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 .
This Office action is in response to the amendment filed 3/10/2026. Claims 1, 4-5 and 8 are amended; claims 10-15 and 20 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1-20 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Applicant's election with traverse of group I, drawn to claims 1-9 and 16-19 in the reply filed on 3/10/2026 is acknowledged.
The traversal is on the ground(s) that Examiner reliance on a combination of three separate references to establish that the common technical features is inappropriate for purposes of unity of invention analysis. The specific combination of elements recited in claims are common to the restricted groups and are not taught or suggested by any single reference. The Examiner’s rejection under 35 U.S.C. 103 requires combining teachings from three different references, which demonstrate that the common claimed features are not readily obvious.
This is not found persuasive because there is no requirement under PCT Rule 13.1 and 13.2 that all claim limitations be disclosed in a single reference. The common technical features of groups I to III (i.e., graphene nanoparticle having specific properties, polymer obtained from defined monomer, organosilane, and the base fluid) are obvious based on the disclosure in Wieber et al combined with the teachings in Seresht et al and Mungse et al and therefore there is lack of unity.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-15 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/10/2026.
Claim Rejections - 35 USC § 103
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 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 1-9 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over over Wieber et al (WO 2019/145307 A1) in view of Seresht et al (Applied Surface Science; Vol. 276; pp 672-681; 2013) and Mungse et al (Journal of Colloid and Interface Science; Vol. 541; pp 150-162; 2019).
It is noted that WO 2019/145307 A1 (WO) is being utilized for date purposes. However, US equivalent for WO, namely, Wieber et al (US 2021/0062106 A1) is referred to in body of the rejection below. All column and line citations are to the US equivalent.
Regarding claims 1 and 2, Wieber et al disclose polymeric-nanoparticle compositions (abstract) which reads on the nano-particle composition in present claim 1. The compositions are characterized by milling a mixture (which reads on obtaining nanoparticle composition by milling in present claim 1). The mixture contains one or more nanoparticle compound (A) and one or more polymer compound (B) (i.e., reads on one or more polymer in present claim 1). The one or more polymer compound (B) is obtained by polymerizing 1 to 30% by weight of functional monomer as component (a) (i.e., reads on the amount of monomer “a” in present claim 1), 15 to 70% by weight of one or more alkyl (meth)acrylate monomer wherein each of the alkyl group is independently a linear, cyclic or branched and comprises 1 to 40 carbon atoms (i.e., reads on the monomer “b” and its amount in present claim 1), and 20 to 80% by weight of ester of (meth)acrylic acid and one or more hydroxylated hydrogenated polybutadiene monomer having a number average molecular weight of 500 to 10,000 g/mol (paragraphs 0066 to 0069) which reads on the polybutadiene-based macromonomer and its amount in present claim 1; and number average molecular weight of polybutadiene-based macromonomer in present claims 1 and 2). Examples of monomer “a” include aminoalkyl (meth)acrylates (i.e., reads on monomer a1 in present claim 1), and nitriles of (meth)acrylic acid (i.e., reads on monomer a2 in present claim 1) (paragraphs 0028-0032) which read on functional monomer species in present claim 1. In a preferred embodiment, the inorganic nanoparticle is a graphene oxide (paragraph 0128) which reads on graphene nanoparticle having oxygen groups in present claim 1. The mixture comprises one or more inorganic nanoparticle (A), one or more polymer compound (B) and a solvent, preferably a base oil (paragraph 0149) which reads on the base fluid in present claim 1.
Wieber et al are silent with respect to properties of graphene; silane and its amount.
However, regarding properties of graphene; Seresht et al teach that graphene which was synthesized at 800 0C (GT800) had a higher quality than other temperatures (abstract). See Tables 1 and 2, wherein graphene GT800 has 3 layers (i.e., reads on multilayer in present claim 1) and ID/IG ratio of 0.62 (i.e., equivalent to G/D ratio of 1.61 and reads on the G/D ratio in present claim 1). The BET surface area of GT800 is about 560.6 m2/g (page 677, col. 2, lines 3-5) which reads on BET surface area of graphene in present claim 1. Graphene has excellent properties which makes it interesting in many engineering application. The method of utilizing water intercalated graphene oxide for synthesizing graphene is low cost and massively scalable while the starting material is just simple graphite. Therefore, in light of the teachings in Seresht et al and given that Wieber teaches the use of graphene oxide as an inorganic nanoparticle in a preferred embodiment, it would have been obvious to one skilled in art prior to the filing of present application to include a graphene of high quality produced at low cost and process which is scalable in the composition, of Wieber et al, absent evidence to the contrary. Additionally, since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference for the claimed measurement method of G/D ratio.
Regarding silane and its amount, Mungse et al in the same field of endeavor teach alkylated graphene oxide(GO)/reduced graphene oxide (rGO) prepared by covalent interaction with octadecyltrichlorosilane (OTCS) and octadecylethoxysilane (OTES) (i.e., both read on silane in present claim 1, wherein h = 0, R is a linear C18 carbon based group and X = Cl or OY wherein Y = linear C2 alkyl group in present claim 1) (abstract). The grafting density of octadecylsilanes on GO and rGO is found to be governed by the hydrolysis rate of leaving groups in OTCS and OTES and availability of oxygen functionalities in the GO and rGO. The octadecylsilanes grafted on the GO and rGO facilitate their dispersion in the polyol lube base oil, which is very important for efficient tribo-performance of graphene-based fluids. The GO-OTCS with a maximum grafting density of octadecylsilane exhibited excellent dispersibility. The minute dosing of 0.04 to 0.06 mg/mL of alkylated GO/rGO as the additive to polyol lube base oil showed significant enhancement in tribo-performance by reducing the friction and wear. The alkylated GO/rGO could be an excellent alternative to conventional additives, where low dispersibility, environmental impact, poor mechanical strength, compatibility with engineering surfaces, low conductivity and enhancement of tribo-performance are the challenges (page 161, section: conclusion). Therefore, in light of the teachings in Mungse et al, it would have been obvious to one skilled in art prior to the filing of present application to include a combination of graphene oxide and silane in the composition, of Wieber et al in view of Seresht et al, for above mentioned advantages. Additionally, case law holds that differences in concentration or temperature will not support patentability of the subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05. As such, Mungse et al show that silane influences dispersion of graphene and thus would be considered a result effective variable. Thus, it would have been obvious to one of ordinary skill in art prior to the filing of present application to have optimized the amount of silane through routine optimization. However, changes such as concentration of silane may impart patentability to a composition if the particular concentration claimed produces a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. See In re Boesch and Slaney, 2003 USPQ 215 (CCPA 1980).
Regarding claim 3, Wieber et al teach that polymer compound (B) has a weight average molecular weight of 10,000 to 1,000,000 g/mol (paragraph 0053).
Regarding claim 4, see example 1, of Wieber et al, wherein the polymer is formed from a monomer composition comprising 140 g of macromonomer (i.e., 47.5% and reads on the amount of polybutadiene-based macromonomer in present claim 4), 107 g of butyl methacrylate (i.e., 36.2% by weight; reads on alkyl methacrylate of monomer of formula I as a first component, wherein R1 is linear alkyl residue with 4 carbon atoms and R is methyl; and its amount in present claim 4), 28 g of styrene (i.e., 9.5% by weight), 8 g of dimethylaminopropyl methacrylamide (i.e., 2.7% by weight), (both styrene and dimethylaminopropyl methacrylamide read on functional monomer as component “a” and its amount in present claim 4), 13 g of lauryl methacrylate (i.e., 4.3% by weight; reads on alkyl methacrylate of monomer of formula II as a first component, wherein R2 is linear alkyl residue with 12 carbon atoms and R is methyl; and its amount in present claim 4). The hydroxylated hydrogenated polybutadiene monomer has a number average molecular weight of 500 to 10,000 g/mol (paragraph 0069).
Regarding claim 5, see example 1, of Wieber et al, wherein the polymer is formed from a monomer composition comprising 140 g of macromonomer (i.e., 47.5% and reads on the amount of polybutadiene-based macromonomer in present claim 5), 107 g of butyl methacrylate (i.e., 36.2% by weight; reads on alkyl methacrylate of monomer of formula I as a first component “b1”, wherein R1 is linear alkyl residue with 4 carbon atoms and R is methyl; and its amount in present claim 5), 28 g of styrene (i.e., 9.5% by weight; reads on “a9” as the second component and its amount in present claim 5), 8 g of dimethylaminopropyl methacrylamide (i.e., 2.7% by weight; reads on “a1” as the first component “a” and its amount in present claim 5), 13 g of lauryl methacrylate (i.e., 4.3% by weight; reads on alkyl methacrylate of monomer of formula II as a second “b2”, wherein R2 is linear alkyl residue with 12 carbon atoms and R is methyl; and its amount in present claim 5). The hydroxylated hydrogenated polybutadiene monomer has a number average molecular weight of 500 to 10,000 g/mol (paragraph 0069).
Regarding claim 6, wherein the polymer is formed from a monomer composition comprising 140 g of macromonomer (i.e., 47.5%; i.e., reads on macromonomer “c”), 107 g of butyl methacrylate (i.e., 36.2% by weight, reads on monomer “b”), 28 g of styrene (i.e., 9.5% by weight; reads on monomer “a”), 8 g of dimethylaminopropyl methacrylamide (i.e., 2.7% by weight; reads on monomer “a”), and 13 g of lauryl methacrylate (i.e., 4.3% by weight; reads on monomer “b”). The hydroxylated hydrogenated polybutadiene monomer has a number average molecular weight of 500 to 10,000 g/mol (paragraph 0069). The sum of “a”, “b” and “c” adds to 100% by weight.
Regarding claim 7, examples of silanes in Mungse et al include octadecyltriethoxysilane (abstract) and active head groups include -Si(OCH3) (bridging paragraph pages 153-154). It is noted that hexadecyltrimethoxysilane is an isomer of octadecyltriethoxysilane and octadecyltrimethoxysilane. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
Regarding claims 8 and 9, in addition to paragraph 10a to 10d above, see example Dispersion 1E1, of Wieber et al, wherein the composition comprises 2 g of hBN (i.e., 10% by weight and reads on the amount of nanoparticle in present claim 8), 16 g of Nexbase 3043 oil (i.e., 80% by weight and reads on the amount of base fluid in present claim 8), and 2 g of polymer P1 (i.e., 10% by weight and reads on the amount of polymer in present claim 8). Examples of inorganic nanoparticles in a preferred embodiment include non-metal oxide such as graphene oxide (paragraph 0128) and hBN nanoparticle (paragraph 0126). Therefore, it would have been obvious to one skilled in art prior to the filing of present application to replace hBN in example Dispersion 1E1 with graphene oxide. It is the Office’s position that it is within the scope of one skilled in art prior to the filing of present application to optimize the total amount of A, B, C and D to 100% by weight after accounting for the amount of silane based on the teachings in Mungse et al.
Regarding claim 16, examples of silanes, in Mungse et al, include octadecyltriethoxysilane (abstract) which is an isomer of silane of formula IV wherein R is a linear C16 carbon-based group and X is ethoxy. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
Regarding claim 17, Wieber et al teach that polymer B has a weight average molecular weight of 200,000 to 600,000 (paragraph 0053).
Regarding claims 18 and 19, see example 1, of Wieber et al, wherein the polymer is formed from a monomer composition comprising 140 g of macromonomer (i.e., 47.5% and reads on the amount of component “c” in present claim 18), 107 g of butyl methacrylate (i.e., 36.2% by weight; reads on amount of first component “b” in present claim 18; and butyl methacrylate in present claim 19), 28 g of styrene (i.e., 9.5% by weight; reads on second component “a” in present claim 19), 8 g of dimethylamino propylmethacrylamide (i.e., 2.7% by weight; reads on first component “a” in present claim 19), (both styrene and dimethylaminopropyl methacrylamide read on component “a” in present claim 18, for a total of 12.2% by weight in present claim 18), 13 g of lauryl methacrylate (i.e., 4.3% by weight; reads on amount of second component “b” in present claim 18; and lauryl methacrylate in present claim 19). The hydroxylated hydrogenated polybutadiene monomer has a number average molecular weight of 500 to 10,000 g/mol (paragraph 0069)
Response to Arguments
The objections as set forth in paragraph 11, of Office action mailed 12/10/2025, are withdrawn in view of amendments and/or applicant arguments.
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that (A) result of using GT800 of Seresht et al with Mungse et al is depicted in CE8/CE9 of Applicant’s specification, showing that the results show significant sedimentation. This is in line with what Mungse et al discloses, that it is possible to achieve good dispersibility with graphene with a maximum grafting density with the silane compound. However, GT800 as disclosed is Seresht does not have high grafting density. To the contrary, GT800 is a high quality graphene with high G/D ratio and thus low grafting density; and (B) oxygen functionalities are important as linkers for grafting based on Mungse et al. However, reduced graphite rGO as described by Seresht et al corresponds to pristine high quality graphene achieved with a purification step to reduce defects with a lower number of linker functionality groups. In so far as Mungse et al attributes good dispersibility to grafting silane onto graphene with a low G/D ratio, there would have been no motivation to have used the high quality graphene having high G/D ratio of Seresht as a grafting substrate with a silane. The combination of Seresht and Mungse et al teachings are opposite and the combination of both does not end with the claimed solution. If one were to combine Seresht with Mungse, the result is suggested by CE2/CE3 with bad dispersibility; and (C) claimed invention keeps viscosity increase in a certain range. All the cited references are silent on achieving this objective. Why would one of ordinary skill use silanes as a viscosity stabilizer since the dispersing polymers of Wieber et al provide a good stability in terms of sedimentation knowing that the combination of Seresht et al and Mungse et al won't lead to a stable dispersion? Moreover, each of Seresht and Mungse et al are silent on the preparation method of nanoparticle composition. Example CE2, without the use of polymer compound B is not stable (see Table 8). Experimental data show that you need the silane compound, nanoparticle with selected surface BET and G/D ratio and the milling process as claims in claim 1.
With respect to (A), in comparative examples CE8 and CE9, of present application, the G/D ratio of graphene is 2.8 and 2.6, respectively, outside what is in present claims and that of Seresht. Specifically, the G/D ratio of graphene oxide GT800 in Seresht is 1.61 (see Table 2 of Seresht, wherein the ID/IG ratio of 0.62 and the inverse (i.e., G/D ratio is 1.61) falls within that of present claims.
With respect to (B), applicant’s attention is drawn to independent claim 1 in present application, wherein the G/D ratio is between 0.5 and 2. Now applicant attention is drawn to IE1 and CE2/CE3 of present application. All of these use graphene oxide nanoparticles having a G/D ratio of 1.1 and surface area of 700 m2/g. The differences appear to be based on treatment method in IE1 (peristaltic pump adjusted to 130 rpm and the ball mill rotation speed of 3900 rpm and treated for 120 minutes introducing 1.0 kWh energy) and CE2/CE3 (ultrasound processor with 40 Watt, 24 kHz with Ti-sonotrode) and not the G/D ratio, and also not including the polymer in CE2/CE3. Additionally, Seresht teaches that quality of graphene improves as the temperature increases from 200 to 8000C and then impairs as temperature increased from 800 to 10000C. See figure 2, FT-IR wherein a band at 3405 cm-1 is attributed to O-H stretching vibration. Furthermore, Mungse et al teach that oxygen functionalities primarily hydroxyl in the GO are prone to interact with octadecylsilanes via covalent interaction. Hence, it is clear that GT800 has oxygen functionality for it to be grafted to the organosilane of Mungse, for improving dispersibility.
With respect to (C), Wieber et al teach a process of manufacturing polymeric-inorganic nanoparticle compositions including a step of providing nanoparticle compound, polymer, solvent and milling the mixture (page 19, lines 4-14). The solvent is preferably a base oil (page 18, lines 8-10). Graham v. Deere analysis was done and the references of Seresht and Mungse are only used for their teachings of graphene with the claimed G/D ratio and organosilane for improving dispersibility, respectively.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KARUNA P REDDY/Primary Examiner, Art Unit 1764
Prosecution Insights