DETAILED ACTION
Claim(s) 1-7 were rejected in Office Action mailed on 04/20/2026.
Applicant filed a response, amended claim(s) 1 and 6, on 06/28/2026.
Claim(s) 1-6 are pending.
Claim(s) 1-4 are rejected.
Claims 5-6 are objected to.
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 .
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.
Claim 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Park.
Regarding claims 1 and 3-4, Park teaches functionalized graphene containing two or more amines (Park, Abstract); and it can be prepared into a dispersion (Park, Figure 1); when the graphene dispersion is prepared using the functionalized graphene, it may further include a solvent (Park, [0039]).
The recitation in the claims that the coating composition is for a wiper blade and is for forming a coating layer for lowering a coefficient of friction of a wiper blade rubber base on glass, is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Park discloses a dispersion of the functionalized graphene as presently claimed, it is clear that dispersion of the functionalized graphene of Park would be capable of performing the intended use, i.e. for a wiper blade and is for forming a coating layer for lowering a coefficient of friction of a wiper blade rubber base on glass, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Furthermore, given that Park teaches the functionalized graphene containing amines, which reads upon the lubricant additive that is functionalized graphene, and is identical or substantially identical to the presently claimed, and therefore the chemically modified graphene would necessarily capable of self-adhesion to the wiper blade rubber base.
Given that Park discloses amine group, which read upon the functional group A, which are identical to the presently claimed, therefore the amine group would necessarily and inherently capable of self-adhesion to the wiper blade rubber base.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Park further teaches the amount of the functionalized graphene is 0.1 to 30 wt.% (Park, [0034]), which encompasses the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further regarding claim 1, given that Park teaches an identical or substantially identical material, i.e., graphene functionalized with amine, at 0.1 to 30 wt.% (Park, [0034]), with those of the presently claimed (claim 3; specification [0041]; [0071]), therefore it is clear that the graphene functionalized with amine of Park would necessarily and inherently meet the presently claimed limitation of “wherein the functionalized graphene has an interplanar distance of 0.36 nm to 0.8 nm”.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 2, as applied to claim 1, given that Park does not require the use of binder when the graphene dispersion is prepared, therefore it is clear that Park meets the claimed limitation that the coating composition does not comprise binder.
Allowable Subject Matter
Claims 5-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claims 5-6, neither Park nor Iqbal discloses or suggests wherein the functionalized graphene has an interplanar distance of 0.36 nm to 0.8 nm, and wherein: the functionalized graphene comprises an organic single molecule or polymer bonded to the functional group A; the organic single molecule or polymer has a functional group B capable of self-adhesion to the wiper blade rubber base; and the functional group B is at least one selected from the group consisting of an amine group, a silane group, an amide group, an azide group, a urea group, a urethane group, an alkylene group, an epoxide group, an anhydride, and a mercapto group.
Response to Arguments
In response to the amended claims, specifically, regarding claim 1 reciting “wherein the functionalized graphene has an interplanar distance of 0.36 nm to 0.8 nm”, the previous double patenting rejections and 35 U.S.C. 112(b) rejections are withdrawn.
In response to the amended claim 6 and canceled claim 7, the previous 35 U.S.C. 112(b) rejections are withdrawn.
In response to the amended claim 1, which recites, “wherein the functionalized graphene has an interplanar distance of 0.36 nm to 0.8 nm”. It is noted Iqbal would not anticipate/meet the present claims. Therefore, the previous 35 U.S.C. 102a(1) rejections over Iqbal are withdrawn from the record.
Applicant primarily argues:
“Park discloses a functionalized graphene containing two or more amines. However, it fails to teach that the functionalized graphene has an interplanar distance of 0.36 nm to 0.8 nm.”
Remarks, p. 5
The Examiner respectfully traverses as follows:
Given that Park teaches an identical or substantially identical material, i.e., graphene functionalized with amine, at 0.1 to 30 wt.% (Park, [0034]), with those of the presently claimed (claim 3; specification [0041]; [0071]), therefore it is clear that the graphene functionalized with amine of Park would necessarily and inherently meet the presently claimed limitation of “wherein the functionalized graphene has an interplanar distance of 0.36 nm to 0.8 nm”, as set forth above on page 5, absent evidence to the contrary.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
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.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights