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 Election/Restrictions
1. Applicant's election with traverse of Group I, claims 1-30, in the reply filed on 02/02/2026 is acknowledged. The traversal is on the ground(s) that “the search and examination of all currently pending claims would not pose an undue burden on the Examiner.” (Applicants’ response, page 1).
While the argument is not found persuasive since there is not sufficient reason or explanation provided to support applicants’ position, however the Examiner has rejoined the claims of Group II, claims 31-38, because during the examination of Group I claims, the same subject matter recited were found allowable. It is reasonable to rejoin the claims of Group II with Group I claims.
The requirement is still deemed proper and is therefore made FINAL.
Status of Application
2. This application is a 371 of PCT/US2022/012082, which was filed on 01/12/2022, which has Provisional of 63139382, which was filed on 01/20/2021.
Claims 1-38 were originally presented in this application for examination.
Claims 1-38 are currently pending in this application and under consideration.
Specification
3. The examiner has not checked the specification to the extent necessary to determine the presence of all possible minor errors (grammatical, typographical, and idiomatic). Cooperation of the applicant(s) is requested in correcting any errors of which applicant(s) may become aware of in the specification, in the claims and in any further amendment(s) that applicant(s) may file.
Applicant(s) is also requested to complete the status of the copending applications referred to in the specification by their Attorney Docket Number or Application Serial Number, if any.
The status of the parent application(s) and/or any other application(s) cross-referenced to this application, if any, should be updated in a timely manner.
Claim Objections
4. Claims 30, 37, & 38 are objected to because of the following informalities:
A. In claim 30, line 1, “The borophane polymorphs, being” is suggested change to --A borophane polymorphs--.
B. In claim 37, line 1, “being” should change to --is--.
C. In claim 38, line 1, “being” should change to --is--.
Appropriate correction is required.
Claim Rejections - 35 USC § 102(a)(1)
5. 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.
Claim(s) 1, 3, 11-12, 19-20, 22, 23-25, 28-29, 30-31, & 35-38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 a method of synthesizing borophane polymorphs, comprising:
growing borophene on a substrate in an ultrahigh vacuum (UHV) chamber; and performing hydrogenation of the borophene in situ to obtain borophane having a
diverse set of borophane polymorphs (as recited in the instant claim 1).
Wang et al. disclose a method of synthesizing borophane, comprising: synthesizing borophene on a silver substrate under ultrahigh-vacuum, and performing full dehydrogenation of the borophene to obtain borophane having seven conformers (see Abstract, page 1, and Fig. 3).
Regarding claim 1, Wang et al. teaches the claimed method of synthesizing borophane polymorphs comprising the same process steps as set forth in the instant claim 1 (see page 1 and Fig. 3).
Regarding claims 3 & 25, Wang et al. teaches the claimed substrate (Ag) (see page 1).
Regarding claims 11-12, 23-24, & 28-29, the hydrogenation of borophene is performed with atomic hydrogen in Wang et al. (see page 1; page 2, “Crystal Structures and stability”).
Regarding claim 19, Wang et al. discloses seven borophane conformers, and the borophane is fully hydrogenated borophene, and the ratio of B:H is 1:1 (see page 2).
Regarding claims 20 & 22, Wang et al. discloses that the borophene is unstable, and the borophane (fully hydrogenated borophene) is stable (see Abstract; page 4).
Regarding claims 30, 31, & 35-38, Wang et al. teaches “borophane” as a product (see Abstract, page 1, and Fig. 3).
The claimed method is disclosed by Wang et al. thus the instant claims are anticipated by the reference.
Claim Rejections - 35 USC § 103
6. 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) 2, 4-10, 21, & 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable 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) in view of Hersam et al. (US 2018/0222755 A1).
Wang et al. is considered to represent the most relevant state of the art, discloses a method of synthesizing borophane having seven conformers, comprising full hydrogenation of borophene (see Abstract, page 1, and Fig. 3).
Regarding claim 2, Wang et al. teaches the claimed method, but does not teach the claimed feature, “the UHV chamber has a base pressure of about 1.0x10-10 mbar during the borophene growth”, as further defined in this claim.
Hersam et al., is in the field of borophene production and fairly teaches to perform the growth of borophene in a UHV chamber at a base pressure of 8x10-11 Torr (which is 1.07x10-10 mbar) (see Example 1 at [0053]).
Thus, it is considered the claimed feature can be easily derived from the disclosure of Hersam et al. considering depositing borophene in a UHV chamber at 8x10-11 Torr (which is 1.07x10-10 mbar) (see Example 1 at [0053]).
Regarding claims 4 & 5, the claimed features are merely variations of the disclosure of Hersam et al. considering that Ag (111) thin film (~300 nm thick) on mica substrate is cleaned by repeated Ar ion sputtering followed by annealing at 480oC ([0037] and [0053]).
Regarding claims 6 & 7, the claimed features can be easily derived from the disclosure of Hersam et al. considering that borophene is grown by electron-beam evaporation of a pure boron rod ([0037]).
Regarding claim 8, the claimed feature on “the solid boron rod has a purity of about 99.999-99.999999% boron” can be easily derived from the disclosure of Hersam et al. considering that the boron source has a purity of about 99.9999% ([0053]).
Regarding claims 9 & 27, the claimed features on “the substrate temperature is at about 320-660oC during boron deposition” can be easily derived from the disclosure of Hersam et al. considering that the substrate temperature is at 480oC during boron deposition ([0037]; [0053]).
Regarding claims 10 & 26, it is considered the claimed feature is disclosed by Hersam et al. considering that the borophene comprises a homogeneous boron phase (p. 8, claims 11 & 13).
Regarding claims 21, Wang et al. discloses that in hydrogenated borophene, there exist a charge transfer from B atoms to H atoms, leading to that the in-plane bonding state are completely filled and the antibonding state are empty, and out-of plane bonding states are also fully filled (see page 4) and considering that borophene is metallic in Hersam et al. (see claims 2 & 7).
Accordingly, claims 2, 4-10, 21, & 26-27 would have been obvious over a combination of Wang et al. and Hersam et al.
Allowable Subject Matter
7. Claims 13, 15-18, & 32-34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Wang et al. is identified as the most relevant prior art, teaches the claimed method of synthesizing borophane polymorphs and product thereof as set forth and discussed in the rejection section above, however Wang et al. does not teach the claimed features as further defined in these claims.
There would be no motivation to combine the teachings of the prior art references together to arrive to the claimed invention.
Citations
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All references are cited for related art. See PTO-892 Form prepared.
US 10,829,381 (a method of synthesizing borophene in an ultrahigh vacuum (UHV) chamber).
US 10,954,132 (a method of synthesizing borophene in an ultrahigh vacuum (UHV) chamber).
US 2023/0008590 (a method of synthesizing borophene in an ultrahigh vacuum (UHV) chamber).
US 2024/0150185 (multi-atomic layer borophene and a method of synthesizing multi-atomic layer borophene in an ultrahigh vacuum (UHV) chamber).
US 2025/0282622 (a method of synthesizing borophene in an ultrahigh vacuum (UHV) chamber).
US 2026/0152403 (method for production of borophene in an ultrahigh vacuum (UHV) chamber).
Conclusion
9. Claims 1-38 are pending. Claims 1-12, 14, 19-31, & 35-38 are rejected. Claims 13, 15-18, & 32-34 are objected. No claims are allowed.
Contacts
10. 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/
June 05, 2026
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