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 .
Claim Rejections - 35 USC § 102/103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 6-7, 9-13, 15-16, 28-29 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Egami et al (US Patent Application 2005/0116376).
Regarding claims 6-7, 9-13, 15-16, 28-29, Egami et al a conductive resin molding comprising synthetic resin and conductive compounding agent contains a mixed conductive compounding agent of expanded graphite and carbon black having a specific surface area of 20-80m2/g and an average particle diameter of 40-100nm (Paragraph 18). Egami et al further teaches the expanded graphite has an average particle diameter of 10-50µm in order to keep a favorable balance between moldability and conductivity in the resin composition…It is preferable that 80 vol% or the entire particles of the expanded graphite has an average diameter in the range of 4-60µm (Paragraph 60). Egami et al teaches in Examples 11-12 comprising expandable graphite KEX with an average particle diameter of 17µm where the particle range of 80% of the entirety of the particles is 1-55 µm and carbon black #3030B with a BET specific surface area of 20 m2/g and primary particle diameter of 55nm (Table 3). Example 11 comprises a polymer, 54wt% expandable graphite and 6wt% carbon black and Example 12 comprises a polymer, 42wt% expandable graphite and 18wt% carbon black (Table 3). Egami et al further teaches silicon carbide, silicon nitride, conductive ceramics and metal powder (Paragraphs 48, 50). Egami et al further teaches
The D90 is necessarily below 1000µm or 800µm based on Egami et al’s requirement of a particle size diameter of 10-50µm in order to keep a favorable balance between moldability and conductivity in the resin composition and D80 between 4-60µm, this indicates that the particle sizes are substantially smaller than 1000µm or 800µm. In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the D90 to be within the claimed range as Egami et al’s requirement of a particle size diameter of 10-50µm in order to keep a favorable balance between moldability and conductivity in the resin composition and D80 between 4-60µm, this indicates that the particle sizes are substantially smaller than 1000µm or 800µm.
Claims 6-7, 9-14, 28-29 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Schmidt et al (US Patent Application 2013/0164635) in evidence of Muller et al, GK Technical Information and Sigma.
Regarding claims 6-7, 9-14, 28-29, Schmidt et al teaches a composition comprising 1 g of expanded graphite (ES 100 C10 NGS Naturgraphit GmbH) (which satisfies about 11wt%) and 2g of carbon black (Super P) (which satisfies about 22wt%) to form a composite (Paragraph 105). As evidenced by Muller et al, the Type ES 100 C10 expanded graphite have a nominal size of 100-150µm (Fig. 1 & 2. Materials and methods). As evidenced by GK Technical Information, ES 100 C10 D80=150µm (Technical Data Table). As evidenced by Sigma, Super P has a Bet surface area of 62 m2/g and an average particle size of about 40nm.
The D90 is necessarily below 1000µm or 800µm based on the evidenced documents of particle-size characterization data and SEM data; SEM observations indicate a nominal particle size of 100-150µm and D80=150µm, this indicates that the particle sizes are substantially smaller than 1000µm or 800µm. In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expected the D90 to be within the claimed range as the evidence establishes that 80% of the measured particle size distribution is at or below 150µm; for the D90 to reach or exceed 1000µm or 800µm, a disproportionately large increase in particle size would have to occur within the upper 20% distribution, which is inconsistent with the observed nominal particle size.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Egami et al (US Patent Application 2005/0116376) as applied to claims 6-7, 9-13, 15-16, 28-29 above.
Regarding claim 14, Egami et al discloses the invention substantially as claimed. Egami et al further teaches 40-70vol% of the conductive compounding agent in a resin matrix (Paragraph 68). However, Egami et al fails to specifically disclose the composition comprises carbon black and expanded graphite in a combined amount of 10-50wt%.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a composition comprises carbon black and expanded graphite in a combined amount of 10-50wt% in Egami et al as Egami et al teaches 40-70vol% of the conductive compounding agent in a resin matrix; a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Application 2013/0260150 is considered cumulative to or less than the prior art disclosed above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 October 14, 2026
