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 Interpretation
The Examiner notes the product by process limitations of Claim 1 and cites MPEP 2113 which states, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).”
For purposes of examination, the Examiner construes Claim 1 as being drawn to a cured elastomer containing a 2D conductive nanoparticle.
For purposes of examination, the Examiner construes clauses i), ii) and iii) of Claim 1, step c) to be the components that are being mixed under curing conditions to form an elastomer.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13-18 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12,15,22,24,25,28 and 29 of copending Application No. 18/827374 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a sensor comprising an elastomeric composite comprising an elastomer and a exfoliated filler per the product by process claim interpretation discussed above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 7,8 and 11 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.
Claim 7 recites the limitation "the elastomeric polymer" in line 2. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the phrase is construed as –- elastomer polymer precursor --.
Claim 8 recites the limitation "the curing agent" in line 2. There is insufficient antecedent basis for this limitation in the claim. Specifically, it is unclear whether the curing agent referenced is the curing agent before or after the addition of the 2D nanoparticles.
Claim 11 recites the limitation "the curing time" in line 1. 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 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.
Claim(s) 1-11,13-18,20-22 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2016/0287175 (US ‘175).
As to Claim 1, in view of the product by process interpretation of the claim discussed above, US ‘175 discloses a composition that is comprised of a 2 dimensional graphene as a conductive filler (para. 0034) and further contains an elastomer which can be, for example, siloxane polymers (para. 0040). The composition can be used to make electrodes (para. 0035).
As to Claims 2-4, see discussion above in regards to product by process interpretation of the independent claim.
As to Claims 5-6, the Examiner notes the product by process interpretation of the claim and further graphene is derived from graphite.
As to Claim 7, see discussion of Claim 1 above.
As to Claim 8, the Examiner notes the intended use limitations directed drawn to the desired end use and notes the prior art composition would be capable of a similar selection process.
As to Claim 9-11 and 14, see discussion above in regards to product by process interpretation of the independent claim.
As to Claim 13, Example 1 shows the sample being held in place using an copper adhesive tape (para. 0070) which the Examiner construes as a form of substrate.
As to Claim 15, Example 1 shows the sample being attached to electrical leads (para. 0070).
As to Claim 16, see discussion of Claim 13 above.
As to Claims 17,18,20 and 21, see discussion above in regards to product by process interpretation of the independent claim.
As to Claim 22, see discussion of Claim 15 above.
Claim(s) 1-11,13-18 and 20-22 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2019/0185672 (US ‘672).
As to Claim 1, in view of the product by process interpretation of the claim discussed above, US ‘672 discloses polymers such as polysiloxanes which are crosslinked by crosslinking agents including boric acid (para. 0058) and further contain conductive nanomaterials including graphene (para. 0060) which the Examiner construes as a 2D nanoparticle.
As to Claims 2-4, see discussion above in regards to product by process interpretation of the independent claim.
As to Claims 5-6, the Examiner notes the product by process interpretation of the claim and further graphene is derived from graphite.
As to Claim 7, see discussion of Claim 1 above.
As to Claim 8, the Examiner notes the intended use limitations directed drawn to the desired end use and notes the prior art composition would be capable of a similar selection process.
As to Claim 9-11, see discussion above in regards to product by process interpretation of the independent claim.
As to Claim 13, the composite is placed on a PVC layer for use as a sensor (para. 0103).
As to Claim 14, see discussion of Claim 1 and 13 above.
As to Claim 15, US ‘672 discloses the samples are connected to a Keithley source meter with 2 probes which the Examiner construes as electrodes being attached to the sample (para. 0102).
As to Claim 16, see discussion of Claim 13 above in regards to PVC.
As to Claims 17 and 18, see discussion of Claims 13 and 15 above.
As to Claims 20 and 21, see discussion above in regards to product by process interpretation of the independent claim.
As to Claim 22, see discussion of Claims 13 and 15 above.
Claim(s) 1-11,14,17,20 and 21 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2018/0057674 (US ‘674).
As to Claim 1, US ‘674, in view of the product by process interpretation of the claim discussed above, discloses a solution blending of graphene and an elastomer wherein the blending is sufficiently rigorous to exfoliate the filler (para. 0061-0064) and the composition further contains a curing agent (para. 0053).
As to Claims 2-4, see the product by process limitation interpretation discussed above.
As to Claims 5 and 6, see discussion of Claim 1.
As to Claim 7, the polymer can be polybutadiene (para. 0025).
As to Claims 8, see discussion of Claim 1.
As to Claim 9, the mixing is conducted by a Banbury mixer (para. 0062).
As to Claims 10-11, see the product by process limitation interpretation discussed above.
As to Claims 14 and 17, the composition can be molded (para. 0075).
As to Claims 20 and 21, examples illustrate an example of elastomer to curing agent of 5:1 (PIBSA to zinc oxide, Table 2, Example A).
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.
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, Robert Jones can be reached at (571) 270-7733. 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.
/J.P.T/Examiner, Art Unit 1762
/jt/ 5/29/2026
/MARK KOPEC/ Primary Examiner, Art Unit 1762
Prosecution Insights