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 .
The response of the applicant has been read and given careful consideration. Rejection of the previous action, not repeated below are withdrawn based upon the arguments and amendments of the applicant. Responses to the arguments are presented after the first rejection they are directed to. KR 101363825 is withdrawn as the surface is a single graphene layer, not a graphene multilayer (graphite). The rejections based upon Peter et al. WO 2017067813 are withdrawn based upon the disclosure of the smoothness of the catalysts payer, which is preferably below the recites range of the claims so that a smooth graphene. Peter et al. 20190056654 (cited as of interest) points to specific advantages in this.
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 (i.e., changing from AIA to pre-AIA ) 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 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.
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.
Claims 1,3-4,7-20 are rejected under 35 102(a)(2) as being fully anticipated by Kim et al. 20240036460.
Kim et al. 20240036460 in examples 1 treats a multilayer graphene (graphite) core using an oxygen plasma for 30-120 second and then uses 48 cycles of an atomic layer deposition (ALD) to deposit a TiN protective layer [0065]. Examples 2 and 3 are similar. Figure 17 shows the 60 second plasma treatment results in g band with an intensity of ~150 count and a D band with an intensity of ~35 counts on a 20 count background. Which yields a D/G of ~ 15/130 or ~ 0.115. The roughness of the protective layer is 20-30 nm [0046].
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The examiner is that the treatment used the same plasma conditions as the instant application, noting that there are some inventors in common and result in materials the same
The applicant argues that the examiner has not provided point by point mapping of the teachings of the reference to the claims. The examiner has clearly pointed to the example, which is similar to that of the instant application, which describes the multilayer graphene (graphite), the treatment to functionalize the surface with oxygen and the formation of the protective/passivation layer. The action clearly articulates the position in a manner which allows one of ordinary skill in the art to clearly understand the rejection. Rather, than a blanket/boilerplate statement, the applicant might describe what is beyond their understanding.
There is no ODP rejection as the claims have diverged.
If the applicant intends the rely upon the foreign filing date of the instant application, then the applicant must perfect priority by submitting a certified translation of the priority document.
The applicants statements regarding the common ownership of the instant application and Kim et al. 20240036460 fall short of what is required. The applicant’s statement:
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is insufficient.
The applicant is directed to MPEP 717.02(a), which states “The requirement for common ownership not later than the effective filing date of the claimed invention is intended to preclude obtaining ownership of the disclosed subject matter after the effective filing date of the claimed invention in order to except that subject matter as prior art by invoking a prior art exception. A statement of present common ownership is not sufficient”
“”The statement concerning common ownership should be clear and conspicuous (e.g., on a separate paper) to ensure the examiner notices the statement. For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected based upon subject matter disclosed in Patent A (either alone or in combination with other references) wherein Patent A is only available as prior art under 35 U.S.C. 102(a)(2). In response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:
"Application X and Patent A were, not later than the effective filing date of the claimed invention in Application X, owned by Company Z."
This statement alone is sufficient to invoke the prior art exception under 35 U.S.C. 102(b)(2)(C). Once common ownership is established, the subject matter disclosed in Patent A may not be used in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103 against the claims of Application X. Patent A, however, could still be used as the basis for a double patenting rejection, if appropriate.See MPEP § 804 for more information on double patenting rejections.”
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Murakami et al. WO 2019172418 (machine translation attached) in example 1 exposed a portion of a graphite film (B-4) to an 35W air plasma for 30 minutes. The thickness difference between the etched and the unetched portions as 350 nm the surface roughness of the unetched portion was 0.76 microns (76 nm) and the surface roughness of the etch portion was 0.77 microns (77nm) [0085-0086]. In example 2, a 30 minute treatment of a graphite film (B-6) with a 28W reduced the surface roughness from 36 nm to 12 nm. [0087-0089]. Example 4 etched a graphite film (B-6) with a 28W oxygen plasma which resulted in a surface roughness reduced to 10 nm [0091]. The plasma can be 10-50W, preferably 20-40 W [0049]. The etch time can be 1-600 minutes, preferably 5-500 or 10-300 minutes [0053]. The relationship between plasma etching rate and surface roughness was examined. In the case of oxygen plasma or air plasma, the surface roughness tends to increase when etching is performed at a high speed, but the surface roughness is substantially maintained at an etching rate of 10 nm / min to 100 nm / min, and 10 nm / min. Etching at a super-speed tends to reduce (improve) the surface roughness [0052]. This can be used as a pellicle (abstract)
Shin et al. 20180149966 teaches graphene layer formed of rougher substrates (tens of nm roughness) have a roughness of up to several tens of nm [0113].
Kawashima et al. 20200401038 teaches graphite films for pellicle membranes with surface roughness of 1-500 nm, most perferably 5-100 nm [0034].
Peter et al. 20190056654 teaches graphene layers having a root mean squared roughness of less than 5 nm, optionally less than 1 nm, optionally less than 0.5 nm, optionally less than 0.1 nm. Increasing the smoothness of the graphene-support layer 36 reduces the risk of significant folding in, or other disruption to, the portion of the at least one graphene layer 2 that forms the freestanding membrane 14 when the underlying graphene-support layer 36 is removed. Increasing the smoothness will also tend to increase the tension in the freestanding membrane 14 because the surface area of the graphene will tend to be lower where it does not have to follow large irregularities in the surface on which it is deposited. Conversely, decreasing the smoothness will tend to decrease the tension in the freestanding membrane 14. In an embodiment the degree of smoothness of the graphene-support layer 36 is selected to achieve a desired tension in the freestanding membrane 14 during use. Alternatively, one or both of thermal and chemical processing may be applied to the at least one graphene layer 2, and/or to one or more surrounding layers, to achieve a desired tension in the freestanding membrane 14 during use [0136].
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Martin J Angebranndt whose telephone number is (571)272-1378. The examiner can normally be reached 7-3:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MARTIN J. ANGEBRANNDT
Primary Examiner
Art Unit 1737
/MARTIN J ANGEBRANNDT/Primary Examiner, Art Unit 1737 May 18, 2026
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