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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/15/2024 has been entered.
Claim Objections
Claim 35 is objected to because of the following informalities: Claim 35 recites “born nitride”. It should be “boron nitride”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al (WO 2016-148252) (see US 2018/0085730 for citation).
Regarding claims 1 and 35, Kobayashi discloses layered substance containing solution, i.e. a composite material, (paragraph 0001) comprising expanded graphite, i.e. exfoliated layered substance, (paragraph 0130), liquid solution containing ionic liquid, i.e. coating, comprising a salt represented by the same formular as recited in claim 1 (paragraphs 0028, 0036) and a fluorostyrene resin, i.e. a resin composition comprising a composite material and a synthetic resin such as fluororesin, (paragraph 0121). Given that Kobayashi discloses the layered substance is dispersed in the ionic liquid, it is clear that the layered substance is coated with the liquid solution.
Kobayashi fails to disclose the amount of coating liquid as claimed in present claim.
Since the instant specification is silent to unexpected results, the specific amount of coating is not considered to confer patentability to the claims. As the physical properties are variables that can be modified, among others, by adjusting the amount of coating, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of the coating on the exfoliated layer of Kobayashi to obtain the desired physical properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Response to Arguments
Applicant's arguments filed 01/15/2025 have been fully considered but they are not persuasive.
Applicant argues that Kobayashi does not disclose the synthetic resin of amended claim 1. However, it is noted that the reference of Kobayashi does disclose the synthetic resin of claim 1 in paragraph 0121 as explained above.
Applicant argues that a skilled person in the art would have understood that the hydrolyzable polymer and the thermally decomposable polymer are needed to peel the layered substance off from the layered laminate, and that if the layered substance containing solution of Kobayashi does not contain the hydrolyzable polymer or the thermally decomposable polymer, the object of Kobayashi cannot be achieved, which means Kobayashi does not provide any motivation, but rather teaches away from, the use of the recited synthetic resin instead of the hydrolyzable polymer or the thermally-decomposable polymer. However, it is noted the present claims are drawn to a resin composition comprising a composition material and a synthetic resin and when Kobayashi structure has layered laminate with thermally decomposable polymer attached to it, the layered laminate of Kobayashi meets the presently claimed limitation.
Conclusion
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/SAMIR SHAH/Primary Examiner, Art Unit 1787