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 .
Response to Amendment
All previously set forth rejections have been withdrawn in view of the amendment filed on 6/29/2026.
The terminal disclaimer filed on 6/29/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. patent nos. 11,352,481 and 11,767,414 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
New grounds of rejection are set forth below. Thus, a 2nd non-final Office action is set forth as follows.
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 1-6, 8-10, 12-14, 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the amount of oxygen-containing species in the graphene-containing material (from instant claims 1 and 12) is not stated in the specification.
Claim Rejections - 35 USC § 112
Claims 1-5, 8-10, 12-14, and 16-18 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claims 1 and 12, the amount of oxygen-containing species in the graphene-containing material does not have a basis, i.e., is it weight or moles?
With respect to claims 2-5, 8-10, 14, and 16-18, they are rejected for failing to cure the deficiency of claim 1.
Claim 12 is 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. Specifically, the range of “less than 10%” extends the scope of claim 1 which limits the amount of oxygen-containing species to 0.2-5%. 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
Claims 1-6, 8-10, 12-14, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Iroh (US 2014/0315012) in view of Nozato (US 9,604,884) and Kinloch (US 2014/0370269).
With respect to claims 1, 6, and 12, 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 fails to disclose (i) the specific surface area of the nanographene sheet particles or (ii) the amount of oxygen-containing species are on the graphene.
With respect to (i), 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 (ii), Kinloch discloses nanocomposite materials comprising multilayer graphene particles (abstract) such as mixing functionalized graphene is attached to a substrate by an adhesive component such as polyimides (like used by Iroh) (paragraph 0036). Kinloch teaches that graphene is readily functionalized in the same way carbon nanotubes are functionalized by one of ordinary skill in the art with oxygen-containing groups (paragraph 0047) to improve dispersibility by improving the interface between graphene and adhesive and tuning Raman peak shift (paragraph 0048). While Kinloch does not disclose the amount of oxygen-containing compound in the graphene, it teaches that one of ordinary skill can balance the properties of the composite with the amount of functional groups.
Given that both Iroh and Kinloch are drawn to graphene compositions comprising polyimide and further given that Kinloch teaches that adding oxygen-containing functional groups to graphene provides for an improved interface between graphene and polyimide, it would have been obvious to one of ordinary skill in the art to select a graphene having an appropriate amount of oxygen-containing functional groups, including those within the scope of the instant claims, i.e., 0.2-5%, absent a showing of unexpected or surprising results.
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 has 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 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.
Response to Arguments
Applicant's arguments filed 6/29/2026 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
Conclusion
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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