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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/5/2025 has been entered.
Claim Status
An amendment, filed 9/5/2025/2025, is acknowledged. Claim 1 is amended. Claims 1-12 are currently pending, claims 10-12 are withdrawn.
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.
Claims 1-9 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 1 recites the limitation "the longitudinal axis of the composite" in line 4. There is insufficient antecedent basis for this limitation in the claim. The claim does not set forth any specific arrangement, shape or dimensions of the claimed composite and does not define what axis, relative to the claimed structure, is the longitudinal axis. Therefore, the claim is indefinite as to the orientation of the graphene-coated metal components and at least the relative dimensions of the composite structure. Claims 2-9 are indefinite based on their dependency.
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.
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.
Claim(s) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al., “Fabrication of high-strength graphene nanosheets/Cu composites by accumulative roll bonding,” Materials Science & Engineering A 642 (2015), pp. 1-6 (previously cited).
With respect to Claim 1, the claim has been amended to require wherein the plurality of stacked graphene-coated metal components have “the graphene oriented perpendicular to an axis parallel to the longitudinal axis of the composite.” The claim does not require any particular dimensions and does not define or otherwise limit which direction, relative to the claimed structure, constitutes “the longitudinal axis.”
Liu teaches a metal-graphene composite, the composite formed of coated copper sheets (metal components) with graphene to form graphene-coated copper sheets, stacking a plurality of the graphene-coated copper sheets to form a precursor workpiece, wherein the graphene is primarily oriented perpendicular to the stacking direction of the workpiece, wherein the precursor workpiece is rolled to form a bulk composite material. (p. 1-3; Fig. 2 depicting multilayer composite structure of metal components and graphene sheets which are primarily oriented perpendicular to axis of stacking direction).
Thus, Liu teaches a metal-graphene composite comprising a plurality of stacked graphene-coated metal components having graphene oriented perpendicular to an axis parallel to the stacking direction of the component, and where the stacked intermediate structures are cut to facilitate further stacking. Liu does not necessarily teach wherein the plurality of graphene-coated metal components have the graphene oriented perpendicular to “the longitudinal axis” of the composite.” However, one of ordinary skill in the art would recognize that the longitudinal axis of the composite of Liu is not dependent on the method of making, but instead, the final dimensions of the composite. It would have been obvious to cut the composite stack, a process taught by Liu, to form a composite wherein the height of the stack exceeds the cross-section perpendicular to the stacking direction, and thus, wherein the height represents the longitudinal direction of the composite article. One of ordinary skill in the art would be motivated to make such a modification based on the particular application/use of the composite. Moreover, a mere change in shape, here, merely changing the relative dimensions of the composite, has been held to prima facie obvious. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). Reducing any of the major dimensions of the composite of Liu would have been obvious to one of ordinary skill in the art to, for example, obtain desired final dimensions for a particular application or to remove surface imperfections, with a predictable result of success.
With respect to Claim 2, Liu teaches coating copper strips with about 0.05 mg/mm2 of graphene, and thus teaches wherein the amount of graphene is greater than zero and less than 50 wt%, the balance being metal. (see p. 2, sec. 2.1).
With respect to Claims 3-4, Liu is silent as to the ampacity of the composite material. However, as the reference teaches a metal-graphene composite with the same composition and structure (see rejections of claims 1-2 above), it would necessarily be expected to result in the same properties, including the claimed ampacity. "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.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 5, Liu teaches wherein the composite is in the form of a rolled sheet/strip. (see p. 2, sec. 2.1).
With respect to Claims 6-7, Liu teaches wherein the metal matrix is copper. (see rejection of Claim 1 above; p. 1-2).
With respect to Claim 8, the term “ultrapure copper” is not defined and therefore, is interpreted as a copper having a low content of impurities. Liu teaches wherein the metal matrix comprises an oxygen-free copper and thus, is deemed to constitute an “ultrapure copper” meeting the instant claim. (see p. 2, sec. 2.1).
With respect to Claim 9, Liu recognizes that the composite is useful for forming a material having high conductivity (see abstract); however, the reference is silent as to a specific measurement of the electrical conductivity of the composite material. As Liu teaches a metal-graphene composite with the same composition and structure (see rejections of claims 1-2 above), it would necessarily be expected to result in the same properties, including the claimed conductivity. MPEP 2112.01.
Response to Arguments
The nonstatutory double patenting rejection over App. No. 17/834876, has been withdrawn as the application has been abandoned.
Applicant’s arguments, filed 9/5/2025, with respect to the rejection of claim 1-9 under 35 U.S.C. 102 over Liu have been fully considered and are persuasive in view of Applicant’s amendment to claim 1. Specifically, Liu does not teach the amended product of claim 1 with sufficient specificity to anticipate the instant claim. Therefore, the rejection been withdrawn.
Applicant's arguments filed 9/5/2025, with respect to the rejection of claim 1-9 under 35 U.S.C. 103 over Liu have been fully considered but they are not persuasive.
Applicant argues specifically with respect to the 103 rejection, “the Examiner must show that the cited references, as combined, teach or suggest each of the elements of the claim. Claim 8 ultimately depends from independent claim 1, and thus, incorporates the limitations of independent claim 1.” (Remarks, p. 9). These arguments have been fully considered but are not found persuasive.
Applicant appears to be referencing a 103 rejection over claim 8 comprising a combination of references that was made in the Non-Final Office Action of 10/21/2024, but was not made in the Final Office Action of 3/5/2025. Therefore, Applicant’s arguments drawn to claim 8 and/or a combination of references are moot.
Applicant argues with respect to the 102 rejection over Liu and further applicable to the 103 rejection over Liu, that Liu fails to teach wherein the graphene oriented perpendicular to an axis parallel to the longitudinal axis of the composite, as required by the amended claim 1. Specifically, Applicant first describes the method in which the claimed product is made, referencing steps including “A dimension of the composite is reduced” and “The composite is then extruded.” (Remarks, pgs. 5-6). Applicant then argues that Liu teaches a differing method of making, including coating copper sheets, stacking the coated sheets, then rolling the workpiece, cutting the rolled strips, restacking and rolling again. Applicant argues that the rolling direction of Liu constitutes the claimed “longitudinal direction” and concludes, that Liu fails to teach wherein the graphene oriented perpendicular to an axis parallel to the longitudinal axis of the composite. These arguments have been fully considered but are not found persuasive.
Claim 1 has been amended to remove previous product-by-process limitations. As the claimed product does not include any product-by-process limitations and moreover, a product is not limited by the method of its manufacture (see MPEP 2113), Applicant’s arguments drawn to any alleged differences in the method of making between Liu and the instant product are not found persuasive. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
With respect to the limitation “the graphene oriented perpendicular to an axis parallel to the longitudinal axis of the composite,” the limitation does not require any particular dimensions and does not define or otherwise limit which direction, relative to the claimed structure, constitutes “the longitudinal axis.” Thus, Applicant too narrowly interprets the limitation and appears to incorporate features from the specification, including its method of making, to narrow the scope of the required structure.
As detailed in the rejection, Liu teaches a metal-graphene composite comprising a plurality of stacked graphene-coated metal components having graphene oriented perpendicular to an axis parallel to the stacking direction of the component. Liu does not teach a specific example wherein the plurality of graphene-coated metal components have the graphene oriented perpendicular to “the longitudinal axis” of the composite” and thus, is not interpreted to anticipate the instant claim. However, one of ordinary skill in the art would recognize that the longitudinal axis of the composite of Liu is not dependent on the method of making, but instead, the final dimensions of the composite. It would have been obvious to cut or otherwise form the composite stack of Liu wherein the height of the stack exceeds the cross-section perpendicular to the stacking direction, and thus, wherein the height represents the longitudinal direction of the composite article. One of ordinary skill in the art would be motivated to make such a modification based on the particular application/use of the composite. Moreover, a mere change in shape, here, merely changing the relative dimensions of the composite, has been held to prima facie obvious. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
Conclusion
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/JOHN A HEVEY/ Primary Examiner, Art Unit 1735