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 .
Response to Arguments
In response to the non-final Office Action (dated 7 April 2026), the Applicant submits the following:
-- Independent claims 1 & 10 and dependent claim 11 have been amended.
-- Claims 8 & 12-14 have been canceled.
-- New claims 21-23 have been added.
-- No new matter has been entered.
The arguments provided by the Applicant are drawn to the amended claims. Nevertheless, the arguments have been thoroughly reviewed & fully considered but are ultimately found unpersuasive in view of the amended claims.
The Applicant argues Li does not teach all the limitations of the amended claims and can therefore not anticipate the invention as detailed in the amended claims (Remarks, p. 8). The Applicant argues the amended claims now entail process steps and therefore, the structure of the rubber-graphene composite of Claims 1, 3, and 5-14 must be taken into consideration given the specific process of mixing the paste and then combining the pre-mixed paste with the rubber matrix (Remarks, p. 9).
Examiner notes the process steps, however, one skilled in the art would naturally understand that the paste is procured first (via mixing graphene, a plasticizer & an additive) prior to being mixed with the rubber matrix. Therefore, the process steps detailed in the claim do not appear to impart any structural or functional differences in the final product. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. See MPEP § 2113. Additionally, the prior art does suggest ball-mixing graphene with processing oil (i.e., plasticizer), as detailed in the rejection of claim 1.
The Applicant argues the combination of shore A hardness, tensile strength, and electrical resistivity recited in Claim 1 is not shown by Li (Remarks, p. 9).
This is incorrect, Li demonstrates the combination of all 3 of these properties (Embodiment 3 & Test Data for formulas 5 – 7, p. 2 & 3, [0020]-[0022]).
The Applicant states the amendments to claims 10 & 11 result in claims not taught by Li (Remarks, p. 10).
Examiner notes this is correct, however, the prior art detailed herein addresses the new limitations.
This rejection is FINAL.
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.
Claims 22 & 23 are rejected under § 112(b) for being indefinite.
Regarding claims 22 & 23, the claims depend from the independent base claim 1 and establish the following limitations:
“…wherein the at least one additive comprises biochar” (Claim 22),
“…wherein the at least one additive comprises rice husk ash silica” (Claim 23).
The independent base claim 1 establishes the initial limitation of, “…at least one additive selected from the group consisting of carbon black, biochar, and rice husk ash silica” (Claim 1). A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP § 2111.03.
The “comprises” limitation presented in claims 22 and 23 effectively introduce this term into the Markush group of claim 1. This renders claims 22 and 23 indefinite because it is unclear what other alternatives can be encompassed by the claim. This is in contrast to new dependent claim 21, which appropriately further limits the carbon black to N550 carbon black.
Claim Rejections - 35 USC § 102
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, 3, 5-7 & 9 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Li et al. (US 2018/0273736 A1).
Regarding claim 1, Li teaches composites comprising rubber & graphene and methods for producing said composites (Abstract). Li discloses a composite comprising graphene, processing oil (i.e., plasticizer) and carbon black (p. 1, [0011]) which are mixed together and then combined with a primary rubber (i.e., rubber matrix) (p. 1, [0006]).
As the ‘paste’ is limited to be comprised of graphene, a plasticizer and at least one additive (Claim 1, lines 1-6), one skilled in the art would naturally understand that the paste is procured first (via mixing graphene, a plasticizer & an additive) prior to being mixed with the rubber matrix. Therefore, the process steps detailed in the claim do not appear to impart any structural or functional differences in the final product. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. See MPEP § 2113.
Furthermore, Li discloses ball-mixing graphene with processing oil (i.e., plasticizer), obtaining a reinforced composite. This reinforced composite is then mixed with a rubber, a filler and a crosslinking agent, wherein the filler is carbon black or silica (p. 1, [0011]). However, Li expressly states the disclosures are intended to cover various modifications and similar arrangements included within the spirit and scope of the claims which are to be accorded with the broadest interpretation so as to encompass all such modifications and similar structures (p. 4, [0049]). Therefore, Li anticipates a ball-mixing process wherein graphene is mixed with a plasticizer/processing oil and a filler (carbon black or silica), which is then mixed with the main rubber, reading on the limitations as required by the claim
Li discloses test data on several inventive embodiments of the invention, all of which have a minimum hardness of 60, reading on the range of 60 – 80 as required by the claim. Tensile strength ranges from 177.89 – 236.41 kg/cm2. This range converts to 17.4 – 23.1 MPa, as required by the claim. Elongation is reported in the range of 288.91% – 685.15%, reading on the minimum of greater than 240% as required by the claim (see Embodiment 3 & Test Data for formulas 5 – 7, p. 2 & 3, [0020]-[0022]).
Thus, Li anticipates the rubber-graphene composite of claim 1. As Li anticipates this rubber-graphene composite and discloses the hardness, tensile strength and elongation values for test formulas 1 – 4 all abiding by their respective limitations as required by the claim, the electrical resistivity as detailed by the claim will necessarily be inherent in the rubber-graphene composites taught by Li. Chemical compositions and their properties are inseparable. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP § 2112.01.
Regarding claim 3, Li teaches suitable plasticizers for use as the processing oil including paraffinic oil and naphthenic oil (p. 1, [0011]).
Regarding claims 5 - 7, all the examples disclosed by Li teach the use of both zinc oxide and stearic acid (p. 2, [0014], [0017], [0021]). Said same examples also teach the use of Accelerator DM (p. 2, [0014], [0017], [0021]), also known as MBTS or dibenzothiazole disulfide.
Regarding claim 9, Li teaches an elastic article comprising the composite of the invention (p. 4, Claims 7-9).
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 2 & 4 are rejected under 35 U.S.C. § 103 as being obvious over Li et al. (US 2018/0273736 A1) in view of Lin et al. (US 2021/0063098 A1).
Regarding claim 2, Li remains as applied above. An object of Li’s invention was to address & alleviate the reduction in a rubber’s resistance, tensile strength, tearing strength and conductivity resulting from methods known in the prior art (p. 1, [0003]-[0004]). Li teaches graphene but does not teach the graphene as required by the claim (Abstract).
In the same field of endeavor, Lin teaches conductive compositions comprising graphene and a rubber matrix (Abstract). The graphene may be graphene oxide, reduced graphene oxide or nano graphene platelets (NGPs) (p. 1, [0004]). An object of Lin’s invention was to address key challenges (thermodynamic, conductivity) recognized as barriers to continued improvements and system performance within the industry (p. 1, [0002]).
As Lin states their disclosures were made to overcome the aforementioned barriers to improvement and performance (p. 1, [0006]), it would have been obvious to one of ordinary skill in the art at the time of filing to select NGPs, graphene oxide or reduced graphene oxide for use as the graphene in Li’s invention, as these graphenes are demonstrated by the prior art as suitable for addressing problems/objects-of-inventions aligning with problems/objects addressed by Li. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Li in view of Lin as detailed above reads on all limitations established by claim 2.
Regarding claim 4, maintaining the modification of Li in view of Lin previously detailed, suitable rubbers for use in the rubber matrix in Lin’s invention include butyl rubbers, nitrile rubbers and EPDM rubbers (p. 2, [0010]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claims 10, 11 & 21 are rejected under 35 U.S.C. § 103 as being obvious over Li et al. (US 2018/0273736 A1) in view of Dunlavy et al. (US 2014/0296375 A1).
Regarding claims 10 & 21, Li remains as applied above. Li discloses graphene amounts at 0.001-30 wt.% (p. 1-2, [0011]), equivalent to approximately 0.001-42 phr graphene. Examples provided by Li further show 50 phr of N330 carbon black (recognized in the art as being electrically conductive), 10 phr of plasticizer (processing oil), 10 phr of stearic acid (activator) and 10 phr of DM (MBTS, cure accelerator) (p. 2 & 3, [0014], [0017], [0021]).
Although Lee teaches the use of N330 (carbon black), Lee is silent on N550 (carbon black) as required by the claims.
In the same field of endeavor, Dunlavy teaches methods of forming rubber composites (Abstract). Dunlavy states carbon black may be present in amounts of 1-200 phr, aligning with the corresponding range as required by the claim. Suitable carbon blacks N-330 and N-500, and may be used alone or in combination with each other (p. 2, [0035]). Dunlavy also provides appropriate ratios of silica to carbon black, which may range from 0.1:1 to 10:1 (p. 2, [0036]). The instant claim 10 allows for less than 260 parts carbon black and less than 80 parts silica (Claim 10, lines 5-9). This results in a silica to carbon black ratio of 1:3.25. This range is encompassed by the range disclosed by Dunlavy.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ a combination of N-330 and N-550 carbon blacks in any amounts such that they abide by the 1 – 200 phr limitation, as Dunlavy expressly discloses N-330 & N-550 as exemplary carbon blacks and states they may be used together. It would have been further obvious to include silica in the composition in amounts such that it abides by the ratio taught by Dunlavy, as Dunlavy demonstrates this to be a suitable amount of silica in similar compositions comprising rubber and carbon black, for use to make rubber composites therefrom. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06.
Modification of Li in view of Dunlavy as detailed above reads on limitations established by claims 10 & 21.
Regarding claim 11, maintaining the modification of Lee in view of Dunlavy (previously detailed), as Li’s invention already anticipates the properties as claimed (see rejection of claim 1), the physiochemical properties disclosed in the claim will inherently be present in the modification of Li’s invention in view of Dunlavy. Chemical compositions and their properties are inseparable. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP § 2112.01. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
