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 Interpretation
The Specification expressly states that graphene nanoparticle can be a multilayered structure having up to 3000 layers. (Spec. ¶ 0003). As such, graphene as recited is not considered to necessarily mean single-layer graphene, and other materials having a plurality of graphene layers (e.g. graphite) are considered to read on graphene.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. Claim 8 as amended already recites the limitation of claim 10.
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 Objection
Claim 8 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Rejections applicable to claim 7 is applicable to claim 8 and vice versa.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-7 and claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 6,412,154 B1 (“Plötz”) in view of WO 2021/158395 A1 (“Stowell”) and U.S. 2022/0412091 A1 (“Shiao”).
Considering claims 1, 3, and 4, Plötz discloses a multilayered nonwoven having a nonwoven glass fiber layer and a nonwoven polymeric fiber layer, the multilayered nonwoven suitable for receiving a bitumen coating on a surface thereof defined by its nonwoven glass fiber layer, wherein the bitumen-coated multilayered nonwoven can be used as a roofing material. (Plötz col. 2 line 33-40, col. 3 line 52-56, col. 4 line 55-59 and 62-64, and col. 5 line 34-36).
As such, in the resulting coated multilayered nonwoven, the layer sequence is bitumen coating/ nonwoven glass fiber layer (mapping onto the claimed substrate layer)/ nonwoven polymeric fiber layer (mapping onto the claimed reinforcement layer for the purpose of claims 5-7). It is noted that bitumen is known in the art to either a) be used interchangeably with asphalt or b) to include asphalt materials. (See, inter alia, pg. 15 of the 1995 Edition of Shell Bitumen Industrial Handbook, U.S. 3,607,513 A, and material from Asphalt Roofing Manufacturers Association). As such, the bitumen coating reads on the claimed asphalt coating layer.
Plötz discloses its nonwoven glass fiber layer to be made of staple fibers and consolidated using a binder such as urea formaldehyde. (Plötz. col. 3 line 12-23). As such, the nonwoven glass fiber layer maps onto the claimed substrate of claims 3 and 4. In a particular embodiment, Plötz further discloses its nonwoven polymeric fiber layer to comprise spunbond nonwoven made of PET fibers, wherein after the two PET nonwoven and the glass fiber nonwoven are joined, the composite nonwoven is subsequently treated with another binder to effect final consolidation. (Plötz col. 2 line 53-63 and col. 4 line 22-24).
Plötz differs from the claimed invention, in that it is silent re: 1) substrate containing graphene and 2) asphalt layer containing graphene. Re: deficiency 1), the inclusion of graphene in fibrous materials (that additionally are impregnated with a resin) is known, as taught in Stowell. (Stowell ¶ 0097). In particular, Stowell teaches that the graphene nanoparticles are in the form of graphene nanoplatelets having 2-25 graphene layers. (Id. ¶ 0083 and claim 9). Stowell teaches the inclusion of graphene nanoparticles in fibrous materials as a reinforcing agent, wherein the fibrous material may be made of glass fiber or a polymeric fiber, and wherein both fibrous materials and graphene nanoparticles are added into a resin serving as matrix phase/ binder. (Id. abs. and ¶¶ 0051 and 0097). Specifically, Stowell teaches that the carbon nanoparticles are dispersed in the resin phase. (Id. ¶ 0088). As the resin infiltrates into the (porous) nonwoven, the carbon nanoparticles are also dispersed in a nonwoven. In view of the foregoing, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included graphene nanoplatelets in both the resin-infiltrated nonwoven glass fiber layer and the resin-infiltrated nonwoven polymeric fiber layer of Plötz, in order to reinforce the respective resin-infiltrated nonwoven layers.
Re: deficiency 2), Shiao teaches an asphalt filled coating that comprises graphene powder in the form of graphene nanoparticles (viz. a graphene nanopowder), wherein the asphalt filled coating is applied on a substrate used for roofing purposes. (Shiao ¶¶ 0042, 0051, 0061, 0082, 0099-0101, and 0111; and claim 1). In particular, Shiao teaches that the inclusion of graphene confers many different beneficial properties such as improvement of total solar reflectance, protection of asphalt material from oxidation, and reduction of biofouling. (Id. ¶ 0082 and 0101). It is expressly noted that Shiao teaches dispersion of graphene particles into a liquid such as an asphaltic media. (Id. ¶ 0099).
Though it is noted that the inclusion of graphene powders into the asphalt coating does not result in as great an improvement in certain properties, this inclusion nonetheless does result in improvement in at least one property compared to a control example having no graphene powders. (Id. ¶ 0111). Applicant is reminded that a reference is relevant for all it teaches, including less preferred embodiments. (See MPEP § 2123). Here, it is not in dispute that the broader teachings in Shiao teaches inclusion of graphene in a particular layer/coating, with the reference going so far as to state a particular layer/coating comprises, consists of, or consists essentially of at least one of graphene, asphalt, or combination thereof. (Shiao ¶ 0042). The further discussion shows one benefit of inclusion of graphene powder into an asphalt coating (increased solar reflectance) as compared to absence of graphene. (Id. ¶ 0111 and Table 1). Furthermore, the reference clearly teaches other benefits. (Id. ¶ 0082). As such, the totality of the reference leads one to conclude that dispersion of graphene powder into asphalt layer has numerous benefits. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included graphene powder in the bitumen coating of Plötz for the benefits enumerated in Shiao. Plötz as modified by Stowell and Shiao renders obvious claims 1, 3, and 4.
Considering claim 2, reiterating points made in ¶¶ 12-14 above, Stowell teaches dispersion of graphene nanoplatelets into resin-infiltrated nonwoven layers (here applicable to the glass fiber nonwoven and the PET nonwoven layers in Plötz), and Shiao teaches dispersion of nanoplatelet in asphalt coating.
Considering claims 5 and 6, as discussed above, the layer sequence in the coated multilayered nonwoven of Plötz is bitumen coating/ nonwoven glass fiber layer (mapping onto the claimed substrate layer)/ nonwoven polymeric fiber layer (mapping onto the claimed reinforcement layer). Plötz discloses its nonwoven polymeric fiber layer to comprise spunbond nonwoven made of PET fibers, and that after its nonwoven glass fiber layer and nonwoven polymeric fiber layer are joined, the composite nonwoven is subsequently treated with a binder to effect final consolidation. (Plötz col. 2 line 53-63 and col. 4 line 22-24). As such, the binder used for the final consolidation is located within the nonwoven polymeric fiber layer subsequent to final consolidation and maps onto the binder used to bind the fibers of the reinforcement layer as recited in claims 5 and 6.
Considering claim 7, the teaching in Stowell re: dispersion of graphene in a resin matrix (that is used to impregnated a fibrous material) as discussed above is also applicable to the nonwoven PET layer of Plötz, as change in composition of the organic polymer used for the fibers for the nonwoven layer does not change the underlying principle that introduction of graphene serves to reinforce the nonwoven layer. (Stowell ¶ 0097). While polyester is not expressly named, the list of types of polymeric fibers named is expressly stated by Stowell to be non-exhaustive, and person of ordinary skill in the art would readily recognize that the teachings re: the reinforcing effect can be applied to other types of fibrous materials. As such, inclusion of graphene in a nonwoven PET layer is obvious, and person of ordinary skill in the art would have been motivated to do so to reinforce the nonwoven layer.
Considering claims 8-12, as the scope of claim 8 is effectively the same as that of claim 7, the disclosure of Plötz, Stowell, and Shiao as applied to claim 7 above is applicable, and claim 8 is obvious. Furthermore claim 10 does not further limit claim 8 and is also rejected. The limitations of claims 9, 11, and 12 are also found in the three references.
Claims 1-7; claims 8-12; and claim 22 are rejected under 35 U.S.C. 103 as being unpatentable over Plötz in view of Stowell and U.S. 2017/0166723 A1 (“Le”) as evidenced by NPLs by King et al. (“King”).
Considering claims 1, 3, and 4, Plötz discloses a multilayered nonwoven having a nonwoven glass fiber layer and a nonwoven polymeric fiber layer, the multilayered nonwoven suitable for receiving a bitumen coating on a surface thereof defined by its nonwoven glass fiber layer, wherein the bitumen-coated multilayered nonwoven can be used as a roofing material. (Plötz col. 2 line 33-40, col. 3 line 52-56, col. 4 line 55-59 and 62-64, and col. 5 line 34-36).
As such, in the resulting coated multilayered nonwoven, the layer sequence is bitumen coating/ nonwoven glass fiber layer (mapping onto the claimed substrate layer)/ nonwoven polymeric fiber layer (mapping onto the claimed reinforcement layer for the purpose of claims 5-7). It is noted that bitumen is known in the art to either a) be used interchangeably with asphalt or b) to include asphalt materials. (See, inter alia, pg. 15 of the 1995 Edition of Shell Bitumen Industrial Handbook, U.S. 3,607,513 A, and material from Asphalt Roofing Manufacturers Association). As such, the bitumen coating reads on the claimed asphalt coating layer.
Plötz discloses its nonwoven glass fiber layer to be made of staple fibers and consolidated using a binder such as urea formaldehyde. (Plötz. col. 3 line 12-23). As such, the nonwoven glass fiber layer maps onto the claimed substrate of claims 3 and 4. In a particular embodiment, Plötz further discloses its nonwoven polymeric fiber layer to comprise spunbond nonwoven made of PET fibers, wherein after the two PET nonwoven and the glass fiber nonwoven are joined, the composite nonwoven is subsequently treated with another binder to effect final consolidation. (Plötz col. 2 line 53-63 and col. 4 line 22-24).
Plötz differs from the claimed invention, in that it is silent re: 1) substrate containing graphene and 2) asphalt layer containing graphene. Re: deficiency 1), the inclusion of graphene in fibrous materials (that additionally are impregnated with a resin) is known, as taught in Stowell. (Stowell ¶ 0097). In particular, Stowell teaches that the graphene nanoparticles are in the form of graphene nanoplatelets having 2-25 graphene layers. (Id. ¶ 0083 and claim 9). Stowell teaches the inclusion of graphene nanoparticles in fibrous materials as a reinforcing agent, wherein the fibrous material may be made of glass fiber or a polymeric fiber, and wherein both fibrous materials and graphene nanoparticles are added into a resin serving as matrix phase/ binder. (Id. abs. and ¶¶ 0051 and 0097). Specifically, Stowell teaches that the carbon nanoparticles are dispersed in the resin phase. (Id. ¶ 0088). As the resin infiltrates into the (porous) nonwoven, the carbon nanoparticles are also dispersed in a nonwoven. In view of the foregoing, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included graphene nanoplatelets in both the resin-infiltrated nonwoven glass fiber layer and the resin-infiltrated nonwoven polymeric fiber layer of Plötz, in order to reinforce the respective resin-infiltrated nonwoven layers.
Re: deficiency 2), Le teaches that inclusion of graphite nanoplatelets improves mechanical properties of asphalt used for roofing shingle purposes. (Le ¶¶ 0020, 0022, 0028, and 0038; and claim 16). Specifically, Le teaches that its graphite nanoparticles are mixed into an asphalt binder. (Id. ¶¶ 0031 and 0040). It is noted that although Le uses the term “graphite nanoplatelets”, in view of the claim interpretation discussion above, this reads on graphene nanoplatelets. Furthermore, Le expressly teaches the usage of Asbury Carbon’s TC307 graphite nanoplatelet by mixing Asbury Carbon TC307 into an asphalt binder to form a homogeneous mixture (viz. an asphalt coating into which Asbury Carbon TC307 is well dispersed). (Id. ¶¶ 0039 and 0040). Though termed a graphite nano-platelet, it is hereby emphasized that this material is indeed a graphene nanoplatelet.
Evidence supporting this contention includes NPLs by King et al. King is expressly concerned with properties of graphene nanoplatelets and abbreviates this material as GNP. (King abs. and pg. E807 § Introduction). For its studies, King states the following (Id. pg. E808 § Materials, emphases added):
One graphene nanoplatelet (GNP), namely Asbury Carbons’ TC307 GNP, was used. TC307 has an average particle diameter of <1 mm, a surface area of 350 m2/g, and a density of ~2 g/cc and consists of approximately eight layers of graphene.
It is noted that this description from King means that Asbury Carbon TC307 is a graphene nanoplatelet, both because King recognizes it to be one and because its description qualifies as graphene nanoplatelet in view of ¶ 0003 of the Specification. The journal article by King et al. leaves no doubt that Asbury Carbon TC307 is a graphene nanoplatelet, whether by definition set forth in the specification or the unduly narrow and not-required definition contended by Counsel.
Le teaches that the inclusion of the graphene nanoplatelets leads to increased mechanical strength of the resulting asphalt binder. (Le Figs. 2A and 2B). As such, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included graphite nanoplatelets in the bitumen coating of Plötz for improved mechanical properties. Plötz as modified by Stowell and Le renders obvious claims 1, 3, and 4.
Considering claim 2, reiterating points made in ¶¶ 23, 24, and 26 above, Stowell teaches dispersion of graphene nanoplatelets into resin-infiltrated nonwoven layers (here applicable to the glass fiber nonwoven and the PET nonwoven layers in Plötz), and Le teaches dispersion of a material that is graphene nanoplatelet in asphalt coating.
Considering claims 5 and 6, as discussed above, the layer sequence in the coated multilayered nonwoven of Plötz is bitumen coating/ nonwoven glass fiber layer (mapping onto the claimed substrate layer)/ nonwoven polymeric fiber layer (mapping onto the claimed reinforcement layer). Plötz discloses its nonwoven polymeric fiber layer to comprise spunbond nonwoven made of PET fibers, and that after its nonwoven glass fiber layer and nonwoven polymeric fiber layer are joined, the composite nonwoven is subsequently treated with a binder to effect final consolidation. (Plötz col. 2 line 53-63 and col. 4 line 22-24). As such, the binder used for the final consolidation is located within the nonwoven polymeric fiber layer subsequent to final consolidation and maps onto the binder used to bind the fibers of the reinforcement layer as recited in claims 5 and 6.
Considering claim 7, the teaching in Stowell re: dispersion of graphene in a resin matrix (that is used to impregnated a fibrous material) as discussed above is also applicable to the nonwoven PET layer of Plötz, as change in composition of the organic polymer used for the fibers for the nonwoven layer does not change the underlying principle that introduction of graphene serves to reinforce the nonwoven layer. (Stowell ¶ 0097). While polyester is not expressly named, the list of types of polymeric fibers named is expressly stated by Stowell to be non-exhaustive, and person of ordinary skill in the art would readily recognize that the teachings re: the reinforcing effect can be applied to other types of fibrous materials. As such, inclusion of graphene in a nonwoven PET layer is obvious, and person of ordinary skill in the art would have been motivated to do so to reinforce the nonwoven layer.
Considering claims 8-12, as the scope of claim 8 is effectively the same as that of claim 7, the disclosure of Plötz, Stowell, and Le as applied to claim 7 above is applicable, and claim 8 is obvious. Furthermore claim 10 does not further limit claim 8 and is also rejected. The limitations of claims 9, 11, and 12 are also found in the three references, as discussed in ¶¶ 20-29 above.
Considering claim 22, the discussion of ¶¶ 20-29 above shows that Plötz, Stowell, and Le renders obvious claim 22.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Plötz, Stowell, and Le, as applied to claim 2 above, and further in view of Shiao.
Considering claim 23, although it is clear from Stowell and Le that inclusion of graphene nanoplatelets improves mechanical properties of various layers, the references are silent re: inclusion of graphene powders. However, as discussed above, the inclusion of graphene powders also confers benefits such as increased solar reflectance and resistance toward bio-fouling. (Shiao ¶¶ 0082 and 0111).
Response to Arguments
In view of amendments to claims 2, 9, 11, 22, and 23, the previously instated 35 U.S.C. 112(b) rejection of these claims have been withdrawn.
As Applicant did not address the 35 U.S.C. 112(d) rejection of claim 10, this rejection is maintained.
As Applicant did not address the objection of claim 8 as duplicate claim, this objection is maintained
The pertinent part of Applicant’s argument against the rejection over Plötz, Stowell, and Shiao remains one of alleged deficiencies in the reference Shiao, specifically allegation that Shiao is concerned with placing graphene nanoparticles on a surface of an asphalt coating, but not into the interior of an asphalt coating. (Response pg. 9 ¶¶ 3+). As such, this is a continuation of Applicant’s position from before. However, these are not persuasive, because Applicant’s various allegations are taken out of context, specifically re: Shiao’s more preferred embodiment.
Applicant is reminded that a reference is relevant for all it teaches, including less preferred embodiments. (See MPEP § 2123). At least because Shiao teaches dispersion of graphene and shows that inclusion of graphene powder into an asphalt coating increases solar reflectance as compared to absence of graphene. (Shiao ¶¶ 0099 and 0111). As such, at worst, this is a less preferred embodiment, and less preferred embodiment is still prior art.
Applicant’s argument against the rejection over Plötz, Stowell, and Le have been considered. (Response pg. 10 ¶¶ 2+). As discussed in ¶ 25 above, Asbury Carbon TC307 is indeed a graphene nanoplatelet, whether by definition set forth in the specification or the unduly narrow and not-required definition contended by Counsel.
Counsel also alleges that Le is not directed to roofing products. (Response pg. 11 ¶ 1). This is not well-founded, as Counsel is yet again engaging in selective and out-of-context citing. It is noted that claim 16 of Le is expressly directed to forming a shingle from its asphaltic composition, and that Le discloses its inventive concept to be readily applicable to asphalt roofing shingles. (Le ¶ 0038).
Counsel’s allegation re: Le’s graphite nanoplatelet (which is Asbury Carbon TC307) not having a requisite D/G ratio is not well-founded, as such highly technical discussion must be presented via a properly executed declaration and cannot be presented as Counsel’s argument alone. (See MPEP §716.01(c)).
Other allegations such as reference failing to teach dispersal have all been addressed above.
Concluding Remarks
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
