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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
Regarding claims 1-14 and 16-18, the disclosures of the prior-filed applications, Application Nos. 62/937,147, 16/680,162, 16/284,764, 62/801,757, 62/711,016, and 62/636,710, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. However, this claimed subject matter is supported by Application No. 16/784,146 and therefore has an effective filing date of 2/6/2020.
Regarding claim 15, the disclosures of the prior-filed applications, Application Nos. 17/749,849, 16/784,146, 62/937,147, 16/680,162, 16/284,764, 62/801,757, 62/711,016, and 62/636,710, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Therefore, the effective filing date is the actual filing date, i.e., 9/25/2023.
Claim Objections
Claim 15 is objected to because the term “graphene containing material” is inconsistent with previous recitations because it is missing the hyphen.
Appropriate correction is required.
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 1-18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 1, when comparing the glass transition temperature of the composite material to “the polymer without the graphene-containing material,” it is unclear what is being directly compared to the composite material, i.e., is the glass transition temperature of the composite material being compared to that of a pure polymer or to the same composite material (able to contain other ingredients such as rubber particles given open transitional language “comprising”) but without the graphene-containing material?
With respect to claims 1-4, 6, and 8-14, the term “approximately” is indefinite because it is unclear how the term extends the scope of the numerical endpoints.
With respect to claim 5, when comparing the storage modulus of the composite material to “the polymer in absence of the graphene-containing material,” it is unclear what is being directly compared to the composite material, i.e., is the storage modulus of the composite material being compared to that of a pure polymer or to the same composite material (able to contain other ingredients such as rubber particles given open transitional language “comprising”) but without the graphene-containing material? Also, is the storage modulus being measured at ambient temperature or at 50°C (like in instant claim 2) or another temperature?
With respect to claim 7, when comparing the glass transition temperature of the composite material to “the polymer independent of the graphene-containing material,” it is unclear what is being directly compared to the composite material, i.e., is the glass transition temperature of the composite material being compared to that of a pure polymer or to the same composite material (able to contain other ingredients such as rubber particles given open transitional language “comprising”) but without the graphene-containing material?
With respect to claims 9-11, 13, and 14, it is unclear if the range specified with “between” includes the end points.
With respect to claims 13 and 14, it is unclear whether the particle sizes are related to thickness or width of the graphene-containing material.
With respect to claims 7 and 15-18, they are rejected for failing to cure the deficiency of the claim from which they depend.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 15 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to claim 7, independent claim 1 (on which claim 7 depends) requires that the glass transition temperature is “greater than” and does not include within its scope a range that includes “equal to.”
With respect to claim 15, the range of “less than 10 wt%” of the graphene-containing material includes 0 wt% and is therefore outside the scope of claim 1 which requires the addition of the graphene-containing material.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 of this title, 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.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Iroh (US 2014/0315012) in view of Nozato (US 9,604,884).
With respect to claims 1, 6, and 7, Iroh discloses a composite material comprising nanographene sheet (NGS) particles and a polyimide matrix (abstract). In Table 3 (paragraph 0097), Iroh shows the direct dependence of glass transition temperature (Tg) on the amount of NGS, e.g., a composite comprising 0 vol % NGS has Tg of 405.9°C and a composite comprising 28.08 vol % NGS has Tg of 431.1°C.
Iroh teaches that the NGS particles contain 50-100 sheets (paragraph 0090) and have a high surface area (paragraph 0100) but fails to specifically disclose the specific surface area.
Nozato discloses a composite material comprising graphene-like carbon material and teaches that graphene-like carbon material has about 10-1000 graphene layers and a surface area of 30-300 m2/g (col. 7, lines 24-38).
Given that Iroh discloses that its NGS particles comprising 50-100 sheets and have a high surface area and further given that similar graphene nanoparticles having 10-1000 sheets have a specific surface area of 30-300 m2/g, it would have been obvious to one of ordinary skill in the art to utilize NGS particles having a specific surface area of at least 60 m2/g.
With respect to claim 2, Figure 15A shows the dependence of storage modulus (E’) for a range of temperatures and shows that at 50°C the storage modulus for sample (e) (28.08 vol % NGS) is 0.65 x 1010 Pa (6.5 GPa).
With respect to claims 3 and 4, Iroh does not explicitly disclose the maximum tan delta, however, maximum tan delta is representative of plastic vs elastic properties of a composite at its glass transition temperature. A composite that has plastic deformation will have a higher tan delta than a composite like a rubber have elastic deformation. Polyimide exhibits plastic deformation and therefore is expected to have a maximum tan delta of at least 0.25 and at least 1.5.
With respect to claim 5, in Table 3 (paragraph 0097), the storage modulus increased from 1.20 for 0.00 vol % NGS to 7.20 GPa for 28.08 vol % NGS, which is an increase of 500%.
With respect to claim 8, Iroh teaches a parameter t that describes fractal properties and has a value of 3.47 (paragraph 0086) which appears to represent claimed fractal dimension property because they are both measured from the slope of a double logarithmic graph (paragraph 0026 and 0086).
With respect to claim 9, Iroh teaches that the width (thickness) of NGS particles can be 50-100 (50-100 layers as explained in paragraph 0090) but other NGS particle can have thickness of 10-20 nm (i.e., 10-20 layers) or less than 5 nm (i.e., less than 5 layers). Therefore, it would have been obvious to one of ordinary skill in the art to utilize other NGS particles having a platelet layer count of 2-25 layers.
With respect to claim 10, Figure 11C (paragraph 0091), is Raman spectra of composite materials where the D peak at 1391 is compared to G peak at 1580 to arrive at claimed D/G. For samples b, c, and d, a ratio of about 0.3-1 is observed.
With respect to claims 11 and 12, there is no oxygen-containing species in Iroh’s NGS particles.
With respect to claims 13 and 14, Iroh discloses that the NGS particles have a thickness of 50 nm and width of 7 microns (paragraph 0103).
With respect to claim 15, polyimide behaves as an adhesive and therefore reads on claimed adhesive formulation. Table 3 includes 0.29, 0.59, 1.18, and 6.12 vol % of NGS particles. These amounts are approximately the same as those based on wt % by calculating using densities of polyimide and NGS particles that are about the same.
With respect to claim 16, the NGS particles reinforce the polyimide and therefore provide for a reinforced plastic material.
With respect to claim 17, Iroh teaches that the multiple layers cause defects which are not observed with monolayer graphene (paragraph 0090). It is these defects that read on crinkled graphene platelets.
With respect to claim 18, Iroh shows that increasing amounts of NGS particles provide for improved storage properties (Table 15A), i.e., improved inhibition of stress cracks.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,352,481. Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons given below.
With respect to claim 1, claim 1 of US ‘481 includes a composite material comprising a graphene-containing material having a specific surface area (SSA) of at least approximately 60 m2/g, wherein the composite material has a glass transition temperature that is at least 20% greater than a glass transition temperature of the polymer in absence of the graphene-containing material.
US ‘481 does not claim whether the composite material is a thermoplastic or a thermoset.
Nevertheless, it would have been obvious to one of ordinary skill in the art to select other a thermoplastic or thermoset polymers since polymers mostly fall into one of the two types of polymer.
With respect to claims 2-14, see claims 2-14 of US ‘481, respectively.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,767,414. Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons given below.
With respect to claim 1, claim 1 of US ‘414 includes a composite material comprising a graphene-containing material having a specific surface area (SSA) of at least approximately 60 m2/g, wherein the composite material has a glass transition temperature that is at least 10% greater than a glass transition temperature of the polymer in absence of the graphene-containing material.
US ‘414 does not claim whether the composite material is a thermoplastic or a thermoset.
Nevertheless, it would have been obvious to one of ordinary skill in the art to select other a thermoplastic or thermoset polymers since polymers mostly fall into one of the two types of polymer.
With respect to claims 2-14, see claims 2-14 of US ‘414, respectively.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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