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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10 February 2026 has been entered.
Claim Interpretation
In view of express statement in the Specification that graphene can be a multilayered structure having 10 to 3000 layers, graphene as recited is not considered to necessarily mean single-layer graphene, and other materials having a plurality of graphene layers (e.g. graphite) is considered to read on graphene.
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, 9, and 22 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.
As claims 1 and 8 respective recite at least two different locations for graphene, “the graphene” as respectively recited in claims 2 and 9 lack sufficient antecedent basis. It is presumed this pertains to graphene in only one of the layer/coating.
Similar issue appears in claim 22.
Claim 11 is 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 8 already introduces a chemical binder of the substrate. As such, it is unclear if the thermoset recited in claim 11 is mere another recitation of the chemical binder, or if it is another material. It is presumed that thermoset and the chemical binder are used interchangeably.
Claim 23 is 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.
As claim 1 does not specify type of graphene used, claim 23 lacks sufficient antecedent basis. It is presumed that claim 23 depends from claim 2 instead.
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 claim7. 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).
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 1-4, 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). Plötz is analogous art, for it is directed to the same field of endeavor as that of the instant application (roofing materials). 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.
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 nanoparticles 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. (Id. 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. (Id. abs. and ¶ 0097). 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 particles (which include graphene nanoplatelets in Stowell) in both the nonwoven glass fiber layer and a nonwoven polymeric fiber layer of Plötz, in order to reinforce the respective nonwoven layers.
Re: deficiency 2), Shiao teaches an asphalt filled coating that comprises graphene powder, wherein the asphalt filled coating is applied on a substrate used for roofing purposes. (Shiao ¶¶ 0042, 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).
Though it is noted that the inclusion of powders into the asphalt coating does not result in as great an increase in certain properties, this inclusion nonetheless does result 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). Furthermore, the reference clearly teaches other benefits. (Id. ¶ 0082). As such, the totality of the reference leads one to conclude that inclusion of graphene powder in 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 1-4.
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, wherein after the two nonwoven layers 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). 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 reinforcement of claims 5 and 6.
Considering claim 7, the teaching in Stowell re: inclusion of graphene in fibrous materials (that additionally are impregnated with a resin) 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 fact 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 and claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Plötz in view of Stowell and U.S. 2017/0166723 A1 (“Le”).
Considering claims 1-4, 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.
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. (Id. 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. (Id. abs. and ¶ 0097). 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 particles (which include graphene nanoplatelets in Stowell) in both the nonwoven glass fiber layer and a nonwoven polymeric fiber layer of Plötz, in order to reinforce the respective 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). 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, the Asbury TC307 graphite nanoplatelet taught in the reference is in fact widely recognized as a graphene nanoplatelet. Le teaches that the inclusion of the 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 1-4.
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, wherein after the two nonwoven layers 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). 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 reinforcement of claims 5 and 6.
Considering claim 7, the teaching in Stowell re: inclusion of graphene in fibrous materials (that additionally are impregnated with a resin) 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 fact 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.
Considering claim 22, the discussion of ¶¶ 27-31 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
All of Applicant’s pertinent arguments are concerned with alleged deficiencies in the reference Shiao. However, these are not persuasive, at least because Shiao shows that inclusion of graphene powder into an asphalt coating increases solar reflectance as compared to absence of graphene. (Shiao ¶ 0111). As such, at worst, this is a less preferred embodiment, and Applicant is reminded that a reference is relevant for all it teaches, including less preferred embodiments. (See MPEP § 2123).
Furthermore, the newly cited reference Le also shows benefit of incorporating nano graphene into asphalt.
Concluding Remarks
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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