DETAILED ACTION
In the amendment filed on June 17, 2026, claims 1 – 10 are pending. Claim 1 has been amended. Claim 10 has been added. Claims 8 – 9 have been withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claims 1 – 7 and 10 are 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.
Regarding claim 1:
The term “…ribbon-like structure” in claim 1 is a relative term which renders the claim indefinite. The term “…ribbon-like structure” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Similar to the addition of the word “type”, the addition of the word “-like” extends the scope of the expression “ribbon” so as to render it indefinite. What else is “like” a ribbon? A sheet? A rectangle? ect. While an example of what is considered “ribbon-like” is provided in paragraph [0048] via Fig. 3A, examples are not in and of themselves definitions that would delineate the metes and bounds of a claim limitation.
The Examiner notes that the instant specification describes the disclosed structures as nanowires, which is a well-known term within the art.
Dependent claims not enumerated above are rejected on the basis of their parent claims.
In view of the deficiency highlighted above, the Examiner notes that the preamble recites that the method is directed to chalcogen nanoarrays, but the result of the step of “heating the crucible …” is a chalcogen nanoarray. Furthermore, the instant claim requires that the formed nanoarray has a straight ribbon-like structure.
In context of the other limitations of present claim 1, the aforementioned claim limitations prompt the following questions:
Does the preamble merely recite purpose or intended use? Or does the preamble provide a manipulative difference that amounts to a limitation of the claim?
Is the transitional phrase “has a” in the clause “wherein the … nanoarray has a straight ribbon-like structure” intended to be open-ended language or close-ended language? Transitional phrases such as "having" must be interpreted in light of the specification to determine whether open or closed claim language is intended. See, e.g., Lampi Corp. v. American Power Products Inc., 228 F.3d 1365, 1376, 56 USPQ2d 1445, 1453 (Fed. Cir. 2000) .
The two questions are related in that they determine, as part of a continuum, A.) whether the production of other nanoarrays or nanoarray components are to be encompassed by practice of the method, so long as at least one of the potassium metallic transition metal chalcogen nanoarray has a straight ribbon-like structure/ such a nanoarray has at least a structure that is straight ribbon like, or B.) the method only (or at least substantially only) produces a single flat potassium-intercalated metal chalcogen nanoarray and that the entirety of the potassium-intercalated metal chalcogen nanoarray is substantially a straight ribbon-like structure. For the purposes of art rejections, both major interpretations are considered alongside variations of the major interpretations.
Claim Rejections - 35 USC § 102/103
The rejections of the claims under 35 USC § 102 in the previous Office Action are withdrawn due to Applicant amendment.
The rejections of the claims under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment.
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.
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.
Claim(s) 1, 2, 3, 5, 6, 7,10 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by Zhang et al. US 2024/0263349 A1 (hereinafter “Zhang’349”) as evidenced by Zhang et al. US 2023/0227323 (hereinafter “Zhang’323”) and Wang et al. “Phase-Controlled Growth of 1T’-MoS2 Nanoribbons on 1H-MoS2 Nanosheets” (7 November 2023). Advanced Materials. 2024, 36 (hereinafter “Wang”, Abstract Sheet and Supporting Information included) or, in the alternative, under 35 U.S.C. 103 as obvious over Zhang’349 in view of Zhang’323 and Wang.
Regarding claims 1, 2, 3, 5, 6, 7:
Zhang’349 is directed to a general salt-assisted chemical vapor deposition method (CVD) for synthesis of phase-controlled transition metal dichalcogenide (TMD) monolayer crystals [nanoarray] (Abstract). In an embodiment Zhang’349 discloses that their method comprises ([0083] for all steps):
mixing MoS2 [powdered transition metal dichalcogenide] with potassium carbonate to form a mixture;
loading the mixture into a crucible and covering the crucible with a mica substrate;
placing the loaded crucible and substrate in a CVD tube furnace, necessarily evacuating the ambient atmosphere within the CVD tube furnace interior, filling the CVD tube furnace interior with argon/hydrogen mixture at 10 sccm and 40 sccm respectively, and heating the crucible to a temperature of 850°C for 6 minutes to form a potassium intercalated metallic transition metal chalcogen nanoarray on the substrate through chemical vapor deposition;
removing the substrate and the potassium-intercalated metallic transition metal chalcogen monolayer [nanoarray] formed thereon from the chemical vapor deposition tube furnace; and
washing absorbed salts from the substrate and the potassium-intercalated metallic transition metal chalcogen nanoarray formed thereon.
Zhang’349 also discloses an embodiment of their method that appears to produce ribbon-like crystals (Fig. 12A; [0007], [0039], [0097])
Zhang’349 does not expressly teach that the potassium-intercalated metallic transition metal chalcogen nanoarray has a straight ribbon-like structure.
However, it is reasonable to presume that such a structure (in view of the indefiniteness of the claim) would be inherently present in the potassium-intercalated metallic transition metal chalcogen nanoarray taught by Zhang’349. Support for said presumption is found in the use of like materials and like/similar processes between Zhang’349 and the instant application, especially the discussion of placing a substrate on top of the precursor source in Zhang’349 to grow transition metal dichalcogenide monolayer crystals in 1T’ phase ([0009] – [0010]). Zhang’349 also discloses an embodiment of their method that appears to produce ribbon-like crystals (Fig. 12A; [0007], [0039], [0097]; compare to Fig. 1F of disclosure, paragraph [0046]).
Additionally Wang, directed to methods of growing on MoS2 nanoribbons on 1H-MoS2 nanosheets and characterizations thereof (Abstract; Supporting Information S2), discloses that chemical vapor deposition of a metal dichalcogenide precursor combined with a mixed supply of argon and hydrogen gas allows for the formation of 1T’-MoS2 nanoribbons, which are of the same phase as that disclosed in Zhang’349.
Finally Zhang’323, directed to one-step salt-assisted general synthetic methodology for the controlled phase transformation of various types of 2H-phase transition metal dichalcogenides (2H-TMDs), likewise discloses that transitions from a 2H-TMD crystal structure to a 1T’-TMD crystal structure using a hydrogen/argon atmosphere and heating to a temperature of 800 to 850°C leads to a crystal shape that appears to be ribbon-like (Fig. 1; 3A; [0017], [0020], [0044] – [0045], [0048] – [0049]).
In view of the preponderance of the evidence, the Examiner takes the position that there is a reasonable presumption that the potassium-intercalated metallic transition metal chalcogen nanoarray disclosed by Zhang’349 has a straight ribbon-like structure or such a disclosed nanoarray would have a structure or sub-nanoarray that is straight and ribbon-like. The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594.
Alternatively, Zhang’323 discloses that forming 1T’-TMD crystal structures are useful for electronics and catalysis compared to more stable phases of TMD compounds ([0003]).
Wang discloses that 1T’ MoS2 nanoribbons grown on 1H MoS2 nanosheets allow for the fabrication of devices that can display good rectification and photoresponse behaviors (page 2307269 1st col).
Therefore, in view of the prior art as a whole it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Zhang’349 to produce nanoarrays having a straight ribbon-like structure or producing a nanoarray would have a structure or sub-nanoarray that is straight and ribbon-like because Zhang’323 discloses that such structures are useful for electronics and catalysis and Wang elaborates one implementation with good rectification and photoresponse behaviors.
Regarding claim 10:
Zhang’349 expressly discloses an embodiment of their method wherein monolayer crystals of 1T’-MoSe2 were produced from MoSe2 powder ([0087] – [0088]). While Zhang’349 does not disclose that the resultant potassium-intercalated metallic transition metal chalcogen nanoarray would comprise the recited Mo–Se unit clusters with potassium ions intercalated between adjacent Mo–Se unit clusters, the Examiner takes the position that the limitation would be inherently met or be rendered obvious in view of the teachings of Zhang’323 and Wang for the same reasons set forth above in the rejection of claim 1 with regards to the straight ribbon-like structure of the recited nanoarray, mutatis mutandis.
Claims 1 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hejazi et al. US 2022/0144662 A1 (hereinafter “Hejazi”) in view of Zhang et al. US 2023/0227323 A1 (hereafter “Zhang’323”) and optionally in view of Wang.
Regarding claims 1, 2, 3:
Hejazi is directed to a method of forming nanomaterials onto a substrate, such as two-dimensional nanomaterials such as two dimensional dichalcogenide forms ((Abstract; [0041], [0044]). In embodiments, Hejazi discloses that their method (Fig. 1A, 1B; [0005] – [0012]) comprises:
providing a powdered bulk source material such as MoS2 powder or MoSe2 powder ([0007], [0010], [0022], [0029], Heading 8, [0051], [0053]). [0068]; Claim 10);
loading the bulk source material into a holder, crucible or chip-crucible (hereinafter “crucible”) and covering the crucible with a substrate as a sandwich or with a gap between the powdered bulk source material ([0008], [0029], [0069], claim 3);
placing the loaded crucible and substrate in an oven/tube furnace [CVD tube furnace], evacuating the ambient atmosphere within the oven/tube furnace interior, filling the oven/tube furnace interior with argon, and heating the crucible to a temperature, e.g. 750°C, to form a metallic transition metal chalcogen nanoarray on the substrate ([0009] – [0011], [0029], [0040], [0069] – [0070]; claim 1); and
cooling and then removing the substrate and the metallic transition metal chalcogen nanoarray formed thereon from the oven/tube furnace.
Hejazi also discloses that the nanoarray components may be in the form of inter alia nanosheets, nanoparticles, nanowires [ribbon-like structure], and combinations thereof ([0012] – [0013]).
Hejazi does not expressly teach:
mixing potassium carbonate and the powdered transition metal dichalcogenide to form a mixture;
that the heating of the loaded crucible forms a potassium intercalated metallic transition metal chalcogen nanoarray on the substrate through chemical vapor deposition, wherein the atmosphere within the oven/tube furnace additionally comprises H2; and
washing absorbed salts from the substrate and the potassium-intercalated metallic transition metal chalcogen nanoarray formed thereon; and
that the potassium-intercalated metallic transition metal chalcogen nanoarray has a straight ribbon-like structure, and (with regards to claim 10) can be particularly comprising a K– MoSe nanoarray comprising Mo – Se unit clusters with potassium ions intercalated between adjacent Mo– Se unit clusters.
With regards to the steps of mixing potassium carbonate and the powdered transition metal dichalcogenide to form a mixture, and washing absorbed salts from the substrate and the potassium-intercalated metallic transition metal chalcogen nanoarray formed thereon; and that the heating of the loaded crucible forms a potassium intercalated metallic transition metal chalcogen nanoarray on the substrate through chemical vapor deposition.
Zhang’323 is directed to a one-step salt-assisted general synthetic methodology for the controlled phase transformation of various types of 2H-phase transition metal dichalcogenides (2H-TMDs), yielding large-scale metastable 1 T'-phase transition metal
dichalcogenides (1T'-TMDs) (Abstract). 1T’-TMDs exhibit greater potential for e.g. electronics and catalysis compared to other phases of transition metal dichalogenides ([0003], [0069]).
In embodiments, Zhang’323 discloses methods comprising (Fig. 1; [0043] – [0044], [0057] – [0058]): mixing a metal salt, e.g. K2CO3, with a powdered and powdered TMD, e.g. WS2 or MoS2, to form a mixture ([0057], [0062]); loading the mixed powders into a crucible and placing the crucible into a tube; removing the ambient air from the tube and providing an H2/Ar atmosphere at 100sccm; heating the tube at 800°C followed by cooldown; and removing the crucible and then washing the product within the crucible.
The inclusion of e.g. potassium carbonate aids in achieving metastable crystal phases in TMDs without introducing multiple steps of prior techniques ([0054], [0067]). A washing steps allows for recovery of 1T’-TMDs ([0011], [0045], [0058]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Hejazi by including steps of mixing potassium carbonate and the powdered transition metal dichalcogenide to form a mixture, and washing absorbed salts from the substrate and the potassium-intercalated metallic transition metal chalcogen nanoarray formed thereon; and heating of the loaded crucible forms a potassium intercalated metallic transition metal chalcogen nanoarray on the substrate through chemical vapor deposition in an atmosphere of H2/Ar because: Zhang’323 teaches that inclusion of potassium carbonate helps control the phase of TMD crystal materials to metastable phases, which is useful for applications such as electronics and catalysis, and washing helps isolate such TMD crystal materials.
With regards to the potassium-intercalated metallic transition metal chalcogen nanoarray has a straight ribbon-like structure, and (with regards to claim 10) can be particularly comprising a K– MoSe nanoarray comprising Mo – Se unit clusters with potassium ions intercalated between adjacent Mo– Se unit clusters:
As noted above, Zhang’323 likewise discloses that transitions from a 2H-TMD crystal structure to a 1T’-TMD crystal structure using a hydrogen/argon atmosphere and heating to a temperature of 800 to 850°C leads to a crystal shape that appears to be ribbon-like (Fig. 1; 3A; [0017], [0020], [0044] – [0045], [0048] – [0049]).
Optionally and additionally, Wang is directed to methods of growing on MoS2 Nanoribbons on 1H-MoS2 Nanosheets and characterizations thereof (Abstract; Supporting Information S2). Wang discloses that their method comprises (Supporting Information S2):
providing a chemical vapor deposition (CVD) furnace;
mixing together potassium molybdate and sulfur powder to form a mixture;
preparing a precursor from the mixture by placing the mixture into an alumina crucible at the center of the CVD furnace, heating the CVD furnace to 450°C and in an atmosphere of hydrogen and argon at a 1:9 volumetric flow ratio, cooling the mixture and adding additional sulfur powder to the cooled and reacted mixture, and then reheating the cooled and reacted mixture in the CVD furnace to 450°C and in an atmosphere of hydrogen and argon at the same 1:9 volumetric flow ratio;
placing the prepared precursor in a quartz crucible and a placing on top of the precursor a mica substrate; and
heating the CVD furnace to 780°C an in a purge atmosphere of hydrogen and argon at a 2:8 (1:4) volumetric flow ratio.
The method disclosed by Wang produces 1T’ MoS2 nanoribbons grown on 1H MoS2 nanosheets allow for the fabrication of devices that can display good rectification and photoresponse behaviors (page 2307269 1st col).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Hejazi to produce nanoarrays having a straight ribbon-like structure or producing a nanoarray would have a structure or sub-nanoarray that is straight and ribbon-like because Zhang’323 discloses that such structures are useful for electronics and catalysis; and because – additionally and optionally – Wang elaborates one implementation with good rectification and photoresponse behaviors.
Regarding claims 4 and 5:
Hejazi in view of Zhang’323 does not expressly teach that the hydrogen is provided at 10 sccm and argon at 90 sccm; and that the temperature is between 850°C to 900°C.
However, Zhang’323 discloses provision of 100 sccm mixed gas within the tube containing the mixed powder. Zhang’323 also discloses example compositional percentages for the mixed gas, suggesting that the percentage composition within the 100 sccm may be any amount sufficient to be a reducing atmosphere, including very low flow rates of H2 and large amounts of Ar and thus an overlapping range. Zhang’323 also discloses that the ground mixture may be heated to a temperature between about 700°C to about 1000°C, e.g. 800°C to 850°C.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 6:
In addition to Zhang’323’s disclosure of temperature range, Hejazi discloses that temperature, time within temperature and jumps within temperatures are process optimization parameters to encourage sublimation and determine material properties ([0040]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Hejazi in view of Zhang’323 to provide a given temperature, e.g. 850°C – 900°C within 10 minutes as a matter of routine experimentation to enable sublimation of bulk material and determine material properties as taught by Hejazi. "[W]here the 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, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hejazi in view of Zhang’323 and optionally further in view of Wang as applied to claims 1 – 6 above, and further in view of Harutyunyan et al. US 20210324515 A1 (hereinafter “Harutyunyan”).
Regarding claim 7:
Hejazi discloses that the substrate may be silicon that is coated in SiO2 ([0034], [0046]).
Hejazi in view of Zhang’323 does not expressly teach that the substrate may be mica.
Harutyunyan is directed to methods of making TMD atomic layer nanoribbons with a vapor deposition method similar to that disclosed in Hejazi (Abstract; Fig. 1A, [0046] – [0050]). Harutyunyan discloses that the substrate may be SiO2, silicon and/or fluorophlogopite mica ([0037]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Hejazi in view of Zhang’323 and optionally further in view of Wang by specifically having a mica substrate because as taught by Harutyunyan, the use of mica as substrate material is known to be suitable. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
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 – 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 8, 9, 19, 20, 21 of copending Application No. 18/331209 (reference application) as evidenced by Zhang’323 and Wang, or alternatively in view of Zhang’323 and Wang. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1 – 3 and 5 – 7:
It is clear that all the elements of the application claims 1 – 3 and 5 – 7 are to be found in reference application claims 1, 2, 3, 8, 9, 19, 20, 21 (as the application claims 1 – 3 and 5 – 7 fully encompasses reference application claims 1, 2, 3, 8, 9, 19, 20, 21). The difference between the application claims 1 – 3 and 5 – 7 and the reference application claims 1, 2, 3, 8, 9, 19, 20, 21 lies in the fact that the reference application claims includes many more elements and is thus more specific. Thus the invention of claim 1, 2, 3, 8, 9, 19, 20, 21 of the patent is effect a "species" of the "generic" invention of the application claims 1 – 3 and 5 – 7. Additionally, the subject matter of the application claims would inherently produce a structure having a straight ribbon-like structure or alternatively would have been modified by the teachings of Zhang’323 and Wang for the reasons discussed above in the rejection of claims 1, 2, 3, 5, 6, 7 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by Zhang’349 as evidenced by Zhang’323 and Wang or, in the alternative, as under 35 U.S.C. 103 as obvious over Zhang’349 in view of Zhang’323 and Wang.
It has been held that the generic invention is “anticipated" by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir.1993). Since application claims 1 – 3 and 5 – 7 is anticipated by claim 1, 2, 3, 8, 9, 19, 20, 21 of the copending application, it is not patentably distinct from claim 1, 2, 3, 8, 9, 19, 20, 21 of the copending application.
Alternatively, one of ordinary skill in the art would have modified the subject matter of the copending claims to result in nanoarrays having straight ribbon-like structures and thus render the claims patentably indistinct from the application claims because Zhang’349 to produce nanoarrays having a straight ribbon-like structure or producing a nanoarray would have a structure or sub-nanoarray that is straight and ribbon-like because Zhang’323 discloses that such structures are useful for electronics and catalysis and Wang elaborates one implementation with good rectification and photoresponse behaviors.
Regarding claim 4:
While the copending application claims do not expressly teach the recited gas flow rates, copending cliam 21 recites that the mixed gas flow of hydrogen gas and argon are provided in a flow rate ratio between 1/5 to 2/3.
In the case where amounts exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, a prima facie case of obviousness exists. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
State of the Prior Art
The Examiner notes that Zhang’349 has a common applicant and common joint inventors (but not the same inventive entity) with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that lists exceptions to what may be considered prior art:
(b)(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
The Examiner notes that Wang is coauthored by a/the joint inventors of the instant application, that the publication date of November 7, 2023 is before the effective filing date of July 26, 2024, which is within the grace period of 1 year before the effective filing date of the claimed invention. However, Wang also lists 11 other authors that were part of the disclosure within Wang; Wang therefore is a different inventive entity than that of the instant application and it is not immediately clear what parts of Wang are attributed to one or more of the joint inventors . The Applicant may file an affidavit or declaration under 37 CFR 1.130 to establish that a disclosure is not prior art under 35 USC 102(a) due to an exception in 35 USC 102(b) . Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an "unequivocal" statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure or relevant parts of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).
Response to Arguments
Applicant's arguments filed June 17, 2026 have been fully considered but they are not fully persuasive.
Applicant’s principal arguments are:
a.) Zhang ‘349 does not disclose the claimed method of forming a potassium-intercalated metallic transition metal chalcogen nanoarray having a straight ribbon-like structure. In particular, the structural morphology is neither disclosed nor necessarily inherent. Similarly, Hejazi nor Zhang '323, alone or in combination, teaches or suggests forming a potassium-intercalated metallic transition metal chalcogen nanoarray that has a straight ribbon-like structure as claimed.
In response to the applicant's arguments, please consider the following comments.
a.) Contrary to Applicant’s argument, Zhang’349 would inherently teach the recited structural morphology in view of the indefiniteness of the claims, as discussed above in the rejection of the claims over Zhang’349 as evidenced by Zhang’323 and Wang. Alternatively, assuming arguendo that Zhang’349 does not inherently teach the recited structural morphology, the limitation would be met after modification by Zhang’323 and Wang as discussed above in the rejection of the claims. Similarly with regards to the rejection of the claims over Hejazi in view of Zhang’323, Zhang’323 likewise discloses that transitions from a 2H-TMD crystal structure to a 1T’-TMD crystal structure using a hydrogen/argon atmosphere and heating to a temperature of 800 to 850°C leads to a crystal shape that appears to be ribbon-like (Fig. 1; 3A; [0017], [0020], [0044] – [0045], [0048] – [0049]), contrary to Applicant’s arguments and in view of the indefiniteness of the claims.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
Prosecution Insights