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
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 silicon-treated carbon black and at least one additional filler. A blend of silicon-treated carbon black and 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 silicon-treated carbon black and at least one additional filler. A blend of silicon-treated carbon black and 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.
The Examiner respectfully submits that silicon treated carbon is treated carbon black, which is still tread on carbon black.
The applicant argues that silica is very difficult to mix in rubber compounds, frequently requiring up to seven passes in a Banbury or mixer. This is compared with three to four for carbon black formulated compounds. To reduce this, special mixers using inter-meshing rotors are needed. It is still less efficient versus all carbon-black filler compounds.
The Examiner respectfully submits that the claims are drown to a product and not a process of using it. Furthermore, the Examiner respectfully submits that silicon treated carbon is treated carbon black, which is still tread on carbon black.
The applicant argues that ES'319 describes the use of graphene materials as additives in thermoplastics. ES'319 does not describe the use of carbon black. WO'675 and ES'319 together failed to use only carbon black with graphene.
The Examiner respectfully submits ES2725319A1 is used to show 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.
Conclusion
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.
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.
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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.
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/SHUANGYI ABU ALI/ Primary Examiner, Art Unit 1731
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