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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1, 15, 138, 187-192, drawn to a process for synthesizing graphene, classified in C01B32/184.
II. Claims 146-147, 193, drawn to a bulk material, classified in H01B1/04.
III. Claims 194-201, drawn to an apparatus, classified in C01B32/29.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product as claimed can be made by another process.
Inventions III and II are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another and materially different apparatus (MPEP § 806.05(g)). In this case, the product can be made by another and materially different apparatus.
Inventions I and III are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the apparatus as claimed can be used to practice another process.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and
(c) the prior art applicable to one invention would not likely be applicable to another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Ross Spencer Garsson on February 26, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1, 15, 138, 187-192. Affirmation of this election must be made by applicant in replying to this Office action. Claims 146-147, 193, 194-201 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 1, 15, 138, 187-189 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,054,391. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Patent No. 12,054,391 claims a process for synthesizing graphene comprising applying voltage pulse across a conductive carbon source that is not graphene, heating the conductive carbon source material into graphene, wherein the conductive carbon source comprising a conductive additive that renders the conductive carbon source to have a conductivity greater than 10-5 S/cm; the process is a continuous process of moving the conductive carbon source and the synthesized graphene, the movement of the conductive carbon source and the synthesized graphene is synchronized to applying the voltage pulse across the conductive carbon source (Claim 1-4). It is clear that all of the elements of the instant claims 1, 15, 138, 187-189 are to be found in US Patent No. 12,054,391, claims 1-4. The difference between the instant claims and claims 1-4 of US Patent No. 12,054,391 lies in the fact that US Patent No. 12,054,391 claims are much more specific. Since, instant claims 1, 15, 138, 187-189 are anticipated by claims 1-4 of US Patent 12,054,391, it is not patentably distinct from claims 1-4 of US Patent No. 12,054,391.
Claims 190-192 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,054,391 in view of Tour et al (WO Patent 2016/133571).
US Patent No. 12,054,391 claims a process for synthesizing graphene comprising applying voltage pulse across a conductive carbon source that is not graphene, heating the conductive carbon source material into graphene, wherein the conductive carbon source comprising a conductive additive that renders the conductive carbon source to have a conductivity greater than 10-5 S/cm; the process is a continuous process of moving the conductive carbon source and the synthesized graphene, the movement of the conductive carbon source and the synthesized graphene is synchronized to applying the voltage pulse across the conductive carbon source (Claim 1-4).
In the same field of endeavor, Tour et al teaches producing graphene by exposing a graphene precursor material to a laser source (Abstract). Tour et al further teaches the laser sources are operated by controlling the power and pulse of the laser sources (Paragraphs 69-74). Tour et al further teaches automated processing lines to form the graphene from the graphene precursor material (Paragraph 76). Tour et al further teaches graphene precursor materials including carbon base materials, polymers, amorphous carbon and mixtures thereof (Paragraphs 56, 61). Tour et al further teaches pseudocapacitive materials including graphene-PANI composites or composite comprising polymers, metals and metal oxides (Abstract, Paragraphs 108-112, 164).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided forming composite material comprising the graphene in US Patent No. 12,054,391 in view of Tour et al in order to form a pseudocapacitive material for electronic devices as taught in Tour et al. With respect to the amount of graphene in the composite material, it would only be obvious to one of ordinary skill in the art to optimize/adjust the amount of the graphene in the composite material depending on the type of electronic device that is being produced. Where general conditions of a claim are disclosed in the prior art it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller 220 F.2d 454, 105 USPQ 233 (CCPA 1955). A prima facie case of obviousness may be established even though a prior art reference does not disclose any particular range, but teaches that the claimed parameters are known to affect results or properties. In re Boesch 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 15, 187, 189 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jung et al (WO Patent 2016/040948 (already of record)).
Regarding claims 1, 15, 187, 189, Jung et al teaches applying pulsing voltage and current with heating conditions to carbon nanotubes and transforming into layers of graphene by controlling the electrical parameters such as voltages, pulse magnitude, amplitude, number of cycles and duty of cycles (wherein carbon nanotubes inherently have a conductivity of greater than 10-5 S/cm and satisfies the conductive carbon source comprises less than 50% graphene as less than 50% includes 0 as a lower limit) (Abstract, Pg. 2, Lines 5-22, Pg. 9, Lines 1-30, Pg. 17, Lines 9-12, Figure 4B). Jung et al further teaches forming a composite material comprising the graphene material produced (Pg. 6, Lines 12-15).
Jung et al teaches the same method as the instant claims; hence, Jung et al anticipates the claims.
Claims 1, 187 and 189 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Odagawa et al (US Patent Application 2014/0134409 (already of record)).
Regarding claims 1, 187, 189, Odagawa et al teaches applying a pulsing voltage or current and heat to a carbon film to form a single or multi-layer graphene (the carbon film inherently has a conductivity greater than 10-5 S/cm) (Abstract, Paragraphs 21, 32, 92, 101). Odagawa et al further teaches the formation of the film can be controlled by controlling the conditions for electrical application/intensity of the voltage or current applied or application time (Paragraphs 43, 101)
Odagawa et al teaches the same method as the instant claims; hence, Odagawa et al anticipates the claims.
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.
Claims 138, 188, 190-192 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al (WO Patent 2016/040948 (already of record)) as applied to claims 1, 15, 187, 189 above, and in further view of Tour et al (WO Patent 2016/133571 (already of record)).
Regarding claims 138, 188, 190-192, Jung et al discloses the invention substantially as claimed. Jung et al teaches the features above. However, Jung et al fails to specifically disclose moving the conductive source and graphene in synchronized form to apply voltage to the conducive source, a mixture of a conductive carbon source mixed with a polymer material to form the graphene material, forming composite materials comprising the graphene.
In the same field of endeavor, Tour et al teaches producing graphene by exposing a graphene precursor material to a laser source (Abstract). Tour et al further teaches the laser sources are operated by controlling the power and pulse of the laser sources (Paragraphs 69-74). Tour et al further teaches automated processing lines to form the graphene from the graphene precursor material (Paragraph 76). Tour et al further teaches graphene precursor materials including carbon base materials, polymers, amorphous carbon and mixtures thereof (Paragraphs 56, 61). Tour et al further teaches pseudocapacitive materials including graphene-PANI composites or composite comprising polymers, metals and metal oxides (Abstract, Paragraphs 108-112, 164).
With regard to moving the conductive source and graphene in synchronized form to apply voltage to the conducive source, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided moving the conductive source and graphene in synchronized form to apply voltage to the conducive source in Jung et al in view of Tour et al in order to produce the graphene material in a continuous process.
With regard to a mixture of a conductive carbon source mixed with a polymer material to form the graphene material, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a mixture of a conductive carbon source mixed with a polymer material to form the graphene material in Jung et al in view of Tour et al as Jung et al et al already encompasses a network/array/bundle comprising the mixture of SWCNT or MWCNT with a polymer material (Pg. 10, Lines 24-31) wherein Tour et al teaches carbon based material and polymer material as both graphene precursor materials (Paragraphs 55-56). The mixture of carbon nanotubes (which satisfies a conductivity of greater than 10-5 S/cm) and a polyimide polymer (which satisfies a conductivity of less than 10-5 S/cm) would only be obvious in view of Jung et al in view of Tour et al.
With regard to forming composite material comprising the graphene, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided forming composite material comprising the graphene in Jung et al in view of Tour et al in order to form a pseudocapacitive material for electronic devices as taught in Tour et al. With respect to the amount of graphene in the composite material, it would only be obvious to one of ordinary skill in the art to optimize/adjust the amount of the graphene in the composite material depending on the type of electronic device that is being produced. Where general conditions of a claim are disclosed in the prior art it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller 220 F.2d 454, 105 USPQ 233 (CCPA 1955). A prima facie case of obviousness may be established even though a prior art reference does not disclose any particular range, but teaches that the claimed parameters are known to affect results or properties. In re Boesch 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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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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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 May 2, 2026
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