DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶) where # denotes the page number and ¶ denotes the paragraph number of the pre-grant publication corresponding to this application, US 2024/0417263. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
This office action is in response to the papers as filed 4/18/2024.
Claim(s) 1-20 is/are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on:
4/22/2024 (4 pages)
4/22/2024 (8 pages)
4/18/2024 (3 pages)
are in compliance with the provisions of 37 CFR 1.97-1.98, except as noted below.
Applicants have filed this:
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The screen shot above is actually at 125%, i.e. it has not been reduced in size. This is clearly illegible and should not have been filed under the rules, which require legible copies. 37 CFR 1.98(a)(2). At best guess, at 300%+ magnification, this is the NPL cite no 47 on the 8 page IDS filed 4/22/2024. It has not been considered and is crossed off.
File legible copies so that they can be ““considered.””
Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 8 – or as stated below – is/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 8 recites a list of “polymeric graphene precursor[s]” in a Markush group. Arguably this is an improper Markush group given the disparate grouping of species that are not polymers, i.e. that do not share a single structural similarity or a common use. See MPEP 2117 II. This group includes a “carbon fiber,” which is clearly not a polymer. See Fitzer, et al., Recommended Terminology for the Description of Carbon As a Solid, Pure & Appl. Chem. 1995; 67(3): 473-506 (hereinafter “Fitzer at __”). Note definition of carbon fiber at (Fitzer at 481). Arguably oligomers, by definition, are not polymers. That being said, the Markush group recites “things that have carbon in them” that, when exposed to light as claimed, turn into graphene. Its unlikely that – however disparately claimed and lacking structural similarity these species are – a rejection would be affirmed. Claim 8 however does recite “resol” twice, which is clearly improper. If the second “resol” was intended to be blended and crosslinked, etc. with other species in some nested product-by-process limitation, then this is unclear. In such a case, some additional punctuation or indentation is needed to make clear what is going on with all of the disparate, dissimilar species being claimed.
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.
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.
I. Claim(s) 1, 2, 3, 4, 9, 11, 12, 13, 14, 18, 19, and 20 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2229596 to In, et al. in view of:
(i) Song, et al., Millisecond photothermal carbonization for in-situ fabrication of mesoporous graphitic carbon nanocomposite electrode films, Carbon 2021; 174: 439-444 (published online 18 December 2020, hereinafter “Song at __”).
Citation is to the machine translation accompanying the office action.
With respect to Claim 1, this claim requires “coating a polymeric graphene precursor on a substrate.” Coating a polymeric precursor on a substrate is taught. (In [0047]). The substrate is shown in Fig. 2a.
Claim 1 further requires “irradiating the polymeric graphene precursor coated on the substrate with a pulsed high intensity light source emitting at more than a single wavelength and with a pulse duration of less than one second, to convert the polymeric graphene precursor to the graphene film.” Irradiation with a pulsed light source is taught. (In [0048]). Multiple wavelengths are taught. Id. Graphene is produced. Id. As understood, a time of less than one second is not explicitly taught. This difference however does not impart patentability. As discussed below in the rejection of Claim 12, like the Applicant, In employs a xenon flash lamp. (In [0048]). In a similar process, Song – which would appear to share a co-inventor - teaches irradiating polymers with a xenon lamp. See (Song at 441: “During photothermal processing using the xenon flash lamp, light energy density is precisely tunable through the variation of voltage and/or pulse duration time as we reported previously [23].”) and (Song at 440) (discussing preparation of block copolymers that are then carbonized/graphitized with the xenon flash lamp). Millisecond times are reported. (Song “Title,” passim). Use of a known technique (carbonization/graphitization of polymers) with known equipment (xenon lamps) consistent with how they’ve been used (time / graphitization) to achieve predictable results (graphene) does not impart patentability. MPEP 2143; KSR. Note that Song acknowledges that graphene is made. (Song at 441, col. 1: “Fig. 3c shows dense carbon nanoribbons around a NP consisted of a single to more than ten layers of graphene.”). Furthermore, a co-inventor would appear to acknowledge in prior at that “[t]he light intensity was tunable via changing applied voltage and/or pulse duration time.” Tuning the pulse duration time is explicitly taught in the prior art by a co-inventor. This is not inventive.
As to Claim 2, Fig. 2a reasonably conveys depositing the polymer on a substrate of a different composition. (In Fig. 2a).
As to Claim 3, In teaches wavelengths of UV (ultraviolet), Vis (understood to be visible light) and IR (infrared). (In [0048]). At least UV and visible light reads on the claimed range. Official notice of the wavelengths of the EM spectrum is taken. This information is readily available from a variety of sources, so documentary evidence is not supplied. If requested, it will be.
As to Claim 4, the same claimed light source – a xenon lamp – is taught. The intensity is taught. (Song at S3, Table S1). The pulse energy (or energy density) and total areal density is taught. Id. A frequency of 1 Hz appears taught. (Song at 440: “This process includes three repeats of a same light pulse with a time interval of 1 s.”). As discussed above, a co-inventor has stated in the prior art: “[t]he light intensity was tunable via changing applied voltage and/or pulse duration time.” To the extent any values vary from those claimed, they are apparently readily optimizable.
As to Claim 9, polymers are taught. (In [0047]). The Office does not have the capability to measure the “absorption band” of these disclosed polymers. However, as they produce graphene with a xenon flash lamp (In [0048]), it is expected that the claimed absorption band is necessarily present. This is the rationale to show inherency. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
As to Claim 11, In teaches coating the polymer over graphene (a substrate) and irradiating. (In [0052]). To the extent this may not refer to the substrate recited in Claim 1, use of graphene as a substrate is clearly known. Using known components to achieve predictable results does not impart patentability. MPEP 2143; KSR.
As to Claim 12, a xenon flash lamp is taught. (In [0048]).
As to Claim 13, the examples reasonably convey irradiation in air and at room temperature. (In [0057] et seq.).
As to Claim 14, the examples reasonably convey irradiating/maintaining the temperature at less than 100 C. (In [0057] et seq.). Note that when In does heat something, In says something is heated. (In [0060]) (describing heating of the laser induced graphene).
With respect to Claim 18, this claim requires “coating a polymeric graphene precursor on a substrate that comprises a carbon fiber, carbon mesh, carbon fabric, carbon composite, graphene composite, graphene, a carbon film, or a combination thereof.” The discussion of Claim 1 and Claim 11 is relied upon.
Claim 18 further requires “the polymeric graphene precursor and the substrate have different chemical compositions.” Different compositions are taught. The discussion of Claim 1 and Claim 11 is relied upon.
Claim 18 further requires “irradiating the polymeric precursor coated on the substrate with a pulsed high intensity light source emitting at more than a single wavelength and with a pulse duration of less than one second, to convert the polymeric graphene precursor to the graphene film.” Irradiation is taught. The discussion of Claim 1 is relied upon.
With respect to Claim 19, this claim requires “[a] graphene film formed by the method of claim 1.” This is a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent they suggest structure or composition. MPEP 2113. Here, the claim suggests the presence of a graphene film. What is construed as a graphene film is taught. (In [0059]: “As shown in FIG. 2A, an intensity modulated CO2 laser beam (wavelength: 10.6 μm) was irradiated onto the PI film to prepare LIG (hereinafter, s-LIG).”). Note also the discussion of Claim 1.
With respect to Claim 20, this claim requires “[a]n electrochemical energy storage device, an electromagnetic shielding material, a chemical or biological sensor, a post-CMOS nanoelectronic device, a heat shielding material, a structural composite, a filter, or a combination thereof, comprising a graphene film formed by the method of claim 1.” Supercapacitors – interpreted as electrochemical energy storage devices – are taught. (In [0055]).
II. Claim(s) 5-6 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2229596 to In, et al. in view of:
(i) Song, et al., Millisecond photothermal carbonization for in-situ fabrication of mesoporous graphitic carbon nanocomposite electrode films, Carbon 2021; 174: 439-444 (published online 18 December 2020, hereinafter “Song at __”) and
(ii) Kaufmann, et al., Stamps, inks and substrates: polymers in microcontact printing, Polym. Chem. 2010; 1: 371-387 (hereinafter “Kaufmann at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 5, as understood, In would appear to teach a casting/spin coating process for placing the polymer on the substrate, versus the printing/lithography as claimed. (In Fig. 2a). At least microcontact printing of polymers is old and known. Official notice is taken. Kaufmann is provided as evidence. See (Kaufmann at 371, Abstract: “Polymers can be applied as inks in mCP so that microstructured polymer surfaces are obtained in a single printing step.”) and (Kaufmann at 371, col. 1: “Microcontact printing (mCP) is a sophisticated version of a simple stamping process that is familiar even to most children.”). The level of skill in the art is high, reasonably inferred from the art of record. One of skill in the art would be able to implement processes familiar to most children. The combination reflects application of known techniques to achieve predictable results. This does not impart patentability. MPEP 2143; KSR.
As to Claim 6, patterns are within the skill in the art. (Kauffman at 372, Fig. 1).
III. Claim(s) 7 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2229596 to In, et al. in view of:
(i) Song, et al., Millisecond photothermal carbonization for in-situ fabrication of mesoporous graphitic carbon nanocomposite electrode films, Carbon 2021; 174: 439-444 (published online 18 December 2020, hereinafter “Song at __”) and further in view of:
(ii) Polyetherimide, accessed online at https://en.wikipedia.org/wiki/Polyetherimide on 29 September 2025 (hereinafter “Polyetherimide at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 7, In teaches at least polyetherimide. (In [0047]). As understood, polyetherimide contains a disubstituted benzene. The Wikipedia entry is relied upon:
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(Polyetherimide at 1).
IV. Claim(s) 8 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2229596 to In, et al. in view of:
(i) Song, et al., Millisecond photothermal carbonization for in-situ fabrication of mesoporous graphitic carbon nanocomposite electrode films, Carbon 2021; 174: 439-444 (published online 18 December 2020, hereinafter “Song at __”), and further in view of:
(ii) US 2017/0062821 to Tour, et al.
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 8, as discussed above, In teaches polymers that are irradiated to make graphene. (In [0047]). In a similar process, Tour teaches polymers that can be irradiated to make graphene, and explicitly explains why it is necessary to cyclize polyacrylonitrile. (Tour 16: [0195]). Use of known materials consistent with their known uses does not impart patentability. MPEP 2143; KSR.
V. Claim(s) 2 and 10 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2229596 to In, et al. in view of:
(i) Song, et al., Millisecond photothermal carbonization for in-situ fabrication of mesoporous graphitic carbon nanocomposite electrode films, Carbon 2021; 174: 439-444 (published online 18 December 2020, hereinafter “Song at __”), and further in view of:
(ii) Ye, et al., Laser-Induced Graphene, Acc. Chem. Res. 2018; 51: 1609-1620 (hereinafter “Ye at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 2, Fig. 2a reasonably conveys depositing the polymer on a substrate of a different composition. (In Fig. 2a). However, to the extent it somehow doesn’t (no concession is made), substrates with different compositions are known in the art. The discussion of Claim 10 below is relied upon.
As to Claim 10, In teaches substrates. (In “Fig. 2a”). To the extent In may not teach what the substrate is made of, this dies not impart patentability. Other substrates – for example polymers and metals – are known in the art. (Ye at 1611, col. 1: “Solutions of PR and the dopant were spin-coated onto substrates including polymers, glass, paper, copper, silicon and plant leaves.”). Copper is a metal. Use of known materials to achieve predictable results does not impart patentability. MPEP 2143; KSR.
VI. Claim(s) 15 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2229596 to In, et al. in view of:
(i) Song, et al., Millisecond photothermal carbonization for in-situ fabrication of mesoporous graphitic carbon nanocomposite electrode films, Carbon 2021; 174: 439-444 (published online 18 December 2020, hereinafter “Song at __”), and further in view of:
(ii) Vilimova, et al., Polyaniline as a Precursor of Multi-Layer Graphene: Microscopic and Microspectroscopic Study, Journal of Nanoscience and Nanotechnology 2019; 19: 7736, 7737 (cited by Applicants, hereinafter “Vilimova at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 15, as discussed above, In teaches polymers. (In [0047]). To the extent In may not teach polyaniline, this difference does impart patentabitliy. Polyaniline is a known carbon source for making graphene. Vilimova is evidence. (Vilimova “Abstract,” passim). Use of a known material to achieve predictable results is obvious. MPEP 2143; KSR.
VII. Claim(s) 16 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2229596 to In, et al. in view of:
(i) Song, et al., Millisecond photothermal carbonization for in-situ fabrication of mesoporous graphitic carbon nanocomposite electrode films, Carbon 2021; 174: 439-444 (published online 18 December 2020, hereinafter “Song at __”), and further in view of:
(ii) US 2012/0277360 to Scheffer, et al.
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 16, as discussed above, graphene is taught. (In [0048]). While In dicusses conductivity throughout (In passim), the Office does not have the capability to reproduce the process of In, and then test the conductivity. However, as graphene is taught, it is expected that the conductivity is necessarily present. The claimed values are typical for graphene. (Sheffer 5: [0056]). This is the rationale to show inherency. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
VIII. Claim(s) 17 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2229596 to In, et al. in view of:
(i) Song, et al., Millisecond photothermal carbonization for in-situ fabrication of mesoporous graphitic carbon nanocomposite electrode films, Carbon 2021; 174: 439-444 (published online 18 December 2020, hereinafter “Song at __”), and further in view of:
(ii) Im, et al., Xenon Flash Lamp-Induced Ultrafast MultilayerGraphene Growth, Part. Part. Syst. Charact. 2017; 34: 1600429, pages 1-6 (cited by Applicants, hereinafter “Im at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 17, as discussed above, graphene is taught. (In [0048]). The Office does not have the capability to reproduce the process of In, and then carry out the spectroscopy measurements. To the extent In may not teach the properties claimed, it is expected that they are necessarily present. Im teaches graphene prepared by a similar process. At least the Id/Ig features are taught. (Im “Fig. 2(d),” accompanying text). This is the rationale to show inherency. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
IX. Claim(s) 20 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Fu et al., Graphene related materials for thermal management, 2D Mater. 2020; 7: 012001, pp. 1-42 (hereinafter “Fu at __”).
With respect to Claim 20, this claim requires “[a]n electrochemical energy storage device, an electromagnetic shielding material, a chemical or biological sensor, a post-CMOS nanoelectronic device, a heat shielding material, a structural composite, a filter, or a combination thereof, comprising a graphene film formed by the method of claim 1.” This is a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent they suggest structure or composition. MPEP 2113. Here, the claim suggests the presence of a graphene film. The preamble language is interpreted as an intended use. If Applicants believe otherwise, they are requested to state what structure is required for each limitation in the preamble. Graphene films are taught in any number of references. Fu is but one such reference. (Fu at 6, col. 1 – 3.1.2. Graphene film as heat spreader; passim). To the extent the preamble language is somehow limiting, Fu teaches heat spreaders, interpreted as a heat shielding material. Id.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736