DETAILED ACTION
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
Applicant’s amendment filed on 07/23/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below and this office action is non-final. Claims 13 and 15-24 are examined on the merits in this office action.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 13 and 15-24) in the reply filed on 07/23/2026 is acknowledged.
Claims 1-3 and 5-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/23/2026.
Claim Objections
Claim 13 is objected to because of the following informalities: Claim 13, line 7 recites “the nanomaterial is”, which should be “the nanomaterials or particles are”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: Claim 18, line 2 recites “the metal ion”, which should be “the metal cation”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: Claim 18, line 6 recites “the salt”, which should be “the at least one salt”. Appropriate correction is required.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 13 and 15-24 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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.
Claim 13 recites “a solute distributed on a surface of the nanomaterials or particles in the coating”. While there is support for solute distributed on a surface of the particles (see Figure 1), there is no support to recite solute distributed on a surface of nanomaterials. This rejection affects all the dependent claims.
Claim 13 recites “the nanomaterial is exfoliated and/or dispersed”. While there is support for the nanomaterial is exfoliated and/or dispersed after sonication (see paragraph 0007 of present specification), there is no support for broad disclosure of the nanomaterial is exfoliated and/or dispersed. This rejection affects all the dependent claims.
Claim 16 recites “the substrate comprises……., a glass sheet, a metal foil, a paper, or a combination thereof”. While there is support for the substrate that is hydrophobic and the substrate that comprises a glass sheet, a metal foil, a paper, or a combination thereof, there is no support for substrate that is both hydrophobic and substrate that comprises a glass sheet, a metal foil, a paper, or a combination thereof at the same time as recited in claim 16.
Claim 23 recites “MXene in the coating has d-spacing along (002) plane greater than 13 Angstrom”. While there is support in Table 1 of the present specification for specific MXenes having specific d-spacing (13.22 to 14.60), there is no support for broad disclosure of any MXene having a d-spacing greater than 13 Angstrom (i.e. no support for value of 13.05, 13.1, etc. and no support for value of greater than 14.60).
Claim 24 recites “the coating has a sheet resistance of 10 ohm/sq or lower”. While there is support for a specific coating comprising specific nanomaterial and specific solute on a specific substrate, wherein the specific coating is obtained using specific assembly time and wherein the specific coating has a specific sheet resistance (4.7 to 10 ohm/sq) (see paragraph 0179, Table 3 of present specification), there is no support for broad disclosure of any coating having a broad disclosure of sheet resistance as presently claimed.
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 21, 23 and 24 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.
Claim 21 recites “the coating comprises MXene”. The scope of the claim is confusing given that it is not clear if the coating comprises MXene as nanomaterials or particles or if the coating comprises MXene in addition to nanomaterials or particles. For the purpose of examination, the examiner construes that the coating comprises MXene as nanomaterials or particles. This rejection affects all the dependent claims.
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 13 and 15-23 are rejected under 35 U.S.C. 103 as being unpatentable over Ghidiu et al. (WO 2016/049109 A2 cited in IDS).
Regarding claims 13, 15, 16, 18 and 21, Ghidiu et al. disclose a coated film (article) comprising MXene film (coating) disposed on a substrate surface, wherein the coated film is electrically conductive (see paragraph 0066). The MXene film is obtained by applying MXene dispersion comprising MXene material such as MXene platelets dispersed (nanomaterial is dispersed) in a solvent such as aqueous or organic solvent, and containing lithium salts (solute) such as LiCl as intercalating material (see paragraphs 0066, 0072, 0091). This reads on a solute distributed in the coating. Further, given that LiCl (solute) is intercalating material, LiCl (solute) will necessarily be distributed on at least a surface of the MXene platelets (nanomaterials or particles). The other types of intercalated ions include sodium ions, potassium ions, rubidium ions, calcium ions or magnesium ions, which are obtained from NaCl, KCl, KBr, RbCl, MgCl2 and CaCl2 (see page 54, claim 68 and paragraph 0091). These salts are used with an aqueous solvent, and are necessarily soluble in the solvent (see paragraph 0091). The intercalating alkali metal and alkaline earth metal ions are present within MXene framework (see paragraph 0017).
Further, Ghidu et al. disclose MXene material includes titanium carbide nano platelets (nanomaterial) derived from Ti3C-2Ts) (see paragraph 0018). MXene platelets have at least one mean lateral dimension of about 0.1 micron to about 50 micrometers, i.e. about 100 to about 50,000 nm (see paragraph 0093). That is, MXene platelets are nano platelets (nanomaterial).
Ghidiu et al. disclose MXene platelets include titanium carbide nano platelets (nanomaterial) derived from Ti3C-2Ts (wherein Ts refers to surface terminations) (see paragraph 0018), identical to that utilized in the present invention and therefore, the MXene platelets would necessarily inherently be hydrophilic (see paragraph 0149 of present specification). As evidenced by the present specification, Ti3C-2Ts is hydrophilic (see paragraph 0149 of present specification). The substrate includes polymer such as polyetheretherketone (see paragraph 0077). As evidenced by the present specification, polyetheretherketone is hydrophobic polymer (see paragraph 0208 of present specification).
In light of the overlap between the claimed article and that disclosed by Ghidiu et al., it would have been obvious to one of ordinary skill in the art to use an article that is both disclosed by Ghidiu et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 17, Ghidiu et al. disclose that MXene platelets have at least one mean lateral dimension of about 0.1 micron to about 50 micrometers, i.e. about 100 to about 50,000 nm (see paragraph 0093). That is, MXene platelets are nano platelets (nanomaterial). Further, Ghidiu et al. disclose the MXene film is Angstroms-or nanometer thick film (see paragraphs 0018). A specific example includes 9 to 10 Angstrom, i.e. 0.9 to 1 nm thick MXene film (see Figure 2C and paragraph 0204).
Regarding claim 19, Ghidiu et al. disclose MXene material can comprise plurality of MXene layers (see paragraph 0052). Specifically, MXene material comprises a stacked assemblies (layered nanomaterials) having ions intercalated between the layers (see paragraph 0052).
Ghidiu et al. do not explicitly disclose a sizing of spacing controlled by species of the solute. However, Ghidiu et al. disclose that different intercalated ions include lithium ions sodium ions, potassium ions, rubidium ions, calcium ions or magnesium ions can be used (see page 54, claim 68). These ions have different ionic radius (see pages 43-44, Table 2). Given that different types of ions can be used and given that different types of ions have different ionic radius, a size of spacing is necessarily controlled depending on the type ion (metal ion of salt or species of solute) used.
Regarding claim 20, Ghidiu et al. disclose the coating comprising is electrically conductive (see paragraphs 0018, 0020). Further, the coating comprising MXene is identical to that presently claimed. Therefore, the coating is necessarily inherently electrically conductive, thermally conductive or both electrically and thermally conductive.
Regarding claim 22, Ghidiu et al. disclose MXene material includes Mn+iXn(Ts), wherein Ts is surface terminations comprising hydroxide (see paragraph 0080). Given that the MXene material includes surface terminations identical to those used in the present invention, the hydroxyl groups would necessarily react with each other to provide chemical bonding (see paragraph 0204 of present specification). Accordingly, MXene nanomaterial is chemically bonded with each other in the coating.
Regarding claim 23, Ghidiu et al. disclose MXene nanomaterial can be Na-Ti3C2Tx (see pages 43-44, Table 2), is identical to that utilized in the present specification (see Table 1, paragraph 0171). Therefore, Na-Ti3C2Tx of Ghidiu et al. necessarily inherently has a d-spacing along (002) plane greater than 13 Angstrom, wherein the d-spacing is measured using X-ray diffraction.
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 13 and 15-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 19/288278. Although the claims at issue are not identical, they are not patentably distinct from each other because of following reasons.
Copending application disclose an article. The only differences between the present claims and the copending claims are that the copending claims (i) do not disclose a solute distributed on a surface of the nanomaterials or particles in the coating (ii) do not disclose the coating is electrically conductive, thermally conductive, or both electrically and thermally conductive (iii) do not disclose MXene in the coating has a d-spacing as presently claimed and (iv) do not disclose the coating has a sheet resistance as presently claimed.
Regarding (i), Applicants’ attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to page 26, paragraph [0140] of 19/288278 that discloses ions from salt (i.e. solute) is adhered on surface of particles.
In light of the above, it would therefore have been obvious to one of skill in the art to utilize a solute (ion) distributed on a surface of the nanomaterials or particles in the coating in 19/288278, and thereby arrive at the claimed invention.
Regarding (ii) and (iv), given that the coating comprising MXene of copending application is identical to that presently claimed, the coating of copending application has properties as presently claimed.
Regarding (iii), given that MXene including solute of copending application is identical to that that presently claimed, MXene of copending application has a d-spacing as presently claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 07/23/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above.
Applicants argue that Ghidiu does not teach or suggest the features of "the coating comprising nanomaterials or particles and a solute distributed on a surface of the nanomaterials or particles in the coating, wherein the solute comprises at least one salt, and the solute is soluble in a solvent, , and wherein the nanomaterial is exfoliated and/or dispersed," as recited in amended claim 13. According to the Action citing Ghidiu's paragraphs [0066], [0072], and [0091], Ghidiu discloses a method of making a MXene film, and a salt such as a lithium salt is used for intercalation. Applicant respectfully points out that such a salt and an acid such as HF are used for etching and intercalating (including ion-exchanging) in the process of making MXene (not in the coating process). See Ghidiu, paragraphs [0090]-[0091] and [0177]-[0178]. See also Ghidiu, paragraph [0066]. After etching, the samples "were washed to remove the reaction products" (i.e., the acid and the salt), and the process is used for "intercalating metal ions into the MXene frameworks." See e.g., Ghidiu, paragraph [0178]. See also Ghidiu, paragraph [0017] as recited in the Action. Applicant argues that Ghidiu does not disclose the same process used in the present invention (solute-assist assembly process) that results in the solute distributed on a surface of the nanomaterials and/or particles.
However, while Ghidiu may not disclose a solute-assist assembly process as used in the present invention, Ghidiu disclose LiCl (salt) as an intercalating material. Given that LiCl will be intercalated between Mxene framework, LiCl (solute) will necessarily be distributed on at least a surface of the MXene platelets (nanomaterials or particles), absent evidence to the contrary.
Applicants argue that for another example, Ghidiu does not teach or suggest the features of "wherein the nanomaterials or particles are hydrophilic while the substrate is hydrophobic," as recited in amended claim 13. In the instant application, the solute assisted assembly process can be used to form a coating of nanomaterials or particles on any substrate including hydrophilic and hydrophobic substrates. The surprising results includes at least the coating comprising hydrophilic nanomaterials or particles on a hydrophobic substrate. In Ghidiu, a MXene coating is made by applying a MXene dispersion including MXene platelets and a solvent following by removing at least a portion of the solvent. As a person of ordinary skill in the art understands, such a solvent containing dispersion process generally does not result in a good coating because of the incompatibility between the hydrophilic nanomaterials or particles on the hydrophobic substrate.
In light of amendments, new grounds of rejections are set forth above. Ghidiu disclose hydrophilic nanomaterial and hydrophobic substrate as noted above. Regarding “a solvent containing dispersion process generally does not result in a good coating because of the incompatibility between the hydrophilic nanomaterials or particles on the hydrophobic substrate”, the fact remains that Ghidiu does disclose a coated film (see paragraph 0020) comprising hydrophilic nanomaterial or particle on a hydrophobic substrate. Further, applicants have not established criticality of solute assisted assembly process over solvent containing dispersion process.
In light of amendments, previous 112(b) rejections are withdrawn. However, new 112(b) rejections are set forth above in light of amendments.
In light of amendments and terminal disclaimer, previous double patenting rejections are withdrawn. However, a new double patenting rejection is set forth above in light of amendments.
Conclusion
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/KRUPA SHUKLA/Examiner, Art Unit 1787
