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 .
Specification
The disclosure is objected to because of the following informalities:
Claim 3 describes the intensity of the D peak and the G peak. The specification references these, but never states what these peaks are and/or demonstrates them in a figure.
Appropriate correction is required.
Claim Objections
Claims 1, 5, 7 are objected to because of the following informalities:
Claim 1, line 1, it is suggested to add “A” prior to “graphene oxide”.
Claim 5, line 1, it is suggested to add “A” prior to “Graphite oxide”.
Claim 7, line 1, it is suggested to add “A” prior to “Reduced”.
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.
Claim 3 is 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 3, line 1 describes a D peak and a G peak, but it is unclear what these are. Further description is requested.
Claim Rejections - 35 USC § 102
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 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(s) 1, 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Todoriki (US Pub.: 2013/0266859).
Todoriki describes a graphene oxide (title) that includes a single layer or multiple layers of graphene, which are then oxidated to form graphene oxide (para. 13). In tables, Todoriki describes the amount of oxygen in atomic %s in the graphene and table 2 shows that in all samples, the amount of oxygen in terms of atomic % ranges from 23.4 to 32.5 (Table 2).
MPEP states that prior art which teaches a range overlapping or touching the claimed range anticipates if the prior art range discloses the claimed range with “sufficient specificity.” See 2131.03.
As to Claim 2, Todoriki teaches that the O/C ratio in the samples ranges from 0.487-0.311 (para. 229).
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.
Claim(s) 5, 7 s/are rejected under 35 U.S.C. 103 as being unpatentable over Todoriki.
Todoriki describes processing graphite to make graphite oxide and that the graphite oxide is made up of a plurality of graphene layers, which can be separated to make graphene oxide (para. 90).
As to Claim 7, this feature contains product by process features. Nonetheless, Todoriki teaches adding H2O2 at the end of the process of making (see para 90, 227). H2O2 can be considered a reducing step to reduce the graphene oxide.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Todoriki as applied to claim 1 above, and further in view of Jaio (CN 108622885).
Todoriki describes the method of making their graphene oxide, which applies sulfuric acid and potassium permanganate as an oxidizing source to the graphene (para. 227), followed by the addition of H2O2 solution (para. 227). This process adds oxygen into the layers of the graphite (para. 90).
Todoriki does not describe what the ratio of the intensity of the D peak divided by the intensity of the G peak in a Raman spectrum would be.
Jiao describes a graphene oxide material (abstract). Jiao explains that the graphene oxide is made by use of a solution of sulfuric acid (page 3, step 1), followed by a solution of potassium permanganate, followed by a solution of hydrogen peroxide (step 2).
When the product made is analyzed under a Raman spectrum, Jiao explains that the peak ratio of the D peak and G peak is 0.88 (see Fig. 2 and page 7, lines 9-12).
Given that the product made in Jiao employs the same processing features of oxidation (sulfuric acid combined with potassium permanganate), followed by the reduction step (solution of H2O2), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that use of this process would produce the same D peak/G peak ratio of about 0.88 in Todoriki because Jiao explains that use of these reagents in this order for the same purpose is known to produce these Raman spectrum characteristics.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Todoriki as applied to claim 1 above, and further in view of Kong (CN 112624099).
The specification of this application explains that raw graphite exhibits a peak at about 26.3° (published specification, para. 34) , but as the distance between the layers of graphite are increased, the peak point shifts to the left in the XRD graph (published specification, para. 34).
Kong describes an oxidized graphene product (title) that is made by adding a solution of sulfuric acid and potassium permanganate to a graphite mixture (abstract), followed by adding a solution of H2O2 to the solution to obtain graphene oxide (abstract). When analyzed under an SCR test, the graphene oxide shows a strong diffraction peak at 10 degrees (see Fig. 1) and no significant peak in other areas (see page 4, para. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that use of the same process steps with the same compositions to make the same graphene oxide would produce the same XRD pattern, showing a peak at 10 degrees without a significant peak in any other area, as taught by Kong for use with the process of Todoriki because Kong explains that the pattern in Fig. 1, showing a peak at 10 degree and no significant peak in any other area is a typical characteristic peak for graphene oxide.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Todoriki as applied to claim 5 above, and further in view of Guo (CN 11106320).
The references do not teach the features of Claim 6.
Guo describes a graphene oxide material (page 4, lines 15-20) made using a sulfuric acid, potassium permanganate oxidation step, followed by a H2O2 step (page 4, lines 15-21). The graphene oxide is further fused with other compounds for use in electrode materials (page 4, lines 43-45). The use of this compound produces good cycling stability and rate performance (page 4, lines 43-46). When analyzed under an XRD analysis, Guo explains that the oxygen-containing functional groups attached to the graphene sheet layer form a distance of 0.7nm between the sheets (page 6, para. 1). The increased interlayer distance is caused by the oxygen-containing functional groups (page 6, para. 1). The distance is caused by a high number of these functional groups between the layers (Example 1, para. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a high number of oxygen-containing functional groups between the graphene layers, to cause a distance between the layers of about 0.7nm, as taught by Guo for use with the product of Todoriki because this product is known to produce a graphene oxide product that has good cycling stability and rate performance.
Claim(s) 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chhowalla (US Pub.: 2019/0276319).
Chhowalla describes a graphene oxide (abstract) that is reduced (abstract) and contains 5 atomic% of oxygen (para. 46).
As to the product-by-process features of Claim 7, the courts have held that “[E]ven 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 does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Chhowalla meets the requirements of the claimed product, Chhowalla clearly meets the requirements of the present claim.
Claim(s) 7, 9, 10, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Todoriki (US Pub.: 2013/0266859) and in view of Chhowalla (US Pub.: 2019/0276319).
The specification of this application explains that the obtained reduced graphene oxide is reduced by using a graphene oxide with a low oxygen ratio (see published specification para. 38) and reduced under known conditions, such as microwave (published specification, para. 66). The method of oxidizing the graphene share the same process features as the Hummer’s method (see published specification, para. 44, 47, 48).
Todoriki describes a graphene oxide (title) that may be made using a Hummer’s method (para. 90). The reference describes an oxygen content of 23-32at% (see table 2).
Todoriki does not describe further reducing this graphene oxide.
Chhowalla describes a graphene oxide that is reduced using microwave (title). The reference explains in the background that it is known to obtain oxidized graphite that is later formed into monolayers of graphene oxide (para. 4). The removal of oxygen groups to produce a reduced form of graphene oxide is known to produce a highly disordered material (para. 4). Although even in a disordered form, the graphene oxide is still useful for a number of processes, production of a graphene oxide that has been more efficiently reduced can lead to improved performance results (para. 4).
Therefore, as a result, Chhowalla teaches making a graphene oxide by known methods, such as the Hummer’s method (para. 7). The product is then treated using a microwave method to reduce the graphene oxide (para. 13). This method reduces the oxygen concentration in the graphene oxide to about 5at% or less (para. 13). Prior to use of a microwave reducing means, Chhowalla teaches that the atomic percent in the graphene oxide is from 15-25 at% (para. 48). Following microwave reduction, Chhowalla teaches that the oxygen content is about 0.5at% (para. 49).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to reduce the graphene oxide of Todoriki using a microwave reducing agent, as taught by Chhowalla in order to reduce the oxygen content from an already lower range of oxygen (23-32at%) to an even lower range (5at% of oxygen) because Chhowalla explains that this produces a superior graphene oxide that produces improved performance in a variety of uses.
As to Claims 9, 10 and 11, although Todoriki and Chhowalla do not specifically describe the characteristics described in Claims 9, 10 and 11, since the process of making the product have the same features and are used to make the same product, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same method of making the same product would exhibit the same features.
Conclusion
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 September 11, 2026
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