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 listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 1-13 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.
The term “high vacuum conditions” in claim 1 is a relative term which renders the claim indefinite. The term “high vacuum conditions” 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. Claim 1 is indefinite because it is not clear what pressure/vacuum conditions have to be present during the cyclodehydrogenating step in order to be considered “high vacuum conditions”. Though the claim further discloses the limitation of “the pressure of molecular hydrogen in a cracker not exceeding 1x10-7 mbar” it is not clear if this is what is meant by “high vacuum conditions”. According to Page 9 Line 25 through Page 10 Line 5 of the specification of the parent application WIPO document a pressure of 1x10-7 mbar was the partial pressure of the molecular hydrogen introduced in to a cracker system which produced the atomic hydrogen used to expose the polymerized structures.
Claim 1 is indefinite because it is not clear what is meant by “with the pressure of molecular hydrogen in a cracker not exceeding 1x10-7 mbar” in the context of performing cyclodehydrogenating. According to the First example of the specification of the present application a pressure of 1x10-7 mbar was the partial pressure of molecular hydrogen introduced into a cracker system to form the atomic hydrogen and not the actual pressure used during cyclodehydrogenation. Page 8 Lines 25-31 of the specification of the parent application WIPO document discloses that the production of graphene nanoribbons was conducted in a vacuum chamber having a base vacuum of approximately 1x10-10 mbar.
Claim 1 recites the limitation "the polymerized structures". There is insufficient antecedent basis for this limitation in the claim. For the purposes of this examination “the polymerized structures” will be considered the same as the molecules of the precursor on the surface of the substrate which have been polymerized.
The term “high vacuum conditions” in claim 8 is a relative term which renders the claim indefinite. The term “high vacuum conditions” 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. Claim 8 is indefinite because it is not clear what pressure/vacuum conditions have to be present during the cyclodehydrogenating step in order to be considered “high vacuum conditions”. Though the claim further discloses the limitation of “with a pressure of atomic hydrogen not exceeding 1x10-7 mbar” it is not clear if this is what is meant by “high vacuum conditions”. According to Page 11 Lines 5-15 of the specification of the parent application WIPO document a pressure of 1x10-7 mbar was the partial pressure of the molecular hydrogen introduced in to a cracker system which produced the atomic hydrogen used to expose the polymerized structures.
Claim 8 is indefinite because it is not clear what is meant by “with a pressure of atomic hydrogen not exceeding 1x10-7 mbar” in the context of performing cyclodehydrogenating. According to the Second example of the specification of the present application a pressure of 1x10-7 mbar was the partial pressure of molecular hydrogen introduced into a cracker system to form the atomic hydrogen and not the actual pressure used during cyclodehydrogenation. Page 10 Lines 20-26 of the specification of the parent application WIPO document discloses that the production of graphene nanoflakes was conducted in a vacuum chamber having a base vacuum of approximately 1x10-10 mbar.
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 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Fasel et al (U.S. Patent Publication No. 2014/0315023) in view of Zuzak (Polish Patent No. PL236198B1; English Machine translation referenced hereafter).
In the case of claim 1, Fasel teaches a method for fabricating graphene nanoribbons (Abstract). The method of Fasel comprised depositing molecules of a precursor directly onto a solid substrate wherein the precursors were polycyclic aromatic compounds followed by polymerizing the precursor and then cyclodehydrogenating the polymerized precursors (Page 14 Paragraphs 0089-0092). Fasel further teaches that the polycyclic aromatic compounds had halogen atoms (Page 14 Paragraph 0094). Fasel further teaches that the precursor was deposited onto an atomically pure surface in the form of a substrate which had been cleaned with argon ions (Page 20 Paragraph 0132). Furthermore, Fasel teaches that the cyclodehydrogenation was conducted at a temperature in the range of 50 to 500 ℃ (Page 20 Paragraph 0120), which overlapped with the claimed range of 200 to 220 ℃. 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, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
Though Fasel teaches having cyclodehydrogenated a polymerized precursor to form graphene nanoribbons Fasel does not teach that the cyclodehydrogenation was conducted under vacuum conditions while exposing the polymerized precursor to atomic hydrogen.
Zuzak teaches a method for forming nanoribbons and nanoflakes from a halogen-substituted aromatic compound (Page 5 Paragraph 0024), which was conducted under vacuum conditions (page 7 Paragraph 0031) and comprised cyclodehydrogenation (Page 10 Paragraph 0042). Zuzak teaches that during graphene formation the halogen-substituted aromatic compounds were exposed to atomic hydrogen which allowed for the formation of pure hydrocarbon graphene and removed by-products formed during graphene formation Pages 5-6 Paragraphs 0024-0027). Zuzak further teaches that the atomic hydrogen was formed in a hydrogen cracker using molecular hydrogen having a partial pressure of 1.3x10-7 mbar (Page 9 Paragraph 0038).
Based on the teachings of Zuzak, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have conducted the cyclodehydrogenation step of Fasel under vacuum conditions while exposing the polymerized precursor to atomic hydrogen in order to form a pure graphene nanoribbon and remove any by-products formed during graphene formation.
Though Zuzak teaches forming atomic hydrogen in a cracker at a partial pressure for molecular hydrogen of 1.3x10-7, Zuzak does not specifically teach that the pressure of molecular hydrogen did not exceed 1x10-7. However, the claimed range would have been obvious because a pressure of 1.3x10-7 was substantially the same as not exceeding 1x10-7. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP section 2144.05.I.
As for claim 2, Fasel teaches that the deposition of the precursor was conducted using a thermal deposition technique in the form of sublimation or laser-induced desorption (Page 19 Paragraph 0109).
As for claims 3-5, Fasel teaches that the substrates included non-metallic materials including semiconductors comprising silicon or germanium and insulators comprising sodium chloride or silicon oxide (Page 19 Paragraphs 0105-0108).
As for claim 7, Fasel does not specifically teach that the cyclodehydrogenation was conducted for 20 to 120 minutes. However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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). See MPEP section 2144.05.II.A.
Furthermore, Fasel teaches that the activation/cyclodehydrogenation was conducted for a sufficient time in order to form segmented graphene nanoribbons (Page 20 Paragraphs 0120-0121).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal times for the cyclodehydrogenation of Fasel in view of Zuzak through routine experimentation in order to form segmented nanoribbons.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fasel et al in view of Zuzak as applied to claim 1 above, and further in view of Hirota et al (U.S. Patent Publication No. 2015/0299847).
The teachings of Fasel in view of Zuzak as they apply to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 6, Fasel teaches having prepared by surface by repeatedly argon ion bombarding the surface then heating/annealing to 750 K, a temperature above room temperature, prior to cooling to room temperature for deposition (Page 20 Paragraph 0132). However, Fasel does not teach that the heating was conducted using alternating current.
Hirota teaches method ion bombarding a substrate to clean the substrate prior to deposition (Abstract and Page 1 Paragraph 0001). Hirota teaches that the substrate was heated by means of alternating current and bombarded with argon ions (Page 4 Paragraphs 0049-0050).
Based on the teachings of Hirota, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used alternating current to heat the substrate of Fasel in view of Zuzak during surface preparation because this was a known heat source in the art used during argon ion bombardment to clean a substrate.
Claims 8, 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Sinitskii et al (U.S. Patent Publication No. 2022/0333234) in view of Zuzak.
In the case of claims 8 and 9, Sinitskii teaches a method for fabricating graphene nanoflakes (Abstract) comprised of depositing molecules of a precursor directly onto a surface of a substrate wherein the precursors included halogenated polycyclic aromatic compounds followed by heating the deposited precursor at a temperature of at least 160 ℃ to cause the precursor to undergo cyclodehydrogenation and form the graphene (Pages 8-9 Claims 1-5). Sinitskii further teaches that the process including the cyclodehydrogenation was conducted under vacuum conditions (Page 7 Paragraph 0081 and Page 9 Claim 14). Furthermore, the cyclodehydrogenation temperature of Sinitskii was at least160 ℃, which overlapped with the claimed range of 200 to 220 ℃. 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, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
Though Sinitskii teaches having cyclodehydrogenated a precursor comprising a halogenated polycyclic aromatic compound to form graphene nanoflakes Sinitskii does not teach that the cyclodehydrogenation was conducted while exposing the precursor to atomic hydrogen.
Zuzak teaches a method for forming nanoribbons and nanoflakes from a halogen-substituted aromatic compound (Page 5 Paragraph 0024), which was conducted under vacuum conditions (page 7 Paragraph 0031) and comprised cyclodehydrogenation (Page 10 Paragraph 0042). Zuzak teaches that during graphene formation the halogen-substituted aromatic compounds were exposed to atomic hydrogen which allowed for the formation of pure hydrocarbon graphene and removed by-products formed during graphene formation Pages 5-6 Paragraphs 0024-0027). Zuzak further teaches that the atomic hydrogen was formed in a hydrogen cracker using molecular hydrogen having a partial pressure not exceeding 1x10-7 mbar (Page 9 Paragraph 0038).
Based on the teachings of Zuzak, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have conducted the cyclodehydrogenation step of Sinitskii while exposing the precursor to atomic hydrogen in order to form a pure graphene nanoflakes and remove any by-products formed during graphene formation.
As for claim 8, Sinitskii does not specifically teach that the cyclodehydrogenation was conducted for 20 to 120 minutes. However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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). See MPEP section 2144.05.II.A.
Furthermore, Sinitskii teaches that the cyclodehydrogenation was conducted for a sufficient enough amount of time to form the graphene (Page 7 Bottom of Paragraph 0081).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal times for the cyclodehydrogenation of Sinitskii in view of Zuzak through routine experimentation in order to form graphene nanoflakes.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sinitskii et al in view of Zuzak as applied to claim 8 above, and further in view of Fasel et al.
The teachings of Sinitskii in view of Zuzak as they apply to claim 8 have been discussed previously and are incorporated herein.
In the case of claims 10-12, Sinitskii does not teach that the substrate was a non-metallic substrate including a semiconductor surface or an insulator surface. However, Sinitskii teaches that the substrates included metal substrates (Page 6 Paragraph 0072).
Fasel teaches a method for forming graphene by cyclodehydrogenating a polycyclic aromatic compound (Abstract) wherein the graphene was formed on a substrate comprising metal or non-metal including semiconductor surfaces comprising silicon or germanium and insulator surfaces comprising silicon oxide or sodium chloride (Page 19 Paragraphs 0103-0108).
Based on the teachings of Fasel, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have substituted the metal substrate of Sinitskii in view of Zuzak with a semiconductor substrate comprising silicon or germanium or an insulator substrate comprising silicon oxide or sodium chloride because these were all known surfaces in the art for forming graphene by cyclodehydrogenation of a polycyclic aromatic compound.
Conclusion
Claims 1 through 13 have been rejected. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712