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
The preliminary amendment dated 12/04/2023 has been received and will be entered.
Claim(s) 1-20 is/are pending.
Claim(s) 3, 4, 7, 8, 11, 13, and 15 is/are currently amended.
Claim(s) 19-20 is/are new.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on:
12/1/2025
6/20/2025
3/13/2025
3/12/2024
are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The amendment filed 12/4/2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: All instances of changing “infiltration growth” to “continuous epitaxy.” See (Amendments to Abstract and Specification dated 12/4/2023). Epitaxy – as understood - refers to a type of crystalline growth. Infiltration growth – as understood – contains no such restrictions on crystallinity. MPEP 714.02 states: “Applicant should also specifically point out the support for any amendments made to the disclosure.” The Remarks contain no such support. (Remarks of 12/4/2023 at 8).
Applicant is required to cancel the new matter in the reply to this Office Action.
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, 3, 4, 5, 6, 7, 8, 16, 17, and 18 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0234200 to Tour, et al.
With respect to Claim 1, “S1, providing a foil selected from a nickel foil or a copper-nickel alloy foil and having a first surface and a second surface.” Tour teaches at least nickel, copper, and combinations thereof. (Tour 4: [0048] et seq.). Foils are taught. See e.g. (Tour 3: [0036]: “ the copper foil (or other metal catalyst surface being used)”).
Claim 1 further requires “S2, using the foil as a substrate and placing it on a solid carbon source, wherein the first surface of the foil is positioned close to the solid carbon source, and the second surface of the foil is positioned away from the solid carbon source, and then heating the foil and the solid carbon source, thereby causing the carbon film to grow on the second surface of the foil through carbon diffusion.” The foil is placed on the carbon source. (Tour 4: [0052] et seq.). No distinction is made between whether the foil is placed on the carbon source or the carbon source is placed on the foil. The difference is semantic and results in the foil being placed on the carbon source. See (Tour Fig. 11).
As to Claim 3, a tube furnace is taught. (Tour 3: [0039]; Fig. 11).
As to Claim 4, at least Ar/H2 mixtures are taught. (Tour 5: [0073]).
As to Claim 5, Ar/H2 mixtures are taught. Id.
As to Claim 6, the flow rates are taught. (Tour 5: [0072]).
As to Claim 7, the temperature is taught. (Tour 5: [0065]). The time is taught. (Tour 5: [0074]).
As to Claim 8, cooling to room temperature is taught. (Tour 9: [0130]).
As to Claim 16, graphene is taught. (Tour 5: [0064] et seq.).
As to Claim 17, the radial sizes are taught. (Tour 2: [0025]). The thickness is taught. (Tour 4: [0054]).
As to Claim 18, highly crystalline graphene is taught. (Tour 6: [0091]).
II. Claim(s) 2 - or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0234200 to Tour, et al. in view of:
(i) Zhang, et al., Comparison of Graphene Growth on Single-Crystalline andPolycrystalline Ni by Chemical Vapor Deposition, J. Phys. Chem. Lett. 2010; 1(20): 3101-3107 (hereinafter “Zhang at __”).
The discussion accompanying “Rejection I” above is incorporated by reference.
As to Claim 2, Tour would not appear to teach single-crystal catalysts. Zhang compares graphene growth on single- and polycrystalline nickel by chemical vapor deposition. Zhang teaches that single-crystal catalysts favor single layer graphene formation. (Zhang at 3101, col. 2). One of skill in the art would be motivated to employ a single-crystal catalyst to make single layer graphene. Id.
III. Claim(s) 15 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0234200 to Tour, et al. in view of:
(i) Li, et al., Amorphous carbon to graphene: Carbon diffusion via nickel catalyst, Materials Letters 2020; 278: 128468, pp. 1-4 (hereinafter “Li at __”) and
(ii) Huang, Review Carbon Black Filled Conducting Polymers and Polymer Blends, Advances in Polymer Technology 2002; 21(4): 299-313 (hereinafter “Huang at __”) to show the meaning of a term.
The discussion accompanying “Rejection I” above is incorporated by reference.
As to Claim 15, Tour teaches a host of carbon sources including “solid carbon sources” and “raw carbon sources.” (Tour 4: [0043]). In a similar solid-carbon source method of making graphene, Li teaches employing amorphous carbon (a-C). (Li at 1, col. 1-2). One of skill in the art would understand carbon black to be amorphous carbon. See (Huang at 300, col. 1: “CB is an amorphous form of carbon with a structure similar to disordered graphite.”). Note that Huang is only offered to show what carbon black is and/or how one of skill in the art understands carbon black. It is not meant to be ““combined”” with Tour and Huang. Substitution of one known solid carbon source (e.g. those of Tour) for another (e.g. those of Li) to achieve predictable results does not impart patentability. MPEP 2143; KSR.
Allowable Subject Matter
Claims 9-14 and 19-20 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Tour has been discussed above. Tour would not appear to teach the method by which the catalyst films are made. Search of the prior art did not teach or reasonably suggest the specific process of making the catalyst films recited in Claims 9-14, nor the specific properties of the films required by Claims 19-20, in a manner that would survive scrutiny on appeal.
Making graphene from solid carbon sources is generally known. The following are representative:
Ayhan, et al., Synthesis of transfer-free graphene by solid phase reaction process in presence of a carbon diffusion barrier, Materials Letters 2014; 129: 76-79 (hereinafter “Ayhan at __”). Ayhan teaches Pluronic F127 and a Ni thin film to synthesize graphene. See generally (Ayhan at 77, Fig. 1).
Delamoreanu, et al., Wafer scale catalytic growth of graphene on nickel by a solid carbon source, Carbon 2014; 66: 48-56 (hereinafter “Delamoreanu at __”). Delamoreanu teaches amorphouys hydrogenated silicon carbide and a polycrystalline nickel thin film to make graphene. See generally (Delamoreanu at 49 – 2. Experimental).
Any additional rejections that could be crafted were considered cumulative at this time.
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).
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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.
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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