Method for Obtaining a Coating of Two-Dimensional Material

§103 §112

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 . Claim Rejections - 35 USC § 112 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 18 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 18: Claim 18 depends from claim 1 which recites that the exfoliating agent is an oligomer or polymer comprising 1 to 1000 repetitive units comprising at least one ether group and at least one aryl group substituted with one or more functional groups selected from the group consisting of aromatic amines, aromatic amides, aromatic imines, aromatic sulfites, aromatic compounds of phosphorus, aromatic carboxylic acids, phenols, aromatic alcohols, aromatic ethers, aromatic aldehydes, aromatic esters, aromatic anhydrides, nitroaromatic groups, pyridine, pyrimidine, imidazole, azobenzene, anthracenes, diphenyls, and aromatic halides” whereas as claim 18 recites “the at least one exfoliating agent is selected from the group consisting of one or more aryl ethoxylates and octyl phenyl ethoxylate”. The compounds of claim 18 are not part of the genus of compounds of claim 11 and thus do not further limit but instead change the scope of the claim and remove the compounds as defined in the genus of claim 11 from claim 18. Applicant is advised that the compounds in the genus of claim 11 require at least two aromatic groups and an ether group because the aryl group is required to be substituted by one or more functional groups selected from the enumerated aromatic compounds. 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. Claim Rejections - 35 USC § 103 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 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 11-14 & 16-18 are rejected under 35 U.S.C. 103 as being unpatentable John et al. (US PG Pub 2013/0102719; hereafter ‘719). Claim 11: ‘719 is directed towards a method for obtaining a coating of a 2D material (graphene) on a surface (see title & claims 21-22), comprising the steps of: forming a dispersion by mixing a laminar material and at least one exfoliating agent in a first solvent (the carbonaceous material is mixed with a dispersant comprising polyvinyl alcohol (¶ 19) with a first solvent; see claims 21-22 and ¶s 19 & 28), wherein the exfoliating agent can be a poly(alkylene glycol) with an end group comprising an ether group and an aryl group and an aromatic ether (one unit of the exfoliating agent can comprise a combination of an C7-20 aralkoxy and a C6-20 araloxy; see ¶ 20) or a combination of a C1-20 carboxylate and an aryl group (¶ 20, i.e. an aryl C1-20 ethoxylate); subjecting the dispersion formed in step a) to sonication to obtain a dispersion comprising a 2D material (¶ 28); applying the dispersion obtained in step b) on a surface by immersion coating (claim 22 & ¶ 30); drying the wet surface obtained in step c) to obtain a coating of the 2D material on the surface (¶ 30), wherein the dispersion is without binding agents or adhesion promoters (binders and adhesion promoters are optional components of the dispersion – i.e. the dispersion can be formed without said binding agents or adhesion promoters; ¶ 25). ‘719 teaches that the exfoliating agent can be a poly(alkylene glycol) with an end group comprising a combination of a C1-20 carboxylate and an aryl group (¶ 20) – i.e. an aryl C1-20 ethoxylate. It would have been obvious to one of ordinary skill in the art at the time of filing to select an end group as claimed as the specific end group because the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)). Claim 12: ‘719 further teaches that multiple layers can be applied by immersion coating with drying in between application (¶ 30) wherein the dispersion can comprise a combination of a polar aprotic and a polar protic solvent alcohols (¶ 23) wherein an exemplary polar protic solvent is an alcohol (¶24). It would have been obvious to one of ordinary skill in the art at the time of filing to use a combination of an alcohol and a polar aprotic solvent as the solvent system because the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)). I.e. the second immersion in a bath comprising an polar aprotic solvent (a first solvent) and an alcohol (a second solvent) reads on washing the first coating with a second solvent selected from an alcohol. Claim 13: ‘719 teaches adding dispersants to the dispersion prior to the deposition step (¶ 25). Claim 14: The laminar material is graphene (¶ 12). Claim 16: The 2D material coating is exposed to UV radiation (¶ 30). Claim 17: The solvent can be water (¶ 24). Claim 18: ‘719 teaches that the exfoliating agent can be a poly(alkylene glycol) with an end group comprising a combination of a C1-20 carboxylate and an aryl group (¶ 20) – i.e. an aryl C1-20 ethoxylate. It would have been obvious to one of ordinary skill in the art at the time of filing to select an aryl ethoxylate as the specific end group because the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)). Response to Arguments Applicant's arguments filed 9/22/26 have been fully considered but they are not persuasive. In regards to applicant’s argument that ‘719 does not disclose or suggest the exfoliating agent as claimed in claim 11; the Office does not find this argument convincing because ‘719 provides in ¶s 19-20: PNG media_image1.png 397 556 media_image1.png Greyscale PNG media_image2.png 508 557 media_image2.png Greyscale which renders obvious a poly(alkylene glycol) with an end group comprising an ether group and an aryl group and an aromatic ether (one unit of the exfoliating agent can comprise a combination of an C7-20 aralkoxy and a C6-20 araloxy; see ¶ 20) or a combination of a C1-20 carboxylate and an aryl group (¶ 20, i.e. an aryl C1-20 ethoxylate) which reads on the claimed exfoliating agent because a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)). In regards to applicant’s argument ‘719 does not render obvious the claims because it doesn’t recognize a benefit of a π-π between the exfoliating agent and the graphene surface; the Office does not find this argument convincing because ‘719 teaches exfoliating agents that read on the claimed structure and applicant has not provided any evidence of unexpected results between the exfoliating agents that read on the claim limitation and exfoliating agents that do not read on the claimed structure which are taught by ‘719. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). MPEP 2145(I). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /James M Mellott/ Primary Examiner, Art Unit 1759