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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-2, 24-25 and 28 in the reply filed on 04/20/2026 is acknowledged. Upon review restriction requirement mailed on 02/04/2025, the Examiner believes claim 23 belongs in the same inventive group as claims 1-2, 24-25 and 28. As such, claims 1-2, 23-25 and 28 are being examined herein.
Claims 3-22 and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: reference number 8 in Fig. 1 is not described in the specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-2 are objected to because of the following informalities:
In claim 1:
“in the form crystals” should be “in the form of crystals”
“said tablets” should refer back to the “general tablet shape” since “tablets” is not being claimed. The examiner suggests amending the claim to recite: “said general tablet shape”.
In claims 2 and 25: “it has the formula” should refer to the compound and the examiner suggests amending the claim to “the compound has the formula”
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 1-2 and 24-25 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.
Regarding claims 1 and 24, the limitation “general tablet shape” is indefinite as it is not clear what is encompassed within the metes and bounds of a shape of a “general tablet”. The term “general” in the limitation is particularly unclear because there is no commonly accepted definition of what a “tablet” shape compared to that of a square, triangle, sphere and the like. Furthermore, it is not clear if there is a different between a “tablet shape” and a “general tablet shape” as claimed.
Claims 2 and 25 are rejected as being dependent on claims 1 and 24.
Claim Rejections - 35 USC § 102/103
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 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.
Claims 23-25 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative under 35 U.S.C. 103 as being unpatentable over Torita (U.S. App. Pub. No. 2018/0338352).
Regarding claim 23, Torita et al. discloses an MXene having the general formula Mn+1Xn where n= 1, 2 or 3 where M may include a metal from Group 3, 4, 5, 6, or 7 and X is C, N or a combination thereof. (Abstract). Torita et al. teaches specific compounds for M include Sc, Ti, Zr, Hf. V, Nb, Ta, Cr, Mo and Mn. (par. [0054]).
With respect to the limitation “the compound is fabricated from a compound of MAX phase type according to claim 19”, the limitation refers to the process of making the claimed MXene using a compound having the MAX phase type. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113. Given that the MXene material of Torita et al. teaches all of the claimed structural features of the compound of claim 23, the claim is unpatentable “even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Torita et al. therefore anticipates or renders obvious the limitation “the compound is fabricated from a compound of MAX phase type according to claim 19”.
Regarding claim 24, Torita et al. discloses an MXene having the general formula Mn+1Xn where n= 1, 2 or 3 where M may include a metal from Group 3, 4, 5, 6, or 7 and X is C, N or a combination thereof. (Abstract). Torita et al. teaches specific compounds for M include Sc, Ti, Zr, Hf. V, Nb, Ta, Cr, Mo and Mn. (par. [0054]). Furthermore, the MXene may have the general formula Ti3C2Tx (par. [0060]) where T represents a terminal group including hydroxyl, fluorine, oxygen, hydrogen or a combination thereof. (Abstract).
With respect to the shape of the MXene, Torita et al. teaches that the material has two opposing surfaces of parallel planes (Abstract, par. [0062]-[0063], Fig. 3) and may be in the shape of a flakes, particles, powders and laminates of several MXene layers. (par. [0062]). The MXene structure has a maximum dimension parallel to the plane layer in the range of 0.1-200 micrometers with a maximum thickness of 0.1-200 micrometers. (par. [0063]). The aspect ratio implicitly taught would lie in the range of 1 to 2000 (0.1/0.1 to 200/0.1) based on the disclosure of the thickness and maximum planar dimension. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 28, Torita et al. discloses an MXene having the general formula Mn+1Xn where n= 1, 2 or 3 where M may include a metal from Group 3, 4, 5, 6, or 7 and X is C, N or a combination thereof. (Abstract). Torita et al. teaches specific compounds for M include Sc, Ti, Zr, Hf. V, Nb, Ta, Cr, Mo and Mn. (par. [0054]).
With respect to the limitation “obtained by the process of claim 6”, the method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113. Given that the MXene material of Torita et al. teaches all of the claimed structural features of the compound of claim 28, the claim is unpatentable “even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Torita et al. therefore anticipates or renders obvious the limitation “obtained by the process of claim 6”.
Claim Rejections - 35 USC § 103
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Torita (U.S. App. Pub. No. 2018/0338352).
Regarding claim 1, Torita et al. discloses an MXene having the general formula Mn+1Xn where n= 1, 2 or 3 where M may include a metal from Group 3, 4, 5, 6, or 7 and X is C, N or a combination thereof. (Abstract). Torita et al. teaches specific compounds for M include Sc, Ti, Zr, Hf. V, Nb, Ta, Cr, Mo and Mn. (par. [0054]). Furthermore, the MXene may have the general formula Ti3C2Tx (par. [0060]) where T represents a terminal group including hydroxyl, fluorine, oxygen, hydrogen or a combination thereof. (Abstract).
With respect to the shape of the MXene, Torita et al. teaches that the material has two opposing surfaces of parallel planes (Abstract, par. [0062]-[0063], Fig. 3) and may be in the shape of a flakes, particles, powders and laminates of several MXene layers. (par. [0062]). The MXene structure has a maximum dimension parallel to the plane layer in the range of 0.1-200 micrometers with a maximum thickness of 0.1-200 micrometers. (par. [0063]). The aspect ratio implicitly taught would lie in the range of 1 to 2000 (0.1/0.1 to 200/0.1) based on the disclosure of the thickness and maximum planar dimension. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 2, the MXene may have the general formula Ti3C2Tx (par. [0060]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 5712721490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 06/02/2026
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