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 .
Claim Status
Claim 8 has been amended. Claims 21-27 are new. Claims 1-7 are canceled. Claims 8-27 are pending.
Claim Objections
Claim 11 is objected to because of the following informalities: silsesquioxane is misspelled. Appropriate correction is required.
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.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 24, 25, 26, and 27 are 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.
Regarding claim 24; Applicants exemplify the preparation of the GO-amine in [p. 0054], and describe the preparation of the functionalized graphene oxide in [p. 0037]. The specification as filed does not describe the number-average lateral dimension of the functionalized graphene oxide powder, or any characterization thereof.
Regarding claims 25, 26, and 27; Claim 25 recites, “wherein the reacting step is performed in a solvent at a temperature below the reflux temperature of the solvent.” The specification as filed recites in [p. 0039], “during step 306 of process 300, the functionalized graphene oxide reacts with one or more reactive moieties of the functionalized POSS to form the hybrid nanoadditive… This reacting step 306 may involve refluxing the ingredients at a suitable temperature, such as about 70 °C or more, for a suitable period of time, such as 1 to 10 hours, more specifically 2 to 5 hours. The present inventors have discovered that it may be unnecessary to heat and reflux the ingredients for more than 10 hours during this reacting step 306.” In applicants’ example, the hybrid nanoadditive is prepared by reacting the GO-amine with functionalized POSS in THF, wherein the reaction mixture temperature was set to 75 °C and refluxed for four hours [p. 0054]. Applicants fail to disclose a reacting step wherein the temperature is about 70 °C or more and performed in a solvent at a temperature below the reflux temperature of the solvent (reflux temperature of THF = 66 °C). Furthermore, applicants’ disclosure that it is unnecessary to heat and reflux the ingredients for more than 10 hours describes the time required to perform the reacting step, not a relationship between the reacting temperature and the reflux temperature of a solvent.
Claims 26 and 27 are rejected under 35 U.S.C. 112(a) for being dependent on claim 25.
Claim 24 is 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.
Claim 24 recites the limitation "the powder" in line 1. There is insufficient antecedent basis for this limitation in the claim. It is unclear if applicants intended to refer to the functionalized graphene oxide of claim 22, or the hybrid nanoadditive powder of claims 11, 12, or 13.
Claims 26 and 27 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The reacting step is limited to being performed of a temperature of about 70 °C or more in claim 18, and further limited to being performed in a solvent at a temperature below the reflux temperature of the solvent. Claim 26 further limits the solvent of the reacting step to tetrahydrofuran (THF). The reflux temperature of THF is 66 °C, therefore applicants fail to include all the limitations of the claims upon which claim 26 depends.
Claim 27 is rejected under 35 U.S.C. 112(d) for being dependent on claim 26.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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Claims 11, 14, 15, 17, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mohan et al (US 2017/0073505 A1; cited on ISR).
Regarding claim 11, 17, 19, and 20; Mohan et al discloses a method of preparing a hybrid nanofiller by reacting an amine functionalized graphene oxide (GO) with a POSS containing epoxy groups [p. 0059, fig. 8]. Mohan teaches that after the reaction of the amine functionalized GO and POSS, the dispersion is precipitated into isopropanol, filtered, and vacuum dried [p. 0070]. Mohan et al discloses the resultant POSS grafted amine functionalized GO may be mixed with a resin in a masterbatch which may be packaged and sold as a commercial product [p. 0073].
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Regarding claims 14 and 15; Mohan et al discloses the functionalized GO is prepared from GO and ethylene diamine [p. 0056-0058; fig. 7].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Mohan et al (US 2017/0073505 A1; cited on ISR) in view of Hoerold (US 2004/0225040 A1).
The disclosure of Mohan et al is described above and is applied here as such.
Mohan teaches a method of grafting POSS to graphene oxide to prepare a nanofiller for use in the preparation of high-performance composite materials [abstract; p. 0055]. Mohan et al is silent with respect to the number-based average lateral dimension of the POSS grafted graphene oxide.
Hoerold teaches polymer-nanofiller composites for thermoplastic polymers [p. 0001]. Hoerold teaches the diameter of nanofillers varies from 100 to 500 nm for a layer thickness of only 1 nm [p. 0002]. Hoerold further teaches this high level of particle fineness and the length-to-thickness ratio of above 100 are responsible for exceptional improvements in properties being achieved in a number of polymer materials, even at low filler concentrations in the region of a few percent by weight. Improvements may be made in particular in the mechanical, thermal, and barrier properties of thermoplastics [p. 0003].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the nanofiller of Mohan et al with a diameter of 100 to 500 nm (0.1 to 0.5 micron) and a thickness of 1 nm (0.001 nm) in order to improve the mechanical, thermal, and barrier properties of the polymer-nanofiller composite. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mohan et al (US 2017/0073505 A1; cited on ISR) and further in view of Nelson et al (US 2012/0259052 A1; cited on ISR).
The disclosure of Mohan et al is described above and is applied here as such.
Regarding claim 8, Mohan et al teaches the POSS grafted amine functionalized graphene oxide may be mixed with a resin to prepare a masterbatch, which may be packaged and sold as a product for commercial applications [p. 0073; claim 13]. Mohan et al further teaches interlaminar fracture toughness improves in epoxy-based nanocomposites containing POSS modified graphene oxide [abstract; p. 0059]. Mohan et al teaches an embodiment wherein less than 1% by weight of grafted nanofiller in an epoxy resin yielded an increase in fracture toughness of about 100% [p. 0075]. Although this embodiment is related to a thermosetting epoxy resin, Mohan et al teaches the nanofillers are highly dispersible in all types of composite resins [p. 0034]. However, Mohan et al is silent with respect to compositions comprising thermoplastic polymers, which are suitable for extrusion.
Nelson et al teaches a process for introducing an additive into a polymer melt to form a blend [p. 0007]. Nelson et al teaches the additive is first mixed a thermoplastic base polymer to form a masterbatch of pelletized blends wherein pellets from the masterbatch may then be added to pellets of the base polymer [Fig. 2; p. 0090-0091]. Nelson et al teaches this melt blending process produces an extrudate having a uniform distribution of particles, wherein the uniformity of distribution of the additives often impacts the quality and function of manufactured articles [abstract; p. 0002-0003]. Furthermore, Nelson et al teaches this extrusion process can be combined with a variety of operations of which may be applied after extrusion as known in the art, such as film or sheet forming, orientation, blow molding, thermoforming, injection molding, and rotational molding [p. 0059].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed would have found it obvious to use the process of Nelson et al to prepare a composition comprising a thermoplastic resin and less than 1% by weight of the POSS functionalized graphene oxide of Mohan et al as an additive as the process of Mohan et al achieves uniform distribution of additives and makes possible a variety of post-extrusion processing methods that are inaccessible with thermoset resins and Mohan et al teaches this nanofiller loading leads to an increase in fracture toughness. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Furthermore, regarding claims 9 and 10, Mohan et al is silent with respect to the POSS functionalized graphene oxide content of the masterbatch. Nelson et al teaches, when used to create a masterbatch, a sufficient amount of additive is introduced into the polymer melt to obtain a blend that includes up to 10 wt. % more of additive [p. 0090]. Nelson provides a schematic of the extruding process in FIG. 1 [p. 0059].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a masterbatch comprising up to 10 wt. % or more of POSS functionalized graphene oxide, which is then is fed from a separate hopper than the thermoplastic polymer, when extruding a composite with the process of Nelson et al. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re
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Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 18 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Mohan et al (US 2017/0073505 A1; cited on ISR) in view of Hao et al (CN107385542A; cited on ISR).
The disclosure of Mohan et al is described above and is applied here as such.
Mohan et al teaches the POSS grafted amine functionalized graphene can be prepared by stirring the reactants for 24 hours at 90° C [p. 0070]. However, a skilled artisan would have recognized reaction time as a result effective variable, as the amount of material converted to the product increases with reaction time, until the reaction has reached full conversion. One having ordinary skill in the art would have a reasonable expectation of success reducing the reaction time as Hao et al teaches POSS grafted graphene oxide can be prepared by stirring the reactants at 70-100 °C for 8-24h in water [p. 0009]. "[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) ; see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; see also In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Furthermore, a skilled artisan would appreciate that the majority of the temperature range taught by Hao et al is below the reflux temperature of water. In light of this, it would have been obvious to perform the prepare the POSS grafted graphene oxide in a solvent at a temperature below the reflux temperature of the solvent.
Claims 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Mohan et al (US 2017/0073505 A1; cited on ISR) and further in view of Cho et al (US 2018/0076404 A1).
The disclosure of Mohan et al is described above and is applied here as such.
Mohan et al teaches a method of preparing ethylene diamine functionalize GO wherein the reaction is refluxed for 24 hours at 90° C under vigorous stirring [p. 0017]. However, Mohan et al teaches that alternate methods of obtaining amine functionalized graphene oxide are known [p. 0017]
Cho et al teaches a method of grafting ethylenediamine on graphene oxide wherein a solution comprising graphene oxide and ethylenediamine was stirred in water at room temperature for 4 hours [p. 0108].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the ethylene diamine functionalized GO of Mohan et al with the method of Cho et al as Mohan et al is open to alternative methods of obtaining amine functionalized graphene oxide.
Conclusion
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766