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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 – 7 in the reply filed on November 25, 2025 is acknowledged. Claims 8 – 9 are therefore withdrawn from consideration.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1 – 3, 5 – 7 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zhang et al. US 2024/0263349 A1 (hereinafter “Zhang’349”).
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.
The applied reference 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.
Claim Rejections - 35 USC § 103
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.
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.
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang’349 as applied to claims 1 – 3, 5 – 7 above.
Regarding claim 4:
While Zhang’349 does not expressly teach an embodiment, Zhang’349 does expressly teach that the ratio of flow rates for hydrogen and argon may range from 1:5 to 2:3 ([0081]). At the lowest ratio a reference basis of 10 sccm hydrogen would be associated with 50 sccm argon, and a reference basis of 90 sccm argon would be associated with 18 sccm hydrogen. Such flow rates appear to be close to the claimed hydrogen and argon flow requirements. Outside a showing of unexpected results, 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)
Claims 1 – 6 is/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”).
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 ([0007], [0010], [0029], Heading 8, [0051], [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 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.
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.
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 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 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). 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. 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 patent, it is not patentably distinct from claim 1, 2, 3, 8, 9, 19, 20, 21 of the patent.
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.
Conclusion
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717