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
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 10-19 and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over any of Luon et al., (hereinafter Luong) in “Graphene/cellulose nanocomposite paper with high electrical and mechanical performances,” and Laaksonen et al., (hereinafter Laaksonen), WO 2013/076372 A1 in view of any of, Miyawaki et al., (hereinafter Miyawaki), United State Patent No. 8,287,692 B2; Kajanto et al., (hereinafter Kajanto’947) United State Patent No. 2016/0122947 A1: Hu et al., (hereinafter Hu), US Patent Application Publication No. 2016/0010279 A1: Kosonen et al., (hereinafter Kosonen), US Patent Application Publication No. 2015/0218756 A1: Kajanto, US Patent Application Publication No. 2017/0349571 A1, just to cite a few.
With regard to claim 10 Luong and Laaksonen teach nanopapers comprising graphene and cellulose nanofibrils1; see abstract and preparation of reduced graphene oxide/A-NFC composites on page 13992 of Luong, which teach the use Graphene and NFC, corresponding to the claimed nanofibrils, and Abstract, page 2, lines 23-26, page 7, lines 14-19, page 9, lines 11-12, page 9, lines 27-29 and paragraph bridging pages 10 and 11 of Laaksonen. While None of the primary references discloses how the cellulose nanofibrils were made, the use of TEMPO in the making of Cellulose nanofibrils is well-known in the art as evidenced by the secondary references and using TEMPO in the making has the advantage of reducing the energy to produce nanofibrils as Miyawaki explains it on column 1, lines 29-38: “It has been known that carboxyl groups can be efficiently introduced onto cellulose microfibril surfaces and a homogeneous and clear aqueous cellulose nanofiber solution can be prepared with little energy consumption for microfibrillation by treating a cellulosic material with an inexpensive oxidizing agent sodium hypochlorite in the presence of the radical 2,2,6,6-tetramethyl-1-piperidine-N-oxy (hereinafter referred to as TEMPO) and a bromide or iodide as catalysts (non-patent document 1: Saito, T., et al., Cellulose Commun., 14 (2), 62 (2007)).” Also disclosed by Kosonen on ¶-[0009] and ¶-[0017] of Kajanto’947. All of the secondary evidentiary references teach the use of TEMPO in the making of cellulose nanofibrils; see abstract and column 1, lines 29-38 of Miyawaki; ¶-[0017] and [0057]-[0060] of Kajanto’947; ¶-[0160]-[0161] and Tables 1 and 2 of Kajanto: ¶-[0088] and [0098] of Hu: ¶-[0009[ and [0030] of Kosonen. Therefore, the use of TEMPO mediated defibrillated cellulose to produce the cellulose nanofibrils of the primary references would have been obvious to one of ordinary skill in the art since he/she would have reasonable expectation of success if such known process, as demonstrated by the evidentiary secondary references, were used to make the cellulose nanofibrils taught by the primary references. Note that using TEMPO have also the benefit of reducing the energy of producing nanofibrils, id.
Regarding to claims 11 and 24, Luong discloses thickness of the nanopaper falling within the claimed range; see page 13992 Characterization heading which recites that the thickness is controlled to be about 20 microns.
With regard to claims 15-16 and 26, Luong teaches graphene addition between 0.3 wt% to 10 wt% which falls within the range of claims 15 and 26, while Laaksonen teaches graphene addition from 0.005 to 50 wt% and in the example discloses from 1 wt% through 29 wt% and figures 1A through 1C shows films, i.e., nanopapers having 1 wt%, 5 wt% and 29 wt%; see paragraph bridging pages 11 and 12, which range falls within the range of claims 15-15 and 26.
Regarding to claim 19, since the reference teach the same or very similar nanopaper. having the same components, i.e., graphene and nanofibrils at proportions falling within the claimed range, then such property must be inherently the same.
With regard to claims 12, while the references fail to teach thickness of the nanopaper/composite/film in the range of the claims. Luong teaches that the thickness is controlled to be within 20 microns, which indicates that the thickness of the paper can be controlled to desired level and thus making a paper with the claimed thickness range would have been obvious to one of ordinary skill in the art.
Regarding to claims 13-14 and 25 None of the references teach the lateral dimension of the graphene, but since the graphene of the references seems to be the same, i.e., made in the same way as disclosed in the current specification; compare ¶-[0051] of the specification with the Experimental section, page 13992, of Luong, paragraph bridging pages 11 and 12 of Laaksonen, such dimension would be considered to be the same or at the very least in ranges falling within the claimed range.
With regard to claims 17-18 and 27 while the references are silent with regard to the thickness/diameter of the nanofibrils, it is well-known in the art2 that nanofibrils have thickness within the claimed range and thus using nanofibrils having thickness/diameter within such range would be considered obvious to one of ordinary skill in the art, since he/she would have reasonable expectation of success if such known thickness were used in the making of the nanopapers of the cited references, Luong or Laaksonen. This is also evidenced by ¶-[0021] of Kajanto.
Response to Arguments
Applicant’s arguments with respect to claims 10-19 and 24-27 have been considered but are moot in view pf the new ground of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Aqueous Exfoliated Graphene by Amphiphilic Cellulose Nanofibrils for Foldable and Moisture-Responsive Nanopaper.”
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 JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 Note that cellulose nanofibrils (CNF) is also known as, cellulose nanofibers, microfibrillated Cellulose or MFC, nanofibrillated cellulose or NFC, cellulose fibrils, cellulose nanomaterials or CNMs, cellulose nanowhiskers or CNW
2 Evidenced by ¶-[0051] of US Patent Application Publication No. 2017/0348662 A1; ¶-[0044] of US Patent Application Publication No. 2017/0211230 A1; ¶-bridging columns 3 and 4 of United State Patent No. 9,506,197 B2, just to cite a few.
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