DETAILED CORRESPONDENCE
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
Applicant's arguments have been fully considered.
Applicant argues the graphene of the prior art is not reduced in size. This is not persuasive because this is a product-by-process limitation. While the claim is a method claim, the context of the disputed limitation is a description of the material provided in the “providing a first material” step. The claim does not positively recite a step of processing the graphene and Applicant has not explained why the graphene of the prior art is structurally distinct from the claimed graphene.
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.
Claim(s) 111-120 is/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 pre-AIA the applicant regards as the invention.
In reference to claim 111, the limitation “wherein the polyhedral graphene is post-processed to reduce a lateral size of the polyhedral graphene and to exfoliate the
polyhedral graphene into fewer layers” is unclear as to whether Applicant intends for this to be a positively recited step.
Does the claim require a step of reducing the layers?
If so, then this should be clarified in the claim by positively reciting such a step.
The limitation reads as not, and this is considered a product-by-process limitation, however, the remarks indicate that Applicant may consider this step part of the claimed method. A method is defined by its positively recited steps.
Note: Claims 112-120 are also rejected by virtue of their dependence on claim 111.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 111-119 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lundorf (US 20180298154 A1) in view of Algozeeb (NPL October 20201)
In reference to claim 111, Lundorf discloses a method of producing a composite material (“composite material unit (CMU)” [Claim 1]), the method comprising:
providing a first material comprising a polyhedral graphene (“SE1 is a carbon nanotube, buckyball or graphene molecule” [Claim 5]);
providing a second material (“where SE2 is a plastic, a thermoset such as polyester resin, epoxy resin, or polyurethanes, or a thermoplastic such as nylon, polycarbonate or polyethylene” [Claim 6]);
mixing the first material and the second material (“solution mixing or melt processing to make CMUs” [P0036]); and
Lundorf describes “a carbon-nanotube (CNT) reinforced polymer comprising one or more composite material units” (Paragraph 7148) therefore it would be obvious to perform a step of producing a polyhedral graphene composite.
Lundorf does not describe the first material being formed by joule heating.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, composites (abstract), Algozeeb discloses that it is possible to form graphene by joule heating (abstract). Algozeeb explains that a benefit of this process is the ability to recycle plastic waste.
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the method such that the first material is formed by joule heating as claimed.
In reference to claim 112, depending on the method of claim 111, wherein the second material includes any one or more of rubber, cement, concrete, epoxy, coatings, asphalt, plastics, polymers, polyurethane foams, glass ceramics, tire material, tire tread formations, tire tread material, or wood composites (See Claim 6 of Lundorf).
In reference to claim 113, depending on the method of claim 111, further comprising curing the polyhedral graphene composite (“curing” at paragraph 6994 of Lundorf).
In reference to claim 114, depending on the method of claim 113, further comprising mixing the polyhedral graphene composite with another material before curing (“incorporation of nucleating agents” [P0044])
In reference to claim 115, depending on the method of claim 113, wherein the curing process is aided by adding any of the following: a crosslinking agent, an accelerator, or heat (Lundorf suggests using natural rubber at paragraph 221. It is well known to vulcanize natural rubber using heat and crosslinking agents to increase strength)
In reference to claim 116, depending on the method of claim 111, wherein the polyhedral graphene has a diameter between 3 nm and 200 nm (Size of SE… greater than 10 nm,… less than 100 nm… [Paragraphs 175-177]).
In reference to claim 117, depending on the method of claim 111, wherein the wherein the polyhedral graphene includes a plurality of walls, wherein each of the plurality of walls comprises 2 to 100 layers (“Carbon nano-onions” [P0448]).
In reference to claim 118-119, depending on the method of claim 111, further comprising mixing the rubber with a polyhedral graphene containing media, wherein the polyhedral graphene containing media includes any one or more of oil, an organic solvent, water, or mixture of solvents; further comprising adding a surfactant and/or a dispersant to improve the dispersion of the polyhedral graphene into the polyhedral graphene containing media (“additive (e.g. a nanotube dispersion) is mixed with a solution of preformed polymer (e.g. polyvinyl alcohol, polystyrene, polycarbonate, or poly(methyl methacrylate)) and ligands and linker(s).” [P0668]. The term “dispersion” implies the presence of a solvent which meets limitations of the claim as defined by the specification.)
Claim 120 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lundorf (US 20180298154 A1) in view of Algozeeb (NPL October 20202), and further in view of Leng (US 20190270863 A1)
In reference to claim 120, Lundorf discloses formation of composites comprising graphene as described above.
It is unclear if Lundorf discloses claim 120 (see issues of claim interpretation under 35 USC 112).
Nevertheless, In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, graphene composites (abstract), Leng discloses that rubber-graphene composites are known to be formed by forming a rubber latex and precipitating the mixture to form a composite (See paragraph 66-83 and also paragraph 104 regarding the use of “coagulant”, which is equivalent to deemulsifier in the claim).
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the method to comprise a latex and deemulsifier as claimed.
A person having ordinary skill in the art would have been specifically motivated to modify the method to use a latex and deemulsifier in order to form elastomeric object as suggested by Leng and to combine prior art elements according to known methods to yield predictable results; achieve the simple substitution of one known element for another to obtain predictable results; and/or use of known technique to improve similar devices (methods, or products) in the same way.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Luong (NPL 20203)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 https://pubs.acs.org/doi/pdf/10.1021/acsnano.0c06328
2 https://pubs.acs.org/doi/pdf/10.1021/acsnano.0c06328
3 https://www.nature.com/articles/s41586-020-1938-0
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