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
Claims 14-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/30/2025.
Claim Objections
Claims 1-13 are objected to because of the following informalities:
“a” should be inserted before “superlubricity coating” in line 1 of Claim 1.
“the granular biowaste medium” should be deleted in line 3 of Claim 1.
“with” should be changed to “and” in line 3 of Claim 10.
“with” should be changed to “and” in line 3 of Claim 11.
“nano tubes” should be changed to “nanotubes” in line 2 of Claim 13.
Appropriate correction is required.
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 1-13 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. The dependent claims do not cure these deficiencies.
The term “superlubricity” in claim 1 is a relative term which renders the claim indefinite. The term “superlubricity” 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. For the purpose of examination, any lubricity will meet the claim limitation.
The term “high temperature” in claim 1 is a relative term which renders the claim indefinite. The term “high temperature” 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. For the purpose of examination, any temperature will meet the claim limitation.
Claim 1 recites the limitation "the metallic component" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be treated as “a metallic component”.
Claims 1 (lines 6 and 7), 6-9 (line 1), and 12 (lines 1-2) recites the limitation "the biowaste medium". There is insufficient antecedent basis for this limitation in the claim. It is unclear if the biowaste medium is the granular biowaste medium or a biowaste medium input to the high temperature biowaste treatment. For the purpose of examination, the limitations will be treated as “the granular biowaste medium”.
Claim 1 recites the limitation "the component" in line 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be treated as “the metallic component”.
Claim 9 recites the limitation “biowaste medium includes barium carbonate in about a 3:1 ratio” in lines 1-2. The claimed ratio is unclear because a ratio is a relation between two quantitative amounts and the claim has not defined the two amounts being compared. The specification suggests the claimed ratio could be a ratio of an amount of cassava powder to an amount of barium carbonate; however, no units (molar, weight, volume, etc.) are recited. For the purpose of examination, any barium carbonate concentration will meet the claimed limitation.
Claim 13 recites the limitation "the carbon coating" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the limitation will be treated as “the graphene coating”.
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 (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 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.
Claim(s) 1-9 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adetunji (Adetunji et al., Metallographic Studies of Pack Cyanided Mild Steel Using Cassava Leaves, 2008, Materials and Manufacturing Processes, 23:4, 385-390).
Regarding Claims 1, 4-5, and 13, Adetunji teaches a method for a wear resistant surface treatment (abstract, Introduction 1st para.), comprising: generating a granular biowaste medium from a high temperature biowaste treatment (HTBT) (Powder preparation, pg. 386); surrounding the metallic component with the granular biowaste medium for providing a carbon source; and heating the metallic component in the biowaste medium for diffusing carbon from the biowaste medium (High-Temperature Pack Cyaniding and Low-Temperature Pack Cyaniding pg. 386).
Adetunji discusses the micro structure as detected by a 400x microscope; however, Adetunji is silent as to the coating and nanostructure features of the treated surface. Adetunji does not teach an aggregate of graphene, carbon nanotubes, carbon nanocrystals, or a nanofiber mesh of nano tubes with an average diameter of ~30 ±12 nm. 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 anticipation has been established, In re Best, 195 USPQ 430, 433 (CCPA 1977). With regard to the nanostructure feature limitations, when the structure recited in the prior art is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112. In this situation, the prior art exemplifies the applicant's claimed materials and process, so the claimed structure relating to the product are present in the prior art. Absent an objective evidentiary showing to the contrary, the addition of the physical properties to the claim language fail to provide patentable distinction over the prior art of record.
Regarding Claims 2-3, and 6, Adetunji teaches cassava leaves, i.e. introduces nitrogen and includes cyanide, and BaCO3 (Powder Preparation, pg. 386).
Regarding Claims 7-8, Adetunji teaches grinding the dried cassava leaves to a particle size of 250 µm (Powder Preparation, pg. 386).
Regarding Claim 9, Adetunji teaches 80% powder to 20% by weight BaCO3 (Powder Preparation, pg. 386).
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.
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.
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, 4, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shankman (US 20140134092).
Regarding Claim 1, Shankman teaches a method for forming a lubricating coating (abstract, [0407]), comprising: generating a granular biowaste medium from a biowaste treatment (biochar, [0475]); surrounding the metallic component with the granular biowaste medium for providing a carbon source (lubricate an operating engine or other mechanical system, include an additive selected to serve as a sacrificial carbon source, [0407]); and heating the metallic component in the biowaste medium for diffusing carbon from the biowaste medium (in situ formation of graphitic carbon, pyrolyzed, [0407]) to aggregate on a surface of the component thereby forming a graphene coating ([0496], tribological coating on the friction surfaces of a lubricated system [0408], presence of graphene ([0546])).
Shankman does not explicitly teach an embodiment of a biochar carbon source with a graphene coating component; however, as discussed above, Shankman teaches biochar as one possible carbon source and graphene as a possible coating component. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the compositions of Shankman to include any of the taught components, including the claimed components, because Shankman teaches they are all suitable for use with the invention and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of Shankman with any of the taught components.
Regarding Claim 4, Shankman teaches wherein the graphene coating includes carbon nanotubes ([0546]).
Regarding Claim 10, Shankman teaches depositing the metallic component in a containment (cam follower, test automobile, [0531]); covering the metallic component and heating the metallic component with the granular biowaste medium for surrounding the metallic component with the granular biowaste medium (introduced into a 2006 Audi, [0529], 150,000 miles of use, [0531]); and heating the containment at a temperature between 50 and 550 C (the conditions of the operating engine, [0407]). 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). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the temperatures of Shankman to be any of the taught temperatures, including those within the claimed range, because Shankman teaches they are all suitable for use with the invention and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of Shankman with any of the taught temperatures.
Claim(s) 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Adetunji (Adetunji et al., Metallographic Studies of Pack Cyanided Mild Steel Using Cassava Leaves, 2008, Materials and Manufacturing Processes, 23:4, 385-390).
Regarding Claims 10-11, Adetunji teaches depositing the metallic component in a containment; covering the metallic component and heating the metallic component with the granular biowaste medium for surrounding the metallic component with the granular biowaste medium; and heating the containment at a temperature between 400-550C or 700-950C (High-Temperature Pack Cyaniding and Low-Temperature Pack Cyaniding pg. 386). 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). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the temperatures of Adetunji to be any of the taught temperatures, including those within the claimed range, because Adetunji teaches they are all suitable for use with the invention and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of Adetunji with any of the taught temperatures.
Regarding Claim 12, Adetunji teaches heating for between 1-5 hours (High-Temperature Pack Cyaniding and Low-Temperature Pack Cyaniding pg. 386). 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). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the times of Adetunji to be any of the taught times, including those within the claimed range, because Adetunji teaches they are all suitable for use with the invention and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of Adetunji with any of the taught times.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TABATHA L PENNY whose telephone number is (571)270-5512. The examiner can normally be reached M-F 8:00-5:00.
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/TABATHA L PENNY/Primary Examiner, Art Unit 1712