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 .
Response to Amendment
This action is responsive to applicant’s amendment filed 3/17/2026.
Claims 1, 3, 5, 6, 8-15, 17-24, 26, and 28 are pending. Claims 13-15, 17-23 and 28 are withdrawn from consideration as being drawn to non-elected invention. A composite of barium titanate and graphene is elected as the inorganic filler.
The previous rejection of claim 27 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is withdrawn in view of applicant’s amendment.
The previous rejection of claims 1, 3, 6, 8-12, 24, 25, and 26 under 35 U.S.C. 103 as being unpatentable over in view of Ghosh (US2016/0218498) in view of Zhamu et al. (US20090155578) is maintained in view of applicant’s amendment.
The previous rejection of claim 5 under 35 U.S.C. 103 as being unpatentable over in view of Ghosh (US2016/0218498) and Zhamu et al. (US20090155578) in view of Han et al. (CN104402044) is maintained in view of applicant’s amendment.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
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 Rejections - 35 USC § 112
Claim 1, 3, 5, 6, 8-12, 24, and 26 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.
According to the response to the Election/Restriction requirement filed 11/18/2024, a composite of barium titanate and graphene was elected as the inorganic filler. Therefore, the recitation in claim 1 of “the inorganic filler particles … are selected from the group consisting of SiC, ZnO, TiO2, Al2O₃, BaTiO₃, SnO₂, SbO₂, Ba₁-xSrxTiO₃ (BST), Pb(Zr, Ti)O₃ (PZT), SrBi₂Ta₂O₉ (SBT), LiNbO3 (LNO), and a combination of any of the foregoing” lead to confusion over the intended scope of the claim. For the examination purposes, claim 1 will be understand “the inorganic filler particles are present in the composition at a concentration in a range of about 5% to 14% by volume of the composition and is a composite of barium titanate and graphene”.
Claim Rejections - 35 USC § 103
Claims 1, 3, 6, 8-12, 24, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over in view of Ghosh (US2016/0218498) in view of Zhamu et al. (US20090155578).
Regarding claims 1, 3, 8, and 26, Ghosh discloses a composition that may exhibit properties suitable for achieving both resistive field grading effects and capacitive field grading effects in electrical stress control devices and surge arrestor devices, the composition comprising: a polymer (polymer matrix), inorganic nanoplatelets having an aspect ratio of at least about 100 (graphene-based material including graphene, functionalized graphene, an aspect ratio of at least about 5: 1 , 10: 1 , 100: 1 , 1000: 1 , or 5000: 1 (para 0025)), and inorganic filler particles including barium titanate having a diameter in a range of about 10 nm to about 50 µm (a capacitive electric field grading material may be selected from the group consisting of TiO2, CaTiO3, SrTiO3, BaTiO3, BaSrTiO3, SrTiC, PbTi3, an additive may comprise an average particle size of no more than about 200, 100, 40, or 20 microns. In further embodiments, such an additive may comprise an average particle size of at least about 0.1, 1, 2, 4, 8, or 16 microns, para 0024, 0026), wherein the inorganic nanoplatelets and the inorganic filler particles are dispersed in the polymer (para 0024 and 26). Also see Embodiment 1-14, para 0027-0030. Ghosh is silent with regard to the thickness inorganic nanoplatelets graphene and/or functionalized graphene. Zhamu discloses functionalized graphene having thickness no greater than 100 nm and aspect ratio (length-to-thickness (l/w) ratio) is no less than 3 (abstract). The functionalized graphene is used as a reinforcement filler at volume fraction of 6% or less (Fig. 4A). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to use the functionalized graphene taught by Zhamu as the conductive material in the composition of Ghosh, with a reasonable expectation that using Zhamu’s functionalized graphene in the composition of Ghosh would have been suitable for achieving both resistive field grading effects and capacitive field grading effects. Ghosh discloses the inorganic filler particles are present in the composition at a concentration in a range of about 15% volume of the composition (compositions and articles comprise about 15 volume % of barium titanate particles, para 0039).
Regarding claims 6 and 24, Ghosh discloses the polymer is an electrically insulating polymer, wherein the polymer comprises a thermoplastic polymer a silicone polymer, an EPDM rubber, an epoxy, or any combination thereof (para 0019).
Regarding claim 9, Ghosh discloses the inorganic filler particles (capacitive field grading particulate additive) perform capacitive (e.g., refractive) electric field grading and the combination of ferrosoferric oxide with one or more capacitive electric field grading materials may provide properties that are particularly advantageous for some applications, exhibit properties suitable for achieving both resistive field grading effects and capacitive field grading effects e.g. in electrical stress control devices and surge arrestor devices. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to determine a required amount of the inorganic filler in the composition of Ghosh for achieving optimal resistive field grading effects and capacitive field grading effects, as the law held that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 10, Ghosh discloses the composition has a dielectric constant in a range of about 5 to about 50 (para 0017).
Regarding claims 11 and 12, Ghosh is silent with respect to a dissipation factor and a volume resistivity of the composition. However, given that the composition of Ghosh comprises of all the claimed elements in the claimed composition, a person having an ordinary skill in the art would reasonably expect the composition of Ghosh to have the claimed dissipation factor and a volume resistivity because it has been held that "products of identical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over in view of Ghosh (US2016/0218498) and Zhamu et al. (US20090155578) as applied above, further in view of Han et al. (CN104402044).
Ghosh in view of Zhamu discloses a composition that may exhibit properties suitable for achieving both resistive field grading effects and capacitive field grading effects in electrical stress control devices and surge arrestor devices as described above. Ghosh does not disclose the inorganic filler comprising a composite of barium titanate and graphene Han a composite of barium titanate and graphene having a diameter in a range of about 10 nm to about 50 microns (Fig. 1). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to use the composite of barium titanate and graphene taught by Han in the composition of Ghosh, which has high purity, a small particle size distribution and good dispersibility, with a reasonable expectation that using Han’s composite of barium titanate and graphene in the composition of Ghosh would have been suitable for achieving both resistive field grading effects and capacitive field grading effects.
Response to Arguments
Applicant’s arguments filed 3/17/2026 have been considered but they are not persuasive.
Applicant argued that Ghosh does not teach the inorganic filler particles are present in the composition at a concentration in a range of about 5% to 14% by volume of the composition as recited in claim 1 or about 5% to about 10% by volume of the composition as recited in claim 9. Ghosh is instead directed to compositions which include large amounts of ferrosoferric oxide (Fe3O4) at least 15% by volume and may be up to 60% by volume. Ghosh provides no guidance in this paragraph concerning the amount of any additional inorganic compounds. The examiner respectfully disagrees with applicant’s arguments. The transitional term "comprising" (and other comparable terms, e.g., "containing," and "including") is "open-ended" in that it covers the expressly recited subject matter, alone or in combination with unrecited subject matter. See, e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.") Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("comprising" leaves the "claim open for the inclusion of unspecified ingredients even in major amounts"). Ghosh’s composition contains large amounts of ferrosoferric oxide does not change the fact that Ghosh discloses the claimed composition as described above. Ghosh’s composition comprises approximately 15 volume percent barium titanate, which is very close to the claimed 14 volume percent of the inorganic filler. The law held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.). In addition, Ghosh discloses the inorganic filler particles (capacitive field grading particulate additive) perform capacitive (e.g., refractive) electric field grading and the combination of ferrosoferric oxide with one or more capacitive electric field grading materials may provide properties that are particularly advantageous for some applications, exhibit properties suitable for achieving both resistive field grading effects and capacitive field grading effects e.g. in electrical stress control devices and surge arrestor devices. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to determine a required amount of the inorganic filler in the composition of Ghosh for achieving optimal resistive field grading effects and capacitive field grading effects, as the law held that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Applicant argued that the combination of Ghosh and Zhamu fails to teach or suggest each and every element of the electrical stress grading composition as recited in Claim 1 In particular, applicant argued that the reference provides no embodiments or examples of nanoplatelets having a thickness greater than 10 nm, an aspect ratio in a range of about 1,000 to about 15,000 and a thickness in a range of 10 nm to about 20 nm. The examiner respectfully disagrees with applicant’s argument. Zhamu clearly provides an inorganic nanoplatelet (nano-scaled graphene platelet) having a length, a width, and a thickness, wherein the thickness is no greater than 100 nm and the length-to-width ratio is no less than 3 (abstract). Even though Zhamu discloses the length-to-width ratio is preferably greater than 10 and the thickness of the is preferably thinner than 10 nm and more preferably thinner than 1 nm, the law held that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442,169 USPQ 423 (CCPA 1971) and a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert, denied, 493 U.S. 975 (1989). In addition, as pointed out in the applicant’s remarks, Zhamu discloses that a higher aspect ratio also leads to a lower conductive filler percolation threshold, i.e., a lower volume or weight fraction of conductive additives needed to achieve a network of electron-conducting paths (para 0028). Zhamu’s disclosure provides the motivation to select the inorganic nanoplatelets having high aspect ratio such as those claimed so that a smaller amount of inorganic nanoplatelet would be needed. Obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 1, 3, 5, 6, 8-12, 24, and 26 remain unpatentable for the reasons of record.
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 HAIDUNG D NGUYEN whose telephone number is (571)270-5455. The examiner can normally be reached M-Th: 10a-3p.
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
5/22/2026
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