Prosecution Insights
Last updated: May 04, 2026
Application No. 18/373,460

LOW TEMPERATURE PHOTOCHEMICAL PATTERNING OF CARBON NANO- AND MICROSTRUCTURES

Non-Final OA §102§103§DP
Filed
Sep 27, 2023
Priority
Sep 27, 2022 — provisional 63/410,402
Examiner
IQBAL, SYED TAHA
Art Unit
1736
Tech Center
1700 — Chemical & Materials Engineering
Assignee
UNIVERSITY OF CENTRAL FLORIDA RESEARCH FOUNDATION, INC.
OA Round
1 (Non-Final)
80%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allowance Rate
660 granted / 824 resolved
+15.1% vs TC avg
Strong +22% interview lift
Without
With
+21.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
27 currently pending
Career history
851
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
40.2%
+0.2% vs TC avg
§102
24.5%
-15.5% vs TC avg
§112
27.1%
-12.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 824 resolved cases

Office Action

§102 §103 §DP
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 Objections Claim 4 is objected to because of the following informalities: there is an extra period (.) at the end of this claim. Additionally there is a missing comma (,) after “cyclohexene”. Appropriate correction is required. 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. Claim(s) 1, 2 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Torres-Davila “Toward In-situ Nanoscale imaging and Spectroscopy:…” Regarding claim 1, Torres-Davila discloses of a method for producing a carbon microstructure having controlled dimensions (page 5 para 1: "We explore in more details the synthesis for carbonaceous microstructures resulting from the reaction of defect-laden h-BN and propene, which constitutes an innovative approach") comprising: a.) providing a two-dimensional catalyst having one or more variances (page 5 para 1: " ... carbonaceous microstructures resulting from the reaction of defect-laden [hexagonal boron nitride] h-BN ... "; page 7 para 1: "First, we describe our discovery of the photocatalytic activity of dh-BN under propene atmosphere in the visible range"); and b.) exposing the surface of the catalyst to a light source in the presence of a carbon source to produce a carbon microstructure at the site of exposure (page 8 para 1: "h-BN and dh-BN powders were packed into 2x2 mm2 wells of 1 mm depth, in the glove box before being sealed in a custom flow cell to maintain inert conditions. Once transferred out of the glovebox, the cell was pressurized with the desired gas (propane, CO, propane; and CO 2 ) at 276 kPa ... "; page 8 para 3: "When illuminating with visible light to study the photocatalytic reactions ... "; see fig. 26(a); page 14 para 1: "In Figure 35a-b we show the morphology of the structures formed in the dh-BN powder. The high-resolution image in (b) reveals the well-aligned array of fibers with diameter below 10 um and length from 10 to 150 m m. The structures can be printed is well organized arrays of carbon fibers with pitch below 150 m m"; see fig. 35). T he method disclosed of Torres-Davila can produce carbon microstructures having a smallest dimension of about 3-5 m m, i.e., 3000-5000 nm (See Fig. 35) . Under the b roadest r easonable i nterpretation the claim encompasses an embodiment where it’s not required that the particles produced are nanosized only that the structure of the product is defined on the nanoscale. In view of Applicant’s own Disclosure the diameter of the carbon structures is broadly from “about 1000nm to about 10000nm” (Instant Specification Pg. 10, line 5). Thus the reference is making “carbon nanostructures” as claimed. Regarding claim 2, Torres-Davila further discloses of the method for producing a carbon nanostructure having controlled dimensions according to Claim 1, wherein the two-dimensional catalyst having one or more variances is a defect laden hexagonal boron nitride (h - BN), a two-dimensional boron produced through chemically etching an aluminum diboride (AIB2) material, or a two-dimensional boron based material in which the local environment of the boron atom includes variances produced by inclusion of a doping agent, induced strain, stacking with additional catalysts (page 5 para 1: "We explore in more details the synthesis for carbonaceous microstructures resulting from the reaction of defect-laden h-BN ... "). Regarding claim 4, Torres-Davila further discloses of the method for producing a carbon nanostructure having controlled dimensions according to Claim 1, wherein the carbon source is methane, ethane, or propane, propene, allene, propyne, cyclohexene, carbon monoxide, or a hydrocarbon with less than 10 carbon atoms in its structure (page 5 para 1: "We explore in more details the synthesis for carbonaceous microstructures resulting from the reaction of defect-laden h-BN and propene, which constitutes an innovative approach"; see page 16- page 17 ) FILLIN "Insert the prior art relied upon." \d "[ 4 ]" 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. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Torres-Davila “Toward In-situ Nanoscale imaging and Spectroscopy:…” Regarding claim 5, Torres-Davila further discloses of the method for producing a carbon nanostructure having controlled dimensions according to Claim 1, wherein the method can be used to print a pattern of carbon nano structures (page 14 para 1: "In Figure 35a-b we show the morphology of the structures formed in the dh-BN powder. The high-resolution image in (b) reveals the well-aligned array of fibers with diameter below 10 um and length from 10 to 150 um. The structures can be printed is well organized arrays of carbon fibers with pitch below 150 um"). T o rres-Davila does not specifically disclose that the light source is housed in a printing apparatus to print the pattern of carbon nano structures. However, it would have been obvious to one of ordinary skill in the art through routine experimentation to implement the method of claim 1 in a printer to print a pattern of carbon nanostructures, since Torres-Davila discloses that the method can be used to print an array of carbon nanostructures, and since printers using light sources are well-known in the art, e.g., LED printers. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Torres-Davila “Toward In-situ Nanoscale imaging and Spectroscopy:…” , in view of Gondal et al. US 2019/0031535. Regarding claim 3, Torres-Davila further discloses of the method for producing a carbon nanostructure having controlled dimensions according to Clai m 1, wherein the light source is a laser emitting light in the visible spectrum, including 532 nm (page 8 para 3: "When illuminating with visible light to study the photocatalytic reactions, laser light was focused on the powder ... "; see fig. 26(a); see fig. 29, 532 nm). Torres-Davila does not disclose what specific type of laser is used. Gondal et al. discloses of a method of disinfecting a fluid, comprising applying a light source in the visible range, 300-550 nm, to the surface of a catalyst (para [ 0008]: "The present disclosure relates to a method of disinfecting a fluid comprising ... contacting the fluid comprising the at least one microbial organism with an effective amount of a photo-catalyst while exposing the fluid and the photo-catalyst to light from at least one light source with a wavelength of about 300-550 nm..."), wherein the light source is a Nd:YAG laser, a helium cadmium laser, a dye laser, copper vapor laser, an argon laser, a helium neon laser, a krypton laser, or a ruby laser (para [0063]: "In some embodiments, the light source may be at least one selected from a laser light source ... "; para [ 0064]: "In some embodiments, the laser light source has one or more of the following types of lasers, without limitation: helium-neon laser, argon laser, krypton lase, xenon ion laser, nitrogen laser, excimer laser, dye lasers (e.g. s t ilbene, coumarin 102, rhodamine 6G, etc . ), helium-cadmium ( HeCd ) metal-vapor laser, helium-mercury ( HeHg ) metal-vapor laser, helium-selenium ( HeSe ) metal-vapor laser, helium-silver ( HeAg ) metal-vapor laser, strontium vapor laser, neon-copper ( NeCu ) metal-vapor laser, copper vapor laser, gold vapor laser, manganese (Mn/MnCl 2 ) vapor laser, ruby laser, Nd:YAG laser..."). Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of To rres-Davila and Gondal et al. and form the method of claim 1 wherein the light source is a laser emitting light in the visible spectrum, including 532 nm, as disclosed by Torres-Davila, wherein the laser is a Nd:YAG laser, a helium cadmium laser, a dye laser, copper vapor laser, an argon laser, a helium neon laser, a krypton laser, or a ruby laser, based on the teachings of Gondal et al. , since Gondal et al. discloses that such lasers are used to emit visible light in the range of 300 nm to 550 nm, and are suitably used for contacting catalysts for a photocatalytic reactio n. 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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer . Claims 1, 2 and 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3 and 7 of co-pending Application No. 17/859550 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications require a photo reaction on a catalytic surface to converted a carbon source into carbon structures. The other application is not limited to two-dimensional nanostructures. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Relevant Art Nash et al. teaches the h-BN is defect laden (dh-BN) through ball-milling (Nash, p. 154, Col. 1, Paragraph 1) which creates defects such as nitrogen vacancies (Nash, p. 153, Col. 1, Paragraph 2) (i.e., claim 2, heterogeneous catalyst at least partially comprises hexagonal boron nitride; claims 3 and 21, the hexagonal boron nitride has at least one catalytically active defect; claim 4, the catalytically active defect is selected from the group consisting of nitrogen vacancy) . This catalyst has promising optical properties, the luminescence behavior of h -BN has been studied. The nature of the h -BN photoemission has been attributed to impurities and various defect sites in the sheets and their interaction with heteroatoms, such as carbon and oxygen . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT SYED TAHA IQBAL whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-5857 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F; 7-5 . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Anthony Zimmer can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 270-3591 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SYED T IQBAL/ Examiner, Art Unit 1736 /ANTHONY J ZIMMER/ Supervisory Patent Examiner, Art Unit 1736
Read full office action

Prosecution Timeline

Sep 27, 2023
Application Filed
Apr 02, 2026
Non-Final Rejection — §102, §103, §DP (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12606917
METHOD AND APPARATUS FOR USING NANOGALVANIC ALLOYS TO PRODUCE HYDROGEN
4y 1m to grant Granted Apr 21, 2026
Patent 12606434
METHOD AND SYSTEM FOR PRODUCING HYDROGEN
3y 10m to grant Granted Apr 21, 2026
Patent 12600645
Method for Rare Earths Extraction
2y 4m to grant Granted Apr 14, 2026
Patent 12600641
AMMONIA SYNTHESIS CONVERTER AND METHOD FOR SMALL PRODUCTION UNITS
1y 7m to grant Granted Apr 14, 2026
Patent 12589992
HYDROGEN STORAGE BY MEANS OF LIQUID ORGANIC COMPOUNDS
3y 4m to grant Granted Mar 31, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
80%
Grant Probability
99%
With Interview (+21.7%)
2y 6m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 824 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month