DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election without traverse of Group I (claims 17-26; “a geosynthetic structure”) in the reply filed on 08/11/2026 is acknowledged.
3. Claims 1-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/11/2026.
Claim Objections
4. Claims 21-23 are objected to because of the following informalities:
As to Claims 21-23: The applicants are advised to add the new term “structure” after the claimed “first skin” and “second skin” to use consistent languages.
Appropriate corrections are 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.
5. Claim 22 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 to Claim 22: It is dependent on itself (“The geosynthetic structure of claim 22”) (Emphasis added). Thus, it is not clear what the limitations recited in claim 22 are referring to.
Accordingly, the scope of this claim is deemed indefinite.
For prior rejections, claim 22 will be treated as dependent on claim 21.
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, 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.
6. Claims 17-20 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of WO 2021/007648 (hereinafter referred to as “WO ‘648”).
As to Claims 17 and 19-20: WO ‘648 teaches geomembranes comprising one or more layers (Paragraph [0004]), which according to page 1, paragraph [0003] of the specification corresponds to the claimed geosynthetic structure comprising a plurality of layers. The geomembranes (geosynthetic structure) taught by WO ‘648 comprises at least one layer being a graphene layer wherein the layer is polymeric with graphene particles (Paragraphs [0019]) prepared from mixing a masterbatch composition comprising a resin and additives including graphene and stabilizers, and extruding the masterbatch to form a single layer membrane layer such that graphene and stabilizers are dispersed (impregnated) in a polymeric matrix (corresponding to the claimed base resin polymeric matrix) (Paragraphs [0022], [0034]-[0035] and [0045]). WO ‘648 also teaches that the layers of the geomembrane include the claimed core structure, a first skin structure and a second skin structure, wherein the core structure is the graphene layer, and the first and second skin structures have different polymer compositions (Paragraphs [0021], [0037], [0026]-[0028], and [0044]-[0064]).
However, WO ‘648 does not mention the claimed specific amount of graphene material (i.e., 0.10-5 weight percent).
Nevertheless, WO ‘648 does teach the addition of graphene in an amount of 1-20% by weight, which overlaps with the claimed final amount of 0.10-5 weight percent of graphene material, to the polymeric matrix of the geomembrane (Paragraphs [0020] and [0042]). WO ‘648 also teaches that the graphene can render a membrane more efficiently by minimizing or reducing the material requirements for a targeted membrane property (Paragraphs [0047] and [0067]). WO ‘648 furth teaches that graphene enhances the mechanical and chemical properties of a membrane as well as the membrane’s resistance to UV light (Paragraph [0066]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the claimed amount of the graphene to the polymeric matrix of the geomembrane, with a reasonable expectation of successfully rendering a membrane more efficiently by minimizing or reducing the material requirements for a targeted membrane property and also enhancing the mechanical and chemical properties of a membrane as well as the membrane’s resistance to UV light as suggested by WO ‘648. See also MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
As to Claims 18 and 24: These claims recite, among other things, “substantially free of graphene” and “substantially free of the graphene material”, respectively. According to paragraph [0036] of applicants’ published application, i.e., US PG PUB 2024/0182670, the claimed term “substantially free” of the graphene material means about or in any range between about 3.0%, 2.5%, 2.0%, 1.5%, 1.0%, 0.5%, 0.1%, 0.01%, and 0% graphene material. Specifically, WO ‘648 teaches that one or more additional membrane layers inclusive of core structure, first skin structure and second skin structure may be extruded without graphene (Paragraph [0044]), which is equivalent to zero amount of graphene and therefore encompassed by the claimed phrase “substantially free of the graphene” which includes 0% graphene material.
7. Claims 21-23 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of WO 2021/007648 (hereinafter referred to as “WO ‘648”) as applied to claims 17-20 and 24 above, and further in view of EP 3 247 5591 (hereinafter referred to as “EP ‘559”).
The disclosure with respect to WO ‘647 in paragraph 6 is incorporated here by reference.
However, WO ‘648 does not specify their layers including first skin and second skin structure as being reflective, conductive, and insulative with reflectance, insulative measurement, conductivity properties required by claims 21, 25 and 26, and further include titanium dioxide and carbon black as required by claims 22 and 23, respectively.
Nevertheless, EP ‘559 discloses the addition of titanium dioxide and carbon black, and other additives, in stacked layers inclusive of the claimed core structure, first skin and second skin structures to obtain multilayer geomembrane liners having advantageous light reflective and conductivity properties (Paragraphs [0001], [0010]-[0013], [0029], [0036], and [0043]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the additives including titanium dioxide and carbon black taught by EP ‘559 to the layers inclusive of the claimed core structure, first skin, and second skin structures, with a reasonable expectation of successfully obtaining multilayer geomembrane liners having excellent light reflective and conductivity properties.
Moreover, the claimed reflective, insulative and conductive properties would have naturally followed form the suggestion of WO ‘648 and EP ‘559 since the collective teachings of WO ‘648 and EP ‘559 would have suggested identical or substantially identical geomembrane (geosynthetic structure) as that claimed for the reasons provided above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Correspondence
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 05/03/2024.
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