DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 3, and 9 have been amended. Claims 1-10 are pending in the instant application.
Priority
This application is a U.S. national stage entry under 35 U.S.C. §371 of International Application No. PCT/JP2022/024712 filed June 21, 2022, which claims priority benefit to Japan Application No. 2021-103552 filed on June 22, 2021.
Information Disclosure Statements
Applicants’ Information Disclosure Statements, filed on 12/21/2023, 01/23/2024, 07/03/2025, 12/23/2025, and 02/18/2026, have been considered. Please refer to Applicant’s copies of the PTO-1449 submitted herewith.
Response to Restriction Requirement
Applicant’s election without traverse of Group I (i.e. claims 1-3) in the reply filed by Applicant’s representative Francis J. Maguire on 06/16/2026 is acknowledged.
Status of the Claims
Claims 4-10 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) in response to Applicant’s response to the restriction requirement. Claims 1-3 are under examination on the merits.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20130230709A1 (“the `709 publication”) to Zhou et al.
Applicant’s claim 1 is drawn to a graphene material having a total porosity of 60.0% or more and an open porosity of 50.0% or more.
The `709 publication (claim 12) discloses a porous graphene material characterized in that porous graphene material having a pore size of 50 nm to 10 µm accounts for 20% to 40% of the total volume, porous graphene material having a pore size of 2 nm to 50 nm accounts for 35% to 55% of the total volume, and porous graphene material having a pore size of 1 nm to 2 nm accounts for 20% to 25% of the total volume. The `709 publication ([0041-0055]) discloses that the porous graphene material is obtained by obtaining oxidized graphene from graphite by the Hummers method, mixing this with a pore-forming agent such as dry ice that can release gas, compressing, and heating to release the gas in the pore-forming agent at the temperature from 500 to 2000 °C to give the porous graphene material. The `709 publication ([0056-0125]) discloses Examples 1-10 for preparing the porous graphene materials with a pore-forming agent such as dry ice, sodium bicarbonate, ammonium carbonate, polypropylene, polydimethyl-siloxane, hydrazine hydrate, etc.
The `709 publication does not disclose the graphene material having a total porosity of 60.0% or more and an open porosity of 50.0% or more. Instead, the `709 publication discloses various pore-forming agents such as dry ice, sodium bicarbonate, ammonium carbonate, polypropylene, polydimethyl-siloxane, hydrazine hydrate, etc. are used with the pores being opened by heating at the temperature from 500 to 2000 °C, and graphene is produced using oxidized graphene produced by the Hummers method. It is highly probable that the product disclosed in the `709 publication satisfies the open porosity of the invention as in claim 1 having a total porosity of 60.0% or more and an open porosity of 50.0% or more.
In terms of claim 2 wherein a ratio G/D of a peak intensity G near 1600 cm-1 to a peak intensity D near 1360 cm-1 in laser Raman spectroscopy measurement is 10.0 or more, the graphene material having the ratio G/D of a peak intensity in laser Raman spectroscopy measurement is 10.0 or more is considered to be an inherited property of the claimed graphene material. It has long been recognized that a product is inseparable from its properties. Because the `709 publication discloses the graphene materials 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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In terms of claim 3 drawn to a base material for sustainedly releasing a non-aqueous component, the base material being composed of the graphene material of claim 1, the `709 publication discloses a porous graphene material, and can be interpreted as a base material. Regarding the intend-to-use “for sustainedly releasing a non-aqueous component”, it is simply a statement of intend-to-use or purpose of the invention, not a separate claim limitation. [A] preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuring claim terms and limits the claim accordingly. Satisfaction of the claimed steps/elements necessarily results in satisfying the purpose of the invention or the intended use. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017).
Alternatively, claims 1-3 are rejected under 35 USC §103(a) as following:
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over the `709 publication in view of US2012/0077020 (“the `020 publication”) to Muramatsu et al.
Determination of the scope and content of the prior art (MPEP §2141.01)
The `709 publication (claim 12) discloses a porous graphene material characterized in that porous graphene material having a pore size of 50 nm to 10 µm accounts for 20% to 40% of the total volume, porous graphene material having a pore size of 2 nm to 50 nm accounts for 35% to 55% of the total volume, and porous graphene material having a pore size of 1 nm to 2 nm accounts for 20% to 25% of the total volume. The `709 publication ([0041-0055]) discloses that the porous graphene material is obtained by obtaining oxidized graphene from graphite by the Hummers method, mixing this with a pore-forming agent such as dry ice that can release gas, compressing, and heating to release the gas in the pore-forming agent at the temperature from 500 to 2000 °C to give the porous graphene material. The `709 publication ([0056-0125]) discloses Examples 1-10 for preparing the porous graphene materials with a pore-forming agent such as dry ice, sodium bicarbonate, ammonium carbonate, polypropylene, polydimethyl-siloxane, hydrazine hydrate, etc.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claim 1 and the `709 publication is that the prior art does not teach the graphene material having a total porosity of 60.0% or more and an open porosity of 50.0% or more. Instead, the `709 publication discloses various pore-forming agents such as dry ice, sodium bicarbonate, ammonium carbonate, polypropylene, polydimethyl-siloxane, hydrazine hydrate, etc. are used with the pores being opened by heating at the temperature from 500 to 2000 °C, and graphene is produced using oxidized graphene produced by the Hummers method.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
However, the instant claim 1 would have been obvious over the `709 publication because it is highly probable that the product disclosed in the `709 publication satisfies the open porosity of the invention as in claim 1 because the `709 publication teaches using pore-forming agents such as dry ice, sodium bicarbonate, ammonium carbonate, etc. and heating the mixture comprising pore-forming agents to the temperature from 500 to 2000 °C, such that the pore-forming agents either vaporized when dry ice is used, or decomposed when sodium bicarbonate, and/or ammonium carbonate is used to produce CO2 gas in order to form open porous graphene structure. On the other hand, Applicant’s specification [0048 and 0087] also discloses the claimed porous graphene material was prepared by open-pore heat treatment through generating CO2 to convert the closed pores into open pores at the temperature in a range from 600 °C to 1100 °C in order to produce the porous graphene material having a total porosity of 60.0% or more and an open porosity of 50.0% or more. One ordinary skilled in the art, it would have been obvious to combine the two references as a whole toward Applicant’s invention. "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, or substantially the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In terms of claim 2 wherein a ratio G/D of a peak intensity G near 1600 cm-1 to a peak intensity D near 1360 cm-1 in laser Raman spectroscopy measurement is 10.0 or more, the `020 publication (EXAMPLE 11) discloses a method for preparing a porous graphene material using phenol formaldehyde resin powder as pore-forming agent and heating at 700 °C to open-up pore. In addition, the `020 publication (Figure 13) discloses the graphene material shows a ratio G/D of a peak intensity G near 1600 cm-1 to a peak intensity D near 1360 cm-1 in laser Raman spectroscopy measurement is 10.0 or more. Therefore, the `709 publication in view of the `020 publication would have rendered claim 2 obvious.
In terms of claim 3 drawn to a base material for sustainedly releasing a non-aqueous component, the base material being composed of the graphene material of claim 1, both the `709 publication and the `020 publication disclose a porous graphene material, and can be interpreted as a base material. Regarding the intend-to-use “for sustainedly releasing a non-aqueous component”, it is simply a statement of intend-to-use or purpose of the invention, not a separate claim limitation. [A] preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuring claim terms and limits the claim accordingly. Satisfaction of the claimed steps/elements necessarily results in satisfying the purpose of the invention or the intended use. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017).
Conclusions
Claims 1-3 are rejected.
Claims 4-10 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
/YONG L CHU/Primary Examiner, Art Unit 1731
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