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 Status
An amendment, filed 4/17/2026, is acknowledged. Claims 1 and 5 are amended. Claims 1-12 are currently pending, claims 10-12 are withdrawn.
The rejection under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendment. Interpretation of the amended claim 1 is provided in the rejection below.
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 recite “a plurality of stacked graphene-coated metal components having the graphene oriented perpendicular to an axis parallel to an axis of symmetry of a bulk form of the composite.” The claim does not require any particular dimensions and does not define or otherwise limit which axis/direction, relative to the claimed structure, constitutes “an axis of symmetry.” Furthermore, the specification does not provide specific support for the term “an axis of symmetry,” however, the specification recites “while the copper profiles are shown in the form of discs, the profiles can have other cross-sectional shapes including, without limitation, a rectangular cross-section, a square cross-section, a triangular cross-section, a hexagonal cross-section, etc.” (para. 18 of PG Pub.). The disclosed cross-sectional shapes are interpreted as each having one or more axes of symmetry.
As the claim does not set forth any specific shape, “an axis of symmetry” may be interpreted as a conditional limitation, limiting the orientation of the graphene to an axis of symmetry if it exists. “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” MPEP 2111.04.
Alternatively, if the claim is interpreted to require an axis of symmetry, a product having graphene perpendicular to any axis of symmetry (interpreted as, for example, a line that divides a shape into mirror-image sections), is deemed to meet the instant claim. Finally, it is noted that the term is interpreted with a broadest reasonable interpretation. As the specification lacks specific support for the term, a more specific interpretation, if argued by Applicant, would likely be considered new matter.
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 having a rectangular cross-section in the stacking direction. (p. 1-3; Fig. 2 depicting multilayer composite structure of metal components and graphene sheets which are primarily oriented perpendicular to axis of the 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, where the stacked intermediate structures are cut to facilitate further stacking, and wherein in the bulk form of the composite, an axis of symmetry exists perpendicular to the graphene orientation direction. Specifically, Liu teaches forming a bulk composite with a rectangular cross-sectional shape in the stacking direction and thus, comprises graphene layers oriented perpendicular to at least one axis parallel to an axis of symmetry of a bulk form of the composite, meeting the claimed limitations.
In the alternative, a mere change in shape, here, changing the cross-sectional shape/dimensions of the final stacked 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."). It would have been prima facie obvious to one of ordinary skill in the art to, for example, cut the rectangular-shaped final bulk composite of Liu to obtain one or more composite parts with differing dimensions, including wherein the one or more bulk composite parts have at least one axis of symmetry perpendicular to the orientation of the graphene layers 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 bulk form of a rolled sheet/strip that may also be interpreted as a bar or plate as all the forms may comprise a rectangular prism. (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
Applicant’s arguments, filed 4/17/2026, 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 that Liu results in an orientation of graphene parallel to any axis of symmetry of the product and fails to meet the amended claim 1. This argument is not found persuasive.
The specification does not provide specific support for the term “an axis of symmetry,” however, the specification recites “while the copper profiles are shown in the form of discs, the profiles can have other cross-sectional shapes including, without limitation, a rectangular cross-section, a square cross-section, a triangular cross-section, a hexagonal cross-section, etc.” (para. 18 of PG Pub.). These cross-sectional shapes are interpreted as each having one or more axes of symmetry. Liu teaches forming a bulk composite with a rectangular cross-sectional shape in the stacking direction and thus, comprises graphene layers oriented perpendicular to at least one axis parallel to an axis of symmetry of a bulk form of the composite, meeting the claimed limitations.
Applicant also argues that it would not have been obvious to modify the final shape of the composite of Liu. Applicant argues that such a modification would eliminate the repetitive steps of stacking and rolling. These arguments misunderstand or misinterpret the rejection and are not found persuasive.
The previous rejection contained a section drawn to modifying the final bulk shape of the composite of Liu, not modifying the disclosed process of cumulative roll bonding. That is, it would have been obvious to one of ordinary skill in the art to modify the final bulk composite of Liu, comprising a plurality of stacked and rolled layers, to obtain a desired shape. For example, the rectangular-shaped final bulk composite of Liu may be cut to obtain one or more composite parts having different dimensions. Moreover, in view of the amendment to claim 1, this portion of the obviousness rejection is only an alternative and is not required to meet the instant claims as interpreted.
Conclusion
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 JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN A HEVEY/ Primary Examiner, Art Unit 1735
Prosecution Insights