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 .
REJECTIONS WITHDRAWN
All previous rejections have been withdrawn.
REJECTIONS REPEATED
There are no rejections repeated.
NEW REJECTIONS
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Kim et al. (US 2012/0248414).
Kim discloses a patterned structure, comprising: a polymeric patterned layer; and a graphene layer coupled to the polymeric patterned layer and separated from a substrate according to a pattern of the patterned layer, wherein the polymeric patterned
layer provides support for the graphene layer that is separated from the substrate, wherein the separated graphene layer has the same pattern as the patterned layer, wherein the patterned structure is a free-standing structure that is separated from the substrate, wherein the patterned structure is configured to be coupled to a base substrate (paragraphs [0011-0014], [0026-0028], [0057], [0079-0084]).
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2013/0098540) in view of Kim et al. (US 2012/0248414).
Lee discloses a workpiece (graphene transferring member 200; figure 4A; paragraph (0078)), comprising: a second substrate (insulating layer 320 and transfer-target substrate 310 (collectively second substrate); figure 4A; paragraph (0078)); a patterned layer of graphene disposed on the second substrate (graphene layer 23.0 (layer of graphene) is patterned and disposed on the insulating layer 320 and transfer-target substrate 310 (second substrate); figure 4A;- paragraphs (0070, 0074, 0078, 0080, 0084); and a patterned layer of a first material disposed on the patterned layer of graphene (metal thin-film layer 220 using a metal (layer of a first material) is patterned and disposed on the graphene layer 230 (layer of graphene); figure 4A; paragraphs (0070, 0072, 0074, 0080, 0084).
Lee does not disclose a polymeric patterned layer wherein the polymeric patterned layer is coupled to the graphene layer.
Kim discloses a polymeric patterned layer wherein the polymeric patterned layer is coupled to the graphene layer in a workpiece comprising graphene for the purpose of providing uniformity in characteristics and good operation characteristics (paragraph [0007]).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided a polymeric patterned layer wherein the polymeric patterned layer is coupled to the graphene layer in Lee in order to provide uniformity in characteristics and good operation characteristics as taught or suggested by Kim.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20, 1-22 and 1-19 of U.S. Patent Nos. 11,546,987, 10,165,679 and 9,930,777 respectively in view of Kim et al. (US 2012/0248414). Although the claims at issue are not identical, they are not patentably distinct from each other because over claims 1-20, 1-22 and 1-19 of U.S. Patent Nos. 11,546,987, 10,165,679 and 9,930,777, respectively, substantially encompass the scope of instant claims 1-5.
Claims 1-20, 1-22 and 1-19 of U.S. Patent Nos. 11,546,987, 10,165,679 and 9,930,777 do not disclose a polymeric patterned layer wherein the polymeric patterned layer is coupled to the graphene layer.
Kim discloses a polymeric patterned layer wherein the polymeric patterned layer is coupled to the graphene layer in a workpiece comprising graphene for the purpose of providing uniformity in characteristics and good operation characteristics (paragraph [0007]).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided a polymeric patterned layer wherein the polymeric patterned layer is coupled to the graphene layer in claims 1-20, 1-22 and 1-19 of U.S. Patent Nos. 11,546,987, 10,165,679 and 9,930,777 in order to provide uniformity in characteristics and good operation characteristics as taught or suggested by Kim.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/016,718 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of copending Application No. 19/016,718 substantially encompass the scope of instant claims 1-5.
Claim 1 of copending Application No. 19/016,718 do not disclose a polymeric patterned layer wherein the polymeric patterned layer is coupled to the graphene layer.
Kim discloses a polymeric patterned layer wherein the polymeric patterned layer is coupled to the graphene layer in a workpiece comprising graphene for the purpose of providing uniformity in characteristics and good operation characteristics (paragraph [0007]).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided a polymeric patterned layer wherein the polymeric patterned layer is coupled to the graphene layer in claim 1 of copending Application No. 19/016,718 in order to provide uniformity in characteristics and good operation characteristics as taught or suggested by Kim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments with respect to claim(s) 1-5 have been considered but are moot because the new ground of rejection set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
May 3, 2026
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