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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 44-46 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 44 and 45 recite where the MXene composition is characterized as unreacted with the inorganic oxide, oxycarbide, oxynitride, or oxycarbide. No support is found within applicant’s original disclosure as to where any and all MXene compositions do not react with any and all inorganic oxides, oxycarbides, oxynitrides, or oxycarbides. Paragraph 155 of the originally filed specification is the only portion of the original disclosure stating non-reaction of ZnO with Ti3C2Tx which has been cold sintered and therefore appears to be limited to only this particular embodiment and no disclosure is found to support non-reaction for any and all materials as outlined above which are broadly claimed. Claim 46 is included in this rejection as it depends upon a rejected claim.
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 27-34 and 40-43 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (CN 105418072 – machine translation).
Considering claim 27, Huang teaches a composite material of ferrite (an inorganic oxide) with MXenes (abstract) which is sintered (p.4, 3rd paragraph) (e.g. a nanocomposite of co-sintered materials). The MXene is uniformly distributed throughout (pp.5-6, Example 1) (i.e. substantially homogeneously) and the MXene is taught to be 0.1-99 wt.% of the entire composition (p.3, 2nd paragraph).
While not expressly teaching a singular example of the instantly claimed nanocomposite this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Huang as this is considered a combination of conventionally known MXene and oxide materials known to form a composite and one would have had a reasonable expectation of success. Further, the content of MXene overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claims 28-30 and 33, Huang teaches where the ferrite is a binary oxide of Fe and other transition metals (p.3, 3rd paragraph).
Considering claims 31-32 and 34, Huang teaches where the ferrite may comprise Zn with MeFe2O4 (e.g. ZnO·Fe2O3) (p.3, 3rd paragraph).
Considering claim 40, Huang does not specifically teach the claimed grain size. However, the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.05 (IV)(A) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Considering claims 41-43, Huang does not specifically teach the claimed density or distribution along grain boundaries. However, Huang teaches where the composite is sintered at 800 °C under an Ar atmosphere (p.6, 3rd paragraph) substantially overlapping that which applicant discloses as the sintering conditions in Paragraph 21 of the originally filed specification and therefore the claimed density and grain boundary distribution are expected to be present as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.
Claims 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (CN 105418072 – machine translation) as applied to claim 27 above further in view of Barsoum et al. (US 2014/0162130 – cited by applicant).
Considering claim 35, the teachings of Huang as applied to claim 27 are outlined above. Huang teaches a composite material of ferrite with MXenes having electrical conductivity in electronic devices (abstract), but does not specify the MXene with the layered configuration.
In a related field of endeavor, Barsoum teaches compositions of free standing two dimensional crystalline solids (abstract) and where these materials are used in composites for electronics (Paragraph 5). The crystalline composition comprises MXene materials of Mn+1Xn of carbide and/or nitrides (Paragraph 89). The two dimensional materials comprise at least one layer having first and second surfaces (Paragraph 7) where each layer is comprised of a substantially two-dimensional array of crystal cells (Paragraph 8) and each cell may comprise the Mn+1Xn material such that each X is positioned within an octahedral array of M (Paragraph 9) where M is Group IIIB, IVB, VB, or VIB metals (Paragraph 19) and each X is C and/or N where N = 1-3 (Paragraphs 19-21). The composite may be electrically conducting (Paragraph 107) and the carbide materials have metallic-like electrical properties (Paragraph 355).
As Huang and Barsoum both teach MXene materials for electronics they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Huang and the substitute the MXene materials taught by Barsoum as this is considered a substitution of one conventionally known MXene material with another known to afford electrical conductivity and one would have had a reasonable expectation of success.
Considering claims 36-37, Barsoum teaches where the Mn+1Xn formula of the MXene may comprise Sc2C, Ti2C, Ti3C2, etc. (Paragraphs 98 and 108).
Allowable Subject Matter
Claims 38-39 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of Huang and Barsoum as outlined above does not reasonably suggest the use of the claimed M’2M”nXn+1 having a substantially two-dimensional array of crystal cells where each X and M”n are positioned as claimed with the recited intercalation and neither reference would suggest the claimed configuration.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kear et al. (US 2007/0049484) teaches a nanocomposite ceramic demonstrating the level of ordinary skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784