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 § 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.
Claim 1-4 and 8-13, 15 are rejected under 35 U.S.C. 103 as being unpatentable over in Kanagawa (U.S. 5,041,507) view of Haddon (U.S. 20100140792).
Kanagawa teaches compositions which comprise phenolic resins, an epoxy resin and containing fiber as a reinforcing material. (Column 3 lines 3-10). The amount of carbon fiber (exemplified, See Example 11 for instance) is 10 to 60 vol %. (Column 6 lines 40-45). The types of fibers including carbon fiber are taught in Column 5 lines 60-68. Amine curing agents are taught in Column 2 lines 30-55. These read over the epoxy / thermoset and curing agents of Claim 1, Claim 2, Claim 3, Claim 4 and Claim 15, the fiber types and amounts of Claim 1, Claim 12, Claim 13, and Claim 14.
Kanagawa does not teach or suggest the 2-dimensional material of Claim 1.
Haddon, working in the field of nanoparticle and fiber reinforced composites similar to as Applicant, teaches graphene nanoplatelets for thermal interface materials advanced composites and thin film coatings provides material systems with superior mechanical, electrical, optical, thermal and antifriction properties. (Abstract)
These are used for microelectronic packaging and circuit packages (¶[0057]. Haddon’s GNP-800 has a 200 aspect ratio ¶[0050] and also other polymers may be used to make the composites ¶[0053]. Haddon teaches the amount of the graphene nanoplatelets is 0.2 to 1 vol % or 2 vol % preferably. (¶[0053]). These nanoplatelets are 2D structures. (¶[0030])
Kanagawa is also drawn to heat resistance (i.e. thermal interface materials) and advanced composites (composites for aircraft and engines and automobiles) Column 2 lines 2-6 and Column 1 lines 20-40.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Kanagawa by adding the graphene nanoplatelets taught by Haddon to produce thermal interface materials advanced composites and thin film coatings provides material systems with superior mechanical, electrical, optical, thermal and antifriction properties. One of ordinary skill in the art would have been motivated to choose the GNP-800 nanoparticles with an aspect ratio of 200 in the above modification because Haddon exemplifies. (¶[0072]). One of ordinary skill in the art would have been motivated to choose to use 0.2 to 1 or 2 vol % in the above modification because Haddon suggest such amounts.
The above 2D graphene nanoplatelets of 200 aspect ratio in an amount of 0.2 vol % to 1 vol % or 2 vol % reads over the 2D material of the common technical feature.
This reads over Claim 8, Claim 9, Claim 10, and Claim 11.
Response to Arguments
Applicant’s claim amendments and remarks filed September 23, 2025 have been fully considered but are not persuasive. Applicant has placed the limitations of previous Claim 14 into Claim 1 on amendment. Claim 14 was not rejected by Burton and therefore the rejections of Burton and Haddon are withdrawn. The rejections of Kanagawa and Haddon are modified to remove Claim 14 from the rejection line and maintained. This modification is necessitated by Applicant’s amendment.
Applicant’s remarks filed September 23, 2025 have been fully considered but are not persuasive.
Applicant argues there is no motivation to combine Kanagawa and Haddon because Kanagawa is drawn to heat resistance and Haddon is drawn to thermal interface materials. This argument is not persuasive.
The motivation to use graphene nanoplatelets of Haddon in the compositions of Kanagawa are produce thermal interface materials advanced composites and thin film coatings provides material systems with superior mechanical, electrical, optical, thermal and antifriction properties. Applicant has not argued the motivation to combine of record and therefore, this argument is not persuasive.
Considering Applicant’s argument at an argument to analogous art instead is similarly not persuasive as Applicant has neglected relevant portions of the rejection. Haddon, working in the field of nanoparticle and fiber reinforced composites similar to as Applicant. This area is directed to the problem faced by Applicant or reasonably pertinent to the problem addressed by Applicant because the use of these graphene nanoparticles is taught to material systems with superior mechanical, electrical, optical, thermal and antifriction properties. Applicant has used these nanoplatelets along with fibers to reinforce the underlying polymer materials; fiber reinforcement of polymer matrixes to increase mechanical properties is common hence the term fiber reinforcement. See as-filed specification page 10 lines 30-36.
Kanagawa is also drawn to heat resistance (i.e. thermal interface materials) and advanced composites (composites for aircraft and engines and automobiles) Column 2 lines 2-6 and Column 1 lines 20-40. Applicant has neglected the composites teachings and the benefits of using the graphene nanoplatelets in their arguments. The reference is good for all it teaches including nonpreferred embodiments.
Additionally, the rationale underpinning to combine the references is explicitly in the rejection, produce thermal interface materials advanced composites and thin film coatings provides material systems with superior mechanical, electrical, optical, thermal and antifriction properties. Applicant has not addressed the motivation to combine of the rejection, therefore, these arguments are not persuasive.
Applicant argues Haddon’s examples limit the disclosure and that the rejection of record picks and chooses from different parts of Haddon because of the examples. This argument is not persuasive.
The rejection of record specifically states Haddon teaches the graphene nanoparticles graphene nanoplatelets for thermal interface materials advanced composites and thin film coatings provides material systems with superior mechanical, electrical, optical, thermal and antifriction properties. (Abstract) There is no picking and choosing present because the motivation and teaching are directed to these nanoplatelets causing superior mechanical, electrical, optical, thermal and antifriction properties.
Applicant also does not address the rejection of record. The amount added is detailed in the rejection of record; One of ordinary skill in the art would have been motivated to choose to use 0.2 to 1 or 2 vol % in the above modification because Haddon suggest such amounts. It is unclear where Applicant’s 5 vol % arguments come from because adding 5 vol % to the compositions of Kanagawa is not part of the rejection of record. Further, Applicant’s arguments to the amount of SWNT being added or not added in a sufficient amount are also not persuasive because adding SWNT is not part of the rejection of record. The benefits of using nanoplatelets are to the nanoplatelets themselves and not the combination of nanoplatelets and SWNTs. The motivation in the abstract for superior mechanical, electrical, optical, thermal and antifriction properties is specific to nanoplatelets and not nanoplatelets and SWNTs. There is no picking and choosing going on nor is there any complicated analysis of the examples even required to motivated one of ordinary skill in the art to use 0.2 to 1 or 2 vol % of graphene nanoplatelets in Kanagawa to provide superior mechanical, electrical, optical, thermal and antifriction properties in the composites of Kanagawa.
Applicant further argues secondary considerations and age of the references used. These arguments are not persuasive. The prior art is good for all it teaches. The age of the references nor age gap between the references is not a factor in secondary considerations as currently argued. The teachings are applicable to be put together at any time. There is no requirement that everything invented has to be put together in every possible way with everything previously invented and only those disclosures are available as prior art, as Applicant’s arguments appear to imply.
For the above reason the Examiner disagrees with Applicant’s remarks and reminds Applicant of their right to appeal the above decision.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached on 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766