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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, 7-10, 14-15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Costa (US 2016/0168391) in view of Wang (US 2015/0044565), Lin (US 2016/0026846), and Li (CN 105860761). A machine translation of Li is attached as an English equivalent and is used in the citations below.
Regarding Claim 1, Costa teaches a method of inhibiting corrosion of a structure or object having a surface, said method comprising (i) coating at least a portion of the surface with a coating suspension comprising multiple graphene sheets, metals, and a resin binder dispersed or dissolved in a liquid medium ([0047], [0068]); and (ii) at least partially removing said liquid medium from said coating suspension upon completion of said coating step to form a protective coating layer on said surface ([0074]).
Costa teaches the composition including metal coated carbon materials ([0065-0067]). Costa also teaches the graphene sheets can be processed in the presence of the metals ([0038], [0044]). Costa teaches applications including electrodes ([0090]). Costa does not explicitly teach the graphene sheets coated with a thin film of an anti-corrosive pigment or sacrificial metal prepared by the claimed process; however, Wang teaches graphene sheets having a metal film thereon desirable for use in anode layers ([0028]) wherein the film is produced by providing a continuous film of graphene sheets ([0057]), depositing metal onto the film to form a coated film ([0058]), mechanically braking the coated film into pieces of coated sheets ([0059]), and dispersing the coated pieces into a liquid medium of a subsequent suspension ([0088]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the metal coated carbon materials and graphene sheets of Costa to include coated graphene sheets formed by methods, as taught in Wang, because they are known graphene composites and production methods in the art of electrode applications and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the composite of Costa with graphene produced as taught in Wang.
Costa teaches polyacetylene (PAc), polypyrrole (PPy), polyaniline (PAni), and polythiophene (PTh). Costa does not explicitly teach the claimed polymer; however, polyheteroarylenvinylene in which the heteroarylene group can be thiophene, furan, or pyrrole is a known electrically conductive polymer in the art (Lin [0023]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of Costa to include conductive polymers as taught in Lin, because they are known conductive polymers in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the coating of Costa with a polymer as taught in Lin.
Costa does not explicitly teach the claimed resins; however, Li teaches corrosion resistant polymer resin compositions with graphene wherein the resin includes castor oil triglycidyl ether for adjusting viscosity of the composition (Claims 1 and 2). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the resins of Costa to include materials as taught in Li because they are known polymer components for graphene composites and in order to achieve a composition having desirable viscosity.
Regarding Claims 3-4, Costa teaches the graphene sheets being functionalized and having carbon to oxygen ratios overlapping the claimed concentrations ([0033]). Costa teaches graphene sheets present in the composition in an amount of from about 0.01 to about 90 weight percent based on the total weight of the metal and graphene ([0037]). Costa does not explicitly teach the weight fraction of graphene sheets based on total coating suspension excluding the liquid medium; however, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II A. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the graphene concentration, as suggested by Costa, and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed concentration.
Regarding Claim 5, Costa teaches the claimed resins ([0047-0052]).
Regarding Claim 7, Costa teaches carriers ([0041]).
Regarding Claims 8 and 9, Wang teaches thicknesses overlapping the claimed range ([0022]). Wang teaches the claimed coverage area ([0029]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the thickness and coverage of the combined references to be those taught by Wang, including those within the claimed ranges, because Wang teaches they are suitable for use with the invention.
Regarding Claim 10, Costa teaches carbon black, carbon fibers, and carbon nanotubes.
Regarding Claims 14-15, Costa teaches hydroxyl group or carboxyl group functionalities ([0033]).
Regarding Claim 21, Costa teaches said binder resin contains methacrylate ([0047]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Costa (US 2016/0168391) in view of Wang (US 2015/0044565), Lin (US 2016/0026846) and Li (CN 105860761) as applied to claims 1, 3-5, 7-10, 14-15, and 21 above, and further in view of Yousefi (Yousefi, Self-alignment and high electrical conductivity of ultralarge graphene oxide-polyurethane nanocomposites, J. Mater. Chem., 2012, 22, pg. 12709-12717).
Regarding Claim 6, Costa is silent as to the alignment of the sheets; however, Yousefi teaches graphene alignment along the in-plane direction producing desirable electrical conductivity and percolation threshold values (abstract). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to provide the sheets of Costa in alignment with the plane direction of the substrate, as suggested by Yousefi, in order to achieve desirable electrical conductivity and percolation threshold properties.
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Costa (US 2016/0168391) in view of Wang (US 2015/0044565) and Jang (US 20100055458).
Regarding Claims 12, Costa teaches a method of inhibiting corrosion of a structure or object having a surface, said method comprising (i) coating at least a portion of the surface with a coating suspension comprising multiple graphene sheets, metals, and a resin binder dispersed or dissolved in a liquid medium ([0047], [0068]); and (ii) at least partially removing said liquid medium from said coating suspension upon completion of said coating step to form a protective coating layer on said surface ([0074]).
Costa teaches the composition including metal coated carbon materials ([0065-0067]). Costa also teaches the graphene sheets can be processed in the presence of the metals ([0038], [0044]). Costa teaches applications including electrodes ([0090]). Costa does not explicitly teach the graphene sheets coated with a thin film of an anti-corrosive pigment or sacrificial metal prepared by the claimed process; however, Wang teaches graphene sheets having a metal film thereon desirable for use in anode layers ([0028]) wherein the film is produced by providing a continuous film of graphene sheets ([0057]), depositing metal onto the film to form a coated film ([0058]), mechanically braking the coated film into pieces of coated sheets ([0059]), and dispersing the coated pieces into a liquid medium of a subsequent suspension ([0088]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the metal coated carbon materials and graphene sheets of Costa to include coated graphene sheets formed by methods, as taught in Wang, because they are known graphene composites and production methods in the art of electrode applications and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the composite of Costa with graphene produced as taught in Wang.
Costa teaches hydroxyl group or carboxyl group functionalities ([0033]). Costa teaches a high carbon to oxygen molar ratio is desired. The combined references do not explicitly teach the claimed functional groups; however, Jang teaches chemical functionalization of graphene for tuning conductivity and solubility wherein the graphene is functionalized by an aryl silane, aralkyl, hydroxyl, carboxyl, or quinoidal group. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the functionalities of the combined references to include functionalities, as taught in Jang, to provide graphene with desirable conductivity and solubility properties for dispersion and coating.
Claims 13 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Costa (US 2016/0168391) in view of Wang (US 2015/0044565), Lin (US 2016/0026846) and Li (CN 105860761) as applied to claims 1, 3-5, 7-10, 14-15, and 21 above, and further in view of Lonkar (Lonkar, Recent Advances in Chemical Modifications of Graphene, Nano Research 2015, 8(4), pg. 1039-1074).
Regarding Claims 13 and 16-17, Costa teaches hydroxyl group or carboxyl group functionalities ([0033]). The combined references do not explicitly teach the claimed functional groups; however, Lonkar teaches chemical functionalization of graphene for tuning its structure for improved stabilization and modification of graphene. Lonkar teaches fluorocarbon modified graphene to append different functionalities to graphene sheets for modification of solubility-dispersibility and surface energy (pg. 1048 col. 2, Figure 11). Lonkar teaches methylated aryne modified graphene for dispersion in water (pg. 1049 col. 2). Lonkar teaches polyamidoamine stabilized graphene for nanoparticle attachment (pg. 1066 col. 1). Lonkar teaches amino acid functionalized graphene for stable dispersion in water (pg. 1051 col. 2). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the functionalities of the combined references to include functionalities, as taught in Lonkar, to provide graphene with desirable properties for dispersion and attachment.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Costa (US 2016/0168391) in view of Wang (US 2015/0044565), Lin (US 2016/0026846) and Li (CN 105860761) as applied to claims 1, 3-5, 7-10, 14-15, and 21 above, and further in view of Licari (Licari, Adhesives Technology for Electronic Applications: Materials, Processing, Reliability, Second Edition, William Andrew, 6/24/2011, pg. 82).
Regarding Claim 18, Costa teaches the composition including a curing agent ([0056]). Costa is silent as to the concentration of curing agent; however, curing agent amount is a known result effective variable for achieving optimum polymerization and complete cure in the art (Licari, pg. 82 1st para.). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to provide the curing agent of Costa in an optimized concentration, as suggested by Licari, in order to achieve optimum polymerization and curing.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Costa (US 2016/0168391) in view of Wang (US 2015/0044565), Lin (US 2016/0026846) and Li (CN 105860761) as applied to claims 1, 3-5, 7-10, 14-15, and 21 above, and further in view of Shikauchi (US 2016/0160079).
Regarding Claim 19, Costa does not explicitly teach the claimed resins; however, Shikauchi teaches polymer resin compositions with graphene wherein the resin includes pentaerythritol polyglycidyl ether ([0115], [0180]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the resins of Costa to include materials as taught in Shikauchi because they are known polymer components for graphene composites and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the composite of Costa with known polymer components as taught in Shikauchi.
Response to Arguments
Applicant's arguments filed 7/11/2025 have been fully considered but they are not persuasive. Applicant argues the prior art references do not show or suggest wherein said binder resin contains a thermally curable resin containing a bi- or tri-functional epoxy monomer selected from the group consisting of trimethylolethane triglycidyl ether, trimethylolmethane triglycidyl ether, triphenylolmethane triglycidyl ether, trisphenol triglycidyl ether, tetraphenylol ethane triglycidyl ether, tetraglycidyl ether of tetraphenylol ethane, p-aminophenol triglycidyl ether, 1,2,6- hexanetriol triglycidyl ether, diglycerol triglycidyl ether, glycerol ethoxylate triglycidyl ether, castor oil triglycidyl ether, propoxylated glycerine triglycidyl ether, 1,4-butanediol diglycidyl ether, neopentyl glycol diglycidyl ether, cyclohexanedimethanol diglycidyl ether, dipropylene glycol diglycidyl ether, polypropylene glycol diglycidyl ether, dibromoneopentyl glycol diglycidyl ether, hydrogenated bisphenol A diglycidyl ether, (3,4-epoxycyclohexane) methyl 3,4- epoxycylohexylcarboxylate, and mixtures thereof; however, Li teaches corrosion resistant polymer resin compositions with graphene wherein the resin includes castor oil triglycidyl ether for adjusting viscosity of the composition (Claims 1 and 2).
Applicant’s other arguments, see amendment to Claim 12 and remarks, filed 7/11/2025, with respect to the previous prior art rejection of Claim 12 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, and as necessitated by the amendment, a new ground(s) of rejection is made as discussed above.
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 TABATHA L PENNY whose telephone number is (571)270-5512. The examiner can normally be reached on M-F 8:00-5:00.
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/TABATHA L PENNY/Primary Examiner, Art Unit 1712