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 .
Specification
The amendment filed March 24, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The applicant’s amendment changes to paragraph [0029] of the specification modify the dimensional characteristics of the graphene within the disclosed composition from having a maximal linear extent in the three orthogonal X Y Z directions of between 3 and 50 nm to a minimum linear extent in the Z-direction of between 3 and 50 nm. The amendment also removes a previously described secondary linear extent of the maximal linear extent mentioned above.
The narrowing of the three orthogonal directions to only the z-direction is clearly supported since the previous version contemplated the limitation of the z direction alongside the x and y directions, however the modification of a maximal linear extent to a minimum linear extent fundamentally changes the scale of the particles to size ranges which differ dramatically from the previous version. The specification provides no support for the newly added range beyond incorporation of particles which happen to fall within said range. To the contrary, elsewhere in the specification, it is stated that the graphene of the disclosure may include thicknesses ranging from single layer graphene up to 10 layers (c.f. paragraphs [0014]-[0015]). Given, within the Applicant’s arguments, that the thickness of a single graphene layer is approximately 3.37 angstroms (0.37 nm, see Applicant’s Remarks filed March 24, 2026 at p.8), the thickness of the graphene may range from about 0.37 nm (a single layer) to at least 3.7 nm (10 layers). This fact is directly contradictory to the amended which intends to state that the thickness be limited to between 3 and 50 nm.
Applicant is required to cancel the new matter in the reply to this Office Action.
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.
Claims 1-8, 10, 12-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Serobian (US 2012/0252923 A1) in view of Huang (US 2004/0171744 A1), Young (US 2011/0217544 A1), and Diamond (US 2007/0277697), and further in view of Zhu (US 2010/0086760 A1).
Regarding claims 1, 6, and 10, Serobian teaches a composition for treating automotive surfaces (Abstract), comprising a silicone resin ([0063]), siloxane oils ([0070]) which may form emulsions in water ([0131]), optional adjuncts ([0140]) and water to form an aqueous dispersion ([0131]). The optional adjuncts are taught as included in amounts ranging from 0.01 to 5 wt.% ([0124]), which overlaps the claimed range of “0.001 to 1 total weight,” establishing a prima facie case of obviousness. Serobian also teaches that the volatiles from the composition evaporate after application onto a surface ([0078]).
Regarding the claimed limitation wherein the composition must include water, Serobian teaches the incorporation of water (e.g., p. 14, claim 22, and [0019]).
Serobian teaches the incorporation of nanoparticulate materials within the optional adjuncts ([0140]) as part of a wide range of additives (see, e.g., p. 7-8, [0121]-[0122]; p. 10, [0140]), but differs from claim 1 because it is silent with regard to the incorporation of graphene within the claimed size range.
In the same field of endeavor, Young teaches surface coatings containing performance enhancing additives (p. 1, [0007]). The coatings include a fluid comprising a population of particles from 0.1 nm to 100 microns in size (p. 2, [0029]). Young’s coatings are used to create tactile surface enhancements, for example hydrophobic surfaces, in exterior automotive coatings (p. 9, [0123]-[0124]). Suitable particles having the indicated particle size include graphene (p. 19, claim 42). It therefore would have been obvious to one having ordinary skill in the art to incorporate graphene with particle sizes ranging from 0.1 nm to 100 microns as an optional adjunct within the formulation of Serobian for the purpose of creating tactile surface enhancements (e.g., imparting a hydrophobic surface) within the coating of Serobian. The particle size range of 0.1 nm to 100 microns encompasses the claimed range of “1 to 5 microns,” establishing a prima facie case of obviousness.
Serobian as modified by Young further differs from claim 1 (and claim 10) because it is silent with regard to the use of graphene having 2 to 10 layers and graphene oxide.
In the same field of Endeavor, Zhu teaches a reinforced silicone film (Abstract) which is useful as a coating in the automotive industry ([0003]), which is optionally reinforced with a carbon materials ([0030]) such as graphene sheets ([0025]) and graphene oxide ([0026]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art to substitute graphene sheets and/or oxidized graphene, which read on the claimed graphene having 2 to 10 layers and the claimed “graphene oxide,” respectively, into the formulation of Serobian as modified, as taught by Zhu, as Zhu recognizes these as suitable graphene materials for use in automotive silicone coating films.
Serobian further differs from claim 1 because it is silent with regard to the silicone emulsion being a microemulsion. However, Serobian teaches that the inventive silicone emulsion has an average particle size distribution of around and/or below 500 microns ([0138]), and does not teach or envision a minimum particle size for the aforementioned emulsion.
In the same field of endeavor, Huang teaches silicone resins in a microemulsion (Abstract), wherein the microemulsion form allows for forming a stable system that allows for the uniform dispersion of the silicone resins onto a substrate surface and also provide a transparent coating that is more attractive-looking and durable ([0010] – [0017] and [0028]), and teaches that microemulsions contain a dispersed phase of small droplets with sizes ranging from 10 to 100 microns ([0013]). Therefore, it would have been obvious to one of ordinary skill in the art to incorporate an average emulsion droplet size ranging from 10 to 100 microns, as taught by Huang, into the emulsion of Serobian to craft a silicone dispersion which uniformly spreads onto a substrate surface to produce a transparent and durable coating.
Serobian finally differs from claim 1 because, while it teaches the incorporation of organic solvent in amounts ranging from about 0.001 to about 25 wt% ([0099]), it is silent with regard to the organic solvent being the majority of the composition by weight. Serobian does not, however, teach away from the incorporation of more organic solvent than the prescribed range. Additionally, Serobian contemplates embodiments where the composition is concentrated and water is present in amounts of less than 60 w/w% ([0101]). In this embodiment, the solvent will necessarily be present in a higher amount than the originally taught range; however, Serobian fails to teach a specific solvent content for these concentrated compositions.
In the same field of endeavor, Diamond teaches an automotive coating (Abstract), which optionally contains a solvent in amounts ranging from 0 to 99 wt% of the overall formulation, in order to improve the coating properties of the composition ([0033]). Diamond further teaches that the amount of solvent is useful for being able to tune the coating qualities and viscosity of the composition, for ease of application ([0033]). It therefore would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the amounts of organic solvent as taught by Diamond into the formulation of Serobian, for the purpose of achieving a desirable balance of coating quality and viscosity. The range of 0 to 99 wt% taught by Diamond overlaps the claimed range of “a majority by weight,” establishing a prima facie case of obviousness.
Regarding claim 2, Serobian teaches that the composition may be applied by spraying with a hand pump or aerosol ([0145]). Serobian further teaches that the composition may be applied by wiping, spreading, padding, or rubbing with suitable carriers (e.g., a wipe or cloth) ([0146]), which reads on the claimed “swabbing.”
Regarding claim 3, Serobian teaches the subsequent wiping of the applied coating ([0146]).
Regarding claim 4, Serobian teaches that the composition may be applied to automobile trim and wheels ([0060]), which reads on “tire,” “exterior vehicle trim,” “interior vehicle trim,” and “door trim” from the claimed list.
Regarding claim 5, Serobian teaches that the composition forms a clear, high-gloss layer, without haze ([0053]), which reads on the claimed “wherein the coating is transparent.”
Regarding claim 7, Serobian teaches the incorporation of adjuncts (additives) including UV Absorbers, defoamers, fragrances, anti-oxidants, and combinations thereof ([0096] and [0121]-[0122]).
Regarding claim 8, Serobian teaches the use of a propellant ([0125]).
Regarding claim 12, Serobian teaches that the reactive siloxane oil-in-water emulsion is included in amounts ranging from 0.1 to 16 wt.% ([0083]).
Regarding claim 13, Serobian teaches that the reactive siloxane oil-in-water emulsion has the same structure as claimed ([0071]).
Regarding claim 15, as described above, Serobian as modified teaches a film formed by the evaporation of volatiles therefrom ([0078]). Serobian further teaches that the silicone resin is crosslinked ([0063]). Serobian differs from claim 15 because it is silent with regard to the claimed coating thickness and hardness characteristics. Nevertheless, Serobian as modified and as applied above results in an automotive coating that is structurally identical to the claimed coating, which contains all of the same components, in all of the same compositional amounts, and which is applied to the same surfaces with the same application procedures. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure and/or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed coating thickness and coating hardness characteristics will therefore necessarily be present in Serobian as modified and as applied to claim 6, above.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Serobian (US 2012/0252923 A1) in view of Huang (US 2004/0171744 A1), Young (US 2011/0217544 A1), Diamond (US 2007/0277697), and Zhu (US 2010/0086760 A1) and further in view of Creutz (US 6,395,790).
Regarding claim 14, Serobian as modified teaches all of the limitations of claim 12 as described above. Serobian as modified differs from claim 14 because it is silent with regard to the particular structure of the reactive siloxane component.
In the same field of endeavor, Creutz teaches a siloxane oil-in-water emulsion (Abstract), which is useful for deposition of siloxanes onto substrates (col. 1, lines 3-5), wherein the siloxane within the emulsion composition has the same structure as claimed (col 2). Creutz further teaches that the inventive composition has an improved level of deposition onto the applied substrate when compared to other emulsions (col. 1, lines 55-57). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate a siloxane emulsion comprising the structure taught by Creutz into the formulation of Serobian for the purpose of crafting a siloxane coating composition wherein the emulsion has an improved deposition effect when applied to the automotive substrate.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed March 24, 2026, with respect to 35 USC 112(a) have been fully considered and are persuasive. The 35 USC 112(a) rejection of claims 1-8, 10, and 12-15 has been withdrawn.
Applicant’s arguments regarding 35 USC 112(b) have been fully considered and are persuasive. The 35 USC 112(b) rejection of claims 1-8, 10, and 12-15 has been withdrawn.
The amendment to the claims necessitated the re-institution of rejections under 35 USC 103 similar to those provided in the Office Action filed January 16, 2026.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant asserts that the amendment to paragraph [0023] of the Specification represents a fix to typographical errors, and points to other recitations in the specification which would purportedly support said assertion.
Applicant points out that the disclosure contains definitions that conflict with the previous maximum particle size disclosure of 3-50 nm. However, while these definitions may be dispositive towards the intention of limiting the maximum particle size, they are insufficient to support the selection of a new minimum particle size. The newly added definition is not supported merely because the previous definition is shown to be incorrect; in addition, as discussed in the Specification section above, there are remaining portions of the disclosure which likewise disagree with the newly added minimum particle size limitation.
Applicant provides a hypothetical example based on the disclosure of aspect ratio in paragraph [0023], based on a hypothetical graphene having a maximum linear extent in the X or Y direction of 50 nm and a minimum linear extent in the Z direction of 3 nm. However as discussed above, paragraph [0023] of the previous version of the specification only requires that the maximal linear extent be within the range of 3-50 nm. The hypothetical minimum linear extent in the z-direction of 3 nm is therefore not required – and a graphene particle having a maximum planar extent of 50 nm and an aspect ratio of, for example, 25 (which is within the range discussed in paragraph [0023]), would have a thickness of 2 nm, which falls squarely within the remainder of the disclosure (e.g., since each layer of graphene is 0.37 nm, a 2 nm thick graphene particle would contain approximately 6 layers, which falls within the range of acceptable layers described in paragraph [0015] of the same disclosure).
Applicant utilizes the fact that Example 1 contains graphene having a linear extent of 1-5 microns as purported evidence to support the amendment to the specification, however while this size range is dispositive of the previous size restriction, it far exceeds the newly added size restriction and provides no further context relating the recited range to the newly added size restriction. In other words, a disclosure of a size range which happens to fall within the newly added, unbounded size range does not positively support the incorporation thereof. To the contrary, the size range of 1-5 microns implies a preference for particles which are significantly larger than those within the newly added size restriction. The range of 1-5 microns is multiple orders of magnitude larger than a minimum range of 3-50 nm. Again, while this example is dispositive of the previous size range, it does not support the new size range.
Applicant appeals to statements of nomenclature within the field of nanotechnology, however, these arguments are directed towards showing that the previous size limitation was incorrect which, as described above, is insufficient for supporting the newly added size limitation.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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