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 .
Elections/Restrictions
In response to the Election/Restriction requirement, dated 12 January 2026, The Applicant submits the following:
The Applicant elects the invention of Group I, Claims 1-14, with traverse.
The Applicant argues that the express disclosure of “…the paste is mixed with the rubber matrix…” in independent Claims 1 & 10, implies said paste must necessarily be prepared before being mixed with the rubber matrix. Applicant reasons this implies the product of Group I cannot be made by a process wherein all ingredients are combined/mixed simultaneously (Remarks, p. 2, bottom half). The Applicant points to MPEP § 802.01 and concludes that there is not a serious search and/or examination burden for claims 1-20 (Remarks, p. 3).
This is not found persuasive, because: Independent base Claim 1 and independent Claim 10 are compositional claims whereas independent Claim 15 is a process-of-making claim. Restriction under 35 U.S.C. § 121 is proper as the process could be used to make other compositions. See MPEP § 806.05(f). Further, Claims of Group I are classified under C08K 3/04, whereas Claims of Group II are classified under C08J 3/20. Separate classification shows each invention has attained recognition in the art as a separate subject for inventive effort, and thus, requires a separate field of search which are not coextensive in nature.
This is sufficient to demonstrate a serious search and/or examination burden. See MPEP § 808.02.
The Requirement is therefore made FINAL.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3 & 5-14 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Li et al. (US 2018/0273736 A1). Dibenzothiazole Disulfide SDS is provided herein as an evidentiary reference where applicable.
Regarding claim 1, Li teaches composites comprising rubber & graphene and methods for producing said composites (Abstract). Li discloses a composites 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]). Nevertheless, the claimed invention is defined by product-by-process limitations. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP § 2113(I). Li teaches a rubber-graphene composite containing all required elements of the claimed composition and therefore anticipates the independent base Claim 1.
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]). Accelerator DM is also known as MBTS or dibenzothiazole disulfide, as evidenced by Dibenzothiazole Disulfide SDS (p. 1).
Regarding claim 8, as Li anticipates the independent base claim, the physiochemical properties disclosed in the claim will inherently be present in Li’s invention. 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 9, Li teaches an elastic article comprising the composite of the invention (p. 4, Claims 7-9).
Regarding claim 10, 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 0 phr of N550 carbon black, 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]).
The claimed invention is defined by product-by-process limitations. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP § 2113(I). Li teaches a rubber-graphene composite containing all required elements of the claimed composition and therefore anticipates the independent Claim 10.
Regarding claims 11-14, as Li anticipates the independent claim, the physiochemical properties disclosed in the claim will inherently be present in Li’s invention. 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.
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 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, 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 graphene(s) 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.
Conclusion
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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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/MARK KOPEC/Primary Examiner, Art Unit 1762