DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. 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
The response dated 3/30/2026 has been received and will be entered.
Claim(s) 1-18 and 21 is/are pending.
Claim(s) 8 is/are currently amended.
Claim(s) 21 is/are new.
Claim(s) 19-20 is/are acknowledged as cancelled.
The action is FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/30/2026 was filed after the mailing date of the Non-Final Office Action on 1/9/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Claim Rejections – 35 U.S.C. §112
I. With respect to the rejection of Claim(s) 8 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, the Remarks traverse, but offer no traversal. (Remarks of 3/30/2026 at 7). As understood, the Remarks rely upon amendments. Id. This is persuasive. The rejection is WITHDRAWN.
Claim Rejections – 35 U.S.C. §103
I. With respect to the rejection of Claim(s) 1, 2, 3, 4, 9, 11, 12, 13, 14, 18, 19, and 20 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 __”), the traversal is on the grounds that “Song describes a fundamentally different process directed to different materials and different end products than KR ‘596, and a person of ordinary skill in the art would not have been motivated to combine the pulse parameter of Song with the laser-induced graphene process of KR ‘596.” (Remarks of 3/30/2026 at 8-9). This misstates the record. The In reference is not so limited. While teaching laser-induced graphene, In also teaches that a xenon flash lamp can be used. In literally states “a surface-irradiated light source such as a xenon flash lamp may be used.” (In [0048]). This was called out in the rejection and has not been addressed. All characterizations of In in the Remarks referring to only “laser induced graphene” are disputed / traversed as an inaccurate statement of the teachings of the reference. In contains many more teachings than those characterized in the Remarks. If it is Applicants contention that In does not teach “a surface-irradiated light source such as a xenon flash lamp may be used” (In [0048]), then Applicants are requested to provide their own translation. This is what the Examiner reads in In:
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(In [0048]). The translation of record is what will go up on appeal.
The Remarks further traverse on the grounds that “[t]he process of Song involves a specific combination of components” and the nanoparticles “are essential to the Song process because they serve as ‘nanoheaters for carbonization’ and, in the case of iron nanoparticles, as ‘catalyst for graphitization.’” (Remarks of 3/30/2026 at 9) (citations omitted). This misreads the rejection. The rejection is not “combining” the specific components of Song. The rejection is relying on operation of a common piece of equipment, the xenon lamp, described in one of the inventor’s own pieces of prior art. As discussed above (unless the Examiner’s translation from the EPO is incorrect), In teaches xenon lamps. Song, which is co-authored by inventor Watkins, states:
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]. For optimal experiments regarding films containing gold on poly ethylene terephthalate with a thin layer of indium-tin oxide (PET ITO), the pulse energy density and duration time were fixed at 1582 mJ/cm2 and 0.3 ms, and three repeats of a same light pulse applied (see Supporting Information for details).
(Song at 441, col. 1) (emphasis added). Song/Watkins teaches that this is a common piece of equipment, the Applicants having “reported [it] previously.” Song/Watkins goes on to teach repeating the light pulses. (Song at 441, col. 2). Song/Watkins does this to achieve the desired level of carbonization/graphitization. Id. (“Different repeats (4, 8, 12) of the light treatment are
used to disclose different stages of carbonization (Fig. 3). FTIR spectra (Fig. S16a) indicate incomplete carbonization in the sample treated with 4 repeats, while complete carbonization can be achieved by more repeats (8 and 12).”). The fact that Song adds a catalyst is immaterial, as In apparently graphitizes without a catalyst. This demonstrates the universality of the commonly employed xenon lamp. Furthermore, note that a catalyst is neither required nor excluded by the claims.
The Remarks argue no motivation. (Remarks 3/30/2026 at 10). Record evidence of a motivation is not required. MPEP 2143 (“In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.”). The Remarks argue a “conclusory statement” was made with no “rational underpinning,” etc. (Remarks of 3/30/2026 at 10). The Remarks however fail to state what was deficient. Contrary to alleged, numerous findings from both references were made. The rejection is reasserted as proper and relied on presumably highly credible evidence (that of an inventor) for the teachings regarding the xenon lamp. To argue a xenon lamp cannot be used with slightly different processes ignores the teachings of In (which teaches xenon lamps for making graphene), and ignores the teachings of Song / Watkins (which teaches xenon lamps for making graphene). This was not persuasive.
The Remarks argue the rationale improperly conflates distinct process and materials. Is this a test? Insofar as the Examiner is aware, it is not. Analogous arts is a test. The test for analogous art is “(1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).” MPEP 2141.01(a). The claims are drawn to making graphene. In makes graphene. (In Title; passim). Song / Watkins makes graphene. (Song at 441, col. 2: “Fig. 3c shows dense carbon nanoribbons around a NP consisted of a single to more than ten layers of graphene.”). They are from the same field of endeavor. Furthermore, the references are reasonably pertinent to the problems faced by the inventor, specifically scalability, expense and speed of execution. (S. 2: [0005]). In improves the adsorption area per unit volume (i.e. it is scalable). (In [0014]). Song teaches “rapid carbonization and graphitization over large areas at ambient bulk temperatures … while avoiding damage to the substrates.” (Song “Abstract”). Thus, one of ordinary skill in the art would look to the inventors own prior art because – according to the inventor - it addresses scalability (large areas), expense (large areas, avoiding damage to substrates), and speed (rapid carbonization and graphitization).
The arguments that “[t]he fact that pulse duration can be varied in Song’s specific nanoparticle-mediated process does not suggest that the same pulse durations would be appropriate for the laser-induced graphene process of KR ‘596” (Remarks of 3/30/2026 at 10) are not persuasive. This is not persuasive, as (a) the light pulse is repeated in Song (with a rationale for doing so) and (b) the claim contains no such restrictions on repeating the light pulses. The Remarks underline “[a] person of ordinary skill in the art would have no reasonable expectation that Song’s short or variable pulse duration, that is suitable for converting a precursor including nanoparticles that serve as heaters upon absorption of light energy and that serve as catalysts for graphene production, would be suitable for use in the process of ‘596 which is devoid of such nanoparticles.” (Remarks of 3/30/2026 at 10). This is not persuasive. As noted above, In teaches a xenon lamp in the EPO translation. In makes graphene without catalysts (i.e. a catalyst is not necessary). Song / Watkins teaches repeating light pulses, which is not excluded by the claim. There is a more than reasonable expectation of success.
The Remarks state “[t]he Office Action has not explained why a person of ordinary skill in the art, seeking to improve the laser-induced graphene process of KR’596, would look to the nano-article-mediated carbonization process of Song for guidance on pulse duration parameters.” (Remarks of 3/30/2026 at 10-11). Section 103 does not require “improvement” of the prior art. The issue is whether the differences between the claims and the prior art are obvious. 35 USC 103. Unless the EPO translation is incorrect, In clearly teaches the use of a xenon lamp. One of skill in the art would look to references teaching operation of a xenon lamp for details on how to operate a xenon lamp. The inventors have stated on and for the record that the xenon lamp provides tunability of the light intensity and millisecond times facilitate repeating light application steps to determine the degree of carbonization/graphitization. Apparently, this is not the only reference where the inventors discuss operation of the xenon lamp. None of these have been submitted, which is irregular. If there are more of the Inventors references discussing operation of the xenon lamp, the Examiner would consider them material to patentability. The Remarks make certain characterizations of the prior art, and about what they “concern.” (Remarks of 3/30/2026 at 11). Prior art is good for all it contains. MPEP 2123 I. The references speak for themselves. While omitted in the Remarks, In teaches a process for making graphene with a xenon lamp. Song / Watkins similarly teaches a process for making graphene with a xenon lamp. The fact that one employs a catalyst and another doesn’t simply demonstrates the universality of the xenon lamp in delivering heat to a process that needs it.
Unexpected results were argued. The Remarks state:
The present application describes that by using a pulsed high intensity light source with a pulse duration of less than one second, the method enables graphene formation on thermally- sensitive substrates. The specification at [0122] explains that "[g]iven that the source of the radiation is pulsed, with duration (on the order of milliseconds) shorter than the thermal equilibrium time of the preceramic polymers and the substrate, the precursor film will quickly heat up and pyrolyze before it can transfer significant energy to the substrate." This enables "the preparation of high-quality graphene and graphene composites on any substrate, including thermally sensitive substrates, and without the need for a catalyst." Present published U.S. application at [0121], and see also [0124].
(Remarks of 3/30/2026 at 11). In response, Song / Watkins teaches that the xenon lamp process provides rapid carbonization/graphitization at ambient bulk temperatures and avoids damage to the substrate. (Song “Abstract”). This is not an unexpected result. This is an expected result, which is evidence of obviousness. This was not persuasive.
The Remarks state:
The specification further explains at [0104] that the claimed method allows irradiation "at a temperature that is less than 100° C." and even "at room temperature or ambient temperature." The irradiation can include "substantially maintaining a pre-irradiation temperature of the polymeric graphene precursor throughout the irradiating" and "increasing a temperature of the polymeric graphene precursor by less than or equal to 100 C." This ability to form graphene while maintaining low bulk temperatures is a significant advantage that enables graphene formation on substrates that would be damaged by conventional high-temperature processes.
Neither KR '596 nor Song teaches or suggests this advantageous result. KR '596 describes a laser pyrolysis process for producing laser-induced graphene but provides no teaching regarding bulk substrate temperature management or the ability to process thermally-sensitive substrates.
(Remarks of 3/30/2026 at 11) (emphasis added). This takes a position inconsistent with an inventors piece of non-patent literature. Song / Watkins states: “This approach enables the rapid carbonization and graphitization of precursor films over large areas at ambient bulk temperature to yield functional films while avoiding damage to the substrates.” (Song “Abstract”). This was not persuasive.
The Remarks state:
Song similarly describes high-temperature processing, with TGA analysis conducted up to 700° C. Song at Fig. S7. Neither reference suggests that graphene could be formed while maintaining low bulk substrate temperatures.
(Remarks of 3/30/2026 at 11). In response, why does it matter if one reference carries out thermogravimetric analysis? This is not the process temperature. This is something else. The abstract teaches ambient bulk temperatures. See above. This was not persuasive.
The Remarks state:
A person of ordinary skill in the art, hypothetically having KR '596 and Song in hand, would not have predicted that the combination of a polymeric graphene precursor with a pulsed high intensity light source emitting at more than a single wavelength and with a pulse duration of less than one second would enable graphene formation on thermally-sensitive substrates while maintaining low bulk temperatures. This unexpected result is evidence of non-obviousness.
(Remarks of 3/30/2026 at 11). In response, this takes a position inconsistent with what an inventor has stated in a piece of non-patent literature. As noted above, repeating the light treatment gives rise to different stages of carbonization / graphitization:
Different repeats (4, 8, 12) of the light treatment are used to disclose different stages of carbonization (Fig. 3). FTIR spectra (Fig. S16a) indicate incomplete carbonization in the sample treated with 4 repeats, while complete carbonization can be achieved by more repeats (8 and 12).
(Song at 441, col. 2). Graphene formation is entirely predictable and expected.
The arguments are not persuasive. The rejection is MAINTAINED, updated to address cancelled claims.
II. With respect to the rejection of Claim(s) 5-6 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 Remarks rely on the arguments presented in traversing Claim 1. (Remarks of 3/30/2026 at 13). No substantive traversal was presented. Id. The analysis is presumed correct. The response above is relied upon. The rejection is MAINTAINED.
III. With respect to the rejection of Claim(s) 7 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 Remarks rely on the arguments presented in traversing Claim 1. (Remarks of 3/30/2026 at 13). No substantive traversal was presented. Id. The analysis is presumed correct. The response above is relied upon. The rejection is MAINTAINED.
IV. With respect to the rejection of Claim(s) 8 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 Remarks rely on the arguments presented in traversing Claim 1. (Remarks of 3/30/2026 at 13-14). No substantive traversal was presented. Id. The analysis is presumed correct. The response above is relied upon. The rejection is MAINTAINED.
V. With respect to the rejection of Claim(s) 2 and 10 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 Remarks rely on the arguments presented in traversing Claim 1. (Remarks of 3/30/2026 at 14). No substantive traversal was presented. Id. The analysis is presumed correct. The response above is relied upon. The rejection is MAINTAINED.
VI. With respect to the rejection of Claim(s) 15 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 Remarks rely on the arguments presented in traversing Claim 1. (Remarks of 3/30/2026 at 14-15). No substantive traversal was presented. Id. The analysis is presumed correct. The response above is relied upon. The rejection is MAINTAINED.
VII. With respect to the rejection of Claim(s) 16 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 Remarks rely on the arguments presented in traversing Claim 1. (Remarks of 3/30/2026 at 15). No substantive traversal was presented. Id. The analysis is presumed correct. The response above is relied upon. The rejection is MAINTAINED.
VIII. With respect to the rejection of Claim(s) 17 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 Remarks rely on the arguments presented in traversing Claim 1. (Remarks of 3/30/2026 at 15-16). No substantive traversal was presented. Id. The analysis is presumed correct. The response above is relied upon. The rejection is MAINTAINED.
IX. With respect to the rejection of Claim(s) 20 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 __”), cancellation of the claim moots the rejection. The rejection is WITHDRAWN .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
I. Claim(s) 1, 2, 3, 4, 9, 11, 12, 13, 14, 18, and 21 – 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.
As to Claim 21, as discussed above, In teaches a substrate. (In [0047], Fig. 2a). To the extent In may not teach the specific material now claimed, this difference does not impart patentability. In teaches that graphene is useful in supercapacitors, i.e. energy storage devices. (In [0006]). Song / Watkins teaches that “metal-substrate-supported carbon films are widely used as the electrodes for energy storage devices.” (Song at 441, col. 2). Song goes on to teach aluminum foils as a substrate. Id. Use of a known substrate, or a “widely used” substrate is an obvious expedient. One of ordinary skill in the art would be taught, suggested and/or motivated to use a metal substrate to make an electrode in an energy storge device, as taught by In (In [0006]) and Song / Watkins. (Song at 441, col. 2). Alternatively, or additionally, the combination reflects substitution of one known material (the metal substrates of Song / Watkins) for the generic substrate of In to achieve predictable results (graphene is grown on both). This does not impart patentability. MPEP 2143; KSR.
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, 10, and 21 – 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 and Claim 21, In teaches substrates. (In “Fig. 2a”). To the extent In may not teach what the substrate is made of, this does 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).
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.
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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