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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/22/2026 has been entered.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by WO2022125675A1 (WO’675).
Regarding claim 1, WO’675 discloses a wet co-pellet of silica and/or Silicon-treated carbon black and/or at least one additional filler. A blend of silica and/or Silicon-treated carbon black and/or at least one additional filler can be pelletized. The at least one additional filler can be graphene. See [0051-0052] and [0057]. The carbon black can be a furnace black, a gas black, a thermal black, an acetylene black, or a lamp black, a plasma black, a recovered carbon black (e.g., as defined in ASTM D8178-19), or a carbon product containing silicon-containing species, and/or metal containing species and the like. See [0068].
Regarding claims 2-3, WO’675 discloses that the at least one additional filler can be present in an amount of from 1% to 5% by weight. See [0060].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 4- 7is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2022125675A1 (WO’675) as applied to claim 1 above, and further in view of ES2725319A1.
WO’675 discloses a wet co-pellet of silica and/or Silicon-treated carbon black and/or at least one additional filler , A blend of silica and/or Silicon-treated carbon black and/or at least one additional filler can be pelletized. The at least one additional filler can be graphene. See [0051-0052] and [0057]. The carbon black can be a furnace black, a gas black, a thermal black, an acetylene black, or a lamp black, a plasma black, a recovered carbon black (e.g., as defined in ASTM D8178-19), or a carbon product containing silicon-containing species, and/or metal containing species and the like. See [0068].
But it silent about the graphene characters as applicant set forth in the claims.
ES2725319A1 discloses that the graphene materials having an average number of layers between 1 and 30 and a high aspect ratio (100-900000) can provide the following properties: a) Improved impact resistance b) Elongation improvement; c) Improvement of the flow rate. Graphene materials have a very high aspect ratio, because their thickness is very low, being between 0.35 nm. See claim 1 and page 4, lines 10-12. For graphene material having 2 layers, the thickness is about 0.7nm.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use the graphene having the claimed property motivated by the fact that ES2725319A1 discloses that the use of graphene materials of high aspect ratio (100-900000) and having an average number of layers between 1 and 30, can provide the following properties: a) Improved impact resistance b) Elongation improvement; c) Improvement of the flow rate. Graphene materials have a very high aspect ratio, because their thickness is very low, being between 0.35 nm. See claim 1 and page 4, lines 10-12.
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive.
The applicant argues that the present teaching describes only carbon black co-pelletized with graphene.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., only carbon black co-pelletized with graphene) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). “A ‘consisting essentially of’ claim occupies a middle ground between closed claims that are written in a ‘consisting of’ format and fully open claims that are drafted in a ‘comprising’ format." PPG Industries v. Guardian Industries, 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). See also Atlas Powder v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984); In re Janakirama-Rao, 317 F.2d 951, 137 USPQ 893 (CCPA 1963); Water Technologies Corp. vs. Calco, Ltd., 850 F.2d 660, 7 USPQ2d 1097 (Fed. Cir. 1988). For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention."). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003). If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989) ("Although ‘consisting essentially of’ is typically used and defined in the context of compositions of matter, we find nothing intrinsically wrong with the use of such language as a modifier of method steps. . . [rendering] the claim open only for the inclusion of steps which do not materially affect the basic and novel characteristics of the claimed method. To determine the steps included versus excluded the claim must be read in light of the specification. . . . [I]t is an applicant’s burden to establish that a step practiced in a prior art method is excluded from his claims by ‘consisting essentially of’ language.").
The applicant argues that WO’675 describes the direct addition of graphene to the polymer mixer (free addition). In contrast to WO’675 the present teaching claims the addition of carbon black co-pelletized graphene into the polymer mixer instead of separate addition.
The Examiner respectfully submits that WO’675 discloses” as one option a wet co-pellet of carbon black and silica can be charged to the mixer. A blend of carbon black and silica can be pelletized in the presence of water, where the pelletizing process is described in further detail herein. In any of these co-pellet options, the co-pellet can further comprise at least one additional filler”(graphene). See [0051-0052].
The applicant argues that the present teaching does not involve wetting agents, pre-treatment, or adjustment of mixing procedures to enable its adaptation. It is a drop- in regarding existing rubber compound manufacturing procedures. It does not include plastics or thermoplastic polymers or such materials. It does not include functionalization of any other chemical modifications to compounding materials. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The applicant argues that the data tables in the present teaching, co-pelletization allows superior properties compared to free addition of graphene.
The Examiner respectfully submits that the WO’675 discloses a wet co-pellet of silica and/or Silicon-treated carbon black and/or at least one additional filler can be charged to the mixer. A blend of silica and/or Silicon-treated carbon black and/or at least one additional filler can be pelletized. The at least one additional filler can be graphene. See [0052] and [0057]. The Examiner respectfully submits that the applicant must compare the instant application with the closest art. Evidence of unexpected results must be commensurate in scope with the subject matter claimed. In re Linder 173 USPQ 356. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside (i.e. as well as the upper and lower limits) the claimed range to show the criticality of the claimed range. In re Hill 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Further more any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merk & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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, Amber Orlando can be reached at (571)270-3149. 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.
/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
Prosecution Insights