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 .
Election/Restrictions
Applicant’s election without traverse of claims 11-18 in the reply filed on 4/30/26 is acknowledged.
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product and use of said product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/30/26.
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 13 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 13: Claim 13 depends from claim 11 which recites that the dispersion is without binding agents
Therefore claim 13 is rejected for improperly adds binding agents which have been excluded from the dispersion by claim 11.
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 § 102
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 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.
Claims 11 & 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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);
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).
Claim 13: ‘719 teaches adding dispersants to the dispersion prior to the deposition step (¶ 25).
Claim 14: The laminar material is graphene (¶ 12).
Claim 15: The exfoliating agent is a polyvinyl alcohol (¶ 22),
Claim 16: The 2D material coating is exposed to UV radiation (¶ 30).
Claim 17: The solvent can be water (¶ 24).
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 12 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over ‘719.
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 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)).
Conclusion
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.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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