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 .
Information Disclosure Statement
The information disclosure statements filed on 7/30/2024 and 8/02/2024 have been acknowledged and signed copies of the PTO-1449 are attached herein.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11749528 in view of US Patent No. 11342181.
Current claim 1 limitations
Corresponding US 11749528 claim limitations
attaching a vacuum pump to an outlet of a first chamber;
See claim 8, "reducing a pressure on a first side of the filter" -- reduction of pressure on one side of a filter necessarily requires a pressure-reducing menas connected to an evacuated volume; recitation of the pump and its point of attachment is conventional detail.
connecting a filter to an inlet of the first chamber;
See claim 8, "applying an electromagnetioc field to a filter"; reducing a pressure on a first side of the filter", the filter must be in fluid communication with the evacuated volume for the recited pressure differential to exist.
flowing a surfactant through the filter;
See, claim 11, "applying the electromagnetic field to the filter comprises flowing a surfactant through the filter." Identical step
creating a vacuum in the first chamber;
See claim 8, " reducing a pressure on a first side of the filter"
filtering a solution of nanotubes through the filter, the nanotubes having a negative charge during the filtering, the filtering creating a stack of nanotubes;
See claim 8, "reducing the pressure and the electromagnetic field cause a plurality of spacers to align adjacent to each other in multiple layers, each spacer surrounding a nanotube" in view of (claim 11, "flowing a surfactant through the filter") and (claims 2-3, "the spacers comprise a surfactant" ; "the surfactant comprises sodium dodecyl sulfate") - sodium dodecyl sulfate is an ionic surfactant, so nanotubes wrapped in it are negatively charged during filtering.
reducing a height of the stack of nanotubes;
See claim 8, "removing a first one of the multiple layers to form a reduced layer of nanotubes", removing a layer from a multi-layer stack reduces its height.
after the reducing the height, reducing a width of each of the nanotubes;
See claim 8, "removing the spacers from the reduced layer of nanotubes", performed after the layer removal in the recited order. Current claim 2 confirms the equivalence: "the reducing the width comprises removing a spacer material"
forming a transistor with the nanotubes.
See claim 8, "depositing a gate dielectric around the nanotubes within the reduced layer of nanotubes; and depositing a gate electrode over the gate dielectric.", the patented claim recites a species (gate dielectric plus gate electrode formation) of the current genus ("forming a transistor")
The current claim is therefore an obvious variant, being broader in its final step and adding only conventional vacuum filtration to the patented process.
Current claim 8 limitation
Corresponding US 11749528 claim limitation
introducing a solution of negatively charged carbon nanotubes to a filter;
See claim 8, "reducing a pressure on a first side of the filter, wherein the reducing the pressure and the electromagnetic field cause a plurality of spacers to align adjacent to each other in multiple layers, each spacer surrounding a nanotube" in view of (Claims 2-3: "wherein the spacers comprise a surfactant"; "the surfactant comprises sodium dodecyl sulfate", an ionic surfactant spacer confers the recited negative charge.
reducing a pressure to filter the solution through the filter;
See claim 8, "reducing a pressure on a first side of the filter" Identical step.
after the reducing the pressure, removing a stack of nanotubes from the filter;
See claim 19: "the placing the first nanotube and the second nanotube is performed at least in part using a transfer layer"; See also claim 20: "the transfer layer comprises polymethyl-methacrylate"; transfer off the filter using a transfer layer necessarily removes the nanotubes from the filter.
removing one or more nanotubes from the stack of nanotubes;
removing a coating from at least one nanotube of the stack of nanotubes to form a remaining stack of nanotubes; and
See claim 8:"removing the spacers from the reduced layer of nanotubes"; See also claim 1: "each nanotube within the layer of nanotubes being surrounded by a respective one of a plurality of spacers; removing the spacers", the recited "coating" reads on the patented spacer surrounding each nanotube.
forming a transistor from the remaining stack of nanotubes.
See claim 8, "depositing a gate dielectric around the nanotubes within the reduced layer of nanotubes; and depositing a gate electrode over the gate dielectric.", the patented claim recites a species (gate dielectric plus gate electrode formation) of the current genus ("forming a transistor"); See also claim 1: "forming a gate dielectric over and between the plurality of nanotubes"
Current claim 8 recites steps from US11749528 claim 8; it recites the same steps at a broader level of generality, which does not render it patentably distinct.
Current claim 15 limitation
Corresponding US 11749528/11342181
claim limitation
connecting a solution container to a first side of a filter;
See claim 8, " reducing a pressure on a first side of the filter", the solution must be supplied to the filter from a container for the recited filtration to occur; this is conventional apparatus detail.
reducing a pressure on a second side of the filter;
See claim 8, " reducing a pressure on a first side of the filter", same step; the designation of which side is "first" and which "second" is an arbitrary labeling choice.
separating nanotubes from a solvent into a pile of nanotubes using the filter;
See claim 8, "the reducing the pressure and the electromagnetic field cause a plurality of spacers to align adjacent to each other in multiple layers, each spacer surrounding a nanotube", the recited "pile" reads on the patented aligned layers.
removing materials including at least one nanotube to form a layer of nanotubes,
See claim 8, "removing a first one of the multiple layers to form a reduced layer of nanotubes; removing the spacers from the reduced layer of nanotubes"; See also US 11342181 claim 1, " removing the supporting layer, wherein the removing the supporting layer further removes at least one layer of nanotubes from the stack of nanotubes"
wherein each nanotube within the layer of nanotubes comprises a single material throughout the nanotube; and
See claim 1, "each nanotube within the layer of nanotubes being surrounded by a respective one of a plurality of spacers; removing the spacers", See claim 8: "removing the spacers from the reduced layer of nanotubes", See also US 11342181 claim 2: "removing a spacer material from around at least one nanotube within the remaining portion of the stack of nanotubes", once the surrounding spacers or coating is removed, the nanotube necessarily consists of a single material; the current limitation recites only the structural result of the patented removal step.
forming a transistor using the layer of nanotubes.
See claim 8, "depositing a gate dielectric around the nanotubes within the reduced layer of nanotubes; and depositing a gate electrode over the gate dielectric.", the patented claim recites a species (gate dielectric plus gate electrode formation) of the current genus ("forming a transistor"); See also claim 1: "forming a gate dielectric over and between the plurality of nanotubes"
Current dependent claims
Corresponding US 11749528/11342181
claim limitation
2. "wherein the reducing the width comprises removing a spacer material"
See claim 8, " removing the spacers from the reduced layer of nanotubes"; (See also US 11342181, claim 7: " removing a spacer material from around at least one nanotube within the remaining portion of the stack of nanotubes"
3. "wherein the spacer material is a surfactant"
See claim 2, "wherein the spacers comprise a surfactant"; See also US 11342181, claim 4:"wherein the spacer material comprises a surfactant"
4. The method of claim 2, wherein the spacer material is a polymer.
See claim 4, "wherein the spacers comprise a polymer"
5. The method of claim 1, wherein the reducing the width is performed at least in part with an annealing process.
See claim 9, "wherein the removing the spacers comprises annealing the spacers"
6. The method of claim 1, wherein the reducing the width is performed at least in part with an etching process.
See claim 10: "wherein the removing the spacers comprises etching the spacers"
7. The method of claim 1, wherein after the reducing the width a pitch between a first nanotube and a second nanotube is less than about 100 nm.
See Claim 18:"wherein after the depositing the first nanotube adjacent to the second nanotube the first nanotube and the second nanotube have a pitch of less than about 100 nm"
9. The method of claim 8, further comprising passively generating an electrostatic field on the filter.
See claim 12 -14: "the applying the electromagnetic field to the filter comprises coating the filter with a coating material"; "wherein the coating material comprises poly(vinylpyrrolidone)"; "wherein the coating material comprises aluminum oxide", a permanent filter coating generates the field passively; See also US 11342181 claim 3: "the filter membrane has a first electrostatic field during the filtering the individual nanotubes"
10. The method of claim 8, further comprising actively generating an electric field on the filter.
See claim 11: "wherein the applying the electromagnetic field to the filter comprises flowing a surfactant through the filter", charging the filter with a flowed surfactant is active generation.
11. The method of claim 8, wherein the removing the one or more nanotubes comprises depositing a supporting layer over the stack of nanotubes.
See US 11342181, claim 1: "depositing a supporting layer over the stack of nanotubes; removing the supporting layer, wherein the removing the supporting layer further removes at least one layer of nanotubes from the stack of nanotubes", Identical step and identical causal relationship.
12. The method of claim 11, wherein the depositing the supporting layer deposits nickel.
See US 11342181 claim 1 : "depositing a supporting layer ", however, selection of nickel a the supporting layer material is a routine material choice disclosed in the common specification and involves no more than ordinary skill.
13. The method of claim 11, wherein the depositing the supporting layer deposits molybdenum.
Same rational as Claim 12.
14. The method of claim 11, wherein the depositing the supporting layer deposits tungsten.
Same rational as claim 12.
16. The method of claim 15, wherein the second side of the filter is adjacent to an Erlenmeyer flask.
Not recited in either of the patents. The Erlenmeyer flask is disclosed in the common specification as one of several interchangeable vacuum chamber shapes ("a cylindrical shape, a hollow square tube, an octagonal shape, or the like, See Par [0015]). Selecting a standard laboratory flasks as the vacuum vessel for a filtration step is within ordinary skill and imparts no patentable distinction to the patented method.
17. The method of claim 15, wherein the filter comprises polycarbonate.
Not recited in either patent. Polycarbonate is disclosed in the common specification as one of three named filter materials. Routine material selection for a filter membrane, obvious over the patented filtration step.
18. The method of claim 15, wherein the filter comprises polytetrafluoroethene.
Same rational as claim 17.
19. The method of claim 15, wherein the filter comprises polyvinylidene fluoride.
Same rational as claim 17.
20. The method of claim 15, wherein the filter comprises pores with a pore diameter of between about 0.01 μm and about 10 μm.
Not recited in either of the patents. The pore diameter must be smaller than the nanotubes for the patented filtration step to separate them from the solvent; optimization of pore size to accomplish the patented separation is result effective and within ordinary skill. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim Rejections - 35 USC § 112(b)
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 1 and 15 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.
In regards to claim 1, claim 1 recites “reducing a width of each of the nanotubes”. However, the specification never describes reducing nanotube width. Removing spacer 129 reduces the width of the coated structure while the CNT itself is unchanged.
In regards to claim 15, claim 15 recites “a pile of nanotube”. No antecedent in the specification. “Pile” appears nowhere. Indefinite as to whether it equals the “stack 211”.
In regards to claim 15, claim 15 recites “removing materials including at least one nanotube to form a layer of nanotubes”. This is open-ended “materials” with no antecedent.
Claims 2-7 and 16-20 are rejected under 35 U.S.C. 112(b) as depending on rejected base claims 1 and 15, respectively.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 recites “actively generating an electric field on the filter” while claim 9 and the specification recite an electrostatic field. Inconsistent terminology.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERMIAS T WOLDEGEORGIS whose telephone number is (571)270-5350. The examiner can normally be reached on Monday-Friday 8 am - 5 pm E.S.T..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Britt Hanley can be reached on 571-270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERMIAS T WOLDEGEORGIS/Primary Examiner, Art Unit 2893
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