DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Acknowledgement is made of the timely response to the 8/7/2025 Non-Final Rejection, filed 8/26/2025.
Priority
3. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
4. Acknowledgement is made of the amendment(s) to claims 1, 2, 4 and cancellation of claims 3 & 6-10 in the Request for Reconsideration filed 8/26/2025.
Information Disclosure Statement
5. The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. In this particular case section [0004] of the applicant’s specification is not considered a proper Information Disclosure Statement.
The applicant is reminded per MPEP 609, “In nonprovisional applications, applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information which is material to patentability as defined in 37 CFR 1.56. The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56 using an IDS. The IDS may be filed using form PTO/SB/08. Applicants and other individuals substantively involved with the preparation and/or prosecution of the patent application also may want the Office to consider information for a variety of other reasons; e.g., to make sure that the examiner has an opportunity to consider the same information that was considered by these individuals, or by another patent office in a counterpart or related patent application filed in another country.”
Claim Rejections - 35 USC § 103
6. 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.
Claim(s) 1, 2, 4 & 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al (US 20130270511 A1) in view of Sung et al US 20110163298 A1.
Regarding claims 1, 6-8 & 10 Cai et al teaches a diaphragm 120 125 [0021][0022] – [0032], an upper electrode layer 130 131, a lower electrode layer 132 133, a first electrical insulation layer 110 (interpreted herein after as a single insulator covering multiple sections), a second electrical insulation layer 110, a sealing layer 140 145, and a sensor substrate 105 [0021][0033][0036], is configured to electrically insulate the lower electrode layer 132 133 (figs. 1A – 3G) wherein a first surface (interpreted as a separate section) of the sensor substrate 105 [0021][0033][0036] is attached to the first electrical insulation layer 110, the second electrical insulation layer 110 is at a second surface (interpreted a separate section) of the sensor substrate 105, and the sealing layer 140 145 is on the second electrical insulation layer 110; wherein the first surface ((interpreted as a separate portion of the substrate 105 (fig. 1)) and the second surface ((interpreted as a separate portion of the substrate 105 (fig. 1)) of the sensor substrate 105 are opposite ((interpreted as opposite sections (Fig. 1)) ; wherein the second electrical insulation layer 110 is configured to electrically insulate the lower electrode layer 132 133; wherein the diaphragm 120 125 comprises a graphene/hexagonal boron nitride/graphene (G/h- BN/G) vertical heterojunction thin film [0021][0029][0030][0036] and wherein the sensor substrate 105 comprises a recess 115 into the second surface of the sensor substrate 105, the recess 115 being sealed by the sealing layer 140 145, the sensor substrate 105 and the diaphragm 120; and wherein a bottom of the recess 115 comprises a hole ((access to point diaphragm 125 (fig. 1B 1C)), through which the diaphragm 120 125 is exposed to the recess ((access to point diaphragm 125 fig. 1B 1C)). Cai et al does not teach wherein the upper electrode layer and the lower electrode layer, on opposite surfaces of diaphragms, and the first electrical insulation layer is on a same surface of the diaphragm as the lower electrode layer. Cai et al teaches a thin-film graphene pressure sensing device but does not explicitly teach a graphene/hexagonal boron nitride/graphene (G/h- BN/G) vertical heterojunction thin film.. Cai et al discloses a recessed cavity structure but does not teach a concave cavity.
Sung et al teaches a graphene/hexagonal boron nitride/graphene (G/h- BN/G) vertical heterojunction sensing device. (Abstract)[0024][0034]
It would have been obvious to a person having ordinary skill in the art of graphene sensing devices before the effective filing date of the claimed invention to modify the graphene sensing device as taught by Cai et al with a graphene/hexagonal boron nitride/graphene (G/h- BN/G) vertical heterojunction structure as taught by Sung et al for the purpose of protecting the sensor structure from excessive heat, pressure or any other aggressive physical parameters. Furthermore, it has been held that the selection of a known material based upon its suitability for the intended use is a consideration within the skill of the art. MPEP 2144.07.
In this particular case, since Cai et al discloses a graphene pressure sensor as modified by the graphene/hexagonal boron nitride/graphene (G/h- BN/G) vertical heterojunction structure as taught by Sung et al, lacking any criticality, it would have been well within the scope of a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the graphene structure with additional materials and / or chemicals in order to further reinforce a thin-film graphene pressure sensor.
Moreover, it has also been further held (MPEP 2144 IV) that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)
Regarding the upper electrode layer and the lower electrode layer, on opposite surfaces of diaphragms, is on a same surface of the diaphragm as the lower electrode layer, since Cai et al teaches all of the basic features of the claimed invention (i.e sense electrodes structurally associated with diaphragms), it would have been obvious to a person having ordinary skill in the art of graphene pressure sensors before the effective filing date of the claimed invention to modify of the electrodes of the sensor device as taught by Cai et al from a plural mounting configuration into a single configuration (mounting the sense electrodes on the same diaphragm vs opposite membranes) for the purpose of improving the sensitivity and reliability of a pressure sensor. Furthermore, it has been held that one-piece construction, in place of separate elements fastened together, is a design consideration within the skill of the art. In re Kohno, 391 F.2d 959, 157 USPQ 275 (CCPA 1968); In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965). In this particular case lacking any criticality, it would be well within the skill of a person in the field of aerospace pressure sensing devices to modify / reconfigure the arrangement of sense electrodes, membranes and insulators in order to prevent a brittle structure while improving the size, performance and real-time monitoring capabilities with respect to an aircrafts atmospheric data.
Furthermore, it has been held that where the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement, the particular arrangement is deemed to have been a design consideration within the skill of the art. In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975). In this particular instance, the specification has not provided how the claimed configuration (sense electrodes being on the opposite surface of the same membrane) fails to reflect the significance of the arrangement and / or how it attributes to any new improvement that solves a problem. It would appear that the configuration of sense electrodes and diaphragms as taught by Cai et al would provide the same use case as the intended use of the claimed invention.
Regarding the recessed cavity as disclosed by Cai et al verses employing the claimed “concave cavity” (claim 1), it would have been obvious to a person having ordinary skill in the art of graphene pressure sensors before the effective filing date of the claimed invention to modify the recessed cavity structure as taught by Cai et al to further include a concave recessed cavity for the purpose of indirectly and / or directly monitoring fluid flow, gas flow, speed, etc etc while protecting the potential brittle nature of a thin film structure.
Regarding claim 2 Cai et al teaches the sealing layer 140 145 is made of glass, metal, polymer, or plastic.
Regarding claim 4 Cai et al teaches a material of the first electrical insulation layer 110 and a material of the second electrical insulation layer are selected from the group consisting of silicon oxide, silicon nitride, aluminum oxide, zirconium oxide, zinc oxide, hexagonal boron nitride, mica, polymethyl methacrylate (PMMA), polyimide (PI), or polyethylene naphthalate (PEN) [0021][0035].
Regarding claim 5 Cai et al teaches the upper electrode layer 130 131 and the lower electrode 132 133 layer are made of metal, conductive ink, or conductive polymer; and wherein a thickness of the upper electrode layer and a thickness of the lower electrode layer are in a range 10-200 nanometers. [0021][0035].
Response to Arguments
7. Applicant’s arguments, see page 5, filed 8/26/2025, with respect to the rejection(s) of claim(s) 1, 2, 4 & 5 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Cai et al (US 20130270511 A1) in view of Sung et al US 20110163298 A1.
Regarding the applicant’s argument that Sung is “unrelated”, it appears the applicant is attempting to make a case that Sung is non-analogous art. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case though separate in its intended use, the disclosure of Sung is explicitly in the field of graphene & hexagonal nitride electronic devices, moreover, the use case for utilizing the features of such electronic devices irrespective of a particular industry is to provide appropriate protection from heat and / or whatever environment of harsh condition(s).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 2025524410 A Graphene-based sensor, measuring device using same, and sample measurement and analysis method
US 7560788 B2 Microelectromechanical system pressure sensor and method for making and using
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 ANDRE J ALLEN whose telephone number is (571)272-2174. The examiner can normally be reached Mon-Fri. 9am-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina M Deherrera can be reached at (303) 297-4237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRE J ALLEN/Primary Examiner, Art Unit 2855