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 .
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, 7, 8, and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Salihoglu et al. (Graphene Based Adaptive Thermal Camouflage, Nanoletters, 2018, 18, pp. 4541-4548) in view of Jang et al. (US 2010/0000441) and Schmidt et al. (US Pat. 7,601,771).
Considering Claims 1-3, 7, and 28: Salihoglu et al. teaches a device for active modification of thermal radiation (Abstract) comprising a heat resistant nylon substrate, a polyethylene membrane comprising an ionic liquid, and a graphene electrode deposited on the surface of the membrane (Figure 1). Salihoglu et al. teaches the polymeric membrane as being between two electrodes (Figure 1).
Salihoglu et al. does not teach the electrode as comprising a carbon nanotube. However, Jang et al. teaches forming a graphene electrode from an ink comprising 1 to 40 volume percent of graphene and less than 5 volume percent of carbon nanotubes (¶0026; 0030). Salihoglu et al. and Jang et al. are analogous art as they are concerned with a similar technical difficulty, namely graphene electrodes. It would have been obvious to a person of ordinary skill in the art to have used the ink of Jang et al. to form the electrode of Salihoglu et al., and the motivation to do so would have been, as Jang et al. suggests, it can be applied in a cost effective manner by conventional inexpensive printheads (¶0027).
Salihoglu et al. teaches preparing a nickel foil substrate, depositing the graphene electrode onto the nickel foil, placing the membrane onto the graphene electrode, then injecting an ionic liquid into the membrane (pg. 4546). Salihoglu et al. does not teach the ionic liquid as being deposited in a liquid comprising the polymer. However, Schmidt et al. teaches that a polymeric membrane of a polymer and ionic liquid can be prepared by depositing a liquid comprising the polymer and ionic liquid (11:13-37). Salihoglu et al. and Schmidt et al. are analogous art as they are concerned with a similar technical difficulty, namely forming polymeric-ionic liquid membranes. It would have been obvious to a person of ordinary skill in the art to have formed the membrane of Salihoglu et al. from a liquid comprising the polymer and ionic liquid, and the motivation to do so would have been, as Schmidt et al. suggests, it is functionally equivalent to the diffusion method used in Salihoglu et al. (11:38-44).
As Jang et al. teaches forming a graphene electrode from a liquid composition, the combination of Salihoglu et al. and Jang et al. teaches applying a liquid composition to the foil substrate.
Considering Claims 5 and 24: Jang et al. teaches the carbon nanotubes as being single walled carbon nanotubes having a diameter of 4-5 nm (¶0056).
Considering Claim 8: Salihoglu et al. teaches the ionic liquid as having an electrochemical window of 4 V (pg. 6).
Considering Claim 25: Jang et al. teaches the length of the carbon fibers as preferably being less than 10 microns (¶0041).
Considering Claims 26 and 27: Jang et al. teaches that the electrodes are printed.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Salihoglu et al. (Graphene Based Adaptive Thermal Camouflage, Nanoletters, 2018, 18, pp. 4541-4548) in view of Jang et al. (US 2010/0000441) and Schmidt et al. (US Pat. 7,601,771) as applied to claim 1 above, and further in view of Kato et al. (US 2024/0105956).
Considering Claim 6: Salihoglu et al., Jang et al., and Schmidt et al., collectively teach the device of claim 1 as shown above.
Salihoglu et al. does not teach adding a thickening agent to the graphene. However, Kato et al. teaches adding carboxymethyl cellulose to a graphene dispersion (¶0075). Salihoglu et al. and Kato et al. are analogous art as they are concerned a similar technical difficulty, namely graphene electrodes. It would have been obvious to a person of ordinary skill in the art to have added carboxymethyl cellulose to the graphene material, and the motivation to do so would have been, as Kato et al. suggests, to improve the stability of the graphene dispersion.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Salihoglu et al. (Graphene Based Adaptive Thermal Camouflage, Nanoletters, 2018, 18, pp. 4541-4548) in view of Jang et al. (US 2010/0000441) and Schmidt et al. (US Pat. 7,601,771) as applied to claim 1 above, and further in view of McCullough Jr. et al. (US Pat. 5,312,678).
Considering Claim 23: Salihoglu et al., Jang et al., and Schmidt et al., collectively teach the device of claim 1 as shown above.
Salihoglu et al. does not teach a protective encapsulation layer. However, McCullough Jr. et al. teaches applying a protective polymer support fabric on a thermal camouflage material (4:46-51). Salihoglu et al. and McCullough Jr. et al. are concerned with the same field of endeavor, namely thermal camouflage materials. It would have been obvious to a person of ordinary skill in the art to have added the protective support fabric of McCullough Jr. et al. onto the device of Salihoglu et al., and the motivation to do so would have been, as McCullough Jr. et al. suggests, to provide water, abrasion and fire resistance to the device (4:46-51).
Claims 1, 5, 7, 21, 22, 24, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. Adv. Optical Mater. 2021, 9, 2001216, pg. 1-9, published online 11/26/20) in view of Salihoglu et al. (Graphene Based Adaptive Thermal Camouflage, Nanoletters, 2018, 18, pp. 4541-4548) and Schmidt et al. (US Pat. 7,601,771).
Considering Claims 1, 21, 22, and 28: Sun et al. teaches a device for active modification of thermal radiation (Abstract) comprising a circuit board/substrate (Fig. 5); a polymeric membrane comprising an ionic liquid electrolyte (Section 2.1); and two carbon nanotube electrodes composed only of carbon nanotubes as the carbon nanomaterial deposited on each surface of the membrane (Section 2.1, Figure 1).
Sun et al. teaches preparing a platform/substrate, depositing a mixture comprising carbon nanotubes and methanol-water onto the substrate to form a graphene film/electrode, depositing the polymeric membrane onto the graphene film, and injecting an ionic liquid into the membrane (Section 2.1 and Experimental Section). Sun et al. does not teach the ionic liquid as being deposited in a liquid comprising the polymer. However, Schmidt et al. teaches that a polymeric membrane of a polymer and ionic liquid can be prepared by depositing a liquid comprising the polymer and ionic liquid (11:13-37). Sun et al. and Schmidt et al. are analogous art as they are concerned with a similar technical difficulty, namely forming polymeric-ionic liquid membranes. It would have been obvious to a person of ordinary skill in the art to have formed the membrane of Sun et al. from a liquid comprising the polymer and ionic liquid, and the motivation to do so would have been, as Schmidt et al. suggests, it is functionally equivalent to the diffusion method used in Sun et al. (11:38-44).
Considering Claims 5 and 24: Sun et al. teaches the carbon nanotube diameter as being 4 to 15 nm (Section 2.1), which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have used a fiber with a diameter in the overlapping portion of the claimed range, and the motivation to do so would have been, as Sun et al. suggests, it is suitable for providing the desired camouflaging effect.
Considering Claim 7: Sun et al. teaches the membrane as being a mixture of polyethylene and polypropylene (Section 2.1).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. Adv. Optical Mater. 2021, 9, 2001216, pg. 1-9, published online 11/26/20) in view of Salihoglu et al. (Graphene Based Adaptive Thermal Camouflage, Nanoletters, 2018, 18, pp. 4541-4548) and Schmidt et al. (US Pat. 7,601,771) as applied to claim 1 above, and further in view of Kato et al. (US 2024/0105956).
Considering Claim 6: Sun et al., Salihoglu et al., and Schmidt et al., collectively teach the device of claim 1 as shown above.
Sun et al. does not teach adding a thickening agent to the graphene. However, Kato et al. teaches adding carboxymethyl cellulose to a graphene dispersion (¶0075). Sun et al. and Kato et al. are analogous art as they are concerned a similar technical difficulty, namely graphene electrodes. It would have been obvious to a person of ordinary skill in the art to have added carboxymethyl cellulose to the graphene material, and the motivation to do so would have been, as Kato et al. suggests, to improve the stability of the graphene dispersion.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. Adv. Optical Mater. 2021, 9, 2001216, pg. 1-9, published online 11/26/20) in view of Salihoglu et al. (Graphene Based Adaptive Thermal Camouflage, Nanoletters, 2018, 18, pp. 4541-4548) and Schmidt et al. (US Pat. 7,601,771)as applied to claim 1 above, and further in view of McCullough Jr. et al. (US Pat. 5,312,678).
Considering Claim 23: Sun et al. Salihoglu et al., and Schmidt et al., collectively teach the device of claim 1 as shown above.
Sun et al. does not teach a protective encapsulation layer. However, McCullough Jr. et al. teaches applying a protective polymer support fabric on a thermal camouflage material (4:46-51). Sun et al. and McCullough Jr. et al. are concerned with the same field of endeavor, namely thermal camouflage materials. It would have been obvious to a person of ordinary skill in the art to have added the protective support fabric of McCullough Jr. et al. onto the device of Sun et al., and the motivation to do so would have been, as McCullough Jr. et al. suggests, to provide water, abrasion and fire resistance to the device (4:46-51).
Response to Arguments
Applicant's arguments filed February 5, 2026 have been fully considered but they are not persuasive.
A) The applicant’s argument that Salihoglu et al. does not forming the electrode on a substrate is not persuasive. Salihoglu et al. teaches preparing a nickel foil substrate, depositing the graphene electrode onto the nickel foil, placing the membrane onto the graphene electrode, then injecting an ionic liquid into the membrane (pg. 4546). As Jang et al. teaches forming a graphene electrode from a liquid composition, the combination of Salihoglu et al. and Jang et al. teaches applying a liquid composition to the foil substrate.
It is noted that the instant claims do not require the substrate to be present in the final product. As such, the foil of Salihoglu et al. reads on the instant substrate, despite it being removed by etching prior to applying the membrane to the electrode.
B) In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the specific steps and the advantages of the process) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The advantages recited by the applicant are directed to more specific features recited in the original specification that are not present in the generic process claimed. As such, there is no nexus between the claimed process and the advantages rectited.
C) The applicant’s argument that Sun et al. does not teach the claimed process steps is not persuasive. Sun et al. teaches preparing a platform/substrate, depositing a mixture comprising carbon nanotubes and methanol-water onto the substrate to form a graphene film/electrode, depositing the polymeric membrane onto the graphene film, and injecting an ionic liquid into the membrane (Section 2.1 and Experimental Section).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767