DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. 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; Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-10) in the reply filed on 7/31/2026 is acknowledged.
Claim(s) 1-20 is/are pending.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected products and methods, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/31/2026.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on:
4/9/2026 (5 pages)
12/19/2024 (8 pages)
12/19/2024 (8 pages)
are in compliance with the provisions of 37 CFR 1.97-1.98, except as noted below:
The 12/19/2024 IDS appear to be duplicates.
A large number of references have been filed.
Given the burdensome nature of the issues (see below), and to eliminate the need to address the numerous issues on each IDS, one is “considered,” while the other is crossed off.
Multiple issues of non-compliance are present. For example: In some instances, references were filed but not listed on the IDS. For example, a reference to Riksen, et al. was filed, but does not appear to have been listed. In other instances, incomplete citations (e.g. no page numbers as required by 37 CFR 1.98(b)) were provided. (NPL Cite No. 4, 52). In still other instances, a manuscript was referenced (NPL Cite No. 54) but the published document was provided. In still yet other instances, a reference was cited (NPL Cite No. 72) and an author’s manuscript was provided. And finally, in numerous instances, the title of the reference was not provided, as required by 37 CFR 1.98(b)(5) (“Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.”).
These references are crossed off, and are not considered.
Accordingly, the information disclosure statements are 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. Claim(s) 1-10 – or as stated 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.
MPEP 2173.05(c) states:
I. NARROW AND BROADER RANGES IN THE SAME CLAIM
Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible. Description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The Examiner should analyze whether the metes and bounds of the claim are clearly set forth. Examples of claim language which have been held to be indefinite are (A) "a temperature of between 45 and 78 degrees Celsius, preferably between 50 and 60 degrees Celsius"; and (B) "a predetermined quantity, for example, the maximum capacity."
While a single claim that includes both a broad and a narrower range may be indefinite, it is not improper under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C.112, second paragraph, to present a dependent claim that sets forth a narrower range for an element than the range set forth in the claim from which it depends. For example, if claim 1 reads "A circuit … wherein the resistance is 70-150 ohms." and claim 2 reads "The circuit of claim 1 wherein the resistance is 70-100 ohms.", then claim 2 should not be rejected as indefinite.
Claim 1 recites 4 ranges: (a) exceeding 50 nm, (b) 2-50 nm, (c) 2 nm or less, and (d) less than 100 nm. It is unclear what this amalgamation of ranges requires. While macro-, meso-, and micropores are well understood terms of art1, it is unclear what this “nanopores” range limitation is intended to claim in view of the macro-, meso-, and micro- limitations. For example: Is this a way of limiting macropores to 50-100 nm? Or – hypothetically – if an accused infringer’s graphene has micropores of e.g. 1 nm (reading on “limitation c”), mesopores of e.g. 25 nm (reading on “limitation b”), and macropores of greater than 100 nm (reading on “limitation a”), do they not infringe due to the lack of pores between 50 and 100 nm? Or do they infringe because the micropores and mesopores read on the “nanopore” range?
Claim 1 is separately indefinite as it recites “nanopores having an average pore size of less than 100 nm wherein the nanopores have a BET specific surface area of at least 300 m2/g.” The “range-within-a-range” issues noted above apply here as well. It is unclear whether the surface area is referring to all pores smaller than 100 nm, or just those between 50-100 nm, as pores between 0-50 have been designated as meso-/micro- pores.
Dependent claims not specifically addressed import these issues.
Discussion – Claim Construction
As discussed in the rejections under 35 USC §112 above, while macropore, mesopore, and micropore are understood to be terms of art, for which a well understood and widely adopted definition exists. Indeed, the International Union for Pure and Applied Chemistry (IUPAC) had adopted the terminology discussed below. The Roquerol reference states:
The following distinctions and definitions were adopted in previous IUPAC documents (Ref. 1 and 4) :
-- Micropores have widths smaller than 2 nm.
-- Mesopores have widths between 2 and 50 nm.
-- Macropores have widths larger than 50 nm.
(Roquerol at 1745). This agrees with both the Specification (S. 2: [0043]) and the Claims (Claim 1). These definitions are adopted, i.e. it is understood that by reciting e.g. “micropores,” pores with widths smaller than 2 nm is intended. To the extent this discussion / evidence is needed to support a rejection below, it is expressly incorporated therein by reference, mutatis mutandis.
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) 1 and 6-10 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0287162 to Tour, et al.
With respect to Claim 1, this claim requires “[t]hree-dimensional, porous graphene.” Three-dimensional porous graphene is taught. (Tour 2: [0028]; Fig. 3; passim).
Claim 1 further requires “a) macropores having an average pore size exceeding 50 nm.” Macropores are taught. (Tour 3: [0037]). This is understood as meeting the claimed range; see Claim Construction section above.
Claim 1 further requires “b) mesopores having an average pore size of 2-50 nm.” Mesopores are taught. (Tour 3: [0037]). This is understood as meeting the claimed range; see Claim Construction section above.
Claim 1 further requires “c) micropores having an average pore size of 2 nm or less.” Micropores are taught. (Tour 3: [0037]). This is understood as meeting the claimed range; see Claim Construction section above.
Claim 1 further requires “d) nanopores having an average pore size of less than 100 nm.” wherein the nanopores have a BET specific surface area of at least 300 m2/g.” Notwithstanding the indefiniteness issues noted above, the pore sizes are taught. (Tour 3: [0038]: “In some embodiments, the pores in the porous materials of the present disclosure include diameters ranging from about 1 nm to about 100 nm.”). Notwithstanding the indefiniteness issues noted above, the surface area is taught. (Tour 3: [0035]).
As to Claim 6, the “is prepared by” language is product-by-process language making this (and Claims 7-10, which depend from Claim 6) a product-by-process claim. Product-by-process claims are limited by the process steps except to the extent they suggest structure or composition. See MPEP 2113. Here, the Specification states on and for the record that:
In some aspects the fPI-3DPG may include flourine atoms as a result of one exemplary method of making the fPI-3DPG described hereinbelow which uses fluorinated polymides as a precursor (e.g. graphitization is performed on fluorinated polymides). The flourine atoms may be disposed in the graphene sheets of the fPI-3DPG as the one shown in FIG. 1A. The flourine atoms may form C—F bonds and/or C—F.sub.2 bonds in the 3DPG.
(S. 3: [0047]) (emphasis added). Use of permissive language (“may”) is understood as meaning that fluorine does not have to be part of the porous graphene composition. As such, the product-by-process language of Claim 6 is not construed as imparting any compositional features to Claim 6. As discussed above, porous graphene is taught. (Tour 2: [0028]; Fig. 3; passim).
As to Claim 7, the discussion accompanying Claim 6 is relied upon.
As to Claim 8, the discussion accompanying Claim 6 is relied upon.
As to Claim 9, the discussion accompanying Claim 6 is relied upon.
As to Claim 10, as understood, the thickness of the polyimide before irradiation does not limit the porous graphene produced. The discussion accompanying Claim 6 is relied upon.
II. Claim(s) 1, 2, and 5-10 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0090768 to Duan, et al.
With respect to Claim 1, this claim requires “[t]hree-dimensional, porous graphene.” Thre-dimensional porous graphene is taught. (Duan 10: [0084]).
Claim 1 further requires “a) macropores having an average pore size exceeding 50 nm.” Macropores are taught. (Duan 10: [0084]). The pore sizes are taught.
Claim 1 further requires “b) mesopores having an average pore size of 2-50 nm.” Mesopores are taught. (Duan 10: [0084]) (note pore sizes reading on mesopores).
Claim 1 further requires “c) micropores having an average pore size of 2 nm or less.” Micropores are taught. (Duan 10: [0084]) (note pore sizes reading on micropores).
Claim 1 further requires “d) nanopores having an average pore size of less than 100 nm.” wherein the nanopores have a BET specific surface area of at least 300 m2/g.” Notwithstanding the indefiniteness issues noted above, values reading on the nanopores are taught. (Duan 10: [0084]). The surface areas are taught. (Duan 10: [0084]). Overlapping ranges are prima facie obvious. MPEP 2144.05 I.
As to Claim 2, the surface areas are taught. (Duan 10: [0084]). Overlapping ranges are prima facie obvious. MPEP 2144.05 I.
As to Claim 5, a lattice spacing of about 0.39 nm is taught. (Duan 5: [0057]).
As to Claim 6, the “is prepared by” language is product-by-process language making this (and Claims 7-10, which depend from Claim 6) a product-by-process claim. Product-by-process claims are limited by the process steps except to the extent they suggest structure or composition. See MPEP 2113. Here, the Specification states on and for the record that:
In some aspects the fPI-3DPG may include flourine atoms as a result of one exemplary method of making the fPI-3DPG described hereinbelow which uses fluorinated polymides as a precursor (e.g. graphitization is performed on fluorinated polymides). The flourine atoms may be disposed in the graphene sheets of the fPI-3DPG as the one shown in FIG. 1A. The flourine atoms may form C—F bonds and/or C—F.sub.2 bonds in the 3DPG.
(S. 3: [0047]) (emphasis added). Use of permissive language (“may”) is understood as meaning that fluorine does not have to be part of the porous graphene composition. As such, the product-by-process language of Claim 6 is not construed as imparting any compositional features to Claim 6. As discussed above, porous graphene is taught. (Duan 10: [0084]).
As to Claim 7, the discussion accompanying Claim 6 is relied upon.
As to Claim 8, the discussion accompanying Claim 6 is relied upon.
As to Claim 9, the discussion accompanying Claim 6 is relied upon.
As to Claim 10, as understood, the thickness of the polyimide before irradiation does not limit the porous graphene produced. The discussion accompanying Claim 6 is relied upon.
III. Claim(s) 1, 2, and 4-10 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0113934 to Kowalewski, et al.
With respect to Claim 1, this claim requires “[t]hree-dimensional, porous graphene.” Three-dimensional porous graphene is taught. (Kowalewski 5: [0112]).
Claim 1 further requires “a) macropores having an average pore size exceeding 50 nm.” Macropores are taught. (Kowalewski 23: [0223]). This is understood as meeting the claimed range; see Claim Construction section above.
Claim 1 further requires “b) mesopores having an average pore size of 2-50 nm.” Mesopores are taught. (Kowalewski 23: [0223]). This is understood as meeting the claimed range; see Claim Construction section above.
Claim 1 further requires “c) micropores having an average pore size of 2 nm or less.” Micropores are taught. (Kowalewski 23: [0223]). This is understood as meeting the claimed range; see Claim Construction section above.
Claim 1 further requires “d) nanopores having an average pore size of less than 100 nm.” wherein the nanopores have a BET specific surface area of at least 300 m2/g.” The nanopores language is addressed by recitation of the macro-, meso-, and micropores, discussed above. The surface area is taught. (Kowalewski 7, [0124] – Table 1).
As to Claim 2, the surface area is taught. (Kowalewski 7, [0124] – Table 1).
As to Claim 4, the pore volume is taught. (Kowalewski 10: [0141]; 18: [0193] – Table 6).
As to Claim 5, the pore volume is taught. (Kowalewski 10: [0141]; 18: [0193] – Table 6).
As to Claim 6, the “is prepared by” language is product-by-process language making this (and Claims 7-10, which depend from Claim 6) a product-by-process claim. Product-by-process claims are limited by the process steps except to the extent they suggest structure or composition. See MPEP 2113. Here, the Specification states on and for the record that:
In some aspects the fPI-3DPG may include flourine atoms as a result of one exemplary method of making the fPI-3DPG described hereinbelow which uses fluorinated polymides as a precursor (e.g. graphitization is performed on fluorinated polymides). The flourine atoms may be disposed in the graphene sheets of the fPI-3DPG as the one shown in FIG. 1A. The flourine atoms may form C—F bonds and/or C—F.sub.2 bonds in the 3DPG.
(S. 3: [0047]) (emphasis added). Use of permissive language (“may”) is understood as meaning that fluorine does not have to be part of the porous graphene composition. As such, the product-by-process language of Claim 6 is not construed as imparting any compositional features to Claim 6. As discussed above, porous graphene is taught. (Kowalewski 5: [0112]).
As to Claim 7, the discussion accompanying Claim 6 is relied upon.
As to Claim 8, the discussion accompanying Claim 6 is relied upon.
As to Claim 9, the discussion accompanying Claim 6 is relied upon.
As to Claim 10, the discussion accompanying Claim 6 is relied upon.
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).
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, Anthony J. Zimmer can be reached on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
1 See Rouquerol, et al., Recommendaiotns for the Characterization of Porous Solids, Pure & Appl. Chem. 1994; 66(8): 1739-1758 (hereinafter “Rouquerol at __”). Rouquerol states “The following distinctions and definitions were adopted in previous IUPAC documents… [setting forth the pore sizes as claimed].”
