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 .
Response to Amendment
The preliminary amendment to the claims and specification dated 12/9/2024 is acknowledged. Claims 1, 3-4, 9, 11, and 13 were amended, claims 5-8, 10, 12, and 14-59 were cancelled, and new claims 60-65 were added.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign mentioned in the description:
106 as seen in page 13 line 30.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character not mentioned in the description:
R designating the resistors seen in FIG. 3.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 60-65 are objected to because of the following informalities:
In claims 60-65 the word “Claim” should be lowercase.
In claim 62 the phrase “sphere-shaped particle” should instead be “a sphere-shaped particle.”
Appropriate correction is required.
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.
Claim 13 is 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.
Claim 13 recites the limitation "the thermal energy" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claims 1 and 11 which claim 13 depends on recite “energy” and “thermal contact” respectively but not specifically thermal energy.
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 1-4, 9, 11, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9, and 11 of U.S. Patent No. 12,163,508 to Thibado et al. (hereinafter Thibado) in view of “One Step Synthesis of Graphene Oxide-Magnetic Nanoparticle Composite” to Shen et al. (hereinafter Shen; provided by Applicant on 12/12/2025).
Regarding claim 1, Thibado teaches an energy harvesting device comprising (Claim 1 Column 23 Line 63):
a membrane disposed on a substrate having a grid of apertures, the apertures each having an open frame supporting freestanding portions of the membrane within each open frame, wherein the membrane comprises a two-dimensional (2D) material exhibiting vibrations (Claim 1 Column 23 Line 64-Column 24 Line 2) and one or more ripples (Claim 1 Column 23 Lines 4-5);
wherein atoms of the membrane move together during the vibration (Claim 1 Column 23 Lines 10-11); and
wherein the atoms are connected together in a network causing the entire membrane to form the one or more ripples and invert the curvature of the ripples to opposite configurations (Claim 1 Column 23 Lines 12-15); and
a component electromagnetically coupled to the membrane and/or the substrate, such that the component is configured to harvest energy from the membrane (Claim 1 Column 23 Lines 16-19).
Thibado does not teach the membrane comprising a plurality of magnetic particles therein.
However, Shin teaches ferromagnetic nanoparticles being deposited on graphene sheets (Page 1498, Column 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Thibado with the ferromagnetic nanoparticles of Shen since this creates composites with new useful functionalities (Page 1498, Column 2).
Regarding claim 2, Thibado in view of Shen teaches the device of claim 1, wherein the two-dimensional material comprises graphene, MoS2, MoSe2, WS2, WSe2, ReS2, ReSe2, or a combination thereof (Thibado Claim 2 Column 24 Lines 20-22).
Regarding claim 3, Thibado in view of Shen teaches the device of claim 1, wherein the two-dimensional material comprises graphene (Thibado Claim 3 Column 24 Lines 23-24).
Regarding claim 4, Thibado in view of Shen teaches the device of claim 1, wherein the membrane has an average thickness of from 0.3nm to 3.0nm, from 0.3nm to 2.0nm, from 0.3nm to 1.0nm, or from 0.3nm to 0.6nm (Thibado Claim 4 Column 24 Lines 25-27).
Regarding claim 9, Thibado in view of Shen teaches the device of claim 1, wherein the substrate comprises copper, silicon, silicon carbide, sapphire, or a combination thereof (Thibado Claim 9 Column 24 Lines 43-45).
Regarding claim 11, Thibado in view of Shen teaches the device of claim 1, wherein the substrate is thermally conductive and the membrane is in thermal contact with the substrate (Thibado Claim 1 Column 23 Lines 64-65).
Regarding claim 13, Thibado in view of Shen teaches the device of claim 1, wherein the thermal energy comprises ambient thermal energy (Thibado Claim 11 Column 24 Lines 52-53).
Regarding claim 60, Thibado in view of Shen teaches the device of claim 1, wherein the magnetic particles comprise iron, cobalt, niobium, manganese, nickel, iron oxide, cobalt oxide, or a combination thereof (Shen Page 1498 Column 2 Paragraph 4).
Allowable Subject Matter
Claims 61-65 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:
Claims 61-65 depend on claim 1 which is rejected under nonstatutory double patenting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA KIEL MIGUEL RODRIGUEZ whose telephone number is (571)272-9881. The examiner can normally be reached Monday - Friday 9:30am - 7:00pm ET.
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, Tulsidas Patel can be reached at (571) 272-2098. 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.
/JOSHUA KIEL M RODRIGUEZ/Examiner, Art Unit 2834
/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
Prosecution Insights