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 § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 17-18 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by US 2017/0312695 A1 to Majumder et al. (hereinafter “Majumder”).
Majumder teaches a method of forming a graphene oxide (GO) film on a substrate, the method comprising:
depositing a GO ink on a surface of a porous substrate (see Figure 2; paragraphs [0024], [0030], [0036], [0100], [0107], and [0114]); and,
mechanically removing excess ink on the surface of the porous substrate using a coating or shearing apparatus such as a knife coater (see Figure 2; paragraph [0101]) while simultaneously providing a pressure difference that forces a liquid medium of the ink through the porous substrate to provide a GO film on the surface of the porous substrate (Drawing the graphene oxide through a gap that is formed between a substrate surface and an application surface of a coating apparatus at a desired shear rate by the relative movement of the substrate surface with respect to the surface of the coating apparatus; thereby resulting in an imposed stress (i.e., pressure) by the apparatus: see paragraphs [0024], [0032], [0101], [0102], [0104]-[0105], and Table 2).
Majumder further teaches that the ink comprises a dispersion of graphene oxide in the liquid medium (see paragraph [0018]); and,
the excess ink is removed from a first surface of the porous substrate with a scraping device (a knife coater: Figure 2; paragraph [0101]) while simultaneously providing the pressure difference between the first surface and a second surface of the porous substrate to force the liquid medium through the porous substrate to provide the GO film on the first surface of the porous substrate (Drawing the graphene oxide through a gap that is formed between a substrate surface and an application surface of a coating apparatus at a desired shear rate by the relative movement of the substrate surface with respect to the surface of the coating apparatus; thereby resulting in an imposed stress (i.e., pressure) by the apparatus: see paragraphs [0024], [0032], [0101], [0102], [0104]-[0105], and Table 2).
Regarding claim 17, Majumder teaches a membrane formed by the method disclosed above comprising a graphene oxide (GO) film on a porous substrate (see the teaching of Majumder above for claim 1). Claim 17 is a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 18, Majumder teaches the porous substrate comprises an organic polymer (see paragraph [0108]). The membrane formed by the method disclosed above is identical or substantially identical to the method taught in Majumder substrate (see the teaching of Majumder above). Hence, the membrane of Majumder has inherent selectivity for water vapor permeance over nitrogen gas permeance of at least 500. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 17 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by English translation copy of Chinese Patent Application No. CN 112225201 A to Wu et al. (hereinafter “Wu”).
Wu teaches a method of forming a graphene oxide (GO) film on a substrate, the method comprising:
depositing a GO ink on a surface of a porous substrate (see paragraphs [0010]-[0012]), and
mechanically removing excess ink on the surface of the porous substrate using a scraper (see paragraph [0013]) while simultaneously providing a pressure difference that forces a liquid medium of the ink through the porous substrate to provide a GO film on the surface of the porous substrate (see paragraphs [0013]).
Wu further teaches that the ink comprises a dispersion of graphene oxide in the liquid medium (see paragraph [0011]); and,
the excess ink is removed from a first surface of the porous substrate with a scraping device (see paragraph [0013]) while simultaneously providing the pressure difference between the first surface and a second surface of the porous substrate to force the liquid medium through the porous substrate to provide the GO film on the first surface of the porous substrate (see paragraphs [0013]).
Regarding claim 17, Wu teaches a membrane formed by the method disclosed above comprising a graphene oxide (GO) film on a porous substrate (see the teaching of Wu above for claim 1). Claim 17 is a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claims 17-18 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by US 2020/0086277 A1 to Wang et al. (hereinafter “Wang”).
Wang teaches a method of forming a graphene oxide (GO) film on a substrate, the method comprising:
depositing a GO ink on a surface of a porous substrate (see Figure 2; paragraphs [0041], [0050]); and,
mechanically removing excess ink on the surface of the porous substrate (see Figure 1A; paragraphs [0048], [0050]: vacuum filtration is a mechanical means for removing excess ink) while simultaneously providing a pressure difference that forces a liquid medium of the ink through the porous substrate to provide a GO film on the surface of the porous substrate (Figure 1A; paragraphs [0048], [0050]: vacuum filtration provides a pressure difference).
Wang further teaches that the pressure difference is produced by providing a region of pressure lower than atmospheric pressure on a surface of the porous substrate away from the surface on which the GO ink is deposited (see Figure 1A; paragraphs [0048], [0050]: vacuum filtration provides a pressure difference).
Regarding claim 17, Wang teaches a membrane formed by the method disclosed above comprising a graphene oxide (GO) film on a porous substrate (see the teaching of Wang above for claim 1). Claim 17 is a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 18, Wang teaches the porous substrate comprises an organic polymer (see paragraphs [0050], [0063]). The membrane formed by the method of claim 1 is identical or substantially identical to the method taught in Wang (see the teaching of Wang above). Hence, the membrane of Wang has inherent selectivity for water vapor permeance over nitrogen gas permeance of at least 500. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claims 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al., Nature Communications, Pages 1-8 (2017) doi: 10.1038/s41467-017-02318-1 (hereinafter “Zhou”).
Zhou teaches a method of forming a graphene oxide (GO) film on a substrate, the method comprising:
depositing a GO ink on a surface of a porous substrate (see Fig. 1; Results in page 2); and,
mechanically removing excess ink on the surface of the porous substrate (see Results in page 2: vacuum filtration is a mechanical means for removing excess ink) while simultaneously providing a pressure difference that forces a liquid medium of the ink through the porous substrate to provide a GO film on the surface of the porous substrate (see Fig. 1; Results in page 2:: vacuum filtration provides a pressure difference). Zhou further teaches that the pressure difference is produced by providing a region of pressure lower than atmospheric pressure on a surface of the porous substrate away from the surface on which the GO ink is deposited (see Fig. 1; Results in page 2).
Regarding claim 17, Zhou teaches a membrane formed by the method disclosed above comprising a graphene oxide (GO) film on a porous substrate (see the teaching of Zhou above for claim 1). Claim 17 is a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 18, Zhou teaches the porous substrate comprises an organic polymer (see paragraphs [0050], [0063]). The membrane formed by the method of claim 1 is identical or substantially identical to the method taught in Zhou (see the teaching of Zhou above). Hence, the membrane of Zhou has inherent selectivity for water vapor permeance over nitrogen gas permeance of at least 500. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Allowable Subject Matter
Claims 1-8, 10-11 and 13-16 are allowed in view of applicant’s remarks filed 6/15/2026 (see pages 5-8).
Response to Arguments
Applicant’s arguments, see pages 5-8, filed 6/15/2026, with respect to claims 1-8, 10-11 and 13-16 have been fully considered and are persuasive. The rejection of claims 1-8, 10-11 and 13-16 has been withdrawn.
Applicant’s arguments with respect to claims 17-18 have been considered but are moot.
Claim 17 is a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Conclusion
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). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN KIM whose telephone number is (571) 272-1142. The examiner can normally be reached Maxi Flex.
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/John Kim/Primary Examiner, Art Unit 1772
JK
7/8/26
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