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 .
Response to Amendment
The preliminary amendment filed on 06/14/2024 is entered and acknowledged by the Examiner. Claims 1-18 have been canceled. New claims 19-38 have been added and are currently pending in the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 06/14/2024 is in compliance with the provisions of 37 CFR 1.97 and has been considered by the examiner. An initialed copy accompanies this Office Action.
Drawings
The drawings filed on 06/14/2024 have been considered.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 19-25 and 27-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-12 of U.S. Patent No. 12,046,420 B2 (hereinafter US’420). Although the claims at issue are not identical, they are not patentably distinct from each other because US’420 discloses an engineered material comprises a first layer comprising graphene formed from a graphene precursor and a second layer comprising glassy carbon formed from a glassy carbon precursor wherein the first layer is applied on top of the second layer (See claims 1 and 9 of US’420). US’420 anticipates the claimed invention.
Claims 19-30, 33, 34, and 36-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 7-15 of U.S. Patent No. 11,515,099 B2 (hereinafter US’099). Although the claims at issue are not identical, they are not patentably distinct from each other because US’099 discloses an engineered material comprises a first layer comprising graphene and a second layer comprising glassy carbon wherein the first layer is applied on top of the second layer (See claims 1-2 of US’099). US’099 anticipates the claimed invention.
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.
Claims 19-25 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by an article to “Composite materials {glassy carbon/graphene/zero-valent metal (Pd0)} for building three-dimensional redox electrodes” (hereinafter Jouikov).
Regarding claims 19 and 27, Jouikov discloses a graphene layer on a glassy carbon layer useful as an electrode (See Abstract; Page 36, Scheme 1; Conclusion Section). The graphene layer is inherently formed from a graphene precursor and meets the claimed first layer. The glassy carbon is inherently formed from a glassy carbon precursor and meets the claimed second layer. Jouikov discloses a structure having the graphene layer (claimed first layer) is applied on top of the glassy carbon layer (claimed second layer) as claimed. Therefore, the electrode of Jouikov meets the claimed engineered material.
Regarding claim 20, Jouikov discloses a substrate including silicon carbide paper (See page 35, right column, 2nd full paragraph). The silicon carbide paper of Jouikov fulfills the claimed third layer comprising a silicon substrate.
Regarding claim 21, the graphene layer on a glassy carbon layer of Jouikov is formed on silicon carbide paper substrate (See page 35, left column, 2nd full paragraph). Thus, the glassy carbon layer (claimed second layer) on a silicon substrate (claimed third substrate).
Regarding claims 22-25, Jouikov discloses that the electrode (claimed engineered material) is useful in electrochemical and energy-related fields (See page 35, left column). The electrochemical and energy-related fields encompasses of energy storage device and capacitor as recited in claims 22-23. These devices are commonly known to have two electrodes (cathode and anode) in contact with an electrolyte as recited in claim 24. Thus, the outer most layer of the electrode, i.e., claimed first layer of graphene, is in contact with the electrolyte as recited in claim 25.
The reference specifically or inherently meets each of the claimed limitations in their broadest interpretations. The reference is anticipatory.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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.
Allowable Subject Matter
Claims 26 and 28-33 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.
Claims 34-38 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: currently, there is no prior art alone or in combination that teaches or fairly suggests a method for fabricating an engineered material to form the claimed structure as recited in claim 34. Therefore, claim 34 is allowable over the prior art of record.
Claims 35-38 directly or in indirectly depend from claim 24 and are allowable based on their dependencies.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHANH T NGUYEN/Primary Examiner, Art Unit 1761