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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/28/2026 has been entered.
The amendment filed 4/10/2026 has been entered. Claims 6-7 and 11-12 have been canceled. Claims 1-5, 8-10, and 13-17 are pending in the application. 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 Rejections - 35 USC § 112
Claims 3-5 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. Each of claims 3-5 recites, “each electrically conductive particle” (emphasis added) on lines 1-2, however, claim 1, from which claims 3-5 depend, recites, “A resistance coating for an electrical machine, the coating comprising: an electrically insulating matrix; and particles incorporated into the matrix, each of the particles including an electrically conductive platelet” (emphasis added), and although the “platelet” of claim 1 is “electrically conductive”, “each of the particles” that includes the “electrically conductive platelet” is not required to be “electrically conductive,” and hence, the claimed “each electrically conductive particle” of instant claims 3-5 lacks clear antecedent basis, and one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, e.g., is each particle that includes the electrically conductive platelet of doped metal oxide required to comprise a mixture of at least two metal oxides or is each electrically conductive platelet of doped metal oxide required to include a mixture of at least two metal oxides?
Claim 17 is 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 17 recites, “The resistance coating as claimed in claim 16, wherein the plurality of particles are at least partly in crystalline form” (emphasis added), however, given that claim 16 recites, “The resistance coating as claimed in claim 1, further comprising a plurality of electrically conductive particles comprising rod and/or globe particles,” while claim 1 recites, “A resistance coating for an electrical machine, the coating comprising: an electrically insulating matrix; and particles incorporated into the matrix, each of the particles including an electrically conductive platelet” on lines 1-5, it is unclear whether “the plurality of particles” of claim 17 refers to the “plurality of electrically conductive particles” as recited in claim 16, the “rod and/or globe particles” which are comprises by the “plurality of electrically conductive particles” of claim 16, the “particles including an electrically conductive platelet” as recited in instant claim 1, or combination thereof, given that there is no clear antecedent basis for “plurality of particles” as recited in claim 17. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, 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.) It is also noted that 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. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claim Rejections - 35 USC § 103
Claims 1-5, 8-10, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Klaussner (WO2015/128367A1, again please refer to US2016/0374237A1 as an English language translation of the WO document, as evidenced by Song), in view of Siegel, and in further view of Archer (US2010/0258759A1) or Gu (CN102633298A, please refer to the machine translation of record, see office action dated 9/13/2023) or Wang (Engineering Nonspherical Hollow Structures with Complex Interiors by Template-Engaged Redox Etching, already of record, hereinafter referred to as “Wang 2010”) or Wang (One-Step Synthesis of SnO2 and TiO2 Hollow Nanostructures with Various Shapes and Their Enhanced Storage Properties, already of record, hereinafter referred to as “Wang 2012”) or Lou (Hollow Micro-/Nanostructures: Synthesis and Applications, already of record) or Wang (A General Single-Source Route for the Preparation of Hollow Nanoporous Metal Oxide Structures, hereinafter referred to as “Wang 2009”) or Yuan (Mixed Transition-Metal Oxides: Design, Synthesis, and Energy-Related Applications).
As discussed in prior office actions, Klaussner teaches “a corona shielding system for an electric machine, comprising a filler in a polymeric matrix [as in instant claim 2], the filler comprising both planar and spherical/globular [“globe”] particles that are resistant to partial discharges and electrically conductive” (Paragraph 0013), wherein “the electrical conductivity, which is good in the presence of only planar particles in two spatial directions but is very poor in the third, can be adjusted anisotropically in a targeted manner” by adjusting the amount of spherical or globe particles added to the planar platelet-like particles that are known to align during the production process such that the platelet-like particles create conductivity paths in the two spatial or orthogonal directions, along which the conductivity is high, however the conductivity in the perpendicular or third orthogonal direction is quite low (Entire document, particularly Abstract, Paragraphs 0020-0023). Klaussner teaches that the platelet-like particles comprise a doped metal oxide, and may comprise a core, preferably a lightweight core or carrier substrate such as mica, silica, alumina or glass platelets, upon which the doped metal oxide is provided as a coating layer or “shell” surrounding the core or carrier substrate, wherein the metal oxide is selected from tin oxide, zinc oxide, zinc stannate, titanium dioxide, lead oxide or non-oxidic silicon carbide (as in instant claims 3 and 8), that can be doped with preferably antimony, indium or cadmium (as in instant claims 9 and 10) in order to set the conductivity thereof by the doping (as in instant claim 1; Paragraphs 0018 and 0026-0028).
Klaussner teaches that the particle mass concentration of the particles in the carrier matrix may be chosen such that the corona shielding material is above the percolation threshold, preferably above 15% by weight (as in instant claims 1 and 15; Paragraph 0019), wherein the tailored addition of the spherical or globe particles (as in instant claim 16) increases the electrical conductivity perpendicularly in relation to the directed/aligned filler platelets such that the anisotropic electrical resistance of the corona layer can be adapted or set within certain ranges and the percolation thresholds of the three spatial directions shift to much lower filler concentrations (Paragraphs 0023-0025). Klaussner teaches that the spherical or globe particles may also be produced from doped metal oxide wherein the general conductivity of such spherical or globe particles can be set by the doping of the metal oxide, as with the planar fillers, with an example ratio of planar particles to spherical particles being approximately 3:1 (Paragraphs 0024 and 0027; thus a content of planar particles overlapping the claimed range given the overall particle mass concentration of preferably about 15% by weight as noted above).
Hence, with respect to the claimed invention as recited in instant claims 1-3, 8-10, 15, and 16, Klaussner teaches a resistance coating comprising an electrically insulating polymeric matrix as in instant claim 2; electrically conductive particles incorporated therein in a content as in instant claim 15, wherein the electrically conductive particles comprise metal oxides as in instant claims 3 and 8-9, include platelet and globe particles as in instant claim 16, and have a conductivity generated by doping metal oxide with a doping element such as antimony, indium or cadmium as in instant claim 10; wherein a percolation threshold of the resistance coating is exceeded in two orthogonal directions and conductivity of the resistance coating is higher in the two directions than a third orthogonal direction as in instant claim 1; and wherein the particles include an aligned flake structure in a plane perpendicular to the third orthogonal direction as in instant claim 1 (e.g. providing an increased discharge resistance in the third orthogonal direction); but does not teach that each of the electrically conductive planar/platelet particles containing the doped metal oxide include “an electrically conductive platelet of doped metal oxide surrounding a cavity and a coating on an exterior of the doped metal oxide platelet and having no core or carrier substrate in the cavity” as recited in amended claim 1, nor that the conductivity of the resistance coating in the two orthogonal or spatial directions is higher by at least a factor of 10 as instantly claimed.
However, it is first noted as discussed in detail in prior office actions, that it is well established in the art that conductive coatings or composites formed from flakes or platelets in a manner that they align to form laminar structures within a resin matrix thereby producing an anisotropic composite or a composite having 2-D isotropy with the electrical conductivity being greater in all planar directions than in the thickness direction (“third orthogonal direction”) can be provided such that the in-plane conductivity (two orthogonal directions) is orders of magnitude higher than the thickness direction, as evidenced by Song (Paragraph 0070), and hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant invention to clearly recognize that the same or similar anisotropy or 2-D isotropy would be obtained in the invention taught by Klaussner based upon the desired conductivity properties for a particular end use of the resistance coating as taught by Klaussner, particularly given that both Klaussner and Song provide a clear teaching and/or suggestion that the type of conductive filler(s) or flake(s) as well as the content directly affect the conductivity properties of the coating.
Further, although Klaussner teaches that the electrically conductive planar particles “may comprise a core” (Paragraph 0014), preferably a lightweight core or carrier substrate such as mica, silica, alumina or glass platelets (Paragraph 0017) which are then coated with a conductive coating of the doped metal oxide (Paragraph 0018), e.g. thereby forming a doped metal oxide conductive “shell” surrounding the “core” platelets as a solid support, Klaussner does not teach that the doped metal oxide coated platelets are provided with a cavity which is surrounded by the doped metal oxide with no core or carrier substrate in the cavity, and having a coating on the platelet comprising one or more silanes, waterglass, and/or undoped metal oxide as instantly claimed. However, the Examiner first notes that as established on the record, providing a silane coating on an exterior surface of particles to be incorporated into a polymer matrix, e.g., as in Klaussner, would have been obvious to one having ordinary skill in the art in order to promote dispersion of the filler particles in the polymer matrix and/or to promote a stronger bond between the filler particles and the polymer matrix, as taught by Siegel (Entire document, particularly Abstract, Paragraphs 0013 and 0022; also as evidenced by Kutsovsky, US2006/0067868A1, Paragraph 0063, Claim 17, as discussed on the record). Hence, the claimed “coating on an exterior of the doped metal oxide platelet…the coating on the platelet comprising one or more silanes, waterglass, and/or undoped metal oxide” would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way.
With respect to the claimed “cavity” and the platelet “having no core or carrier substrate in the cavity” as instantly claimed, the Examiner again notes that it is very well known in the art, as established on the record, that hollow metal oxide particles, formed by removing a template or carrier substrate and/or formed by a carrier/template-free process, provide improved properties over solid particles and/or core-shell particles containing a core or carrier substrate, such as, but not limited to, improved lightweight properties, larger surface area, and better control of electrical properties thereof, as well as reduced cost due to the lower cost of feedstock or raw materials, with various prior art references specifically providing methods for obtaining hollow metal oxide structures having tailored shapes including a planar/platelet shape as in Klaussner and the instantly claimed invention and a well-defined interior void or “cavity” as in the instantly claimed invention, as taught by Archer or Gu or Wang 2010 or Wang 2012 or Lou or Wang 2009 or Yuan, etc. (Entire documents, particularly as discussed on the record and incorporated herein by reference), and given that the Applicant provides no clear showing of criticality and/or unexpected results nor any disclosure of how the claimed platelet particles are produced in a manner such that they are different from any of the known hollow, platelike-shaped metal oxide particles taught by the prior art of record, the Examiner (again) takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the instantly claimed invention to utilize hollow doped metal oxide platelet shaped particles that have a cavity with no core or carrier substrate such that the doped metal oxide surrounds the cavity as in the instantly claimed invention in place of the doped metal oxide platelet shaped core-shell particles in the invention taught by Klaussner in order to provide improved properties including improved lightweight properties due to the absence of a core or carrier substrate even one that is “lightweight” as taught by Klaussner as well as reduced cost and better control of the electrical conductivity, shape, and/or composition of said planar/platelet particles such that the claimed invention as recited in instant claims 1-3, 8-10, 15, and 16 would have been obvious over the teachings of Klaussner (as evidenced by Song) in view of Archer or Gu or Wang 2010 or Wang 2012 or Lou or Wang 2009 or Yuan, given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way.
Further with respect to instant claim 3 as well as claims 4-5 and 17, it is again noted that Klaussner broadly teaches that the doped metal oxide may comprise metal oxides selected from tin oxide (as in instant claim 8), zinc oxide, zinc stannate (as in instant claim 3), titanium oxide, and lead oxide, with the doping element selected from antimony, indium and cadmium (as in instant claims 9-10), wherein the globe particles may also be selected from the same doped metal oxides, while Archer similarly teaches the above metals or metal oxides as well as mixtures thereof as previously discussed on the record; and given that the selection of any of the recited metal oxides, metals and/or recited doping elements, and any combinations thereof, which include crystalline and/or polycrystalline materials as in instant claims 4-5 and 17, would have been obvious to one having ordinary skill in the art before the effective filing date of the instantly claimed invention, the claimed invention as recited in instant claims 3-5 and 17 would have been obvious over the teachings of Klaussner (as evidenced by Song) in view of Archer or Gu or Wang 2010 or Wang 2012 or Lou or Wang 2009 or Yuan, given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claims 13-15, Klaussner provides a clear teaching that the conductivity or resistance of the coating can be tailored based upon the metal oxide, doping and content of the platelets and globe filler in the coating wherein the particle mass content is above 15% by weight such that the coating is above the percolation threshold, and although Klaussner does not specifically teach the electrical resistance and nonlinearity of the resistance coating as instantly claimed, one having ordinary skill in the art before the effective filing date of the instantly claimed invention would have been motivated to utilize routine experimentation to determine the optimum metal oxide and doping composition, as well as particle content to provide the desired resistance and nonlinearity for a particular end use of the invention taught by Klaussner (as evidenced by Song) in view of Archer or Gu or Wang 2010 or Wang 2012 or Lou or Wang 2009 or Yuan; and given that Klaussner teaches a similar end use as in the claimed invention, a resistance coating having electrical properties within the claimed ranges would have been obvious to one having ordinary skill in the art before the effective filing date of the instantly claimed invention thereby rendering the invention as recited in instant claims 13-15 obvious over Klaussner (as evidenced by Song) in view of Archer or Gu or Wang 2010 or Wang 2012 or Lou or Wang 2009 or Yuan.
Response to Arguments
Applicant's arguments filed 4/10/2026 have been fully considered but they are not persuasive and/or moot in view of the new grounds of rejection presented above. However, with respect to Applicant’s arguments on page 7 of the response that Archer describes hollow nanospheres without a template or carrier in the interior thereof, but that there is allegedly no teaching that would allow a person having ordinary skill in the art to apply the teachings of Archer to a platelet given that the entire disclosure is allegedly directed to nanospheres which would not meet the requirements of Claim 1, the Examiner respectfully disagrees and notes that Archer clearly teaches hollow metal oxide “nanostructures” wherein templates utilized to produce the nanostructures may have “varying shapes, sizes and symmetries” (Paragraph 0010) and the resulting “hollow nanostructures as taught by the invention exhibit various configurations, including, but not limited to, nanoparticles, nanorod/belts/arrays, nanotube, nanodisks, nanoboxes, nanocylinders, nanospheres, nanococoons and nanospindles, among others” (Paragraph 0021). Hence, Applicant’s arguments with respect to Archer are not persuasive given that contrary to Applicant’s arguments, Archer is not limited to hollow nanospheres.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 4/10/2026.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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