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 .
DETAILED ACTION
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.
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 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 48-49, 53-55, 57-58, 60-62, and 64-67 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (US Patent Application 2011/0033677 A1, published 10 Feb. 2011, hereinafter Shin).
Regarding claims 48-49, 53-55, 57-58, 60-62, and 64-67, Shin teaches a graphene base comprising graphene and a substrate (Abstract). Shin teaches the graphene is chemically bonded to the substrate by a covalent bond (paragraph 0055). Shin teaches the substrate is metal (paragraph 0062). Shin teaches that the evenness and the content of defects in the graphene is determined by Raman spectroscopy (paragraph 0056), and the graphene has a substantially perfect (e.g., defect free) texture (paragraph 0057). Shin teaches that the carbon-based material is formed on the entire surface of the substrate (paragraph 0068).
Shin teaches the graphene molecular precursor is pentacene, phenyl trichlorosilane, anthracenyl trichlorosilane, phthalocyanyl trichlorosilane, halogenated tetracene, acene or derivatives, anthracene or derivatives, heteroanthracene (such as benzodithiophene or dithienothiophene) or derivatives, tetracene or derivatives (such as halogenated tetracene, a tetracene derivative having a polar substituent, rubrene, alkyl-substituted tetracene or alkoxy-substituted tetracene), heterotetracene or derivatives thereof, pentacene or derivatives (such as alkyl-substituted or halogen-substituted pentacene, aryl-substituted pentacene, alkynyl-substituted pentacene, alkynyl-substituted alkylpentacene, alkynyl-substituted alkynyl pentacene, or alkynyl-substituted pentacene ether), heteropentacene or derivatives, or heteroacene or derivatives, or a combination comprising at least one of the foregoing (paragraph 0083).
These multiple phenyl and fused benzene ring compounds and their derivatives represent compounds A, B, C, D, and E, with tethering groups of halogens, alkyl groups, aryl groups, and alkynyl groups.
Shin teaches coating the carbon-based material on the substrate (paragraph 0069) via a vacuum-deposition method (paragraph 0086), adding a graphitization catalyst layer (paragraph 0070), and then the carbon-based material is thermally treated so the carbon-based material is graphitized (paragraphs 0090). Shin teaches the number of layers of graphene on the substrate can range from 1 to 300 (paragraph 0054). Shin teaches that the graphene base is used in field emission displays, liquid crystal displays, or organic light emitting devices (paragraph 0097).
Shin teaches the thermal treatment is performed at 400 to 2,000°C (paragraph 0091).
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a thermal treatment temperature from the overlapping portion of the range taught by Shin because overlapping ranges have been held to be prima facie obviousness.
In light of the overlap between the claimed method for coating a metal surface with graphene and that disclosed by Shin, it would have been obvious to one of ordinary skill in the art to use a method for coating a metal surface with graphene that is both disclosed by Shin and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim 63 is rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (US Patent Application 2011/0033677 A1, published 10 Feb. 2011, hereinafter Shin) in view of Kozbial et al (“Study of the surface energy of graphene by contact angle measurement,” Langmuir, Vol. 30, pp. 8598-8606, published 01 Jul. 2014, hereinafter Kozbial).
Regarding claim 63, Shin teaches the elements of claim 48.
Shin does not teach the measurement of the contact angle of graphene.
Kozbial teaches measuring the contact angle of graphene (Abstract).
Given that Shin and Kozbial are drawn to graphene layers on metals, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to measure the contact angle as taught by Kozbial of the graphene sheet taught by Shin. Since Shin and Kozbial are both drawn to graphene sheets on metal substrates, one of ordinary skill in the art would have a reasonable expectation of success in measuring the contact angle as taught by Kozbial of the graphene sheet taught by Shin. Further, Kozbial teaches that by measuring the contact angle one can determine the existence of hydrocarbon contamination on the graphene (Abstract).
Claims 48, 53-55, 58, and 60-61, and 64-67 are rejected under 35 U.S.C. 103 as being unpatentable over Veerasamy (US Patent Application 2011/0143045 A1, published 16 Jun. 2011, hereinafter Veerasamy).
Regarding claims 48, 53-55, 58, and 60-61, and 64-67, Veerasamy teaches the large area deposition of graphene on substrates, formed by a polycyclic aromatic hydrocarbon (PAH) (Abstract) such as anthracene having alkyl and hydroxy groups (paragraphs 0014 and 0084). Veerasamy teaches the material may be deposited in a vacuum (paragraph 0114), and the graphene may be grown layer-by-layer (paragraph 0115). Veerasamy teaches that di-chloro-silane benzophenone is an anchoring agent, and this agent is attached to metal (paragraph 0113). In light of the above, Veerasamy necessarily discloses compounds A, B, C, D, and E as claimed. Veerasamy teaches his graphene-based layers may be used in many different types of electronic devices (paragraph 0118). Veerasamy teaches his graphene coating may incorporate one or more graphene-based layers (paragraph 0127). Veerasamy teaches monolayers of PAHs are present, graphene formation occurs when heated in vacuum, and the anchoring agent anchors the PAH molecules to the substrate via a covalent bond (paragraphs 0012, 0089, and 0097). Veerasamy teaches studying the growth of his graphene films using Raman spectroscopy (paragraph 0105). Veerasamy teaches that the defect density of his graphene films was below the detection limit of his Jobin-Yvon Raman spectrometer; therefore, it is the examiner’s position that the defect density was below the claimed defect density ratio of 1x10-10 defects/cm2 and the defect occurrence was below the claimed defect occurrence of 1x1012 defects/cm2.
In light of the overlap between the claimed method for coating a metal surface with graphene and that disclosed by Veerasamy, it would have been obvious to one of ordinary skill in the art to use a method for coating a metal surface with graphene that is both disclosed by Veerasamy and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim 63 is rejected under 35 U.S.C. 103 as being unpatentable over Veerasamy (US Patent Application 2011/0143045 A1, published 16 Jun. 2011, hereinafter Veerasamy) in view of Kozbial et al (“Study of the surface energy of graphene by contact angle measurement,” Langmuir, Vol. 30, pp. 8598-8606, published 01 Jul. 2014, hereinafter Kozbial).
Regarding claim 63, Veerasamy teaches the elements of claim 48.
Veerasamy does not teach the measurement of the contact angle of graphene.
Kozbial teaches measuring the contact angle of graphene (Abstract).
Given that Veerasamy and Kozbial are drawn to graphene layers on metals, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to measure the contact angle as taught by Kozbial of the graphene sheet taught by Veerasamy. Since Veerasamy and Kozbial are both drawn to graphene sheets on metal substrates, one of ordinary skill in the art would have a reasonable expectation of success in measuring the contact angle as taught by Kozbial of the graphene sheet taught by Veerasamy. Further, Kozbial teaches that by measuring the contact angle one can determine the existence of hydrocarbon contamination on the graphene (Abstract).
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 48, 57, 64, and 66-67 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27, 32-33, 37, 41, and 44 of copending Application No. 18/835,836. Although some of the claims at issue are not identical, they are not patentably distinct from each other because of overlapping ranges. As shown in Table 1, the claims and their interdependencies are identical or not patently distinct to corresponding claims in co-pending Application 18/835,836.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Table 1: Listing of corresponding claims for double patenting rejections
Application 18/692,223
Co-Pending Application 18/835,836
Claim 48. A method for coating a metal surface with graphene comprising the steps of obtaining a metal having a surface; obtaining a first graphene molecular precursor comprising at least one compound selected from the group consisting of: compound A having molecular formula I compound B having molecular formula II wherein, G is a C6-C100 hydrocarbon component, X1 is a tethering group to the surface of the metal material, X2 is selected from at least one of: a tethering group to a graphene surface X2G, a tethering group to a metal layer X2M, and a tethering group to a non-metal layer X2N Y1, Y2 are independently selected from the group consisting of hydrogen, halogen radical, hydroxyl and -COOH and i, j, m and n are independent integer numbers having a value selected between 1 and 20, depositing said first graphene molecular precursor on top of the metal surface to obtain a surface at least partially coated with the at least one graphene molecular precursor and bound to the at least one graphene molecular precursor; and transforming the deposited first graphene molecular precursor into a surface bound graphene interfacial layer, to obtain a graphene coated metal surface comprising a graphene interfacial layer bound to the surface of the metal.
Claim 27. A method for coating a surface with graphene comprising the steps of obtaining a material having a surface and positioning said material in a reaction chamber; obtaining a graphene molecular precursor comprising at least one C6-C100 aromatic hydrocarbon, injecting the graphene molecular precursor from a reservoir into the reaction chamber and depositing said graphene molecular precursor on top of the surface of the material to obtain a surface at least partially coated with the at least one graphene molecular precursor; and transforming the deposited graphene molecular precursor into a surface graphene coating to obtain a graphene coated surface.
Claim 32. The method according to claim 27 wherein the graphene molecular precursor
comprises at least one of: (i) a C6-C100 hydrocarbon being derivatized by a tethering group;
and (ii) at least one compound selected from the group consisting of: compound A having molecular formula I compound B having molecular formula II compound C having formula III wherein, G1 is a C6-C100 hydrocarbon component, X1 is a first tethering group, X2 is a second tethering group Y1, Y2 are independently selected from the group consisting of hydrogen, halogen radical, -CCH, hydroxyl and -COOH and i, j, m and n are independent integer numbers having a value selected between 1 and 20.
Claim 57. The method of claim 48 wherein X2G is selected from the group consisting of C6-C20 aryl unsubstituted or substituted by an electron withdrawing group, C6-C20
substituted or unsubstituted heteroaryl, -R1X, -NR3R4, -R1COOH, -R1SO3R2, and -R1PO3H2, wherein R1 is selected from a bond, C1-s saturated or unsaturated, substituted or unsubstituted alkyl, Xis selected from -OH, -Cl, -Br, -F, or-I, R3 and R4 are independently selected from H, C1-s saturated or unsaturated optionally derivatized alkyl.
Claim 33. The method according to claim 32 wherein Y1 is halide.
Claim 64. The method of claim 48, wherein at least one of the following holds true: (i) the graphene coating being bound to the metal surface by covalent bonds; (ii) the graphene coating defect ratio is lower than lE-10 defects/cm2; and (iii) the graphene coated metal material is for use in a device selected from the group consisting of interconnection, a device selected from back end of lines (BEOL), nano-electro mechanical device; Organic LED, transparent conductive electrodes, electro-optical sensor, graphene transistor, or a high conduction interconnect.
Claim 37. The method according to claim 27 wherein the number of defects in the formed graphene coating is lower than IE-10 /cm2.
Claim 66. The graphene coated metal surface according to claim 65 further characterized by at least one of: (i) a graphene defect density equal to or lower than 1012 defects per cm2; (ii) essentially free of catalytic metal residue; (iii) graphene coverage higher than 90%; (iv) comprises at least two layers of graphene coatings; (v) comprising at least a graphene interfacial layer bound to the surface of the metal material and a top graphene coating positioned above the bottom graphene coating; (vi) comprises between 2-6 layers of graphene; (vii) comprises a bond between two adjacent graphene coatings; (viii) comprises a bond selected from a covalent bond and a re-re interaction between two adjacent graphene coatings; (ix) a top graphene layer of the graphene coating is bound to a surface of a material deposited on top of said top graphene layer.
Claim 37. The method according to claim 27 wherein the number of defects in the formed graphene coating is lower than IE-10 /cm2.
Claim 67. A device comprising a graphene coated metal surface of claims 66.
Claim 41. A product comprising a graphene coated surface obtainable by the method of claim
27.
Claim 44. A device comprising the product according to claim 41.
Allowable Subject Matter
Claims 50-52, 56, and 59 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Shin, Veerasamy, Kozbial, and Lee (cited below) do not disclose the relative amounts of the graphene precursors, the tethering of one graphene layer to another, the claimed tethering groups listed in claim 56, nor the use of basic and acidic tethering groups.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lee et al. (US Patent Application 2015/0023860 A1, published 22 Jan. 2015, hereinafter Lee) teaches a graphene-like nanosheet that are covalently carbide bonded to a metal substrate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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/JOHN VINCENT LAWLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787