Detailed Office Action
The communication dated 7/30/2026 has been entered and fully considered. Claim 15 is withdrawn from examination. Claims 1-15 remain pending.
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 Invention I (claims 1-14) in the reply filed on 7/30/2026 is acknowledged. Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention II.
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 2 and 9 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 2 recites the broadest limitation of “the adhesion promoter comprises an organic chemical compound which comprises any of a hydroxy group, a carboxylic group, an amine group, an aldehyde group or a combination thereof” followed by a narrower limitation of “the adhesion promoter comprising a hydroxy group containing chemical compound” which is then followed by the narrowest limitation of “the adhesion promoter comprising any of glucose, a lactic acid, a citric acid, a tartaric acid, or a catechol”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claim 2 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. As such this claim is rejected. For the purpose of examination, the Examiner considers claim 2 to recite only the narrowest limitation of “the adhesion promoter comprising any of glucose, a lactic acid, a citric acid, a tartaric acid, or a catechol”, since this limitation also reads on the broader limitations.
Claim 9 recites the limitation "the first solution" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the Examiner replaces this limitation with “the etchant solution” that has already been recited in this 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 1, 4-9, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over ROMAGNOLI (EP-3948935-B1; of record), hereinafter ROMAGNOLI, in view of WANG (CN-114084883-A and its English translation), hereinafter WANG, and as evidenced by WANG. Note that the italicized text below are the instant claims.
Regarding claim 1, ROMAGNOLI discloses A process for obtaining a product which comprises graphene {[0001]}, the process including the following steps:
providing a layered structure which across a cross section of the same comprises stacked, in the same order, a rigid substrate, an adhesive polymer layer, graphene and a copper layer attached to a surface of the graphene {[0011]/[0075]/[FIG. 2] 2 is the graphene on copper, 3 is the adhesive layer (note that it is adhered to 2, thus adhesive layer) and 4 is the rigid substrate},
removing the copper layer, thereby exposing the surface of the graphene {[0075] note the delamination and removal of sacrificial substrate which is the copper, thus graphene is exposed},
and treating the exposed surface of the graphene with an adhesion promoter {[0075]/[claim 5] note rinsing the surface of graphene with water that as evidenced by WANG in [0004] increases the hydrophilicity of the surface (due to water, note no drying is taught) and thus promote adhesion, thus treating with an adhesion promoter}.
ROMAGNOLI, however, is silent on treating the exposed surface of graphene with an amine chemical compound or the last limitation of claim 1, reciting “and an amine containing chemical compound”.
In the same field of endeavor that is related to transferring graphene layer, WANG discloses that treatment with formamide (contains amine) can further enhance or improve adhesion of graphene {[0004]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of WANG in the method of ROMAGNOLI and have included treatment with an amine compound. As disclosed by WANG, this amine compound further improves the hydrophilicity of the graphene surface and thus enhances its adhesion {[0004]}.
Regarding claim 4 and 5 limitations of “wherein the treating of the exposed surface of the graphene comprises wetting the exposed surface with a first solution comprising the adhesion promoter, and afterwards wetting the exposed surface with a second solution comprising the amine containing chemical compound, the concentration of the amine containing chemical compound in the second solution being from 10-7 vol% to 1 vol%”, “wherein the concentration of the adhesion promoter in the first solution is at least 1mM”, as discussed under claim 1, the adhesion promoter is water and thus the claimed concentration is met (more than 1mM). Additionally, incorporation of WANG in the method of ROMAGNOLI, indicates that following the rinsing by ROMAGNOLI, treatment with formamide is performed; that meets the claimed sequence.
Regarding the claimed range of amine containing chemical compound concentration, WANG discloses soaking in formamide solution for different time periods to improve the hydrophilicity of the graphene surface and thus enhance its adhesion {[0011]}. WANG is silent on the concentration of formamide. However, the Examiner submits that since WANG teaches the various exposure time to obtain optimum hydrophilicity, one of ordinary skill in the art also recognizes that concentration of formamide also affects the extent of hydrophilicity and thus this concentration is a result-effective variable.
It is well established that determination of optimum values of result-effective variables (in this case the effect of concentration of formamide on optimum hydrophilicity) is within the skill of one practicing in the art {see MPEP 2144.05 (ll)(B)}. At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have optimized the formamide concentration which is a result-effective variable through routine experimentation to have determined the minimum concentration necessary to achieve optimum hydrophilicity or adhesion enhancement that in certain cases will meet the broad claimed range.
Regarding claim 6 limitation of “wherein the treating of the exposed surface of the graphene comprises wetting the exposed surface with a compound solution comprising the adhesion promoter and the amine containing chemical compound, the concentration of the amine containing chemical compound in the compound solution being from 10-7 vol% to 1 vol% and the concentration of the adhesion promoter in the compound solution is at least 1mM”, as discussed under claims 4-5 above, the combination of ROMAGNOLI and WANG meets all these limitations; however, is silent on the one-step treatment with adhesion promoter and amine compound.
It has been held that generally no invention is involved in the broad concept of performing simultaneously operations which have previously been performed in sequence. In re Tatincloux, 108 USPQ 125. Therefore, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have performed both treatments in one step. One would have been motivated to do so to increase the speed of the treatment step.
Regarding claim 7, ROMAGNOLI discloses wherein the removing of the copper layer comprises applying an electrochemical delamination of the graphene from the copper layer, or a chemical etching of the copper layer using an etchant solution, the etchant solution comprising hydrochloric acid {[0011]/[0012] note that hydrochloric acid is a known etching solution and can easily dissolve copper}.
Regarding claim 8 limitation of “wherein the removing of the copper layer comprises the chemical etching of the copper layer using the etchant solution, and the etchant solution comprises the adhesion promoter and/or the amine containing chemical compound, and the treating of the exposed surface of the graphene comprises wetting the exposed surface with the etchant solution”, as discussed above under claim 6, it has been held that generally no invention is involved in the broad concept of performing simultaneously operations which have previously been performed in sequence. In re Tatincloux, 108 USPQ 125. Therefore, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have performed all aqueous treatments (etching, water, and amine solution) in one step. One would have been motivated to do so to increase the speed of the process.
Regarding claim 9 limitation of “wherein the etchant solution comprises the adhesion promoter, and the concentration of the adhesion promoter in the etchant solution is at least 1mM, the adhesion promoter being a hydroxy group containing chemical compound”, see claims 4-8 above and note that water molecule contains an hydroxy group.
Regarding claims 11-12 limitations of “wherein the concentration of copper on the treated exposed surface of the graphene is less than 1012 atoms/cm2”, “wherein the concentration of the copper is measured with total reflection X-Ray fluorescence”, as disclosed by ROMAGNOLI, the purpose of its invention is to eliminate any copper transfer residue {[0007]/[0008]}, therefore these limitations are met. Note that measurement method for copper is known.
Regarding claim 13, ROMAGNOLI discloses further comprising the steps of bonding a target substrate to the treated exposed surface of the graphene, thereby obtaining an intermediate structure which across a cross section of the same comprises, in the same order, the rigid substrate, the adhesive polymer layer, the graphene and the target substrate {[0075] note, after removing copper, attaching graphene to a target substrate}.
Regarding claim 14, ROMAGNOLI discloses further comprising removing the rigid substrate and subsequently removing the adhesive polymer from the rest of the intermediate structure {[0075] note, after having fixed the graphene to target substrate, removing the free-standing bilayer which is the rigid substrate and adhesive polymer}.
The Examiner notes it has been held that generally no invention is involved in the broad concept of performing simultaneously operations which have previously been performed in sequence. In re Tatincloux, 108 USPQ 125. This indicates that removal of rigid substrate and adhesive polymer could have been done simultaneously or sequentially by one of ordinary skill in the art.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of ROMAGNOLI and WANG as applied to claim 1 above, and further in view of KOCHERGINSKY (US-2002/0060162), hereinafter KOCHERGINSKY.
Regarding claim 3, the combination of ROMAGNOLI and WANG discloses all the limitations of claim 1 as discussed above. This combination, however, is silent on the limitation of claim 3 reciting “wherein the amine containing chemical compound is methylamine”. The Examiner notes that WANG discloses the purpose of its amine compound (formamide) is to increase hydrophilicity of graphene surface and thus enhance its adhesion property {[0004]}.
KOCHERGINSKY teaches that another amine compound i.e., methylamine also is hydrophilic {[0024]} and thus can increase the hydrophilicity of the graphene surface.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the formamide of WANG with methylamine of KOCHERGINSKY, since it has been held that a simple substitution of one known element for another to obtain predictable results is within the skill of one of ordinary skill in the art {see MPEP 2143 (I)(B).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of ROMAGNOLI and WANG as applied to claim 1 above, and further in view of WHANG (US-2021/0276317), hereinafter WHANG.
Regarding claim 10, the combination of ROMAGNOLI and WANG discloses all the limitations of claim 1 as discussed above.
ROMAGNOLI further discloses wherein the step of providing the layered structure comprises: growing the graphene on the copper layer, by chemical vapor deposition, thereby forming a first stack that comprises the graphene and the copper layer {[0015]/[0018]/[0021]}.
This combination, however, is silent on the remainder limitation of claim 10.
In the same field of endeavor that is related to graphene transfer, WHANG discloses depositing the adhesive polymer layer on the rigid substrate, thereby forming a second stack that comprises the adhesive polymer and the rigid substrate; bonding together the first and second stack via attaching the surface of the graphene to the adhesive polymer layer {[0011], [FIGs. 1-3] note the first stack 10 and the second stack 20 are prepared and then put together to create the final stack 40}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the stack formation process of ROMAGNOLI with that of WHANG, since it has been held that a simple substitution of one known element for another to obtain predictable results is within the skill of one of ordinary skill in the art {see MPEP 2143 (I)(B). Since the purpose of both ROMAGNOLI and WHANG is to prepare identical final stack, this substitution will yield predictable results.
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The Examiner notes that as discussed under section 35 USC 112(b) above, the Examiner has replaced claim 2 with only the last limitation reciting “the adhesion promoter comprising any of glucose, a lactic acid, a citric acid, a tartaric acid, or a catechol”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
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