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 .
Response to Arguments
Applicant's arguments filed 2/24/26 have been fully considered but they are not persuasive. The art rejections still apply though the rejections have been updated to address the amendments.
Applicant asserts in the Remarks that “The Office Action, however, has not established that the claimed features must necessarily be present. Accordingly, a prima facie case of anticipation has not been established” in paragraph 4 on page 4 of the Remarks. The Examiner respectfully disagrees. It is a matter of fact that graphene has distinct Raman peaks—the same claimed. Applicant has cited Saito (US 2022/0131146 A1) which states explicitly ratio G/D of a G band to a D band of the Raman spectrum of the reduced graphene oxide is preferably 1 or more (paragraph 456). The Office has cited two additional reference that provide further evidence. Kim (US 2021/0005895 A1) states that graphene has an average ratio of the maximum peak intensity of a D band at 1360±50 cm−1 to the maximum peak intensity of a G band at 1580±50 cm−1 of 0.06 to 0.5, obtained by Raman spectroscopy (paragraph 15). Hirose (US 2016/0233484 A1) states that broad peaks appeared at 1330 cm-1 and 1580 cm-1 in a shift value of RAMAN spectrum regarding graphite coat, and their intensity ratio I1330/ /I1580 is in the range of 1.5<I1330/I1580<3 (paragraph 23).
The rejections of claims 1 and 5 are only argued in the context of the supposed deficiencies in the rejections of claims 1 and 4. These deficiencies are not maintained. The arguments are therefore moot.
The double patenting rejections are held in abeyance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/001,349 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim encompasses the limitations of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/020,139 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim encompasses the limitations of the instant claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 6 of U.S. Patent No. 9,218,916 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims encompass the limitations of the instant claim.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8,945,772 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims encompass the limitations of the instant claim.
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.
Claims 1, 4, and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirohashi (US 2012/0328953 A1).
Regarding claim 1, Hirohashi discloses a composition comprising: a nine-membered carbocyclic ring with a hole (paragraph 12). Hirohashi discloses the composition as claimed. The properties associated with composition are not grounds for patentability (MPEP 2112 I) nor is the manner in which they are measured (MPEP 2113 I).
Regarding claim 4, Hirohashi discloses an apparatus comprising: graphene on the surface of an active material particle (paragraph 57), wherein the graphene comprises a nine-membered carbocyclic ring with a hole (paragraph 12). Hirohashi discloses the composition as claimed. The properties associated with composition are not grounds for patentability (MPEP 2112 I) nor is the manner in which they are measured (MPEP 2113 I).
Regarding claims 7 and 8, Hirohashi discloses positive and negative electrodes comprising the particles (paragraph 77).
Regarding claim 9, Hirohashi discloses a battery and electrolyte (paragraph 62).
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.
Claims 2, 5, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hirohashi as applied to claims 1 and 4 above, and further in view of Zhamu (US 2011/0159372 A1).
Hirohashi does not disclose the use of fluorine but does disclose dispersing the graphene in a solvent (paragraph 71). Zhamu—in an invention for graphene rings for batteries—discloses the addition of fluorocarbon functional groups to the edge of the graphene molecule (paragraph 102) so as to adjust the solubility or dispersibility of graphene in a solvent without significantly varying the electrical conductivity (paragraph 119). It would have been obvious to one having ordinary skill in the art at the time of invention to add fluorine functional groups to the graphene of Hirohashi so as to adjust the solubility or dispersibility of graphene in the desired and available solvents of Hirohashi without negatively affecting the electrical conductivity as suggested by Zhamu.
Conclusion
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 IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
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, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725
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