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 .
Election/Restrictions
Applicant’s election of Group I (Claims 1-10) in the reply filed on 8/05/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Status of Claims
Claims 1-16 are pending, and are subject to a restriction requirement. Claim 11 has additionally been amended. Consistent with the election, claims 11-16 are withdrawn without traverse, and will be considered for rejoinder when claims 1-10 are in condition for allowance.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 20170263940 A1; Henceforth, D1) in view of Chi et al. (Nano Lett. 2016, 16, 5719-5727; Henceforth, D2) and Fisher et al. (US 20160215389 A1; Henceforth, D3).
Regarding claim 1, D1 teaches a method growing metal-doped graphene suitable for capacitors and hydrogen storage materials ([0006]). The examiner notes capacitors are energy storage devices. D1 teaches the process involves providing a substrate (a titanium substrate, [0052]), forming a layer of metal-doped graphene on the substrate using microwave plasma torch chemical vapor deposition (Henceforth, MPT-CVD; [0046] and [0052]-[0053]). The examiner notes that, for an energy storage device, the only reasonable way to utilize a titanium substrate would be as a current collector. D1 teaches, for the MPT-CVD process, the power ranges between 100 W to 2000 W, and the temperature is less than 500°C ([0046]); D1 teaches the specific examples of 800 W, 1000 W and 1200 W, where each process occurred over the span of either 10 or 15 minutes ([0052], [0055], [0057], [0060] and [0063]). The examiner notes the time and power values fall within the claimed range and anticipates it. See MPEP 2131.03. The examiner notes the range taught by D1 for temperature overlaps/encompasses the range taught by the instant claim. It has been held that, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to select the temperature from the prior art range, because the prior art teaches the desired property/utility over the entire range.
D1 additionally teaches the process comprises passing methane and nitrogen gas together with the doping material as microwaves are applied ([0047]-[0048]; Figure 2) so the metal-doped graphene it can be deposited on the substrate. The examiner notes that plasmas inherently ionize gases, and D1 teaches the carbon precursor gas, which includes a hydrocarbon gas, decomposes when interacting with the plasma ([0045]), which the examiner presumes is due to the ionization of the gas. It has been held that, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See MPEP 2112.02 (I). D1 does not explicitly teach the graphene is nanographene, and modified layer comprising nanographene having a thickness of 1 nm to 500 nm, the microwave frequency is 300 MHz to 300 GHz, nor that hydrocarbon gas also contains hydrogen.
D2 teaches graphene nanowalls and nitrogen-doped graphene nanowalls grown on a substrate for use as an electrode for double layer capacitors (page 5720, column 1 and Title), which the examiner notes is an energy storage device. The examiner notes that graphene nanowalls are denoted as suitable examples of nanographene in claim 5 of the instant application. These graphene nanowalls are grown on titanium current collectors by means of a MPT-CVD process that runs for 10 minutes using a microwave source at 2.45 GHz (page 5720, column 2, “Synthesis of GNW and NGNW”), and results in a deposited layer thickness of ca 1 nm (i.e. 2-3 atomic layers; page 5725, column 1 for nitrogen-doped graphene nanowalls). The examiner notes this thickness lies within the claimed range and therefore anticipates it. See MPEP 2133.03. D2 teaches this method, using the microwave frequency parameters, under a N2 atmosphere, is an effective tool in manufacturing high quality, vertical NGNWs (page 5725, column 1). D2 is silent on the inclusion of hydrogen gas with methane (page 5720, column 2, “Synthesis of GNW and NGNW”) as one of its source gases.
D3 teaches a method of growing graphene particles on a conductive fiber-based cloth (Abstract). D3 teaches carbon nano-petals are opening up use for these graphene based sheets in supercapacitor (also referred to as an ultracapacitor) manufacture and also in high capacity battery applications, limited by the cost of the substrate material that is used for the growth of these petals ([0002]). D3 teaches the method can utilize microwave plasma-enhanced chemical vapor deposition to grow the carbon nano-petals ([0004], [0007]). D3 teaches the plasma growth process typically uses a reactant gas mixtures comprising methane and hydrogen gas typically in a 4:1 to 6:1 ration at about 10 to about 50 Torr pressure and enabling the plasma with a typical plasma power between about 500 to about 5000 Watts ([0030]). D3 teaches the inclusion of hydrogen gas may contribute to passivate dangling bonds at edges of the graphene petals and enable the graphene petals to retain an open structure during their formation ([0008]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of D1 by utilizing the microwave frequency and thickness of graphene formed of D2 and the inclusion of hydrogen gas of D3. There would have been a motivation to utilize the microwave frequency parameters of D2 in making graphene nanowalls, as taught by D2, since the use of the technique, under a N2 atmosphere, results in the manufacture of high quality, vertical nitrogen-doped grown graphene nanowalls (page 5725, column 1). Additionally, there would have been a motivation to include hydrogen with the hydrocarbon gas, as taught by D3, since the inclusion of hydrogen gas contribute to passivate dangling bonds at edges of the graphene petals, which the examiner notes results in making a more uniform structure, and enables the graphene to retain an open structure during their formation ([0008]).
Regarding claim 2, D1, D2 and D3 teach the method of manufacturing a current collector of an energy storage device according to claim 1. D1 teaches the substrate comprises titanium which is both a metal and conductive material. Therefore, D1 teaches all the added limitations of claim 2.
Regarding claim 3, D1, D2 and D3 teach the method of manufacturing a current collector of an energy storage device according to claim 1. D1 teaches the microwave plasma chemical vapor deposition process a microwave plasma torch chemical vapor deposition process. Therefore, D1 teaches all the added limitations of claim 3.
Regarding claim 4, D1, D2 and D3 teach the method of manufacturing a current collector of an energy storage device according to claim 1. D2 teaches graphene nanowalls, grown through a MPT-CVD process, comprises about 2 to 3 layers (page 5725, column 1 for nitrogen-doped graphene nanowalls).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of claim 1 such that the method grows graphene nanowalls that are 2-3 layers thick, as taught by D2. The examiner notes the range taught by D2 for the amount of layers of the graphene material are formed overlaps/encompasses the range taught by the instant claim. It has been held that, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to select the number of graphene nanowall layers formed from the prior art range, because the prior art teaches the desired property/utility over the entire range.
Regarding claim 5, D1, D2 and D3 teach the method of manufacturing a current collector of an energy storage device according to claim 1. D2 teaches the graphene grown through a MPT-CVD process, comprise graphene nanowalls (page 5720, columns 1-2). D2 teaches the use of graphene of this form, as a strategy to mitigate the oxidation of oxygen-functional groups of the surface of electrical double-layer capacitors, in order to bolster the upper cell voltage limit of propylene carbonate electrical double-layer capacitors (page 5720, column 1)
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of claim 1 such that the nanographene formed are graphene nanowalls. There would have been a motivation, as taught by D2, to use graphene nanowalls, as a strategy to mitigate the oxidation of oxygen-functional groups of the surface of electrical double-layer capacitors, in order to bolster the upper cell voltage limit of propylene carbonate electrical double-layer capacitors (page 5720, column 1)
Regarding claim 6, D1, D2 and D3 teach the method of manufacturing a current collector of an energy storage device according to claim 1. D1 teaches the use of nitrogen gas is included in the MPT-CVD process ([0047]-[0048]). Therefore, D1 teaches all the added limitations of claim 6.
Regarding claim 7, D1, D2 and D3 teach the method of manufacturing a current collector of an energy storage device according to claim 1. D1 teaches the carbon precursor gas includes hydrocarbon gases such as methane, ethylene, and acetylene ([0045]). Therefore, D1 teaches the added limitations of claim 7.
Regarding claim 8, D1, D2 and D3 teach the method of manufacturing a current collector of an energy storage device according to claim 1. D3 teaches the plasma growth process typically uses a reactant gas mixtures comprising methane and hydrogen gas typically in a 4:1 to 6:1 ration at about 10 to about 50 Torr pressure and enabling the plasma with a typical plasma power between about 500 to about 5000 Watts ([0030]). D3 teaches the inclusion of hydrogen gas may contribute to passivate dangling bonds at edges of the graphene petals and enable the graphene petals to retain an open structure during their formation ([0008]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of claim 1 so a ratio of hydrocarbon gas to hydrogen gas is between 1:10 and 10:1, as taught by D3. The examiner notes the range taught by D3 for ratio of hydrocarbon gas to hydrogen overlaps/encompasses the range taught by the instant claim. It has been held that, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to select the ratio of hydrocarbon gas to hydrogen gas from the prior art range, because the prior art teaches the desired property/utility over the entire range. There would have been a motivation to use a ratio of hydrocarbon gas to hydrogen gas between a 4:1 to 6:1 ratio, since the inclusion of hydrogen gas may contribute to passivate dangling bonds at edges of the graphene petals, and enables the graphene petals to retain an open structure during their formation ([0008]).
Regarding claim 10, D1, D2 and D3 teach the method of manufacturing a current collector of an energy storage device according to claim 1. D1 teaches that, when nitrogen gas is introduced during the plasma chemical vapor deposition period, the metal-doped graphene should include nitrogen element amount of 1 at % to 8 at % simultaneously ([0048]). Therefore, D1 teaches the added limitations of claim 10, since nitrogen is doping the graphene product made.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over D1, D2, and D3, in view of Assegie et al. (Nanoscale, 2019, 11, 2710; cited by the applicant; Henceforth, D4) and Liu et al. (J Mater Sci, 2021, 56, 12559-12583; Published Online May 10th, 2021; Henceforth, D5).
Regarding claim 9, the instant claim is drawn to the method of manufacturing a current collector of an energy storage device according to claim 1, wherein the energy storage device is an anode-free lithium metal battery, and the current collector is an anode current collector.
D1, D2 and D3 teach the method of manufacturing a current collector of an energy storage device according to claim 1, but do not teach the energy storage device is an anode-free lithium metal battery, and the current collector is an anode current collector. The examiner notes the phrase “an energy storage device” is an intended use of the method; it has been held that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP 2111.02 (II). As such, the modification provided by claim 9 that the energy storage device is an anode-free lithium ion battery does not further limit method of the instant claim.
However, D4 discloses a multilayer-graphene-stabilized lithium deposition for anode-free lithium metal batteries (Title), wherein ultrathin graphene layers are directly deposited on a copper substrate via chemical vapor deposition (page 2711, column 1), which is paired with a LiFePO4 cathode (page 2711, column 2). The examiner notes this means the copper coated substrate with graphene would be the anode current collector.
While D4 does not teach the chemical vapor deposition utilizes microwave plasma chemical vapor diffusion, it would have been obvious for a person of ordinary skill in the art to apply the microwave plasma chemical vapor deposition method of claim 1 to make an anode for a anode-free lithium metal battery. There would have been a motivation, evidenced by D5, for a person of ordinary skill in the art to utilize microwave plasma chemical vapor deposition over standard chemical vapor deposition, since microwave plasma chemical vapor diffusion, as a subset of plasma-enhanced vapor diffusion, offers the advantages of lower operating temperatures and high product quality (page 12561, column 1), while microwave plasma chemical vapor diffusion improves upon plasma-enhanced chemical vapor deposition by imparting more control in deposition (PAGE 12561, column 2). Since D4 teaches the base method can be utilized to make an anode-free lithium ion battery anode current collector, a person of ordinary skill in the art would have been motivated to utilize an improved-upon version of the method, such as the method taught by D1, D2 and D3, to make an anode current collector for an anode-free lithium ion battery.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. US 12646661 B2 (Granted 6/2/2026, with priority to 11/14/2023; Henceforth, US‘661) alone, or in view of D1, D2, D3, D4 and/or D5, as stated in table 1, below. The reference application substantially teaches all the features of the instant claims 1-10 with the exception of:
The thickness of the formed graphene layer, the temperature and duration of the MPCVD event, and the inclusion of hydrogen gas in the MPCVD event (Claim 1)
The ratio of hydrocarbon gas to hydrogen gas (Claim 8)
The method where the energy storage device is an anode-free lithium ion battery and the current collector is the anode current collector (Claim 9)
The MPCVD process includes doping with heteroatoms, wherein the heteroatoms comprise nitrogen, sulfur, or silicon (Claim 10)
Reference Patent US 12646661 B2 (US’661)
Instant Claims
Additional Art
1-8, 10
D1, D2, D3
9
D1, D2, D3, D4, D5
Regarding the, the temperature and duration of the MPCVD event, D1 discloses such a teaching; see the 35 U.S.C. rejection for claim 1, above.
Regarding the thickness of the formed graphene layer, D2 discloses such a teaching; see the 35 U.S.C. rejection for claim 1, above.
Regarding the inclusion of hydrogen gas in the MPCVD event, D3, discloses such a teaching; see the 35 U.S.C. rejection for claim 1, above.
Regarding the ratio of hydrocarbon gas to hydrogen gas, D2 discloses such a teaching; see the 35 U.S.C. rejection for claim 8 above.
Regarding the energy storage device being an anode-free lithium ion battery and the current collector being the anode current collector, D4 and D5 disclose such a teaching; see the 35 U.S.C. rejection for claim 9, above.
Regarding the MPCVD process including doping with heteroatoms, wherein the heteroatoms comprise nitrogen, sulfur, or silicon, D1 discloses such a teaching; see the 35 U.S.C. rejection for claim 10, above.
It would have been obvious for a person of ordinary skill in the art to consider the present claims 1-10 and the reference claims 1-15 patentably indistinct, since D1, D2, D3, D4 and D5 teach the added parameters or uses of the method disclosed in the reference claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN P MURPHY whose telephone number is (571)272-9321. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/RPM/Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752
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