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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 7 and 11-14, in the reply filed on Aug. 4, 2026 is acknowledged.
Claims 1-6 and 52-53 are canceled by Applicant. Claims 7, 11-22, 37-39, 42-44, 51, 54-72 are pending, wherein claims 70-72 are newly added. Claims 51, 54-69 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on Aug. 4, 2026.
Claims 7, 11-22, 37-39, 42-44 and 70-72 are being examined on the merits in this office action.
Claim Objections
Claims 7, 11-22, 37-39, 42-44 and 70-72 are objected to because of the following informalities:
The preamble “A moisture electric generating battery cell …” in claims 7, 11-22, 37-39, 42-44 and 70-72 should be “The moisture electric generating battery cell …”.
In claim 13, the full names of PVA, PVB, PMMA and PVP should be provided.
Claim 15 has grammatical errors.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 11-22, 37-39, 42-44 and 70-72 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 7, the recitation “an interlayer spacing” in “an interlayer spacing that is greater than …” is unclear as to what “interlayer” refers to, rendering the claim indefinite. For purposes of examination, this recitation is interpreted as referring to a spacing between two of graphene oxide nanosheets constituting the functional layer as claimed. Refers to paragraphs [0085], [0321] and [0360]) of the instant PgPub.
Claim 7 recites “the interlayer spacing of graphene oxide”, which is unclear and lacks antecedent basis. For purposes of examination, the same interpretation described above applies. Claim 7 and all its dependent claims are indefinite and are rejected under 112(b).
In claims 15 and 16: i) they recite “sub-layers”, which is not defined, rendering the scope and boundary of the claim indefinite; ii) it is unclear what “through the functional layer” means (direction?); iii) what about regarding “first ratio” and “second ratio”? about number, amount, weight, volume, etc.? The issue applies similarly to claims 70-72. Note that the potential claim amendments must be supported by the specification as originally filed.
Claim 37 recites the limitation "the at least on functional layer". There is insufficient antecedent basis for this limitation in the claim.
Claim 44 recites the limitation "the cell". There is insufficient antecedent basis for this limitation in the claim.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 7, 11-12, 14-17, 22, 37, 44 and 70-72 are rejected under 35 U.S.C. 103 as being unpatentable over Borini et al. (EP 3034467 A1, hereafter Borini).
Regarding claim 7, Borini teaches a moisture electric generating battery cell (e.g., “humidity sensor”, [0024]; “400”, Fig. 4) formed from graphene oxide composite comprising acid treated graphene oxide (See, e.g., [0070] for preparation of graphene oxide composite). The prepared graphene oxide composite can be processed (e.g., diced and functionalized) to enable it to be incorporated into an electronic component ([0025]). The processed graphene oxide composite reads on the claimed functional layer.
Borini is silent as to the claimed interlayer spacing. However, since graphene oxide is acid treated, the interlayer spacing of the acid treated graphene oxide sheets/flakes ([0021]) are expected to have an interlayer spacing that is greater than that of graphene oxide from which the acid treated graphene oxide is prepared (according to the instant disclosure). A similar acid treatment process is expected to produce similar results/effects.
Regarding claim 11, Borini teaches the moisture electric generating battery cell according to claim 7, and it is reasonably expected that the interlayer spacing of the acid treated graphene oxide is [Symbol font/0xB3] 0.799 nm, because Borini teaches the same graphene oxide and a similar acid treatment process.
Regarding claim 12, Borini teaches the moisture electric generating battery cell according to claim 7, wherein the functional layer further comprises a polymer binder (e.g., polymerized aniline, see [0070]).
Regarding claims 14-16, Borini teaches the moisture electric generating battery cell according to claim 7, the claimed limitations (characteristics or properties) in these claims are expected to be present since Borini teaches the same moisture electric generating battery cell as claimed in claim 7. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be present.
Regarding claim 17, Borini teaches the moisture electric generating battery cell according to claim 7, and Fig. 4 of Borini shows the functional layer is disposed between and is electrically connected to a first and second electrodes (401, 402).
Regarding claim 22, Borini teaches the moisture electric generating battery cell according to claim 7, the claimed limitations (characteristics or properties) in this claim are expected to be present since Borini teaches the same moisture electric generating battery cell as claimed in claim 17. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be present.
Regarding claim 37, Borini teaches the moisture electric generating battery cell according to claim 7, the claimed limitations (characteristics or properties or functions) in this claim are expected to be present since Borini teaches the same moisture electric generating battery cell as claimed in claim 7. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be present.
Regarding claim 44, Borini teaches the moisture electric generating battery cell according to claim 7, and the instantly claimed limitation does not patentably distinguish the invention because an apparatus must be distinguished from the prior art in terms of structure rather than function noting that apparatus claims cover what a device is, not what a device does (See MPEP 2114). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
In the instant case, all the claimed structural limitations have been satisfied.
Regarding claims 70-72, Borini teaches the moisture electric generating battery cell according to claim 7, and one of ordinary skill in the art would know that the claimed ratio of C=O bonds to C-C bonds largely depend on degree of oxidation of original graphite used to prepare graphene oxide through Hummer method, for example. Thus, one of ordinary skill in the art would readily arrive at the claimed ratios by adjusting oxidation degree of graphite during the graphene oxide preparation process.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Borini as applied to claim 12 above, and further in view of Wang et al. (Optic Communications, 2016, 372, 229-234., hereafter referred to as Wang).
Regarding claim 13, Borini teaches the moisture electric generating battery cell according to claim 12, but is silent as to the polymer binder being one or more of those as instantly listed.
However, Wang discloses a humidity sensor based on graphene oxide and PVA (See at least: title). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have substitute PVA for polymerized aniline of Borini to form a predictable graphene oxide/PVA composite, since a simple substitution of one known element for another to obtain predictable results is prima facie obvious (MPEP § 2143).
Claims 18-20, 39 and 42-43 are rejected under 35 U.S.C. 103 as being unpatentable over Borini as applied to claim 17 above, and further in view of Xu et al. (Small, 2018, 14, 1704473., hereafter referred to as Xu).
Regarding claims 18-20 and 39, Borini teaches the moisture electric generating battery cell according to claim 17, but is silent as to the first electrode being porous and the second electrode being insulating to moisture.
However, in the same field of endeavor, a porous FTO glass can be used as a first electrode of a similar graphene oxide-based sensor and a FTO glass can be used as a second electrode (See Fig. 1(a), and the beginning of the left column of page 2/7) in order to preclude chemical reactions between graphene oxide and metals (Supporting Info., bottom of page 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have incorporated the teachings of Xu into Borini such that the configuration of the sensor of Borini is modified to be similar to that of Xu, wherein a porous FTO glass is used as the first electrode of Borini and a FTO glass is used as the second electrode of Borini to preclude undesired chemical reactions. Moreover, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07. As a result, the first electrode of Borini as modified is porous and the second electrode FTO is insulating to moisture according to the instant disclosure, and the first electrode permits moisture penetration through the first electrode and into the functional layer (See Fig. 1a, Xu).
Furthermore, regarding claim 39, since the first electrode of Borini as modified by Xu has pores (inlets) whereas the second electrode does not, the two electrodes have different moisture permeability properties.
Furthermore, regarding claims 42-43, when the first and second electrodes of Borini as modified by Xu are re-named as the second and first electrodes as claimed in these claims, The limitations in claim 43 are met, and the second electrode extends partially (because of presence of pores/inlets) over the functional layer (claim 42).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Borini as applied to claim 17 above, and further in view of Zhao et al. (Energy & Environmental Science, 2016, 9, 912., hereafter referred to as Zhao).
Regarding claim 21, Borini teaches the moisture electric generating battery cell according to claim 17, but is silent as to the first electrode comprising aluminum.
However, it is well known in the art that aluminum can be used as an electrode. For example, Zhao discloses a graphene oxide-based sensor using aluminum as an electrode (See Fig. 2a). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified Borini to use aluminum as the first electrode of Borini, since a simple substitution of one known element for another to obtain predictable results is prima facie obvious (MPEP § 2143). Also, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Borini as applied to claim 17 above, and further in view of Huang et al. (Energy & Environmental Science, 2019, 12, 1848., hereafter referred to as Huang).
Regarding claim 38, Borini teaches the moisture electric generating battery cell according to claim 17, but is silent as to the first electrode and the second electrode comprise different electrode materials.
In the same field of endeavor, however, Huang discloses a similar graphene oxide-based sensor, wherein the first and second metal electrodes are different (Fig. 1a). The asymmetrical metal electrodes with rational work functions enable the construction of a Schottky contact with the GO composite, which allows for the unidirectional transport of ions, prominently enhancing the device performance (top of the left column on page 1850).
It would have been obvious to one of ordinary skill in the art to have employed the first and second electrodes with different electrode materials in the sensor of Borini, as taught by Huang, in order to achieve advantages/benefits stated above.
Conclusion
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727
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