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 § 102 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. Claim(s) 13-16 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Zhao et al. (Preparation of graphene by exfoliation of graphite using wet ball milling , Journal of Materials Chemistry, 2010), hereinafter ‘Zhao’ . Regarding Claim 13, the claim is drawn to the instant claim is drawn to so-called product-by-process limitations, in which the product claimed is limited to the process by which it is made (“ A graphene produced from graphite using a process comprising …”). It is noted that the process of Zhao performs a number of the claimed process limitations ; namely, Zhao discloses a process for producing graphene from graphite, comprising mechanically agitating a first dispersion comprising graphite in an impact chamber to form an exfoliated graphene dispersion , and separating the exfoliated graphene dispersion from the impact chamber into a supernatant layer and a sediment layer, wherein the supernatant layer comprises exfoliated graphene and the sediment layer comprises microstructured graphite . See page 5817 of Zhao . Further, while Zhao does not disclose sonication or freeze drying as claimed, it is noted that “ 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). Here, the prior art discloses producing graphene in a manner aligning with that claimed, and in considering the specification, it is not immediately apparent what additional structure would result from performing the process as claimed that would be absent in the product of Zhao . Therefore, these limitations are not considered to imply any further structure upon the claimed product such that it is clear what structural differences would result from such a process of making. Accordingly, the instant claim is met by the prior art as shown above. In the event any differences can be shown, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art. See Ex parte Gray , 10 USPQ2d 1922. Regarding Claim 14, Zhao is silent regarding the amount of carbon in the resulting graphene nanosheets; however, Zhao utilizes 0.02 g of graphite nanosheets as raw material for making graphene. Graphite is a pure form of carbon, composed entirely of carbon atoms – therefore, the resulting graphene must also be formed entirely of carbon, or at least comprise 99% or more carbon, as there are no chemical transformations or other reactions disclosed within the process of Zhao that would result in a graphene having less carbon than the pure graphite starting material. Regarding Claim 15, Zhao discloses that the graphene has a thickness ranging from 3 to 5 atomic layers ( Topographic heights of the sheets estimated from the cross-sectional profile were found in the range of 0.8–1.8 nm, which are in accord with the practical thickness of individual single- and few-layer graphenes (≤3 layers) (see page 5818 of Zhao). This implies that the graphene includes graphene having a thickness of equal to 3 layers, which reads on the instant claim). Regarding Claim 16, Zhao is silent regarding the lateral length of the produced graphene nanosheets. However, the process of forming the graphene nanosheets is substantially similar to the method as claimed, as discussed above. Further, it is particularly noted that both the process of Zhao and the instant application utilize ball milling to physically exfoliate graphite at the same rate for the same duration (see instant Claim 6 and page 5817 of Zhao). Further, both the process of the instant application and Zhao mechanically agitate graphite having similar particle size (see instant Claim 3 and page 5817 of Zhao). Given the similarities of the process of making between the prior art and the claimed invention, the instant fact pattern resembles that of In re Best , 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), wherein the court held that “…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.” Furthermore, it is noted that the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith, as held by the court in In re Brown , 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) – as such, determinations of properties not disclosed by the prior art are made based on a preponderance of the evidence provided in both the prior art and the instant disclosure. Therefore, based on the preponderance of evidence found in the disclosure of Zhao and the instant specification, with particular attention paid to the similar method of making, including similar precursor materials and processing conditions, there is a reasonable prima facie basis to conclude that the graphene nanosheets of Zhao would exhibit the same or nearly the same properties, including lateral dimensions , absent evidence to the contrary. The burden of proof now shifts to the Applicant to show that the prior art products do not necessarily or inherently possess the characteristics of the claimed product - see MPEP 2112(V). Allowable Subject Matter Claim s 1-12 are allowed. The application is in condition for allowance except for the presence of Claims 13-16, which are rejected above. In order for the instant application to be passed to issue, Applicant’s reply must either cancel the rejected claims or amend the claims to depend on those allowed claims. It is noted that the allowable subject matter in this case is a method – therefore, rejoinder of Claims 13-16 is not automatic as in cases where the allowable subject matter is a product. See MPEP 821.04 . The following is an examiner’s statement of reasons for allowance: The prior art fails to disclose or reasonably suggest the method according to Claim 1. The closest prior art pertinent to the instant claims is Zhao et al. ( Preparation of graphene by exfoliation of graphite using wet ball milling , Journal of Materials Chemistry, 2010). Zhao discloses a method of forming graphene from graphite, comprising mechanically agitating a first dispersion comprising graphite in an impact chamber to form an exfoliated graphene dispersion , and separating the exfoliated graphene dispersion from the impact chamber into a supernatant layer and a sediment layer, wherein the supernatant layer comprises exfoliated graphene and the sediment layer comprises microstructured graphite . See page 5817. Zhao does not disclose or suggest sonication as claimed, and even teaches away from excessive sonication. Zhao also does not disclose or suggest freeze drying as claimed. Another reference pertinent to the instant claims is Zhu et al. ( One-step preparation of graphene nanosheets via ball milling of graphite and the application in lithium-ion batteries , Journal of Materials Science, 2016). Zhu discloses mechanically agitating graphite in an impact chamber to form an exfoliated graphene , separating the exfoliated graphene from the impact chamber into a supernatant layer and a sediment layer, wherein the supernatant layer comprises exfoliated graphene and the sediment layer comprises microstructured graphite , subjecting the supernatant layer to sonication to obtain a graphene dispersion , and separating the graphene from the graphene dispersion by freeze drying . See Preparation of GNs via ball milling . Zhu does not disclose or suggest mechanically agitating a dispersion of graphite as claimed, nor does it suggest the claimed sonication temperature. Further, Zhao and Zhu, when combined, fail to meet all the limitations of the instant claims. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee . Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT LOGAN LACLAIR whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1815 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F, 7:30-5:30 PST . 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