DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Election/Restrictions
Applicant's election with traverse of electing Group I, Species (a-i) (claims 1-7 and 9-18) in the reply filed on April 21, 2026 is acknowledged. The traversal is on the ground(s) that there is no serious burden on search and examination of all. The burden is on the Examiner to provide reasons and/or examples to support any conclusion in regard to patentable distinction. MPEP § 803. Moreover, when citing lack of unity of invention in a national stage application, the Examiner has the burden of explaining why each group lacks unity with each other group specifically describing special technical features in each group. See MPEP § 1893.03(d)” on page 2 of the Applicant’s remarks and arguments. This is not found persuasive because respectfully, section on MPEP § 803 is not applicable for Restriction Requirement in National Stage Applications Submitted Under 35 U.S.C. 371. According to section of MPEP § 1850 that discusses lack of unity did not require provide a search burden. "Search burden" is only a requirement for US restriction practice. Groups I-III share the common technical feature of a multi-atomic layer borophene. However, this composition fails to become a special technical feature as it is not novel. Please see rejections below. Therefore, the common technical feature fails to become a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8 and 19-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 21, 2026.
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.
Claim 7 is 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 pre-AIA the applicant regards as the invention.
Regarding claim 7, the term "highly" is a relative term which render the claims indefinite. The term "highly" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
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.
Claims 1-7 and 9-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hersam et al. (US 2019/0002298 A1).
Regarding claim 1, Hersam teaches a method of synthesizing multi-atomic layer borophene ([0016], [0048]), comprising: depositing boron on a substrate with atomically flat terraces at a temperature in an ultrahigh vacuum (UHIV) chamber to grow multi-atomic layer borophene beyond a full coverage of single-atomic layer (SL) borophene ([0016], [0024], [0036], [0037], [0038], [0048], [0050], Figs. 1B, 2A-C, 3B-C, 12A-C).
Regarding claim 2, Hersam teaches wherein the temperature is at about 450-7000C during boron deposition for example ([0037]).
Regarding claim 3, Hersam teaches wherein the temperature is at about 450 during boron deposition for example ([0017], [0037]).
Regarding claim 4, Hersam teaches wherein the atomically flat terraces are micrometer-sized atomically flat terraces having widths exceeding about 1 µm as shown in Fig. 1B and 13B-C (Fig. 1B and 13B-C).
Regarding claim 5, Hersam teaches wherein the multi-atomic layer borophene comprises bilayer (BL) borophene as shown in Figs. 12 A-C ([0030], [0042], Figs. 12A-C).
Regarding claim 6, Hersam teaches wherein the BL borophene is BL-α borophene comprising two covalently bonded α -phase borophene monolayers as shown in Figs. 2A and 12 A (Figs. 2 A, 12A).
Regarding claim 7, Hersam teaches wherein the BL- α borophene is in form of a highly faceted island with a six-fold symmetric Moire superlattice surrounded by full-coverage intermixed SL v1/5 and v1/6 borophene as shown in Figs. 2A and 12 A (Figs. 2 A, 12A).
Regarding claim 9, Hersam teaches wherein the BL- α borophene has a work function exceeding that of SL borophene with multilayers as shown in Figs. 1B, 2A-C, 3B-C, 12A-C). (Figs. 1B, 2A-C, 3B-C, 12A-C).
Regarding claim 10, Hersam teaches wherein the BL- α borophene is metallic ([0011], [0036]).
Regarding claim 11, Hersam teaches wherein the UHIV chamber is in a vacuum level better than 10-9 Torr during the borophene growth ([0050]).
Regarding claim 12, Hersam teaches wherein the substrate comprises a substrate having a metal film formed of Ag for example ([0012]).
Regarding claim 13, Hersam teaches wherein the substrate is a single-crystal Ag(111) substrate ([0012]).
Regarding claim 14, Hersam teaches wherein the single-crystal Ag(111) substrate is obtained by repeated ion sputtering followed by thermal annealing at above 5000C, thereby will form atomically flat Ag(111) terraces with typical width exceeding about 1 µm ([0050]).
Regarding claim 15, Hersam teaches wherein said depositing the boron is performed by electron-beam evaporation of a solid boron rod ([0050]).
Regarding claim 16, Hersam teaches wherein the solid boron rod has a purity of about 99.9999% boron ([0050]).
Regarding claim 17, Hersam teaches wherein the flux of boron during deposition will maintain at above 10 nA because using a filament current above 1 A and accelerating voltage above 1 kV ([0050]).
Regarding claim 18, Hersam teaches wherein the deposition time is about 10-100 min to achieve more than the full monolayer coverage of boron ([0017], [0050]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-7 and 9-18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-27 of copending Application No. 18/828151 (‘151). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claim 1 of copending application '151. That is, claim 1 of copending application falls entire within the scope of claim 1 or, in other words, claim 1 is anticipated by claim 1 of copending application.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 5712721295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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