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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 14, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim as amended now requires that the claimed graphene has a thickness “of from 9 or 10 layers…” which appears to indicate the optionality of 9 or 10 layers, but which also uses the word “from” which would indicate the beginning of a range of layers. One having ordinary skill in the art would therefore be unable to fully determine if a range of graphene thicknesses are intended or if the claim is intended to merely include graphene having either 9 or 10 layers.
For the sake of examination, the claim will be interpreted as including graphene having either 9 or 10 layers, as is consistent with the drafting of claim 6.
Regarding claims 2-5, the claims are rendered indefinite because they depend, either directly or indirectly, on claim 1 which is indefinite as described above.
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. Young further teaches a cross-sectional dimension, which may refer to the height of the particle also ranging from 0.1nm to 100 microns ([0046]). This range of particle therefore includes thicknesses. The particle sizes of Young therefore read on the claimed limitation requiring 9 or 10 layers in thickness.
Serobian as modified by Young further differs from claim 1 (and claim 10) because it is silent with regard to the use of 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 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 July 14, 2026, with respect to the Objection of the Specification have been fully considered and are persuasive. The Objection of the Specification has been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant argues that the prior art documents above fail to disclose the newly amended limitation requiring that the graphene within the composition has a thickness of 9 to 10 layers. However, as described above, Serobian as modified contains graphene having particle sizes ranging from 0.1 nm to 100 microns and also having cross-sectional dimensions, including height (thickness), which reads on the claimed layer thicknesses.
Furthermore, the Applicant has previously contended that 10 layers of graphite comprises about 3.37 nm of thickness (c.f. Applicant’s Remarks, filed March 24, 2026, P. 8, wherein 3D graphite is shown with a layer thickness of 3.37 angstroms, and the first complete paragraph where the Applicant outright states said thickness based on the teachings of Gagne et al.). The graphite components of the prior art which contain cross-sectional thicknesses ranging from 0.1 nm to 100 microns therefore includes graphite having 10 layers (as well as graphite containing 9 layers, approximately 3.33 nm in thickness).
Conclusion
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
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