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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 11, 2026 has been entered.
Election/Restrictions
Newly submitted claim 37 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 37 is directed to the method of making a shielding material, which is independent and distinct from Applicant’s original election of Group II (radiation shield) on August 25, 2025.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 37 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim 36 is 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 36 recites “uncoated heavyweight aggregate particles” and “structural element”; this renders the claim indefinite as there is no found support for “coated” or “uncoated” heavyweight aggregate particles” and “structural element”; hence, is new matter. The added limitation in the claim lacks literal basis in the specification as originally filed, see Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff'd mem. 738 F.2d 453 (Fed. Cir. 1984).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al (US Application 2011/0068291 (already of record)) in view of Hamilton et al (US Patent Application 2013/0277616).
Regarding claim 36, Park et al teaches materials which shield electromagnetic effects and radiation comprising a polymer matrix and superstrong nanotubes (Abstract). Park et al further teaches superstrong nanotube inclusions such as boron nanotubes and boron nitride nanotubes that provide mechanical reinforcement and thermal stability for the polymer matrix (Paragraph 40). However, Park et al fails to specifically disclose aggregated barite.
In the same field of endeavor, Hamilton et al teaches a radiation shielding member comprising distributed radiation shielding material dispersed in a matrix (Abstract). Hamilton et al further teaches radiation shielding materials may be incorporated into a matrix to provide attenuation across a portion of the electromagnetic spectrum; exemplary including aggregated material such as barite (Paragraph 31).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided aggregated barite in Park et al in view of Hamilton et al in order to provide additional radiation shielding material into the radiation shielding material in Park et al in view of Hamilton et al in order to provide attenuation across a portion of the electromagnetic spectrum as taught in Hamilton et al. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07. Furthermore, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Goldin et al (RU2355081C1) in view of Park et al (US Application 2011/0068291 (already of record)).
Regarding claim 36, Goldin et al discloses the invention substantially as claimed. Goldin et al teaches a radiation shielding material comprising a polymer binder/matrix comprising clusters of ferrite (Abstract, Paragraphs 16-17, 20-22, 27). However, Goldin et al fails to specifically disclose boron nanotubes.
In the same field of endeavor, Park et al teaches materials which shield electromagnetic effects and radiation comprising a polymer matrix and superstrong nanotubes (Abstract). Park et al further teaches superstrong nanotube inclusions such as boron nanotubes and boron nitride nanotubes that provide mechanical reinforcement and thermal stability for the polymer matrix (Paragraph 40).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided boron nanotubes in Goldin et al in view of Park et al in order to provide mechanical reinforcement and thermal stability to the polymer matrix as taught in Park et al. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Response to Arguments
Applicant’s arguments with respect to claim 36 have been considered but are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 July 24, 2026
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