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 .
Response to Amendment
Upon entry of the amendment filed on 25 November 2025, Claim(s) 1, 3, 16, 17 and 26 is/are amended and Claim(s) 2, 9-15, 18-20, 22 and 27-35 is/are cancelled. The currently pending claims are Claims 1, 3-8, 16, 17, 21 and 23-26.
Based on applicants’ remarks and amendments (e.g. the specific loading amounts), the 112 rejections, the DP rejections, the rejections based on Tour and the 102 rejections based on Wallace are withdrawn. However, they are not found persuasive regarding the obviousness rejections based on Wallace reference and the rejections are updated.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 5-8, 16, 17, 21 and 23-26 is/are rejected under 35 U.S.C. 103(a) as being obvious over Wallace (WO-2020073081-A1).
Claims 1, 5 and 8: Wallace discloses a composition for a thermal application comprising (a) graphene platelets with a base layer having a larger surface, discontinuous stacked layers and the edge functionalization and (b) the water medium (abs, ¶2, 11-20, examples and claims). Further, Wallace discloses a loading amount of up to 700 ml/mg in water (which is approximately 40 %wt. ) – thus encompassing the claimed range. The Wallace reference discloses the claimed invention but does not explicitly disclose the claimed loading range. Given that the Wallace reference discloses a concentration range that overlaps with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught loading amounts, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the loading variables with the benefit gain of enhancing the thermal and electrical conductivity parameters of the composition. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Regarding the claimed thermal conductivity property, if a prior art reference teaches the substantially identical material, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claims 6, 7, 16: Wallace disclose the claimed loading amount/concentration, the electrical conductivity, the metal ions functionalization and the polymer (¶ 11-21, 74, example and claims).
Claims 17, 21 and 23-26: Wallace discloses the method of producing the composition with the steps of forming graphene by mixing graphite/ graphene with a solution comprising organic nitrile, ester and oxidant, adding water, mixing, sonicating and recovering (abs, ¶21-41, 56-74, examples and claims).
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wallace as applied to claim 1 above, and further in view of Vallejo (NPL provided).
The Wallace reference discloses the claimed invention but does not explicitly disclose the feature of the co-solvent. It is noted that the Wallace reference discloses various solvents such as water and alcohol and the claim(s) call(s) for a co-solvent system. In an analogous art, the Vallejo reference discloses that the feature of functionalized graphene in a co-solvent system such as alcohol-water is well known in the art (abs, pg. 175 et seq.). One of ordinary skill in the art would have recognized that applying the known technique of Vallejo to the teachings of Wallace and optimizing the amounts would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems and compositions for the benefit gain of enhancing the thermal conductivity and stability. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 6, 7, 9 and 10, filed 25 November 2025, with respect to the 112 rejections, the DP rejections and the Tour reference have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant's arguments filed 25 November 2025 regarding the Wallace reference have been fully considered but they are not persuasive since the rejection has been updated.
Applicant argues that Wallace does not disclose the claimed loading amount of the edge-functionalized graphene nanoplatelets, the thermal fluid behavior and the unexpected results (pg. 7, 8).
The examiner respectfully disagrees and notes that Wallace discloses a loading amount of up to 700 ml/mg in water (which is approximately 40 %wt. ) – thus encompassing the claimed range. The Wallace reference discloses the claimed invention but does not explicitly disclose the claimed loading range. Given that the Wallace reference discloses a concentration range that overlaps with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught loading amounts, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the loading variables with the benefit gain of enhancing the thermal and electrical conductivity parameters of the composition. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan. It is noted that the instant phrase “for use as a thermal fluid” is construed as an intended use thus the claimed composition needs only to be able to perform such function. Regarding the claimed thermal conductivity property, if a prior art reference teaches the substantially identical material, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present. It is also noted that graphene nanoplatelets being used in a coolant composition is well known (see ESAREY indicating such end-product) and Wallace discloses the high thermal conductivity of the edge-functionalized graphene thus meeting the claimed thermal fluid limitation. Regarding the unexpected results, the examiner respectfully disagrees and notes that, in order to overcome the prima facie case of obviousness, the applicant may show (1) criticality or unexpected result of the range, (2) the prior art teaches away from the claim or (3) a pertinent secondary factors to rebut the rejection under 35 USC 103. MPEP 2144.05. Here, the applicant intends to show the criticality or unexpected result of loading amounts range. However, it is noted that the Showing in applicant’s specification (i.e. Fig 23, Table 1 and accompanying text) is not commensurate with the instant claims. In particular, the Showing in applicant’s specification are directed to specific and distinct edge-functionalized graphene nanoplatelets (e.g. specific functional groups, specific oxidation effects) and specific solvent components and differ from the instant claims which are directed to a broad and generic edge-functionalized graphene and a water solvent. After a careful evaluation and consideration of the Declaration and Showing, it is the examiner’s position that the specific limitations presented in the Showing would not inexorably extrapolate to the instant broader limitations. Applicant is welcomed to provide any evidence that the narrower components recited in the Showing would inevitably lead to the same critical and unexpected results in the broader components of the instant claims. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of non-obviousness fails to outweigh the evidence of obviousness. Thus, the Showing have been found insufficient to overcome the rejections and the rejections are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. ESAREY discloses edge-functionalized graphene nanoplatelets employed as coolant.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764