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 Interpretation
Claim 8 describes a graphene dispersion where the solvent is a mixture of water and 2-propanol with a specific volume ratio. A solution containing water and 2-propanol is not an ideal solution; their volumes are not additive. Combining 5L of water and 5L of 2-propanol results in a solution whose volume is slightly less than 10L. Therefore, absent more thorough thermodynamical analysis, it is difficult to say exactly how much volume each of the components contributes to the whole volume. However, for the sake of this Office Action, a solution comprising those components will be interpreted as ideal or the volume ratios will be interpreted as the ratio of the volumes of the original components. In other words, the ratio of the volumes of the water and 2-propanol that were prepared to create the solution.
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 and 4-8 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. Claim 1 recites a limitation where “the anionic polymer…is selected from salts”. Salts are inherently neutral, so an anionic polymer cannot be a salt. Furthermore, in lines 14 and 15 on page 7 of the Applicant’s amendments, the Applicant states that “it [a reference previously used by the Examiner] does not disclose anionic polymers such as carboxymethyl cellulose or alginic acid.” This statement supports the idea that the limitation within claim 1 of “selected from salts having a carboxyl group including carboxymethyl cellulose” should actually be “selected from anionic polymers having a carboxyl group including carboxymethyl cellulose.” Claims 4-8 are rejected due to their dependence on claim 1.
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.
Claims 1 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Shu (JP 2015140296A, and citations will be drawn to the Translation submitted in IDS) and further in view of Yu (CN 106478962).
Regarding claims 1 and 7, Shu discloses a graphene dispersion comprising graphene, a water-soluble polymer, and a dispersion medium that functions as a solvent [0022]. Notably, there is no requirement for a surfactant (as required by claim 7). Shu teaches that the concentration of graphene oxide in the dispersion is 0.01% to 5% by weight [0024], that the concentration of the polymer in the dispersion is 0.005% to 5% by weight [0026], and that the amount of polymer in the dispersion is 1 to 500 parts by weight with respect to 100 parts by weight of the graphene oxide in the dispersion [0026]. It reasonably follows that the balance of the weight of the dispersion is equal to the solvent. Shu does not explicitly teach claimed range of the mass ratio of the polymer to the solvent; however, Shu’s disclosure implicitly teaches an overlapping range. For example, let the concentration of the polymer and graphene oxide be equal to 1% of the dispersion and the remaining content is the solvent. Then the concentration by mass of the polymer is 1% and the mass of the solvent is 98% of the dispersion. If the mass of the dispersion is 100 g, then the polymer’s mass would be 1000 mg and the mass of the solvent would be 98 g. This ratio becomes 10.2 mg of polymer per 1 g of solvent, which falls within the claimed range of 1 to 100 mg/g. Therefore, Shu’s disclosure implicitly teaches a range of ratios that overlaps with the claimed range. 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). See MPEP 2144.05 (I).
However, Shu fails to explicitly teach a water-soluble polymer with a weight-average molecular weight of 10,000 – 800,000. Yu is analogous art to Shu because both discuss graphene oxide dispersions. Yu teaches the usage of hyaluronic acid in a graphene dispersion [0012] with a molecular weight of 400,000 – 600,000 [0015]. This molecular weight range lies within the claimed range of 10,000 – 800,000. 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). See MPEP 2144.05 (I). Furthermore, “[t]he selection of a known material based on its suitability for its intended use” supports a prima facie obviousness determination. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use Yu’s hyaluronic acid a molecular weight within the claimed range in Shu’s graphene dispersion.
Shu also fails to explicitly teach that that the polymer has a degree of etherification of 0.5 to 2.2. Shu does, however, teach that when the polymer is water-soluble cellulose acetate, a desired range of the degree of acetyl substitution is between 0.5 to 1.1. “When the total degree of acetyl substitution is in this range, the solubility in water is excellent, and when it is outside this range, the solubility in water tends to decrease” [0032]. This concept is analogous to the “degree of etherification”. The amount of polar acetyl groups affects the solubility of the water-soluble polymer. Similarly, the addition of ether groups, another polar organic group, affects the solubility of the polymer onto which the groups are substituted, including a polymer such as Yu’s hyaluronic acid. One of ordinary skill in the art would expect that the addition or subtraction of polar groups along a polymer backbone would affect its solubility. Furthermore, although the range of acetyl substitution may not be directly proportional to an optimized range of degree of etherification, Shu discloses a range of the degree of substitution with a motivation to optimize. "[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." See MPEP 2144.05 (II).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to optimize the amount of ether groups on the water-soluble polymer contained within the graphene dispersion to control the solubility of said polymer with a reasonable expectation of success. See MPEP 2143 (G).
Shu and Yu fail to teach the viscosity of the graphene dispersion at the specifically claimed temperatures and rotational conditions, but the viscosity of a polymeric solution is strongly related to the masses within the solution/dispersion as well as the solubility of the polymer in the dispersion. Optimizing the masses of the components in the dispersion as well as the solubility of the polymer in the dispersion would lead to an optimization of the viscosity of the dispersion. "[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." See MPEP 2144.05 (II). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to optimize the viscosity of a graphene dispersion based on the teachings of Shu in order to optimize the performance of said graphene dispersion.
Regarding claim 4, Shu teaches that the dispersion medium may be a mixed liquid of water and a water-soluble organic solvent such as methanol or ethanol.
Regarding claim 8, Shu fails to explicitly teach 2-propanol or isopropanol as one of the organic solvents, but does teach that the organic solvents must be water-soluble. Furthermore, many of the solvents they list are polar (including but not limited to acetone, sulfolane, and glycerin), and two of them are alcohols, namely methanol and ethanol. 2-propanol is soluble in water, an organic solvent, and also an alcohol. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to select 2-propanol as a second component in Shu’s aqueous solvent based on Shu’s disclosure of a larger genus of polar, organic solvents that are soluble in water. See MPEP 2144.08.
Shu does teach that in a mixed liquid of water and an organic solvent, it is preferable that the content of water is at least 50% by weight. At room temperature, the density of water is 1 g/mL and the density of 2-propanol is 0.785 g/mL. Let an example solvent have a mass of 100 g comprised of 50 g of water and 50 g of 2-propanol. Assuming an ideal solution, the volume of water would be 50 mL and the volume of 2-propanol would be 39.25 mL. That volume ratio would be 50/39.25, equivalent to 1.27, which falls within the range of 50/50 (equivalent to 1) to 70/30 (equivalent to 2.3). Therefore, Shu implicitly teaches a range of ratio of volumes that overlaps with the claimed ratio of volumes. 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). See MPEP 2144.05 (I).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Shu and Yu as applied to claim 1 above, and further in view of Yang (US 2017/0346098 A1).
Regarding claim 5, Shu, modified by Yu, fails to teach drying the graphene dispersion using vacuum drying to form a graphene resin powder. Yang is analogous art to Shu and Yang because all discuss graphene dispersions. Yang teaches that it is preferable to use vacuum drying to obtain graphene powder because the graphene may aggregate during normal pressure heat drying which would result in a lower specific surface area [0058]. Yang also provides an example of vacuum drying at 80 °C, which falls within the range of 60 to 120 °C [0074]. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use vacuum drying within the claimed temperature range to dry Shu and Yu’s graphene dispersion to obtain a graphene powder that is not aggregated.
Regarding claim 6, Yang teaches that providing an electrode for a battery that uses their graphene powder has “good output characteristics and cycle characteristics” (abstract). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use Shu and Yu’s graphene dispersion dried with Yang’s technique in an electrode in a battery to achieve a battery with good output characteristics and cycle characteristics.
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 RYAN K BLACKWELL-RUDASILL whose telephone number is (571)270-0563. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m.
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/R.B.R./Examiner, Art Unit 1722
/NIKI BAKHTIARI/Supervisory Patent Examiner, Art Unit 1722
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