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
Response to Amendment
1. The amendment filed on 09/10/2026 has been made of record and entered.
Claims 1, 11, 14-15, 23, 30-31, 33, & 37-38 have been amended.
Claim 32 has been canceled.
Claims 1-31 & 33-38 are currently pending in this application and under consideration.
Claim Objections
2. Claim 30 is objected to because of the following informalities:
In line 1, “The borophane polymorphs” should be changed to --Borophane polymorphs--.
Appropriate correction is required.
Claim Rejections - 35 USC § 102(a)(1)/103
3. 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.
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) 30 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wang et al. (“New crystal structure prediction of fully hydrogenated borophene by first principles calculations”, Scientific reports, 2017, Vol. 7, No. 1, pages 1-11).
The claimed invention relates to borophane polymorphs.
Wang et al. teaches borophane conformers with different configurations (see page 1 and Fig. 3).
It is considered the borophane product disclosed by Wang et al. meets the instant claim
since there is no product properties or other features being recited in the instant claim to distinguish the claimed borophane polymorphs product from that of the reference.
The instant claim is drawn to a product-by-process depending on a method of synthesizing a product in claim 1. While the product of the reference is not made by the same process, the product disclosed is the same as claimed. It has been held that the patentability of the product and its method of production are separately determined. Thus, even though the process limitations in the claim are not disregarded, they have no bearing on the patentability of the claimed product per se. See In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985); In re Brown, 173 USPQ 688, 688 (CCPA 1977); In re Fessman, 180 USPQ 324, 326 (CCPA 1977). See also MPEP 2113.
Response to Applicants’ Arguments
4. Applicants’ remarks submitted with the amendment on 09/10/2026 have been fully reviewed, the arguments are deemed persuasive. However, claim 30 remains rejected because it is a product claim and the claimed subject matter as recited does not distinguish from the product disclosed by Wang et al. See above for detailed explanation.
Reasons for Allowance
5. Claims 1-29, 31, & 33-38 are allowable over the prior art made of record.
Reasons for allowance of the claimed subject matter can be found in the last O.A. (dated 06/10/2026).
6. 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). Applicants are 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.
Conclusion
7. Claims 1-31 & 33-38 are pending. Claim 30 is objected and rejected. Claims 1-29, 31, & 33-38 are allowed.
Contacts
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner CAM N. NGUYEN whose telephone number is (571)272-1357. The examiner can normally be reached on M-F (8:30 am – 5:00 pm) at alternative worksite or at cam.nguyen@uspto.gov.
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, Anthony Zimmer, can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cam N. Nguyen/Primary Examiner, Art Unit 1736
/CNN/
September 27, 2026
