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 .
Election/Restrictions
Claims 6 and 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (17-18) and species (6), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/24/2025.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of the implied language “as described herein are also provided”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 2 is objected to because of the following informalities: the claim includes duplicated language “wherein the hollow glass microspheres have an average diameter of from about 20 micrometers to 140 micrometers,”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: the claim includes duplicated language “the hollow glass microspheres are treated”. 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.
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.
Claims 2, 5, 7-8, 12 and 14-15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation about 20 micrometers to 140 micrometers, and the claim also recites about 30 micrometers to about 115 micrometers, 30 micrometers to 90 micrometers, about 15 micrometers to about 70 micrometers, and about 10 micrometers to 50 micrometers which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, the broad range will meet the claim limitations.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation pH greater than 7, and the claim also recites greater than 8, greater than 9, greater than 10, greater than 11, greater than 12 which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, the broad range will meet the claim limitations.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation about 35 nanometers to about 250 nanometers, and the claim also recites about 50 nanometers to about 200 nanometers, and about 75 nanometers to about 150 which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, the broad range will meet the claim limitations.
Claim 8 recites percentages without defining the measurement units used to determine the percentages (weight, volume, moles, or atoms). Without measurement units, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, any units will meet the claimed limitations.
Claim 12 recites the limitation "the surfactant" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the claim will be treated as depending from Claim 9.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitation less than 30%, and the claim also recites less than 20%, and less than 10% which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, the broad range will meet the claim limitations.
The term “gentle” in claim 14 is a relative term which renders the claim indefinite. The term “gentle” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, any stirring will meet the “gentle” limitation.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation L*=about 15 to 17; a*=about -1 to 0; and b*=about -0.5 to -1.5, and the claim also recites L*=16.6; a*=-0.43 & b*=-0.98 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, the broad range will meet the claim limitations.
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.
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.
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.
Claim(s) 1-4, 7, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Zhamu (US 20170225233) in view of Mariusz (GB2541954A) and Torobin (US 4303732).
Regarding Claims 1-3 and 7, Zhamu teaches A method of making graphene coated glass microspheres (abstract) comprising: providing Pristine Graphene Particles having an average particle size of from about 200 nm to 20 microns ([0002], [0095]); providing glass microspheres ([0096]) having an average diameter of from about 10 nm to 10 mm and having an external surface (Zhamu Claims 7-8); and mixing the Pristine Graphene Particles with the glass microspheres under conditions to associate the Pristine Graphene Particles on the external surface of the glass microspheres ([0098-0101]).
Zhamu teaches potential applications including heat sinks ([0020]). Zhamu does not explicitly teach the carrier particles being hollow glass microspheres; however, Mariusz teaches graphene coating on hollow glass microspheres for use in heat sink applications wherein the surface of the hollow elements are electrically charged prior to graphene application (abstract, Fig. 3 and discussion thereof, Claim 35). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of Zhamu to include an electrically charged hollow glass microsphere core, as taught by Mariusz, because it is a known particle for graphene coating in heat sink applications and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the particles of Zhamu with a hollow glass microsphere core, as in Mariusz.
The combined references are silent as to the wall thickness of the hollow glass microspheres; therefore, one of ordinary skill in the art would have been motivated to look to related art to determine a suitable wall thickness. Torobin teaches hollow glass microspheres having a wall thickness of 0.1 to 1000 microns (Torobin, Claim 1). Torobin teaches, depending on their diameter and wall thickness, the glass microspheres are capable of withstanding relatively high external pressures and/or weight (col. 2 ln. 11-19). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the wall thickness of the particles of the combined references to be a thickness, as taught in Torobin, because it is a known wall thickness and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the particles of the combined references with a wall thickness as in Torobin.
Regarding the claimed particle sizes, “In the case where the claimed ranges "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).” MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the particle sizes to be any sizes, taught by the references, including those within the claimed range, because the references teach they are all suitable sizes for use with the invention.
Regarding Claim 4, Mariusz does not explicitly teach a negative charge; however, 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 obviousness has been established, In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to the negative charge limitation, when the structure recited in the prior art is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112. In this situation, the prior art exemplifies the applicant's claimed attraction of the graphene material, so the claimed charge relating to the attraction are present in the prior art. Absent an objective evidentiary showing to the contrary, the addition of the physical properties to the claim language fail to provide patentable distinction over the prior art of record.
Regarding Claim 13, Zhamu is silent as to the average graphene coating coverage of the external surface area of the hollow glass microspheres when evaluated by FESEM at 250x magnification; however, Zhamu teaches the graphene proportion is typically from 0.01% to 80% by weight based on the total weight of graphene and inorganic compound ([0053]). Zhamu teaches uniform dispersion of graphene in the composites ([0151]). Graphene proportion necessarily correlates to coating coverage. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include optimization of the graphene coating coverage, as suggested by Zhamu, in order to achieve a desirable properties, including percolation threshold, in the product composite and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed coating coverage.
Regarding Claim 14, Zhamu teaches the Pristine Graphene Particles are mixed with the hollow glass microspheres under stirring conditions ([0074]). Zhamu teaches impacting balls are optional ([0055]). Zhamu does not teach the carrier particles are broken during preparation.
Regarding Claims 15-16, The combined references are silent as to the L*a*b*color value and electrical conductivity of the coated particles; however, 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 obviousness has been established, In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to the L*a*b*color value and electrical conductivity limitation, when the structure recited in the prior art is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112. In this situation, the prior art exemplifies the applicant's claimed materials and method , so the claimed properties relating to the particles produced by the claimed materials and method are present in the prior art. Absent an objective evidentiary showing to the contrary, the addition of the physical properties to the claim language fail to provide patentable distinction over the prior art of record.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Zhamu (US 20170225233), Mariusz (GB2541954A), and Torobin (US 4303732) as applied to claims 1-4, 7, and 13-16 above, and further in view of Ballermann (US 5843781).
Regarding Claim 5, Mariusz teaches graphene coating on hollow glass microspheres for use in heat sink applications wherein the surface of the hollow elements are electrically charged prior to graphene application (abstract, Fig. 3 and discussion thereof, Claim 35). The combined references are silent as to the method of charging the glass surfaces; therefore, one of ordinary skill in the art would have been motivated to look to related art to determine a suitable charging method. Ballermann teaches glass is pretreated with sodium hydroxide, i.e. a solution having a pH greater than 7, to confer a negative charge to the glass (col. 1 ln. 64-66). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include a charging method, as taught in Ballermann, because it is a known method of glass surface charging and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the charged glass of the combined references with a method as in Ballermann.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhamu (US 20170225233), Mariusz (GB2541954A), and Torobin (US 4303732) as applied to claims 1-4, 7, and 13-16, and further in view of Zhamu 2 (US 2011/0046027).
Regarding Claim 8, Zhamu teaches wherein the Pristine Graphene Particles have a carbon content of essentially 99% ([0002]), i.e. a non-carbon content of 1% or less.
Zhamu is silent as to the oxygen concentration; therefore, one of ordinary skill in the art would have been motivated to look to related art to determine a suitable impurity concentration. Zhamu 2 teaches pristine graphene with less than 0.05% by weight oxygen ([0023]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the impurities of Zhamu to include an oxygen concentration, as suggested by Zhamu 2, because it is a known concentration in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of Zhamu with an oxygen concentration as in Zhamu 2.
Claim(s) 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zhamu (US 20170225233), Mariusz (GB2541954A), and Torobin (US 4303732) as applied to claims 1-4, 7, and 13-16, and further in view of Nam (Nam, Monodispersed PtCo nanoparticles on hexadecyltrimethylammonium bromide treated graphene as an effective oxygen reduction reaction catalyst for proton exchange membrane fuel cells, Carbon, 50, 2012, pg. 3739-3747).
Regarding Claims 9 and 11-12, Zhamu teaches functional groups imparted to the graphene in situ, i.e. at the time of mixing, for the purpose of enhancing interfacial bonding ([0077]).
Zhamu does not explicitly teach a hexadecyltrimethylammonium bromide functionalized graphene; however, Nam teaches functionalized graphene for improved adhesion wherein hexadecyltrimethylammonium bromide is used as the functional group (abstract, 2.2). Nam teaches hexadecyltrimethylammonium bromide as an improved functional group compared to covalent bonding groups, which frequently damage graphene properties such as electrical conductivity (1. Introduction last two paragraphs). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the functional group of Zhamu to include hexadecyltrimethylammonium bromide, as suggested by Nam, for the benefit of maintaining properties such as electrical conductivity of the graphene.
Regarding Claim 10, Zhamu does not explicitly teach pre-treatment of the graphene; however, Nam teaches pre-treatment before mixing with particles for attachment (2.2). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include functionalizing before mixing, as suggested by Nam, because it is a known order of steps and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the product of Zhamu with functionalizing before mixing, as in Nam.
Conclusion
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/TABATHA L PENNY/Primary Examiner, Art Unit 1712