DETAILED ACTION
Claims 1-11 and 14-20 are pending as amended on 12 February 2026, claims 12 and 13 are withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s amendment overcomes the objection to claims 16-18. The objection has been withdrawn.
Applicant’s amendment overcomes the rejection of claims 9 and 19-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. The rejection has been withdrawn.
Applicant’s amendment does not distinguish from CN-105440379 A (Wu) in view of CN-105111531B (Zhang) and in further view of CN-114163919 A (Song) as evidenced by “ Synthesis and Applications of Graphene Oxide”, Sedmidubský, et al., Materials, 2022, 15, 920 (Sedmidubský) and TNGO technical data sheet.
Applicant’s arguments in light of the amendment have been fully considered but are not persuasive.
Applicant argues that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., particles in the form of core-shell structure) 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).
Applicant argues that the coating layer as amended consists essentially of the first modified graphite while Song teaches a coating layer with a minor proportion of graphene oxide. The examiner notes that the claims do not exclude other components from the first modified graphite, and there was no evidence that the presence of the additional components of Song would materially affect the basic and novel characteristic of the claimed invention. As such the rejections of claims 1-8, 10, 11 and 14-18 over Wu in view of Zhang and Song, and of claims 9 and 19-20 over Wu, Zhang, Song and Kawata stand.
Claim Rejections - 35 USC § 112
Claims 1-11 and 14-20 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 1 recites the limitation "the soft particles" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-11 and 14-20 are rejected as depending from rejected claim 1.
Claim Rejections - 35 USC § 103
Claims 1-8, 10, 11 and 14-18 stand rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Zhang and in further view of Song as evidenced by Sedmidubský and TNGO technical data sheet.
Regarding claim 1, Wu teaches a rubber sealing material comprises butadiene-acrylonitrile rubber and fluororubber; antioxidant and anti-aging agent/auxiliary antioxidant; silica carbide, which meets a density regulator; and modified graphite filler (Abstract).
Wu does not teach the modified graphite filler comprises a surface rich in hydroxy groups and carboxyl groups.
Zhang teaches addition of graphene of 10nm to 100µm to rubber material improves the strength and friction resistance of the rubber ([0008], [0011] and [0016]), wherein the graphene include modified graphene comprising various functional groups such as hydroxyl and carboxyl groups ([0023]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to add the modified graphene of Zhang in the rubber material of Wu. The rationale to do so would have been the motivation provided by the teachings of Zhang that to do so would predictably provide improved strength and friction resistance ([0008] and [0016]), which is desirable by Wu ([0003]).
Neither Wu nor Zhang teaches the rubber sealing material is coated with modified graphite having a surface rich in hydroxy groups and carboxyl groups.
Song teaches various environmental corrosion factors can be effectively isolated by coating a thin protective coating on the surface of a rubber material to prolong the effective function cycle of the rubber material (Abstract and [0003]), wherein the rubber material includes sealing rubber material ([0002]), and wherein the coating comprises graphene oxide (Abstract and [0016]), which is known to have a surface rich in hydroxy and carboxy groups as evidenced by Sedmidubský (Section 2 and Figure. 2).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to coat the surface of the rubber sealing material of Wu and Zhang with the graphene oxide coating of Song. The rationale to do so would have been the motivation provided by the teachings of Song that to do so would predictably provide outstanding resistance to liquid corrosive mediums such as oil products and excellent wear resistance and resilience (Abstract), which is desirable by Wu ([0003]).
If there is any difference between the product of Wu, Zhang and Song and the product of the instant claim(s) the difference would have been minor and obvious.
Claim 1 is viewed as product-by-process claims and hence the methods they are created by are not pertinent, unless applicant can show a different product is produced. Even 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." See MPEP 2113.
Regarding claims 2 and 3, Song teaches that the coating has a thickness of equal to 10 µm ([0007]), which meets the claimed thickness.
Regarding claim 4, Song teaches graphene oxide, which is known to have a general structure as evidenced by Sedmidubský (Fig. 2):
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wherein the total oxygen-containing group is about 14 with 7 hydroxy groups, 3 carboxy groups and 4 epoxy groups, i.e., 50% of hydroxy group , 21% of carboxy group, and 29% of epoxy group, which meets the claimed amount of hydroxy group, carboxy group, and abuts the claimed amount of epoxy groups, respectively.
It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 Titanium Metals Corp of Am v Banner, 778 F2d 775, 783, 227 USPQ 773, 779 (Fed Cir 1985).
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claims 5-6, for the coating, Song teaches that the coating graphene oxide is TNGO ([0016]), which has a diameter of 0.5 to 3 µm as evidenced by TNGO technical data sheet, which overlaps with the claimed size of claim 5 and encompasses the claimed particle size of claim 6; for the filler , Zhang teaches that the graphene filler has a diameter of 10nm to 100 µm([0011]), which encompasses the claimed particle size.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include modified graphite/graphene oxide of the instantly claimed size range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claims 7 and 8, Wu teaches the rubber material comprises ([0004]):
50-70 parts of hydrogenated nitrile rubber, 30-50 parts of fluororubber, 10-20 parts of
polytetrafluoroethylene, 40-60 parts of composite filler comprising fumed silica, modified molybdenum disulfide, modified graphite, and modified silicon carbide in a weight ratio of 3: 2.5: 2.5: 5 ([0008]), 10-20 parts of microencapsulated red phosphorus, 5-15 parts of zinc borate, 20-30 parts of ammonium polyphosphate, 15-25 parts of trioctyl acetyl citrate, 15-25 parts of tributyl citrate, 1-3 parts of benzoyl peroxide, 0.2-0.4 parts of dibutyltin dilaurate, 0.3-0.5 parts of accelerator D, 0.1-0.2 parts of accelerator ZDC, 1-2 parts of Ca/Zn composite stabilizer, 1-2 parts of dibutyltin dichloride, 1-2 parts of rare earth stabilizer, 0.2-0.4 parts of antioxidant MB, 0.2-0.4 parts of anti-aging agent, and 2-4 parts of montmorillonite; the sum of the above amount is about 202 to 323.9 parts estimated by the examiner, thus :
the rubber content is about 25 to 60 wt.% calculated by the examiner, which abuts the claimed range of rubber main agent, and it has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 Titanium Metals Corp of Am v Banner, 778 F2d 775, 783, 227 USPQ 773, 779 (Fed Cir 1985);
the antioxidant is about 0.06 to 0.2 wt.% calculated by the examiner, which overlaps with the claimed range of antioxidant, and the anti-aging /auxiliary antioxidant is about 0.06 to 0.2 wt.% calculated by the examiner, which meets the claimed range of auxiliary antioxidant of claim 7 and encompasses the claimed amount range of claim 8, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I;
the modified graphite is about 2.3 % to about 5.7 wt. % calculated by the examiner, which overlaps with the claimed amount of claim 7 and abuts the claimed amount of claim 8, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976) and Titanium Metals Corp of Am v Banner, 778 F2d 775, 783, 227 USPQ 773, 779 (Fed Cir 1985). See MPEP 2144.05; and
the density regulator is 4.6 to 11.4 wt.% calculated by the examiner, which meets the claimed amount of claim 7 and overlaps with the claimed amount of claim 8, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claims 10 and 11, None of Wu, Zhang and Song teaches the claimed particle size of the coated rubber material, however, a person of ordinary skill in the art would have been motivated to adjust the size of coated rubber material in order to obtain a workable product. It is noted that no criticality has been demonstrated in the specification with regard to the size recited in the claims.
Regarding claims 14, the recitation “a profile control and water shutoff agent” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. Wu, Zhang and Song combine to teach the claimed modified graphite -coated rubber material thus meet the claimed agent.
Claims 16 -18 are interpreted as an intended use of the claimed rubber material/agent. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Wu, Zhang and Song combine to teach the same material thus capable of performing the intended use.
Regarding the elastic modulus, viscous modulus of claim 15, agglomeration and forming a seal in an oil reservoir of claims 17-18, Wu, Zhang and Song teaches all of the claimed ingredients in the claimed amounts, absent evidence to the contrary, one of ordinary skill in the art would have reasonable basis to expect that the claimed effects and physical properties, i.e., elastic modulus, viscous modulus, capability of agglomeration and forming a seal in an oil reservoir would naturally arise and be achieved by a composition with all the claimed ingredients under similar oil reservoir conditions. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Claims 9 and 19-20 stand rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Zhang and Song as evidenced by Sedmidubský and TNGO technical data sheet as applied to claims 1-8, 10, 11 and 14-18 above, and further in view of US Patent 5646224 (Kawata).
The combined teachings of Wu, Zhang and Song are set forth above.
Regarding claim 9, While Wu teaches the rubber material comprises an antioxidant ([0004]), none of Wu, Zhang and Song teaches the instantly claimed antioxidant.
Kawata teaches that tetrakis{methylene-3-(3',5'-di-t-butyl-4'-hydroxyphenyl)propionate}methane can be added to a rubber sealing material as antioxidant (col. 6,line 45-55), which meets the claimed pentaerythritol tetrakis[3-(3 ,5-di-tert-butyl-4-hydroxyphenyl)propionate.
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the tetrakis{methylene-3-(3',5'-di-t-butyl-4'-hydroxyphenyl)propionate}methane of Kawata as the antioxidant in the rubber sealing material of Wu, Zhang and Song since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, an antioxidant for rubber material . See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
Regarding claims 19 and 20, Wu, Zhang, Song and Kawata combine to teach the alternative embodiment wherein the antioxidant is pentaerythritol tetrakis[3-(3 ,5-di-tert-butyl-4-hydroxyphenyl)propionate thus meets the claims.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766