DETAILED ACTION
Response to Amendment
Applicant's amendment filed 2/17/2026 has been entered. Currently, claims 1, 3-14, 16-20, 40, 55 and 61-66 are pending, claims 20, 40 and 55 are withdrawn, claims 2, 15, 21-39, 41-54 and 56-60 are canceled, and claims 61-66 are new.
The Examiner notes that all changes in the claims are not shown with the proper underline notation.
In claim 1 on line 13, the phrase “in producing” was not shown with the proper underline notation.
In claim 13 on line 4, the phrase “
In the spirit of compact prosecution, the claims will be examined with these changes in mind.
Specification
The disclosure is objected to because of the following informalities:
The numbering of the paragraphs of the specification goes from [0023] back to [0003] and continues from that point at pages 7-8 of the specification. Please see 37 CFR 1.52(b)(6).
Appropriate correction is required.
Claim Objections
Claims 1, 16, 18, 19, 61, 62 and 64-66 are objected to because of the following informalities:
In claim 1 on lines 7-8, claim 61 on lines 6-7, claim 62 on lines 6-7, and claim 64 on lines 6-7 the phrase “controlling a fluence of the beam to one or more predefined levels of fluence as a function of position on the surface to the one or more predefined levels of fluence” is objected to grammatically. This objection can be overcome by changing the phrase to “controlling a fluence of the beam traversing over the at least a portion of the surface of the polymeric substrate to one or more predefined levels of fluence as a function of position on the surface” which is how the claim will be interpreted.
In claims 16 on line 2, claim 65 on lines 1-2, and claim 66 on line 1, the phrase “model of at least one property” is objected to grammatically. This objection can be overcome by changing the phrase to “model of the at least one property” which is how the claim will be interpreted.
In claims 18, 19 and 64, the phrase “a same polymeric material” is objected to grammatically. The objection can be overcome by changing the phrase to “the same polymeric material” which is how the claims will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 3-5 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.
In claim 3, the Examiner does not find support for the intermediate scope of “a transition in hybridization state” in the specification as originally filed. In each of the places where hybridization change is mentioned, the specification states it is a “transition to sp2 hybridized graphitic carbon” and not a generic “transition in hybridization state” as claimed.
Claims 1, 3-14, 16-19 and 61-66 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.
In claim 1 on lines 12-13, claim 61 on lines 11-12, claim 62 on lines 13-14, and claim 64 on lines 11-12, the limitations “to control at least one property of the carbonized material in producing the carbonized material” and “to control at least one property in producing the carbonized material” lack antecedent basis in the respective claims. The method steps of the body of the claim have not properly established when the “carbonized material” was produced, which means these phrases lacks antecedent basis. This rejection can be overcome by changing line 6 of claim 1, line 5 of claim 61, line 5 of claim 62 and line 5 of claim 64 to recite “in a predetermined pattern to produce a carbonized material” which is how the claims will be interpreted.
In claims 1, 61, 62 and 64, the limitations that the fluence of the beam is controlled to “one or more predefined levels of fluence” and the speed of movement of the beam is controlled to “one or more predefined levels of the speed of movement of the beam” to achieve “one or more predetermined smooth transitions in the at least one property of the carbonized material” along the path of lasing renders the claim indefinite because one cannot form a “transition in the at least one property of the carbonized material” on the surface of the polymeric substrate along the path of lasing with only a single fluence and a single speed of the beam. If there is only one fluence and one speed, then it would be impossible to form a transition in properties on the surface of the polymeric substrate. This rejection can be overcome by requiring one of the predetermined levels of fluence or speed to be “two or more predefined levels” which is how the claims will be interpreted. Please note that such a change will affect the claims that depend from claim 1 and the limitations in those claims should be reviewed.
Please note for claim 62, the fluence should be made “two or more predefined levels of fluence” as the claim is requiring changing the focus or waist of the beam as this was the concept the Examiner indicated as potentially allowable from claim 8 if the 112(b) rejections were addressed.
Please note for claim 64, the fluence should be made “two or more predefined levels of fluence” as the claim is requiring “continuous variation in fluence” and this was the concept the Examiner indicated as potentially allowable from claim 18 if the 112(b) rejections were addressed.
Allowable Subject Matter
Claims 1, 6-14, 16-19 and 61-66 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
With regard to claim 1, the prior art does not teach or suggest controlling the fluence of the beam and speed of movement of the beam to “achieve one or more predetermined smooth transitions in the at least one property of the carbonized material”, i.e. there is a position on the surface of the polymeric substrate where there is a transition between carbonized material having two different properties in combination with the rest of the limitations claimed. The term “smooth transition” has a specific definition at [0030], i.e. without an abrupt change in properties, in the specification as filed.
With regard to claim 61, the prior art does not teach or suggest controlling the fluence of the beam and speed of movement of the beam to “achieve one or more predetermined transitions in the at least one property of the carbonized material”, i.e. there is a position on the surface of the polymeric substrate where there is a transition between carbonized material having two different properties, with also controlling the fluence to be between the lower threshold of fluence and the higher threshold of fluence to provide electrical conductivity and that will form an anisotropic cellular network at the portion of the surface of the polymeric substrate in combination with the rest of the limitations claimed.
With regard to claims 62, the prior art does not teach or suggest controlling the fluence of the beam and speed of movement of the beam to “achieve one or more predetermined transitions in the at least one property of the carbonized material”, i.e. there is a position on the surface of the polymeric substrate where there is a transition between carbonized material having two different properties, with also controlling the two or more predefined levels of fluence by “controlling a distance between a focus or waist of the beam and the surface of the polymeric substrate” in combination with the rest of the limitations claimed.
With regard to claim 64, the prior art does not teach or suggest controlling the fluence of the beam and speed of movement of the beam to “achieve one or more predetermined transitions in the at least one property of the carbonized material”, i.e. there is a position on the surface of the polymeric substrate where there is a transition between carbonized material having two different properties, with the achieving of the predetermined transitions in the at least one property being predetermined and accomplished by “traversing the laser source in a path over at least one test polymeric substrate of the same polymeric material as the polymeric substrate, and wherein the at least one test polymeric substrate is inclined in orientation relative to the path of the laser source to create a continuous variation in fluence over the path of the laser source” in combination with the rest of the limitations claimed.
Please note the Examiner is interpreting claims 64 as requiring that the “fluence of the beam and speed of movement of the beam are controlled to achieve one or more predetermined transitions in the at least one property” is performed in the same way as the “traversing the laser source in a path over at least one test polymeric substrate…which is inclined in orientation relative to the path of the laser source to create a continuous variation in fluence over the path of the laser source” due to the achieving step being “predetermined by” the traversing the laser step over the test polymeric substrate.
Response to Arguments
Applicant’s arguments, see Remarks, filed 2/17/2026, with respect to the previous claim objections and 102(a)(1) rejection have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 2/17/2026 have been fully considered but they are not persuasive.
Applicants argue that they have amended the claims to overcome the 112(b) rejections to place the case in condition for allowance.
The Examiner respectfully disagrees and notes that various 112(b) rejections remain as the amendments did not overcome the previous rejections concerning the proper antecedent basis for the formed carbonized material in the body of the claim or the fact that the one or more “transitions in the at least one property of the carbonized material” would require at least two or more predefined levels of either the fluence or the speed. These remaining rejections also affect the new independent claims 61, 62 and 64.
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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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, Mark Ruthkosky can be reached at (571) 272-1291. 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.
/Gerard Higgins/Primary Examiner, Art Unit 1785