DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgement has been made of applicant’s claim for priority under 35 USC 119 (a-d). The certified copy has been filed on 05/16/2024.
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed 05/16/2024 have been placed in the application file and the information referred to therein has been considered.
Drawings
The drawings received 05/16/2024 are acceptable for examination purposes.
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.
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Claim Rejections - 35 USC § 102
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.
Claim 7 is rejected under 35 U.S.C. 112(b) 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. In claim 7 it is unclear what kind of bonding is claimed: chemical bonding, electrostatic interaction adsorption or absorption? Foor examination purposes it is interpreted as any of mentioned above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Instant claim 1 recites metal or semiconductor particles while claim 5 which depends from claim 1 recites silicon oxide (SiOx including SiO or SiO2) which is not metal nor semiconductor. As such claim 5 seems broader than claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 1-7 are rejected under 35 U.S.C. 103 (a)(1) as anticipated by KR20180039984 to Yu (Yu, machine translation).
Regarding claim 1, Yu discloses a hybrid graphene electrode (Claim 8) provided with a graphene composite (claim 8) having a structure in which a plurality of micro particles and multi-layered graphene are mixed (claim 2), wherein the micro particles are semiconductor particles (silicon, claim 6, re claim 5) and adhere to the surface or inside of the multi-layered graphene (claim 2), some of the micro particles bond and coagulate with each other (para 9), the multi-layered graphene has a three-dimensional structure in which several layers of graphene are laminated and bent in an arbitrary direction (para 24), and a portion of empty spaces between the micro particles is filled with the multi- layered graphene (Fig. 1b), thus forming an interconnected structure, and electrons flow through the graphene composite (para 23, 49). As such claim 1 is anticipated by Yu.
Regarding claim 2, Yu discloses wherein graphene is coated on the surface of the micro particles (para 61).
Regarding claim 3, Yu discloses the invention as discussed above as applied to claim 1 and incorporated therein. Regarding the limitation: “the graphene composite is generated by photochemical or photothermal irradiation or heat treatment process”: In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. graphene composite, does not depend on its method of production, i.e. photochemical or photothermal irradiation or heat treatment. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Regarding claim 4: since Yu discloses charge/discharge process (para 74), the limitations of the instant claim 4 are inherently present. MPEP 2112 V states that "once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference."
Regarding claim 5, Yu discloses silicon and a copper foil (para 74).
Regarding claim 6, Yu discloses the invention as discussed above as applied to claim 1 and incorporated therein. Regarding the limitation:” a specific target material is detected by using an electrochemical reaction” Applicant sets forth the manner in which the claimed apparatus operates. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. See MPEP § 2114. In the instant case, Yu discloses all structural limitations of the instant claim 1, therefore the electrode of Yu is fully capable to perform acclaimed function. As such, the instantly claimed apparatus is unpatentable over the cited prior art.
Regarding claim 7, Yu discloses the invention as discussed above as applied to claim 1 and incorporated therein. Regarding the limitation: “lithium (Li) ions are bonded to and separated from the graphene composite to cause charging and discharging”: since Yu discloses substantially similar structure as that in the instant claim 1, the above limitation of the instant claim 7 are inherently present. Products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the specific output energy density), is necessarily present in the prior art material. The courts have held that “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.
Alternatively, claims 1 and 5 are rejected under 35 U.S.C. 103 (a)(1) as anticipated by WO 2013031993 to Kyotami (Kyotami, machine translation).
Regarding claim 1, Kyotami discloses a hybrid graphene electrode (claim 8) comprising a graphene metal composite having a structure in which a plurality of fine metal particles and multilayer graphene are mixed, wherein the fine metal particles have a silver or copper surface (re claim 5) coated with silver (para 53, para 60) are bound to the surface or the inside of the multilayer graphene, some of the fine metal particles are interconnected and solidified (para 53) the multilayer graphene has a three dimensional structure in which a plurality of layers of graphene are laminated and bent in an arbitrary direction (para 18, claim 1), and a part of the empty space between the fine metal particles is filled with the multilayer graphene layer and interconnected (para 59) As such instant claim 1 is anticipated by Yu.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER USYATINSKY whose telephone number is (571)270-7703. The examiner can normally be reached IFP.
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/Alexander Usyatinsky/Primary Examiner, Art Unit 1751
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