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 .
Status of Claims
This office action is in reply to the Response filed on May 19, 2026. Claim 19has been amended. No additional claims have been added. No further claims have been cancelled. Claim interpretation previously made under 35 USC 112(f) is maintained. The previous 35 U.S.C. 103 rejection has removed and a new rejection is presented herewith and is discussed in greater detail below. Claims 1-20 are currently pending and have been fully examined.
Claim Objections
Applicant is advised that should claim 18 be found allowable, claim 19 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-7 and 12-20 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. Any remaining claims are rejected based on their dependency to a rejected base claim.
Claims 1, 12-14 and 20 all disclose, “the graphene polymeric material attenuates radiated emissions/electromagnetic radiation, and prevents electrostatic charge accumulation.” However, it is unclear how the graphene polymeric material actually attenuates radiated emissions/electromagnetic radiation, and prevents electrostatic charge accumulation. Is it from the material alone that attenuates radiated emissions/electromagnetic radiation, and prevents electrostatic charge accumulation? Does any polymeric material that is impregnated with graphene attenuate radiated emissions/electromagnetic radiation, and prevent electrostatic charge accumulation? If not, does the material include some other structure (i.e. size, thickness, shape, etc.) that allows it to attenuate radiated emissions/electromagnetic radiation, and prevent electrostatic charge accumulation. If so, what is the structure of the material that allows it to attenuate radiated emissions/electromagnetic radiation, and prevents electrostatic charge accumulation? In order to expedite prosecution, the examiner has interpreted any polymeric material impregnated with graphene as meeting the limitation of attenuating radiated emissions/electromagnetic radiation, and preventing electrostatic charge accumulation, since this is the same material as used by the applicant to provide such a feature. However, further clarification is respectfully requested.
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.
Claims 1-3, 5 and 7-20 are rejected As Best Understood under 35 U.S.C. 103 as being unpatentable over Mooty et al. (6308378) in view of Hochstetter et al. (WO 2019180370 A1, translation included).
In reference to claims 1, 8, 12-14 and 20, As Best Understood, Mooty et al. disclose a power tool device (100) comprising:
a housing (102); and
a motor (not shown) positioned within the housing (Column 3, Lines 59-60);
wherein the housing is at least partially made of a polymeric material (i.e. polyurethane, Column 3, Lines 50-20), the polymeric material comprising:
a polymer (i.e. again polyurethane, Column 3, Lines 50-20). The examiner notes the method claim 8 merely discloses the normal method of forming the device of claim 1 and therefore the same reasoning as previously discussed above for claim 1 applies mutatis mutandis to the subject matter of claim 8.
Mooty et al. lack,
the polymer being impregnated with graphene and wherein the graphene polymeric material attenuates radiated emissions, and prevents electrostatic charge accumulation.
However, Hochstetter et al. teach that it is old and well known in the art at the time the invention was made to provide a polymer (i.e. thermoplastic polymer, see following portion of translation below) that is impregnated (see claim 18 disclosing, “Impregnated fibrous material…further comprises carbonaceous fillers…preferably chosen among graphenes”. Also note; the definition of the term “impregnate” is defined according to www.merriam-wenster.com as being; “to cause to be filled”. Since, the “Impregnated fibrous material” further includes “carbonaceous fillers” which are “preferably chosen from graphene”, the graphene fillers of the thermoplastic polymer meet the definition above and thus the limitation of the claim) with graphene (i.e. the graphene fillers) and as best understood, since the graphene polymeric material is formed from the same material as claimed by the applicant (i.e. polymer material impregnated with graphene), it would similarly attenuate radiated emissions (as in claims 1, 14 and 20)/electromagnetic radiation (as in claim 12), and prevent electrostatic charge accumulation (as in claims 1, 13 and 14), because it is formed from the same material as claimed by the applicant. See following portion of translation below:
“Optionally, the thermoplastic polymer or mixture of thermoplastic polymers further comprises carbonaceous fillers, in particular carbon black or carbonaceous nanofillers, preferably chosen from graphenes, carbon nanotubes, carbon nanofibrils or mixtures thereof. These charges make it possible to conduct electricity and / or heat”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the polymer, of Mooty et al., with the known technique of providing a polymer that is impregnated with the graphene filler, as taught by Hochstetter et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively conducts electricity and/or heat (see translation above).
In reference to claim 2, Hochstetter et al. disclose that the polymer is a thermoplastic polymer (see claim 18).
In reference to claim 3, Hochstetter et al. disclose that the thermoplastic polymer comprises at least one polymer selected from the group consisting of polyvinyl chloride, polycarbonate, acrylonitrile butadiene styrene, polyamide, polypropylene, and high-density polyethylene (see claim 5).
In reference to claim 5, modified Mooty et al. disclose the claimed invention as previously mentioned above, but lack specifically disclosing that;
the graphene polymeric material comprises 50 wt% to 99 wt% polymer and 1 wt% to 50 wt% graphene.
There is no evidence of record that establishes that changing the weight percentage of the polymer and graphene of the polymeric material would result in a difference in function of the Mooty et al. device. Further, a person having ordinary skill in the art, being faced with modifying the polymeric material, of Mooty et al., would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed range of weight percentages. Lastly, applicant has not disclosed that the claimed range solves any stated problem, indicating that the claimed range of weight percentages of the polymeric material "may" be within the claimed range, and offering multiple other acceptable ranges (see specification paragraph 27) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the weight percentage of the polymer and graphene of the polymeric material, of modified Mooty et al., to have a graphene polymeric material that comprises 50 wt% to 99 wt% polymer and 1 wt% to 50 wt% graphene, as an obvious matter of design choice within the skill of the art.
In reference to claim 7, modified Mooty et al. disclose that the entire housing is made of the graphene polymeric material (Figure 1).
In reference to claim 9, modified Mooty et al. disclose that the graphene (as previously taught by Hochstetter et al.) polymeric material (102) includes injecting the polymeric material into a mold (see Column 3, Lines 52-54).
In reference to claim 10, modified Mooty et al. disclose that the forming the housing structure (102) of the device is via injection molding (see Column 3, Lines 52-54).
In reference to claims 11 and 17, modified Mooty et al. disclose that the device is a power tool (100, Figure 1).
In reference to claim 15, modified Mooty et al. disclose that the device is a power source (at least at 108, Figure 1).
In reference to claim 16, modified Mooty et al. disclose that the device is a battery pack (at 108, Figure 1) or battery pack charger.
In reference to claims 18 and 19, modified Mooty et al. disclose that the device is a piece of outdoor power equipment (i.e. drill).
Claim 4, is rejected under 35 U.S.C. 103 as being unpatentable over Mooty et al. (6308378) in view of Hochstetter et al. (WO 2019180370 A1, translation included) and Brazil (2005/0022631).
In reference to claim 4, Mooty et al. disclose the claimed invention as previously mentioned above, but lack,
the thermoplastic polymer is a thermoplastic polyurethane polymer.
However, Brazil teach that it is old and well known in the art at the time the invention was made to provide a thermoplastic polymer (see paragraph 105) that can be formed from a polyamide material (similar to the polyamide material, as taught by Hochstetter et al.) or that can be formed from a polyurethane material thereby teaching that these two materials are equivalent/interchangeable with one another (paragraphs 85 and 105).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the thermoplastic polymer (i.e. polyamide material), of modified Mooty et al., with the known technique of providing a thermoplastic polymer formed from the polyurethane material, as taught by Brazil, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile non-marring polymer (see paragraph 85).
Claim 6, is rejected under 35 U.S.C. 103 as being unpatentable over Mooty et al. (6308378) in view of Hochstetter et al. (WO 2019180370 A1, translation included) and Aitchison (CN 111108341, previously cited).
In reference to claim 6, Mooty et al. disclose the claimed invention as previously mentioned above, but lack,
forming the graphene polymeric material in the form of pellets.
However, Aitchison teaches that it is old and well known in the art at the time the invention was made to form graphene in the form of pellets (see following portion of translation disclosing that, "a fibre comprises graphene. fibre can be pellets or powder of a polymer formed by melt extrusion").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the graphene material, of modified Mooty et al., with the known technique of providing graphene in the form of pellets, as taught by Aitchison, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that obtains a desired concentration of graphene in the fiber in the fusion extrusion process (see following portion of translation disclosing that, "the graphene polymer dispersion of the concentrated form mixed and diluted, to obtain desired concentration of graphene in the fiber in the fusion extrusion process.").
Response to Arguments
Applicant’s arguments, see pages 5-9, filed May 19, 2026, with respect to claims 1-20 have been fully considered and are persuasive. The previous 103 rejection filed on 2/19/26 has been withdrawn.
Applicant’s arguments with respect to claims 1-20 have been considered but are now moot because the new ground of rejection above does not rely on any reference as previously applied in the prior rejection of record for any teaching or matter as specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhou et al. (2020/0071487) teach that “Graphene is an ultra-thin and ultra-light layered carbon material forming a two-dimensional honeycomb lattice with high mechanical strength, super conductivity, and high surface area” (see paragraph 4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723
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