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 .
This action is in response to Applicant’s response to election/restriction filed 08/21/2026.
Applicant's election with traverse of Group I, claims 1-11 and 16-19 in the reply filed on 08/21/2026 is acknowledged. The traversal is on the ground(s) that the Examiner has not identified where Von Hagen discloses the additional technical features recited in each of the claimed inventions. This is not found persuasive because the restriction is based on the technical relationship shared among the inventions and not all of the technical features of each invention. In the instant case the shared technical feature is dispersing graphene material using polyalkylene oxides as a dispersant in a liquid continuous phase wherein the polyalkylene oxides comprise at least one aromatic radical.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-15 and 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/21/2026.
Claims 1-8 and 10-21 are pending. Claims 1-11 and 16-19 are being examined. Claims 12-15 and 20-21 are withdrawn from further consideration as being drawn to non-elected inventions. Claim 9 is canceled.
Allowable Subject Matter
Claims 2-5, 16-17, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
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.
Considering claim 11, the process requires adding the dispersant in a liquid continuous phase; however, claim 11 has steps for only charging the dispersant and then adding and dispersing the graphene material. It is unclear where/when the continuous phase is added to the dispersion. For the purpose of examination, the claim will be interpreted such that the dispersant is charged into the liquid continuous phase and then the graphene material is added and dispersed. In addition, the process comprises a step i and a step j; the numbering/lettering suggests steps a-h prior to the claimed steps. It is unclear what steps a-h are and/or would be.
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.
Claims 1, 6, 8 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Von Hagen (WO 2020/173821 A1).
Considering claim 1, Von Hagen teaches dispersing graphene material using polyalkylene oxides as a dispersant in a liquid continuous phase wherein the polyalkylene oxides comprise at least one aromatic radical (Von Hagen, claims 1 and 11, page 6 lines 5-23).
Considering claim 6, Von Hagen teaches the polyalkylene oxides do not contain any other heteroatoms apart from oxygen and optionally nitrogen atoms by teaching they are based on polymerized ethylene oxide, propylene oxide, butylene oxide and mixtures thereof (Von Hagen, paragraph bridging pages 3 and 4).
Considering claim 8, Von Hagen teaches the graphene material is dispersed in a liquid continuous phase containing as principal constituent compounds selected from the group consisting of DMF (dimethyl formamide), DMSO (dimethyl sulfoxide), and NMP (N-methyl pyrrolidone) (Von Hagen, page 5 lines 21-27).
Considering claim 10-11,Von Hagen teaches charging a continuous phase and initially charging/adding a dispersant and then adding and dispersing the carbon material (i.e., graphene) (Von Hagen, page 13 line 20 – page 14 line 10).
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.
Claims 7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Von Hagen (WO 2020/173821 A1).
Considering claims 7 and 18, Von Hagen teaches the use of a carbon-based material which consists of 90 to100% by weight of carbon and is electrically conductive; Von Hagen teaches graphene is an example of suitable electrically conductive carbon-based material (Von Hagen, page 6 lines 5-13).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select any type of graphene including one according to ISO-TS 80004-13 from the claimed list of graphene materials. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to do so because any graphene that consists of 90 to100% by weight of carbon and is electrically conductive is suitable for Von Hagen’s method of dispersion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA NASSIRI-MOTLAGH whose telephone number is (571)270-7588. The examiner can normally be reached M-F 6:30-3:00.
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/ANITA NASSIRI-MOTLAGH/Primary Examiner, Art Unit 1734
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