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 .
Election/Restrictions
This application contains claims directed to the following patentably distinct species:
(1) reacting the hollow glass microspheres with a silane coupling agent: Claim 2; and
(2) reacting the pristine reactive graphene particles with a silane coupling agent: Claim 3.
The species are independent or distinct because the claims to the different species recite the mutually exclusive characteristics of such species: the hollow glass microspheres are distinct from the graphene particles chemically (glass vs. graphene) and physically (shape: microspheres vs. particles). In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1 and 4-23 are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
--the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification;
--the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Applicant’s Representative, on March 27, 2026, a provisional election was made with traverse to prosecute the invention of species 1, claim 2. Affirmation of this election must be made by applicant in replying to this Office action. Claim 3 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
Claims 1-2, 4-5, and 10-22 are rejected under 35 U.S.C. 103 as being unpatentable over CHEN (CN-103788413) in view of Bossmann (US-2022/0348467).
Claims 1 and 2: Chen teaches method of coating glass microspheres with graphene comprising reacting graphene particles with hollow glass microspheres wherein the glass microspheres have been reacted with a silane coupling agent (Chen, translation copy, paragraphs 0054 to 0066, i.e. Embodiments 4-6). However, the graphene particles of Chen are not reactive, which means the graphene particles have not been oxidized. Bossmann teaches surface-modifying or -functionalizing graphene particles to make them reactive to various chemical functional groups and bio-moieties and in turns “to create a variety of derivative compounds (Bossmann, para. 0002 and 0069-0070). In light of Bossmann’s teaching, the POSITA would have been motivated to utilize the reactive graphene particles of Bossmann as the coating graphene in the graphene-coated glass microspheres of Chen. The starting graphene of Bossmann is pristine graphene (Bossmann, para. 0054) and thus the oxidized graphene of Bossmann is a pristine reactive graphene. The hollow glass microspheres of Chen have an average particle size of 15 to 40 mm (para. 0037) and thus are well within the claimed range of 10 to 150 mm. With regards to the particle size of the graphene particles, although Bossmann does not report the particle size, it falls within the claimed range as shown in Figures 7-10 of Bossmann. In addition, the graphene particles used in the invention are the product of Bossman as stated in the instant specification at paragraph 0060.
Claim 4: Chen teaches the hollow glass microspheres being treated by hydroxylation prior to reaction with the silane coupling agent (Chen, para. 0011)..
Claim 5: Chen teaches the hollow glass microspheres being treated in a solution comprising a base of NaOH solution (the pH adjusting step 3) prior to reaction with the silane coupling agent (step 4).
Claim 10: The hollow glass microspheres of Chen have an average particle size of 15 to 40 mm (para. 0037) and thus meet claimed ranges 20 µm to 140 µm, 20 µm to 140 µm, 30 µm to about 115, 30 µm to 90 µm, 15 µm to 70 µm, or 10 µm
to 50 µm.
Claim 12. Bossmann does not report the particle size of the graphene particles; however, it is deemed to fall within the claimed range as shown in Figures 7-10 of Bossmann. In addition, the graphene particles used in the invention are the product of Bossman as stated in the instant specification at paragraph 0060.
Claim 13: Bossmann teaches the reactive graphene particles comprising up to 15% oxygen, 1-8% or 3-4 % oxygen (para. 0008 and 0063) which meets the claimed ranges of about 0.5% to about 10%, 1% to about 8%, 1.5% to about 6, 1.5% to about 5% or 1.5% to about 4% oxygen.
Claim 14: Figures 4-5 of Chen show graphene coating coverage of at least about 60% of the external surface area of the hollow glass microspheres.
Claim 15: Chen teaches coating under gentle stirring conditions (para. 0049) and the results shown few broken hollow glass microspheres (Chen, Figures 4-5).
Claims 16-17: Although Chen and Bossmann do not report the optical and electrical properties of the graphene coated glass microspheres as described in claims 16 and 17, it is expected the coated glass microspheres resulted from the combination of Chen and Bossmann meet these properties because Bossmann teaches that the reactive graphene particles on the surface of the hollow microspheres facilitate reacting to various chemical functional groups and bio-moieties and in turns “to create a variety of derivative compounds (Bossmann, para. 0002 and 0069-0070) that can be used in a variety of technologies including biochemical and biosensing applications and electrical impedance measurements (para. 0070).
Claim 18: Chen teaches the silane coupling agent is a terminal silane with amino (i.e. NH-, NH2) and carboxyl (i.e. C=O) content (Chen, claim 2) which inherently includes gamma-aminopropyl-triethoxy-silane.
Claim 19: Bossmann teaches further reacting residual oxide surface groups on the reactive graphene particles with various reactants to provide functionalized graphene coated hollow glass microspheres (Bossmann, para. 0069-0070) and thus the graphene-coated hollow glass microspheres can be further functionalized due to the coating of graphene particles on the surface.
Claim 20: Bossmann teaches functionalizing reactive graphene particles with
functionalities including methyl esters, primary amines, and alcohol esters (i.e. glycol esters) (para. 0069) and thus the graphene-coated hollow glass microspheres can be further functionalized due to the coating of graphene particles on the surface.
Claim 21: Bossmann teaches functionalizing the reactive graphene particles with various moieties including aptamers, peptides, and antibodies (Bossmann, para. 0070).
Claim 22: The method as described in claim 1 above necessarily resulted in graphene coated hollow glass microspheres, wherein the graphene is pristine reactive graphene.
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Bossmann and further in view of Lau et al. (Journal of Materials Science: Materials in Electronics (2019) 30:19182–19188) or Nawaz et al. (Nanomater Nanotechnol, 2016, 6:14 | doi: 10.5772/62290).
Chen and Bossmann teaches the claimed method of making pristine reactive graphene coated hollow glass microspheres as discussed above. However, neither teaches treating the graphene particles with a surfactant prior to coating. Lau teaches sodium cholate (NaC) being effective as green reducing agent for graphene oxide, and Nawaz teaches sodium cholate as surfactant for graphite exfoliation to graphene. Based on these teachings, it is shown that sodium cholate is capable of performing multiple improving functions for graphene. Therefore, the POSITA would have been motivated to treat the graphene with surfactant including sodium cholate with the expectation of facilitating formation of quality graphene and assuring good coating adhesion to glass microspheres.
Claims 11 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Bossmann and further in view of CN-115612179 (“CN’179”).1
Chen and Bossmann teaches the claimed method of making pristine reactive graphene coated hollow glass microspheres as discussed above. However, neither Chen nor Bossmann reports the wall thickness of the hollow glass microspheres. CN’179 teaches that to be suitable for coating, a typical wall thickness of microspheres is about 5-50% of the particle diameter (CN’179 para. 0009). Chen utilizes glass microspheres having an average particle size of 15 to 40 mm (para. 0037) and thus the wall thickness suitable for coating would have been between 0.75 to 20 mm which meet the claimed range of 0.7 µm to about 1.2 µm (claim 11) or 0.5 to 2 mm (claim 23).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOA (Holly) LE whose telephone number is (571)272-1511. The examiner can normally be reached Monday to Friday, 10:00 am to 7:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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HOA (Holly) LE
Primary Examiner
Art Unit 1788
/HOA (Holly) LE/Primary Examiner, Art Unit 1788
1 CN-115612179 has been provided by Applicant.
Prosecution Insights