provided by the shaft. One of ordinary skill in the art therefore understands the shaft is made of a material which is electrically conducting since the shaft provides an electric current between the two electrodes. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Scherer therefore reads on the limitation wherein the electric current passes through the liquid covetic precursor material between an anode and a cathode, optionally wherein the anode and the cathode independently comprise carbon, a metal, or another electrically conducting or semiconducting material of claim 18.
Regarding claims 20 and 21, Scherer teaches the method of claim 1 as described above.
Scherer teaches applying electrical charge includes applying an electrical current to the mixture and the electrical current can be selected from AC, DC, AC/DC half wave, full wave, square wave, filtered wave, or pulsed wave ([0043], AC reads on the claimed sinusoidal current and time-varying current; DC reads on the claimed constant current). Scherer teaches applying an electrical current to the mixture for a time effective to form a composite material where in some embodiments, the electrical current is applied for about 1 nanosecond to about 5 hours ([0044]). Scherer teaches the electrical current is pulsed, or alternately applied and removed one or more times ([0045]). Scherer teaches the electrical current may have a frequency, current rate, and/or form that may be modified while the current is applied to the mixture, or can remain substantially unchanged while the current is applied to the mixture ([0044], reads on claimed time-varying current and constant current, respectively)
Scherer therefore reads on the limitation wherein the electrical current is a sinusoidal current of claim 20 and wherein the electrical current is a time-varying current, a constant current, or combination thereof of claim 21.
Regarding claim 24, Scherer teaches the method of claim 1 as described above.
Scherer teaches the graphene has an average particle size of about 10 μm to about 44 μm, or about 10 μm to about 22 μm ([0054]). While Scherer does not explicitly teach a microstructure or nanostructure, one of ordinary skill in the art understands the graphene necessarily has a structure and the graphene sizes of Scherer are considered microstructures given the scale between 10 μm and 44 μm.
Scherer therefore reads on the limitation wherein the non-metallic structures are microstructures and/or nanostructures of claim 24.
Regarding claim 27, Scherer teaches the method of claim 1 as described above.
Scherer teaches extruding samples of the composite material into a rod, then a wire ([0095]-[0099], extruding samples further reads on the claimed continuously depositing the liquid covetic material onto a substrate). Scherer teaches using an extrusion pressure of about 90 tons ([0098]). Since the extrusion of covetic material occurs in air, one of ordinary skill in the art understands the extrusion occurs under atmospheric pressure. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Scherer therefore reads on the limitation wherein continuously depositing the liquid covetic material onto a substrate occurs under atmospheric pressure or under pressure greater than atmospheric pressure of claim 27.
Regarding claims 31 and 32, Scherer teaches the method of claim 1 as described above.
Scherer teaches the composite materials include a monophasic blend including (i) at least one metal, and (ii) graphene ([0014], composite material reads on claimed covetic material). Scherer further teaches the phrase “monophasic blend”, as used herein, generally refers to a blend including at least one metal and a carbon material, such as graphene, wherein one or more interactions between the at least one metal and the carbon material prevent the at least one metal and the carbon material from separating from the monophasic blend when the monophasic blend is heated to a temperature that exceeds the melting point of the at least one metal or the monophasic blend ([0015], monophasic blend reads on the claimed single-phase material and further reads on claimed wherein the covetic material does not separate into compositional phases upon remelting and solidification).
Scherer therefore reads on the limitations wherein the covetic material is a single-phase material of claim 31 and wherein the covetic material does not separate into compositional phases upon remelting and solidification of claim 32.
Regarding claim 33, Scherer teaches the method of claim 1 as described above.
Scherer teaches the mixer, such as a rotating auger, creates a uniform mixture of the contents of the reservoir ([0027], uniform mixture of the contents of the reservoir reads on the claimed wherein the non-metallic structures are homogeneously distributed throughout the covetic material since the liquid metal and carbon material are mixed in the reservoir of Scherer).
Scherer therefore reads on the limitation wherein the non-metallic structures are homogeneously distributed throughout the covetic material of claim 33.
Regarding claim 34, Scherer teaches the method of claim 1 as described above.
Scherer teaches a holding tank may collect a composite material ([0029], composite material reads on claimed covetic material). Under broadest reasonable interpretation, a “three-dimensional material” is any material that exists in three-dimensional space. One of ordinary skill in the art understands the holding tank depicted in Fig. 1 is in three-dimensional space and contains a composite material, also in three-dimensional space and therefore the covetic material of Scherer is a three-dimensional material.
Scherer therefore reads on the limitation wherein the covetic material is a three-dimensional material of claim 34.
Regarding claim 37, Scherer teaches the method of claim 1 as described above.
Scherer teaches a method to continuously produce composite materials ([0035], reads composite materials reads on the claimed covetic material), which reads on the method of claim 1.
Since Scherer teaches the method of claim 1 and produces a composite material, Scherer therefore reads on the limitation a covetic material produced by the method of claim 1 of claim 37.
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.
Claims 4 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0071796 A1 of Scherer (as cited in IDS mailed 09/25/2023), as applied to claims 1-2 above.
Regarding claim 4, Scherer teaches the method of claim 2 as described above.
Scherer teaches mixing the liquid metal and the carbon material in a first portion of the reservoir to form a mixture ([0035]). Since Scherer teaches using a liquid metal and the metals that Scherer teaches are all solid at room temperature, one of ordinary skill in the art understands that solid metal was melted to obtain the liquid metal used in the method of Scherer. A patent need not teach, and preferably omits, what is well known in the art. See MPEP § 2164.01.
Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See MPEP 2144.04 (IV)(C). In this case, one of ordinary skill in the art would reasonably expect combining the solid metal material and carbon material of Scherer via coatings before liquifying the solid metal to yield a comparable mixture than when mixing a liquid metal and carbon material of Scherer once the solid metal is liquified.
Scherer therefore reads on the limitation wherein the solid metal material is coated by the one or more non-metallic precursor materials, or the one or more non-metallic precursor materials is coated by the solid-metal material of claim 4.
Regarding claim 35, Scherer teaches the method of claim 1 as described above.
Scherer teaches providing an inert gas to the reservoir in the apparatus to prevent oxygen entering the reservoir ([0026]). One of ordinary skill in the art understands that using an inert gas to prevent oxygen entering the apparatus would result in a covetic material “substantially free” of oxides since there will not be sufficient oxygen inside the apparatus to form oxides.
Scherer therefore reads on the limitation wherein the covetic material is substantially free of carbides, oxides, or both carbides and oxides of claim 35.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2019/0381563 A1 of Balachandran is considered relevant to the instant invention since Balachandran teaches a method of making substantially oxygen-free covetic metal-nanostructured carbon composites or compositions (Abstract) and is relevant to at least claims 1, 24, 35, and 37.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733