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 .
Examiner’s Note
Upon further consideration of the present claims, prior art of record, and applicant’s remark, specifically,
“Decker also fails to teach or suggest that the condensate of melamine with formaldehyde is a water soluble composition. Decker fails to teach or suggest any solubility of the condensate, let alone in water, or even its use with water. Instead, Decker describes that the polymers used for the thermoplastic and/or thermosetting compositions may be "solvent borne, water soluble or water dispersible, emulsifiable, or of limited water solubility" (See Decker, para. [0013]), without any specifics towards the condensate of melamine with formaldehyde itself.”
(Remarks, page 8);
“In addition, Decker fails to teach or suggest a "wetting agent," as recited in claim 12. The Examiner asserts that the polymeric dispersant is equivalent to a wetting agent. See Office Action, p. 9. A dispersant is well known in the art to assist in stabilizing solids in the dispersion, whereas a wetting agent assists in the surface tension of the dispersion when coating. Therefore, the polymeric dispersant of Decker is not equivalent to the "wetting agent" of claim 12.”
(Remarks, page 9);
“Furthermore, Han only describes the use of melamine formaldehyde resin with ethanol as a solvent. Han is completely silent regarding melamine formaldehyde resin being water soluble, functionalised to be water soluble, or that it could be used in an aqueous solution.”
(Remarks, page 11),
Applicant’s arguments are found persuasive. Therefore, the previous 35 U.S.C. 103 rejections on Decker, Decker in view of Rudhardt, Zhou in view of Han, and Zhou in view of Han and Khan are withdrawn from the record.
However, upon further search, reconsideration of the specification and present claims, a new ground of double patenting, Specification objections and claim objections are provided as set forth below. This is a second non-final Office action.
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 12, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11,618,831 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The present claims require “A liquid dispersion characterised in that the liquid dispersion comprises 2D material/graphitic nanoplatelets, at least one grinding media, water, and at least one wetting agent, and in which the at least one grinding media is water soluble or functionalised to be water soluble and comprises an aqueous solution of a modified aldehyde resin having at least one amine group, in which the 2D material/graphitic nanoplatelets are comprised of one or more of graphene nanoplatelets, graphitic nanoplatelets, and 2D material nanoplatelets and in which the graphene nanoplatelets are comprised of one or more of graphene nanoplates, reduced graphene oxide nanoplates, bilayer graphene nanoplates, bilayer reduced graphene oxide nanoplates, trilayer graphene nanoplates, trilayer reduced graphene oxide nanoplates, few-layer graphene nanoplates, few-layer reduced graphene oxide nanoplates, and graphene nanoplates of 6 to 10 layers of carbon atoms, and the graphitic nanoplatelets are comprised of graphite nanoplates with at least 10 layers of carbon atoms, the graphitic nanoplatelets are comprised of one or more of graphite nanoplates with 10 to 20 layers of carbon atoms, graphite nanoplates with 10 to 14 layers of carbon atoms, graphite nanoplates with 10 to 35 layers of carbon atoms, graphite nanoplates with 10 to 40 layers of carbon atoms, graphite nanoplates with 25 to 30 layers of carbon atoms, graphite nanoplates with 25 to 35 layers of carbon atoms, graphite nanoplates with 20 to 35 layers of carbon atoms, or graphite nanoplates with 20 to 40 layers of carbon atoms, and the 2D material platelets are comprised of one or more of hexagonal boron nitride (hBN), molybdenum disulphide (MoS2), tungsten diselenide (WSe2), silicene (Si), germanene (Ge), graphyne (C), borophene (B), phosphorene (P), or a 2D in-plane or vertical heterostructure of two or more of the aforesaid materials.”
The patent claims meet all limitations of the present claims. Specifically, claim 1 of patent recites “A waterborne protective coating system that comprises at least one binder, water, and a dispersion of 2D material/graphitic nanoplatelets, wherein the 2D material/graphitic nanoplatelets are comprised of one or more of graphene nanoplatelets, graphitic nanoplatelets, and 2D material nanoplatelets and in which the graphene nanoplatelets are comprised of one or more of graphene nanoplates, reduced graphene oxide nanoplates, bilayer graphene nanoplates, bilayer reduced graphene oxide nanoplates, trilayer graphene nanoplates, trilayer reduced graphene oxide nanoplates, few-layer graphene nanoplates, few-layer graphene oxide nanoplates, few-layer reduced graphene oxide nanoplates, and graphene nanoplates of 6 to 10 layers of carbon atoms, and the graphitic nanoplatelets are comprised of one or more of graphite flakes with at least 10 layers of carbon atoms, graphite nanoplates with 10 to 20 layers of carbon atoms, graphite nanoplates with 10 to 14 layers of carbon atoms, graphite nanoplates with 10 to 35 layers of carbon atoms, graphite nanoplates with 10 to 40 layers of carbon atoms, graphite nanoplates with 25 to 30 layers of carbon atoms, graphite nanoplates with 25 to 35 layers of carbon atoms, graphite nanoplates with 20 to 35 layers of carbon atoms, or graphite nanoplates with 20 to 40 layers of carbon atoms, and the 2D material nanoplatelets are comprised of one or more of hexagonal boron nitride (hBN), molybdenum disulphide (MoS.sub.2), tungsten diselenide (WSe.sub.2), silicene (Si), germanene (Ge), graphyne (C), borophene (B), phosphorene (P), or a 2D in-plane or vertical heterostructure of two or more of the aforesaid materials, wherein the dispersion of 2D material/graphitic nanoplatelets comprises the 2D material/graphitic nanoplatelets, water, at least one wetting agent, and at least one grinding media, wherein the at least one grinding media is water soluble or functionalised to be water soluble”.
Claim 10 of the patent further recites “in which the at least one grinding media comprises an aqueous solution of a modified aldehyde resin having at least one amine group”.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
In light of Specification, page 1, lines 7-8, the following title is suggested:
“Aqueous dispersions comprising two-dimensional materials and methods for making thereof”
The disclosure is objected to because of the following informalities:
In Specification, p.1 – line 26, p. 7 – line 22, and p.13, line16, it is suggested to amend “Graphyne” to “graphyne” for proper use of upper and lower case.
Appropriate correction is required.
Claim Objections
Claims 12, 14 and 16 are objected to because of the following informalities:
Claim 12, line 23, it is suggested to amend “Graphyne” to “graphyne” for proper use of upper and lower case.
In order to further provide proper antecedent basis, each line 1 of claims 14 and 16, it is suggested to amend “A liquid” to “The liquid”.
Appropriate correction is required.
Response to Arguments
In light of the amendments in claims 14 and claim 16 and cancelled claim 17, the amendments overcome the previous claim objections and 35 U.S.C. 112(b) rejections.
However, upon reconsideration of the specification and present claims, a new ground of double patenting, Specification objections and claim objections are provided as set forth above.
Upon further consideration of applicant’s remark regarding Decker and Han (Remarks, p. 8-9 and 11), applicants’ arguments are found persuasive. See Examiner’s Note above.
Conclusion
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/CORIS FUNG/
Supervisory Patent Examiner, Art Unit 1732
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