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 .
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.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
l. Claims 1-11, drawn to a method for synthesizing γ-graphyne, classified in USPC 208/40
II. Claims 12-20, drawn to a synthesized γ-graphyne, classified in USPC 208/40
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product can be made another and materially different process, taught by Ma et al. (Carbon, 95, 2015, 756-765).
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Both searches would not be required.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention.
If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Matthew Todd on 06/05/2026, a provisional election was made without traverse to Group I, claims 12-20.
Claims 1-11 are withdrawn from consideration as non-elected Groups a
Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142 (b), as being drawn to non-elected inventions.
Claim Objection
Claims 12 and 19 are objected to because of the following informalities:
Regarding claim 12, claim 1, the parentheses around the words should be removed.
The abbreviation “DCM” is vague. It should not be used and should be replaced by an indication of what it is intended to cover. For the purposes of examination, the “DCM” in claim 1 is interpreted as “dichloromethane”.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims 13-20 contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The as-synthesized two dimensional carbon ϒ-graphyne new material having the properties as recited in the instant claims 13-20 fails to comply with the enablement requirement.
Retraction Watch, submitted by applicants in IDS, explained that the authors(inventors) used a "method called 'alkyne metathesis,' which was always expected to be the path to this new material. While this approach failed to work for the last 25 years, in the hands of the authors it has seemingly produced the desired result."
Of the two crystal structures for the synthesized material described in the instant Specification, one "featured a distance between non-bonded carbon atoms which in our opinion is impossibly short,".
Furthermore, Retraction Watch reported spectroscopic characterization appeared to disagree with the structure claimed by the inventors. It turned out that structure "could be generated through a common type of a computer simulation, if the parameters for the simulation were set to incorrect default values." And that "structure was a perfect match for the reported X-ray diffraction data," Retraction Watch said, referring to a technique for direct measurement of interatomic distances. Those data "featured an unusual distribution of experimental noise, and overall the noise level was lower than expected." Neither discrepancy could be "explained by any reasonable means," said Retraction Watch, whose team shared their findings with the University of Colorado and the journal starting in late 2022.
The corresponding authors (inventors) of the study - Wei Zhang at the University of Colorado, Boulder and Yingjie Zhao of Qingdao University of Science and Technology in China - did not respond to requests for comment from Retraction Watch.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
Enablement is considered in view of the Wands factors (MPEP 2164.01 (a)). These include: (1) breadth of the claims; (2) nature of the invention; (3) state of the prior art; (4) amount of direction provided by the inventor; (5) the level of predictability in the art; (6) the existence of working examples; (7) quantity of experimentation needed to make or use the invention based on the content of the disclosure; and (8) relative skill in the art.
All of the factors have been considered with regard to the claim, with the most relevant factors discussed below:
(1) The breadth of claims: the claim is drawn to ϒ-graphyne new materials obtained from hexa-alkyne metathesis reaction with many independently varying groups of substituted benzene co-monomers.
(2) The nature of the invention, (3) the state of the prior art, (4) the level of one of ordinary skill; (5) the level of predictability in the art, (8) relative skill in the art.: the nature of the invention is ϒ-graphyne new materials. The state of the prior art with respect to this particular claimed embodiment is that there is a dearth of guidance available to one of ordinary skill for making up for the deficiencies of the disclosure. The level of skill in the art is high. Due to the unpredictability in the art of organic chemistry, it is noted that each embodiment of the invention is required to be individually assessed for viability.
(6) The existence of working examples and (7) the quantity of experimentation needed to make or use the invention based on the content of the disclosure: see the detailed discussion in Retraction Watch. Please respond the requests for comment from Retraction Watch.
Once the examiner has weighed all the evidence and established a reasonable basis to question the enablement provided for the claimed invention, the burden falls on applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide. The evidence provided by applicant need not be conclusive but merely convincing to one skilled in the art. See MPEP 2164/01 (a), 2164/04 and 2164/05.
Applicant may submit factual affidavits under 37 CFR 1.132 or cite references to show what one skilled in the art knew at the time of filing the application. A declaration or affidavit is, itself, evidence that must be considered. The weight to give a declaration or affidavit will depend upon the amount of factual evidence the declaration or affidavit contains to support the conclusion of enablement. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (“expert’s opinion on the ultimate legal conclusion must be supported by something more than a conclusory statement”); cf. In re Alton, 76 F.3d 1168, 1174, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996) (declarations relating to the written description requirement should have been considered).
Applicant should be encouraged to provide any evidence to demonstrate that the disclosure enables the claimed invention. Once that evidence is submitted, it must be weighed with all other evidence according to the standards set forth above so as to reach a determination as to whether the disclosure enables the claimed invention.
To overcome a prima facie case of lack of enablement, applicant must demonstrate by argument and/or evidence that the disclosure, as filed, would have enabled the claimed invention for one skilled in the art at the time of filing. This does not preclude applicant from providing a declaration after the filing date which demonstrates that the claimed invention works. However, the examiner should carefully compare the steps, materials, and conditions used in the experiments of the declaration with those disclosed in the application to make sure that they are commensurate in scope; i.e., that the experiments used the guidance in the specification as filed and what was well known to one of skill in the art at the time of filing. Such a showing also must be commensurate with the scope of the claimed invention, i.e., must reasonably enable the full scope of the claimed invention.
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 12-20 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 12 recites the term “(e.g., ethynylene)”. This term renders the claims indefinite because it is unclear whether the limitations following the phrase (or in the parenthetical) are part of the claimed invention. See MPEP § 2173.05(d).
Clarifications and appropriated corrections are required.
The term "substantially" in claims 12 and 18-19 are relative terms which render the claim indefinite. The term "substantially" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Appropriated corrections are required.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 USC § 112(b) for the reasons set forth above.
Claim Rejections - 35 USC § 102
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 12-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hu et al. (Nature Synthesis, 1, 2022, 449-454, published on 05/09/2022).
Regarding claim 12, Hu et al. teach two dimensional carbon allotropes ϒ-graphyne (the lattice constant of the 2D lattice as being 0.69 nm) (pages 449-452, FIG.2) obtained by HPB and HHEM alkyne metathesis reaction as shown below (page 451):
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532
1194
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As we see above, the ϒ-graphyne taught by Hu et al. comprises alternating phenylene and ethynylene as the instant claim.
Regrading claims 13-17, the ϒ-graphyne taught by Hu et al. is large-area-layered thin films with steps of around 10 nm, which corresponding to about 30 layers of ϒ-graphyne stacked together, and an area over 10 µm2 (page 450).
Regarding claim 18, the ϒ-graphyne taught by Hu et al. is thermally stable up to 250 0C with an 8% weight loss as the instant claim (page 450).
Regarding claim 19, the crystallinity of the ϒ-graphyne taught by Hu et al. maintains even after soaking in boiling water as the instant claim (page 450).
Regarding claim 20, the ϒ-graphyne taught by Hu et al. shows an optical bandgap was determined be 0.96 eV as the instant claim (page 450).
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ma et al. (Carbon, 95, 2015, 756-765).
Regarding claim 12, Ma et al. teach ϒ-graphyne as shown below (Fi. 1, pages 756-758):
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524
610
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As we see above, the ϒ-graphyne taught by Ma et al. is alternating phenylene and ethynylene components linking adjacent phenylene components in an ordered 2D arrangement as the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YUN QIAN/ Primary Examiner, Art Unit 1738
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