DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶) where # denotes the page number and ¶ denotes the paragraph number of the pre-grant publication corresponding to this application, US 2024/0246825. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application; Restriction
Applicant’s election without traverse of Group I (Claims 14-22 and 34-39) in the reply filed on 5/7/2026 is acknowledged.
Claim(s) 14-22 and 34-44 is/are pending.
Claims 40-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected compositions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/7/2026.
Claim(s) 1-13 and 23-33 is/are acknowledged as cancelled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/24/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
I. Claims 14-22 and 34-39 – or as stated below - 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a defect density of about 0.1 to about 2.” This “defect density” language was discussed in the parent application, 17/384,545. It is necessary to revisit that discussion here.
In the ‘545 application, the Final Office Action dated 4/21/2022 rejected Claim 31, which at the time stated:
31. (New) The method of claim 1, wherein the activated graphene oxide sheets have a density of the in-plane pores of about 0.1 to about 2.
The Final Office Action stated:
I. Claim 31 – or as state below – is/are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 31 recites “a density of in-plane pores of about 0.1 to about 2.” As understood, density is not a dimensionless number. The passage the Remarks1 cite as supporting this new claim refers to defects, not pores, and does not provide any context for construing the dimensionless number. See (S. 14: [0072]). As such, it is unclear what these numbers mean – e.g. pores/nm2, pores/g, pores/mile2, etc. – and the metes and bounds of the claim cannot be determined.
(17/384,545; Final Office Action dated 4/21/2022 at 6) (emphasis added).
In response, the Applicant amended Claim 31 to recite a defect density and argued
35 U.S.C. § 112
Claim 31 stands rejected under 35 U.S.C. § 112(b), second paragraph, as being allegedly indefinite for failing point and distinctly the claim the subject matter which the inventor regards as the invention for lack units for the term "density."
Without agreeing with the Office and solely to expedite prosecution, Applicant amends claim 31 herein to recite "wherein the activated graphene oxide sheets have a defect density of the in-plane pores of about 0.1 to about 2." Applicant respectfully submits that claim 31, as amended, is clear as defect density is a unitless quantity, as more fully explained in paragraphs [0101]-[0104] of the specification. Withdrawal of the rejection is respectfully requested.
(17/384,545: Remarks of 8/17/2022 at 6) (emphasis added). The paragraphs from Specification referenced in the Remarks are reproduced below:
[0101] FIG. 19B shows a Raman spectroscopy graph of an exemplary first ARGO wherein a “D” band at about 1350 cm.sup.-2, a “G” band at about 1580 cm-2, a “2D” band at about 2690 cm.sup.-2 and a “D+G” band at about 2900 cm-2 verifies the recovery of sp2 conjugation after reduction. The D and G peaks correspond to sp3 and sp2 hybridized carbons, respectively, wherein a ratio between the intensities of the D and G peaks corresponds to a defect density of the first ARGO. In this example, the D:G ratio is about 1:1.2 displaying a defect density of about 0.8.
[0102] In some embodiments, such defects act as electron transfer sites and enable lithium ions to flow therethrough. As such, the defect density of the first ARGO enables the formation of electrodes and energy storage devices with improved charge/discharge kinetics, charge cycling capabilities, and electro-activity. In some embodiments, defect density is inversely proportional to crystallinity and electron mobility of the first ARGO.
[0103] In some embodiments, the first ARGO has a D:G ratio of about 0.1:1 to about 1:5. In some embodiments, the first ARGO has a D:G ratio of at least about 0.1:1, 0.3:1, 0.5:1, 0.8:1, 1:1, 1:1.2, 1:1.5, 1:1.8, 1:2, 1:3, 1:4, or about 1:5. In some embodiments, the first ARGO has a D:G ratio of no more than about 0.1:1, 0.3:1, 0.5:1, 0.8:1, 1:1, 1:1.2, 1:1.5, 1:1.8, 1:2, 1:3, 1:4, or about 1:5.
[0104] In some embodiments, the first ARGO has a defect density of about 0.1 to about 1.5. In some embodiments, the first ARGO has a defect density of about 0.1 to about 0.2, about 0.1 to about 0.3, about 0.1 to about 0.4, about 0.1 to about 0.5, about 0.1 to about 0.6, about 0.1 to about 0.7, about 0.1 to about 0.8, about 0.1 to about 0.9, about 0.1 to about 1, about 0.1 to about 1.2, about 0.1 to about 1.5, about 0.2 to about 0.3, about 0.2 to about 0.4, about 0.2 to about 0.5, about 0.2 to about 0.6, about 0.2 to about 0.7, about 0.2 to about 0.8, about 0.2 to about 0.9, about 0.2 to about 1, about 0.2 to about 1.2, about 0.2 to about 1.5, about 0.3 to about 0.4, about 0.3 to about 0.5, about 0.3 to about 0.6, about 0.3 to about 0.7, about 0.3 to about 0.8, about 0.3 to about 0.9, about 0.3 to about 1, about 0.3 to about 1.2, about 0.3 to about 1.5, about 0.4 to about 0.5, about 0.4 to about 0.6, about 0.4 to about 0.7, about 0.4 to about 0.8, about 0.4 to about 0.9, about 0.4 to about 1, about 0.4 to about 1.2, about 0.4 to about 1.5, about 0.5 to about 0.6, about 0.5 to about 0.7, about 0.5 to about 0.8, about 0.5 to about 0.9, about 0.5 to about 1, about 0.5 to about 1.2, about 0.5 to about 1.5, about 0.6 to about 0.7, about 0.6 to about 0.8, about 0.6 to about 0.9, about 0.6 to about 1, about 0.6 to about 1.2, about 0.6 to about 1.5, about 0.7 to about 0.8, about 0.7 to about 0.9, about 0.7 to about 1, about 0.7 to about 1.2, about 0.7 to about 1.5, about 0.8 to about 0.9, about 0.8 to about 1, about 0.8 to about 1.2, about 0.8 to about 1.5, about 0.9 to about 1, about 0.9 to about 1.2, about 0.9 to about 1.5, about 1 to about 1.2, about 1 to about 1.5, or about 1.2 to about 1.5, including increments therein. In some embodiments, the first ARGO has a defect density of about 0.1, about 0.2, about 0.3, about 0.4, about 0.5, about 0.6, about 0.7, about 0.8, about 0.9, about 1, about 1.2, or about 1.5. In some embodiments, the first ARGO has a defect density of at least about 0.1, about 0.2, about 0.3, about 0.4, about 0.5, about 0.6, about 0.7, about 0.8, about 0.9, about 1, or about 1.2. In some embodiments, the first ARGO has a defect density of at most about 0.2, about 0.3, about 0.4, about 0.5, about 0.6, about 0.7, about 0.8, about 0.9, about 1, about 1.2, or about 1.5.
(17/384,545; S. 24: [0101] – 25: [[0104]) (emphasis added). Of course, this same language is present in this application at (S. 10: [0102] – 10: [0105]).
In response to this argument and these passages from the Specification, the Non-Final Office Action dated 9/14/2022 stated:
I. With respect to the rejection of Claim 31 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, the Remarks point to paragraphs [0101]-[0104] of the Specification. (Remarks of 8/17/2022 at 6). Paragraph [0101] states:
[0101] FIG. 19B shows a Raman spectroscopy graph of an exemplary first ARGO wherein a "D" band at about 1350 cm-2, a "G" band at about 1580 cm-2, a "2D" band at about 2690 cm-2 and a "D+G" band at about 2900 cm-2 verifies the recovery of sp2 conjugation after reduction. The D and G peaks correspond to sp3 and sp2 hybridized carbons, respectively, wherein a ratio between the intensities of the D and G peaks corresponds to a defect density of the first ARGO. In this example, the D:G ratio is about 1:1.2 displaying a defect density of about 0.8.
(S. 24: [0101]) (emphasis added). As understood, this is conventionally referred to in the art as the Id/Ig ratio, etc. However, on reconsideration, as the Specification has some context for the “defect density” language and its nature as a dimensionless number, the rejection is WITHDRAWN.
(17/384,545; Non-Final Office Action dated 9/14/2022 at 3-4).
While this was approximately 4 years ago, the Examiner’s recollection is that what was found to be persuasive was there appeared to be some sort of correlation or relationship between the D and G peaks and the “defect density.” This is based on the statement in the specification emphasized above: “The D and G peaks correspond to sp3 and sp2 hybridized carbons, respectively, wherein a ratio between the intensities of the D and G peaks corresponds to a defect density of the first ARGO. In this example, the D:G ratio is about 1:1.2 displaying a defect density of about 0.8.” (17/384,545; S. 24: [0101]). Calculating the Id/Ig ratio from the example in the Specification,
1
1.2
=
0.833
. If this is what “defect ratio” means, then this can be rounded to 0.8, and it is a dimensionless number. Stated yet another way, the D:G ratio is a comparison between two numbers (a “ratio”), and the defect density is a quotient, i.e. the result of dividing one number by another.
The “defect density” language was never rejected in the parent application, but this was the thinking or rationale for not rejecting it at the time. Of course, Applicants are the experts on their own invention, graphene oxide, etc., so some weight was placed on the representations made in the Remarks and in the Specification. It was determined that any rejection over the defect density language was unlikely to survive scrutiny on appeal, especially in view of the broad latitude Applicants are given in claiming their inventions. The situation has now changed in view of newly discovered evidenced and by the language in Claim 14, as currently presented. These topics are addressed below.
First, the prior art teaches that one of skill in the art does not view defect density as a dimensionless number. The following are made of record:
Sharma, et al., Determination of defect density, crystallite size and number of graphene layers in graphene analogues using X-ray diffraction and Raman spectroscopy, Indian Journal of Pure & Applied Physics 2017; 55: 625-629 (hereinafter “Sharma at __”). Sharma provides an equation for defect density (nD), and reports the units as “cm-2.” (Sharma at 628, col. 1). Stated differently, Sharma teaches that defect density is not a dimensionless number.
Kashual, et al., Determinatio of crystallite size, number of graphene layers and defect density of graphene oxide (GO) and reduced graphene oxide (RGO), AIP Conf. Proc. 2019; 2115: 030106-1 to 030106-4 (hereinafter “Kashual at __”). Kashual provides similar teachings with an equation for defect density (nD) and reports the units as “cm-2.” (Kashual at 3-4).
Thus, there is now record evidence that teaches defect density is not a dimensionless number. As such, it is unclear whether the “about 0.1 to about 2” language in Claim 14 is referring to defects per square picometer, square centimeter, square mile, hectare (or the Chinese Gong Qing), or the Yugoslavian motyka, etc. etc.
Second, assuming the “defect density” is the quotient of D:G or Id/Ig, then Claim 14 is reciting broad and narrow ranges in the same claim. Calculating the quotient from the D:G ratio is done as follows:
0.1
1
=
0.1
,
1
1.5
=
0.667
(rounded to 0.7). Thus, this is a range of “about 0.1 to about 0.7.” In view of this, the claim is reciting a defect density of about 0.1 to about 2, and about 0.1 to about 0.7. Broad and narrow ranges in the same claim raise indefiniteness issues. See MPEP 2173.05(c).
The “defect density” language is not clear. The Specification contains scant guidance as to how to calculate it. While mentioned in the Specification, most passages are boilerplate recitations of every permutation of range, etc., as is common in some patent applications, repeated several times. The best context in this Specification is at (S. 5: [0070]; 10: [0102]; 10-11: [0110]). This is the “D:G ratio is about 1:1.2 displaying a defect density of about 0.8” language discussed above. It is unclear if the defect density is meant to be a quotient, as discussed above. Applicants should address this on the record. Others of skill in the art calculate it differently, and report the value with units of cm-2.
Claim 14 is separately rejected for reciting graphene oxide. It is unclear whether this is referring to a bulk composition or a single atomic layer of sp2 bonded carbon atoms (i.e. graphite). Dependent claim 22 claims defects of 15 nm, substantially “deeper” or longer (or thicker) than a single atomic layer of carbon.
Dependent claims not specifically addressed import the issues of the claims from which they depend.
Claim Rejections - 35 USC §§ 102-103
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.
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.
I. Claim(s) 14, 17, 34, and 39 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gupta, et al., Higher oxidation level in graphene oxide, Optik 2017; 143: 115-124 (hereinafter “Gupta at __”).
With respect to Claim 14, this claim requires “[a]n activated graphene oxide having a defect density of about 0.1 to about 2.” The discussion of the defect density in the 112(b) rejecdtion above is incorporated herein by reference. Notwithstanding those ambiguities, Gupta teaches an ID/IG ratio of 1.07, which is interpreted as a defect density of 1.07. (Gupta at 120 – 3.2 Raman spectroscopy).
Claim 14 further requires “an oxygen content by weight of at least about 20%.” The oxygen content is taught. (Gupta at 123 – “fully oxidized GO may have 1:1 of Oxygen to Carbon (O:C) ratio for 100% oxidation; Fig. 13; ).
Claim 14 further requires “a D:G ratio of about 0.1:1 to about 1:1.5.” Gupta teaches an ID/IG ratio of 1.07, which reads on the quotient of the ratios expressed in the claim. (Gupta at 120 – 3.2 Raman spectroscopy).
As to Claim 17, the oxygen content is taught. (Gupta at 123 – Fig. 13).
As to Claim 34, the oxygen content is taught. (Gupta at 123 – Fig. 13).
As to Claim 39, the oxygen content is taught. (Gupta at 123 – Fig. 13).
II. Claim(s) 14, 17, 34, and 39 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Gupta, et al., Higher oxidation level in graphene oxide, Optik 2017; 143: 115-124 (hereinafter “Gupta at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference. While the defect density language is indefinite as noted above, to the extent there is any difference between the claims and the reference (which is not conceded), any such difference is obvious based on the close structural similarity of the materials. MPEP 2144.09. Gupta teaches a modified Hummers method for making the graphene oxide, which appears to be the method employed in the Specification. (S. 3: [0055] et seq.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
1 (17/384,545: Remarks of 4/4/2022 at 5 – “Support for these new claims can be found throughout the specification as originally filed, for example, at paragraphs [0072], [0078], [0079], and [0093].”)
Prosecution Insights