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 with traverse of Group I, claims 1-18 and 22, in the reply filed on 8/21/2026 is acknowledged. The traversal is on the grounds that no lack of unity of invention finding was made in conjunction with the parent PCT application and that there is no undue search burden.
This is not found persuasive because a finding of a lack of unity is not contingent upon whether such a finding was present in the parent PCT. The International Search Report is only for the purpose of identifying prior art (MPEP 1843.05) and is nonbinding on the Office (MPEP 1893.03(e)). If the examiner finds that a national stage application lacks unity of invention, the examiner may require an election (MPEP 1893.03(d)). The Restriction properly establishes that the feature which is common among the Groups discussed therein, is present in the prior art, meaning that feature does not amount to a special technical feature, meaning unity of invention is not present, and Restriction is proper.
With regards to the argument that there is no undue search burden, it is noted that unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more special technical features. See MPEP 1850. Restriction practice for applications entering the National Stage under 35 U.S.C. 371 is covered under MPEP 1800 (note: not MPEP 803), which is governed by the unity of invention and does not require a serious burden of searching (MPEP 1893.03 (d)).
Applicant asserts that the reference, US 2020/0040692 “fails to teach or suggest all of the limitations of the pending claims,” stating that the reference was “not cited to reject any of the pending claims.” It is unclear what Applicant is attempting to argue. A Restriction of an Application entering the national stage under 35 U.S.C. 371 does not require a rejection of all the claim limitations. Rather, what the Restriction properly establishes is that the feature which is common among the Groups discussed therein, is present in the prior art, meaning that feature does not amount to a special technical feature, meaning unity of invention is not present, and Restriction is proper.
As discussed in the Restriction mailed on 8/21/2026, Groups I through III lack unity of invention because even though the inventions of these groups require the technical feature of an elastomeric material comprising graphite nanoplatelets, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Yun et al. (US 2020/0040692).
Yun et al. teach an elastomeric component comprising carbon-based nanoplatelets in an elastomeric matrix (¶55), wherein an example of the carbon-based nanoplatelets is graphite (¶65-66). Thus, the feature which is common among Groups I through III is present in the prior art; the common feature does not amount to a special technical feature; unity of invention is not present; and Restriction is proper.
Claim 19 is 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/21/2026, the traversal of which is not persuasive for the reasons provided above.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-3 and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsou (US 2017/0088688).
Tsou teaches mixing nanoparticles of graphene or graphite in a rubber matrix (abstract) and teaches an example of a process where a solution of BIIR elastomer and a solution of nanographene platelets are added together, mixed, and dried (¶ 104) followed by molding the composite material (¶109). Adding the two solutions together corresponds to the instantly claimed step of adding particulate material to an elastomeric material. The mixing together taught by Tsou corresponds to the instantly claimed dispersing to uniformly disperse. The molding step of Tsou corresponds to the instantly claimed molding step. Tsou teaches a solution which corresponds to the instantly claimed uniformly dispersed mixture (¶30). Tsou also teaches that graphite/graphene is uniformly dispersed in the polymer (¶89). This meets “uniformly disperse” as recited in the instant claims.
Tsou teaches the PAH copolymers used for dispersing the graphene nanoparticles attach to the graphene nanoparticle surfaces through phi-phi interactions (¶36), which corresponds to modifying the surfaces of the particulate recited in instant claim 2.
Tsou teaches the nanoparticles include expandable graphite (¶79) which can be treated with sulfuric acid (¶77) which gives carboxyl (¶80) and hydroxyl groups. This meets instant claim 3.
Tsou teaches the articles formed include barrier films (¶ 93) which meets ‘seal’ recited in instant claims 16-18.
Claims 1-3 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Malas, “Development of expanded graphite filled natural rubber vulcanizates in presence and absence of carbon black: Mechanical, thermal and morphological properties,” Materials & Design, Volume 39, August 2012, pg. 410-417.
Malas teaches a process where natural rubber and modified expanded graphite (“MEG”) are added together in a two-roll mixing mill, where the MEG is added to the rubber (pg. 411). This corresponds to the adding step of instant claim 1. Malas teaches the MEG is uniformly dispersed in the rubber matrix (pg. 416). This corresponds to the diffusing step of instant claim 1. Malas teaches that the composition was then molded and cured (pg. 411) which corresponds to the molding step of instant claim 1.
Malas teaches the expanded graphite is modified to have carboxylic acid groups and hydroxyl groups by oxidation with H2SO4/HNO3 (pg. 411). This meets the step of modifying surfaces of instant claim 2, the adding carboxyl and hydroxyl groups of instant claim 3, and mixing with sulfuric acid of instant claim 4.
Malas teaches a mixing using a two-roll mixing mill (pg. 411) which corresponds to the comminuting step of instant claim 15. See instant specification, pg. 16.
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 4-7 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tsou (US 2017/0088688).
The discussion with respect to Tsou above is hereby incorporated by reference.
Tsou does not explicitly recite washing the particulate after mixing with sulfuric acid.
However, it would have been obvious to wash the nanoparticle after mixing sulfuric acid treatment because washing would remove any unreacted sulfuric acid. One of ordinary skill in the art would recognize that washing sulfuric acid from the nanoparticle gives a clear solution because both sulfuric acid and water are clear. This meets instant claims 4-5.
The solution mixing process and drying of Tsou described above meets the limitations of instant claims 7 and 11-12.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tsou (US 2017/0088688) and further in view of Nwosu, “Graphene and water-based elastomer nanocomposites – a review, Nanoscale,” 2021,13, pg. 9505–9540 (provided on the IDS filed by Applicants on 4/4/2024).
The discussion with respect to Tsou above is hereby incorporated by reference.
Tsou does not explicitly recite water is used as the dispersing solvent.
However, Nwosu teaches elastomers mixed with graphene nanoplatelets (“GNP”) (abstract) and further teach methods of incorporating the elastomer and the graphene nanoplatelets which include the emulsion mixing technique (Fig. 6). In the emulsion mixing technique, GNPs are dispersed in water and added to the aqueous polymer and stirred, the water is evaporated, and the composition is molded (pg. 9516). This meets instant claim 8.
Both Tsou and Nwosu relate to the field of elastomers mixed with graphite nanoplatelets. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the emulsion mixing technique using water as described in Nwosu in the invention of Tsou because it is facile and requires less processing time, and it provides the opportunity to tailor the polymer properties prior to mixing (pg. 9517 of Nwosu).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Tsou (US 2017/0088688) and further in view of Ryou (KR 20130088251). As the KR document is not in English, citations are made to the attached English translation.
The discussion with respect to Tsou above is hereby incorporated by reference.
Tsou does not explicitly recite a nanoclay material.
However, Ryou teaches a composite material comprising a resin including ABS copolymers and thermoplastic elastomers (¶37), which are combined with expanded graphite uniformly dispersed within the resin (¶37), and which can include a nanoclay (¶40-41).
Both Tsou and Ryou relate to the field of elastomers comprising expanded graphite dispersed therein. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to include a nanoclay as taught by Ryou in the invention of Tsou in order to improve mechanical and heat resistance properties of the materials to which it is added (¶ 45 of Ryou).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Malas, “Development of expanded graphite filled natural rubber vulcanizates in presence and absence of carbon black: Mechanical, thermal and morphological properties,” Materials & Design, Volume 39, August 2012, pg. 410-417 and further in view of Inagaki, “Exfoliation process of graphite via intercalation compounds with sulfuric acid,” Journal of Physics and Chemistry of Solids, 65 (2004) 133–137.
The discussion with respect to Malas above is hereby incorporated by reference.
Malas does not explicitly recite washing the particulate after mixing with sulfuric acid.
However, Inagaki teaches a process where graphite is treated with sulfuric acid and nitric acid (pg. 133) followed by washing with water (pg. 133).
Both Malas and Inagaki relate to the field of products comprising expandable graphite. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use treat graphite with sulfuric and nitric acid as disclosed in Inagaki because Malas cites to Inagaki as how to modify graphite with an oxidizing agent (pg. 410) and because washing with sulfuric acid removes any excess highly reactive acid. It is noted that water containing sulfuric acid and nitric acid is a clear solution, as both water and sulfuric acid are clear, and washing separates particulate material from the solution. Therefore, the washing step of Inagaki meets the limitations of instant claim 5.
Malas teaches ENR (epoxidized natural rubber) is dissolved in toluene and MEG is added, followed by evaporation of the solvent (pg. 411), which meets the steps of adding the particulate material (MEG) to a polar compatibilizer (ENR) and evaporating a solvent (toluene) as required by instant claim 6. Malas teaches a mixing using a two-roll mixing mill (pg. 411) which corresponds to the comminuting step of instant claim 6. See instant specification, pg. 16.
Allowable Subject Matter
Claims 9-10 and 13-14 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 9 recites dispersing the particulate material in ethanol before adding to the elastomeric material. Claim 10 depends from claim 9 and contains the same limitations.
Claim 13 recites adding a coagulation element to a homogeneous phase of the integration mixture. Claim 14 depends from claim 13 and contains the same limitations.
Relevant prior art includes Tsou (US 2017/0088688), Malas, “Development of expanded graphite filled natural rubber vulcanizates in presence and absence of carbon black: Mechanical, thermal and morphological properties,” Materials & Design, Volume 39, August 2012, pg. 410-417, Zheng (CN 105086030), and Kim, “Water-Borne Graphene-Derived Conductive SBR Prepared by Latex Heterocoagulation,” Macromolecular Research, Vol. 18, No. 6, pp 558-565 (2010). As the CN document is not in English, citations are made to the attached English translation.
Tsou teaches mixing nanoparticles of graphene or graphite in a rubber matrix (abstract) and teaches an example of a process where a solution of BIIR elastomer and a solution of nanographene platelets are added together, mixed, and dried (¶ 104) followed by molding the composite material (¶ 109). Tsou fails to teach using ethanol or adding a coagulation element and therefore fails to meet instant claims 9-10 and 13-14.
Malas teaches a process where natural rubber and modified expanded graphite (“MEG”) were added together in a two-roll mixing mill where the MEG is added to the rubber (pg. 411). This corresponds to the adding step of instant claim 1. Malas teaches the MEG is uniformly dispersed in the rubber matrix (pg. 416). Malas fails to teach using ethanol or adding a coagulation element and therefore fails to meet instant claims 9-10 and 13-14.
Zheng teaches a process including adding functionalized expandable graphite to latex rubber (¶8). Zheng teaches the expandable graphite is reacted with a silane coupling agent in water and ethanol, and then a carboxylated styrene butadiene latex is added (¶ 78). This corresponds to a particle in water and ethanol added to an elastomer in water. However, Zheng teaches the graphite is expandable, not expanded. Additionally, Zheng fails to teach washing the graphite after it has been mixed with acid as required by claims 4-5.
Kim teaches water borne graphene SBR prepared by latex heterocoagulation where graphene is added to SBR in water and then a coagulant is added (pg. 559). Kim fails to teach that the graphene is an expanded graphite or graphite nanoplatelets. Additionally, Kim fails to teach adding the coagulation element after mixing the graphene. Furthermore, SBR falls outside the scope of claim 13 which requires adding the coagulation element to the integration mixture of the particulate material and solvent. Kim further fails to teach using ethanol.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K. BOYLE/Primary Examiner, Art Unit 1766
Prosecution Insights