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 .
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 5 and 13 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.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “wherein the coating is transparent to an unaided, normal human eye”. This limitation renders the claim vague and indefinite, since one of ordinary skill in the art would not be able to ascertain the metes and bounds of the limitation “wherein the coating is transparent to an unaided, normal human eye”. Furthermore, the specification does not contain guidelines describing what values are encompassed by the limitation “wherein the coating is transparent to an unaided, normal human eye”. Appropriate correction and/or clarification is required.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for containing the limitation “wherein the solvent comprises diethylene glycol monobutyl ether”. This limitation renders the claim vague and indefinite, since the solvent in independent claim 7 comprises water. Claim 13 should be amended to recite “wherein the solvent further comprises diethylene glycol monobutyl ether” for clarification purposes. Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 and 7-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nguyen et al, US 2023/0257683.
Nguyen et al, US 2023/0257683, discloses a vehicle hard surface cleaning composition comprising 0.1-0.8% by weight of a surfactant, 0.1-3% by weight of a hydrotrope, 0.1-5% by weight of a wetting agent, 0.01-17% by weight of a protectant, and a diluent making up the remainder of the composition (see abstract and paragraph 7). It is further taught by Nguyen et al that the graphene contains 3-10 layers (see paragraph 18), that the graphene is graphene oxide with 10-60% by weight of oxygen (see paragraph 19), that the graphene is present in the composition in an amount of 0.02% by weight (see Example 1), that suitable surfactants include C8-16 alkyl polyglucosides and C12-14 amine oxides (see paragraph 27), that the wetting agent is dimethicone PEG-8 succinate (see paragraph 30), that the protectant is methoxydimethicone (see paragraph 31), that the composition contains 1-5% by weight of a solvent, such as diethylene glycol monobutyl ether (see paragraph 36), that the composition contains 0.5-5% by weight of a soil capturing agent, such as ethylenediaminetetraacetic acid (see paragraph 37), that the diluent is water (see claim 12 and Example 1), and that the composition is applied to the surface of a vehicle followed by wiping (see paragraphs 41-42), per the requirements of the instant invention. Specifically, note Table 1 and Examples 1-6. Therefore, instant claims 1-5 and 7-14 are anticipated by Nguyen et al, US 2023/0257683.
Claims 1-11 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al, US 2023/0008182.
Huang et al, US 2023/0008182, discloses an automotive graphene surface treatment composition (see abstract). It is further taught by Huang et al that the graphene contains 3-10 layers (see paragraph 16), that the graphene is graphene oxide with 10-60% by weight of oxygen (see paragraph 17), that the graphene is dispersed in an aqueous solution in an amount of 0.5-20% by weight (see paragraph 23), that the graphene is composition contains 1-17% by weight of a silicone emulsion of a silanol end-blocked polydimethyl siloxane and a cationic surfactant (see paragraphs 27-33), that the composition contains 0.5-1.5% by weight of benzotriazole (i.e., a chelating agent; see paragraph 37), adjunct ingredients, such as pH modifiers and fragrances (see paragraph 34), and water (see paragraph 39), wherein the composition is diluted with water and is applied to the surface of a car to form a coating with the excess treatment composition being wiped away (see paragraphs 39-40 and claim 3), per the requirements of the instant invention. Specifically, note Example 1 in Table 2 which contains a treatment composition containing 84.84% by weight of water, 10% by weight of a silicone emulsion, 0.5% by weight of benzotriazole, 0.1% by weight of graphene, 0.03% by weight of a fragrance, and adjunct ingredients. Therefore, instant claims 1-11 and 15 are anticipated by Huang et al, US 2023/0008182.
Claims 1-5, 7-8 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated Hwan, KR 102227273.
Hwan, KR 102227273, discloses a car cleaning composition comprising 1-5 parts by weight of graphene, 5-10 parts by weight of alkoxysilane, 0.5-1.5 parts by weight of an organic acid, 3-7 parts by weight of a wax mixture, 2-6 parts by weight of a natural extract, 10-20 parts by weight of a surfactant, 0.1-0.3 parts by weight of sodium nitrite, 0.2-0.4 parts by weight of benzotriazole (i.e., a chelating agent), and 800-1,000 parts by weight of water (see abstract and paragraph 28). It is further taught by Hwan that suitable surfactants include alkyl sulfates and decyl glucoside (see paragraphs 112-118), and that the composition is applied to the surface of an automobile with a cloth (see paragraphs 129 and 147-148), per the requirements of the instant invention. Specifically, note Examples 1-3. Therefore, instant claims 1-5, 7-8 and 12 are anticipated by Hwan, KR 102227273.
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 1-5 and 7-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,338,415. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,338,415 claims a similar method for cleaning a vehicle surface with a cleaning composition comprising 0.1-8% by weight of a surfactant, such as C8-16 alkyl polyglucosides and C12-14 amine oxides, 0.1-3% by weight of a hydrotrope, 0.1-5% by weight of a wetting agent, 0.01-17% by weight of graphene, 0.1-1% by weight of a rheology modifier, 0.1-1.5% by weight of a dispersant, 1-5% by weight of a solvent, such as diethylene glycol monobutyl ether, 0.5-5% by weight of a soil capturing agent (i.e., a chelating agent), and water to balance, wherein the composition is applied to the surface of a vehicle by wiping (see claims 1-16 of U.S. Patent No. 12,338,415), as required in the instant claims. Therefore, instant claims are an obvious formulation in view of claims 1-16 of U.S. Patent No. 12,338,415.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
February 4, 2026