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 .
Applicant’s election without traverse of claims 1-10 in the reply filed on 01/26/2026 is acknowledged.
Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The disclosure is objected to because of the following informalities: “5-amino-napthol-1” should be “5-amino-naphthol-1”. Appropriate correction is required.
Claim Objections
Claim 5 is objected to because of the following informalities: “5-amino-napthol-1” should be “5-amino-naphthol-1” 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 1-10 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 1 contains the limitation “few-layer graphene flakes”. It is not clear what the metes and bounds of the limitation “few-layer”. The term “few” in the claim is a relative term which renders the claim indefinite. The term “few” 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. It is not clear how many graphene layers would need to be present to fall outside of the range “few-layer”.
Claims 2-10 are rejected as being dependent on claim 1.
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.
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 1-4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Garg et al. (WO 2018/195108) in view of Li et al. (U.S. App. Pub. No. 2013/0001089).
Regarding claim 1, Garg et al. discloses a hybrid nanomaterial comprising 3D out-of-plane single to few-layer fuzzy graphene on a scaffold that may be a Si-nanowire. (Abstract). Garg et al. therefore discloses a substrate comprising a nanowire and graphene comprising single to few-layer graphene flakes disposed on the surface of the nanowire as claimed. As shown in Fig. 1B and 2D the graphene flakes have an out of plane topography and are free-standing on the nanowire surface. (see also Abstract and par. [0005]).
Garg et al. does not disclose a functional group associated with the graphene.
Li et al. teaches a method of making graphene sheets including immersing the graphene into a solution containing an acid, anionic surfactant, salt, oxidizing agent or a combination thereof. (Abstract). Li et al. further teaches functionalizing the surface of the graphene with an acid or conducting polymer can improve the conductivity thereof. (par. [0015]).
It would have been obvious to one or ordinary skill in the art to functionalize the graphene material on the nanowire disclosed in Garg et al., as taught by Li et al.
One of ordinary skill in the art would have found it obvious to functionalize the graphene material of Garg et al. in order to impart different properties to the graphene material including improved conductivity. One of ordinary skill in the art would have found it obvious to improve the conductivity of the graphene material to improve the ability of the graphene to be used as a sensor or electrode material.
Regarding claims 2-3, Li et al. teaches modifying the graphene with poly(3,4-ethylenedioxythiophene) polystyrene sulfonate (PEDOT:PSS) to improve the conductivity thereof. (par [0015]). PEDOT:PSS would have a three-dimensional topography.
Regarding claim 4, in view of the teachings of Li et al. regarding modifying graphene to improve the conductivity thereof, the graphene supported on the nanowire as taught in Garg et al. would form a “minielectrode” as claimed.
Regarding claim 10, Garg et al. discloses that the nanowire includes silicon. (Abstract).
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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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 03/20/2026