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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-7,10,16,20 and 28 in the reply filed on 8/6/2026 is acknowledged.
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 20 and 28 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 20 recites the broad recitation “less than 1:30”, and the claim also recites “preferably from 1:50 to 1:70” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the meters and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 28 recites the broad recitation “up to 10%”, and the claim also recites “up to 5%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 28 recites the limitation “the firm" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US 20170066897 (US ‘897).
As to Claim 1, US ‘897 discloses a composition containing graphene particles where the particles have a first flake with an edge length of less than 1 micron and second flake with an edge length of 1 to 5 micron (para. 0078). The particles can be dispersed in solvents or oils (para. 0084) which the Examiner construes as a liquid embodiment of the prior art invention. Films are also formed from the prior art composition (para. 0089).
However, the reference is silent with respect to the particles being packed in a substantially Apollonian manner as required by Claim 1.
As to the difference, the instant Specification defines Apollonian packed films as being liquid compositions that comprise two or more populations of graphene nanoplatelets having different sizes (Instant Specification, pg. 7, lines 1-2).
The Examiner respectfully submits the prior art would inherently meet the claimed limitation of Apollonian packing in view of the prior art disclosure and Applicant’s definition of the term.
As to Claim 2, see discussion of Claim 1 in regard to packing.
As to Claim 3, the particle sizes discussed in Claim 1 have differences of up to 20 % in difference.
As to Claims 4 and 5, the particles having edge lengths of 1 to 5 micron are present up to less than 60 % of the flakes in the composition (para. 0079).
As to Claim 6, the Examiner respectfully submits the prior art film would have a density similar to that of the instant claim due to the similarity of the prior art materials to those of the instant claims.
Claim(s) 1-6 and 10 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2014070346 (WO ‘346).
As to Claim 1, WO ‘346 discloses in Example 1 a mixture of graphene particles, solvent and latex binder wherein the particles have mixtures of different sizes i.e. 100 to 200 nm and 1.5 to 5 microns (para. 0041) wherein films are made from the composition (Abstract), and the composition is in a liquid form i.e. a coating formulation.
However, the reference is silent with respect to the particles being packed in a substantially Apollonian manner as required by Claim 1.
As to the difference, the instant Specification defines Apollonian packed films as being liquid compositions that comprise two or more populations of graphene nanoplatelets having different sizes (Instant Specification, pg. 7, lines 1-2).
The Examiner respectfully submits the prior art would inherently meet the claimed limitation of Apollonian packing in view of the prior art disclosure and Applicant’s definition of the term.
As to Claim 2, see discussion of Claim 1 in regard to packing.
As to Claim 3, the particle sizes discussed in Claim 1 have differences that fall within the claimed range.
As to Claim 4, see discussion of Claim 1.
As to Claim 5, the commercially available graphene particles, which correspond to the micron sized particles discussed in Claim 1 above, are present from 50 to 99 percent of the graphene particles (para. 0035).
As to Claim 6, the Examiner respectfully submits the prior art film would have a density similar to that of the instant claim due to the similarity of the prior art materials to those of the instant claims.
As to Claim 10, the graphene particles can be present up to 95 weight percent of solids in the composition (para. 0011).
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US ‘897.
As to Claim 10, US ‘897 fails to disclose a specific embodiment of from 92% of a film is comprised of graphite nanoplatelets as required.
As to the difference, the reference discloses an embodiment that is comprised of the graphene with organic solvent discussed above.
It would have been obvious to one of ordinary skill in the art that in a film embodiment wherein the composition is applied to a substrate, and the solvent is eliminated, the remaining graphene would constitute primarily graphene particles meeting the claim limitation.
Claim(s) 7,16,20 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO ‘346 in view of US ‘20140212656 (US ‘656).
As to Claim 7, WO ‘346 is relied upon as discussed above, however, fails to disclose an embodiment that further contains carbon nanotubes.
As to the difference, US ‘656 discloses that combinations of nanotubes and graphene particles can result in a composite material that has improved electrical conductivity by graphene particles acting to improve electrical connection between adjacent nanotubes in a network of nanotubes and nanotubes help to improve the electrical connection between adjacent graphene particles (para. 0012).
It would have been obvious to add nanotubes to the composition of WO ‘346 for the advantage of improving the conductivity of the resulting composite.
As to Claim 16, US ‘656 discloses the nanotubes as single walled (para. 0022).
As to Claim 20, US ‘656 discloses a ration of nanotubes to graphene of 5:95 or 1:20 (Abstract).
However, US ‘656 fails to disclose the ratio of 1:30 as required by the claim.
As to the difference, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner, 778F.2d 775,227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.051.
As to Claim 28, US ‘656 does not specifically disclose an embodiment that is up to 10 % nanotubes.
As to the difference, US ‘656 discloses the mass ratio of nanotubes to graphene of 5:95 and the total amount of both present as 1 to 15 weight percent (Claim 7).
It would have been obvious to one of ordinary skill in the art to arrive at the claimed amount of nanotube in view of teachings above to arrive at the claimed amount of nanotube present in the composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAISON P THOMAS whose telephone number is (571)272-8917. The examiner can normally be reached Monday to Friday, 9:00 am-3:30 pm EST.
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/J.P.T/Examiner, Art Unit 1762
/jt/ 9/4/2026
/MARK KOPEC/ Primary Examiner, Art Unit 1762
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