DETAILED ACTION
Claims 33-35, 37-44, 53, 56-57, and 59-66 are pending, and claims 33-35, 37-44, 53, 56-57, and 65-66 are currently under review.
Claims 1-32, 36, 45-52, 54-55, and 58 are cancelled.
Claims 59-64 are withdrawn.
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 .
Response to Amendment
The amendment filed 5/06/2026 has been entered. Claims 33-35, 37-44, 53, 56-57, and 59-66 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every 112 rejection previously set forth in the Non-Final Office Action mailed 2/06/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 65 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 65 recites a weight gain of the coated substrate in terms of an average of “coated trials” and “uncoated trials”. It is unclear as to what is required by the term “trial”. It is unclear whether this requires data of previously performed measurements, or whether “trial” mere pertains to the step of heating as claimed, or something else entirely.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 41 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 41 recites an amount of organometallic compound being equal to or below 0.12 weight percent. However, claim 41 depends from independent claim 33, which already recites this feature. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 33-35, 37-43, 53, and 56 is/are rejected under 35 U.S.C. 103 as being unpatentable over McMullin et al. (US 2016/0024310) in view of Tamashausky (2003, Graphite, a multifunctional additive for paint and coatings, cited in IDS filed 1/05/2023), ASM Handbooks (1990, Carbon and Low-alloy steel sheet and strip), and either one of: 1) Qian et al. (CN101696328, machine translation referred to herein) or 2) Radyuck et al. (2015, Experience of application of a heat-resistant coating to protect billets in heating for metal forming) and Parashar et al. (2001, Ethyl silicate binders for high performance coatings).
Regarding claim 33, McMullin et al. discloses a method of providing corrosion resistant coatings onto metallic substrates such as steel [abstract, 0071]; wherein said method includes the steps of providing a steel substrate as stated above, and further depositing a coating including graphite having a size of 0.01 to 100 microns (ie. at least 10 nm to 100 micrometers) based on the width (ie. lateral dimension) of the graphite particles [0112]. Said coating further includes a binder and is provided in the form of an aqueous mixture [0051, 0095]. McMullin et al. further teaches that the binder can be included in an amount of 3 to 99.999 weight percent of the total coating, and the graphite can be included in an amount of up to 5 weight percent of the coating total [0051-0053]. McMullin et al. further teaches that water solvent can be included in an amount of up to 90% of a continuous phase with the rest being a binder [0096-0097]. The examiner notes that these ratios overlap the instantly claimed ratio amounts, which is prima facie obvious. See MPEP 2144.05(I). Accordingly, as an example of said overlap, it is noted that the coating composition can contain 99.9% continuous phase and 0.1% graphite, 80% of said continuous phase being water with the remaining 20% as a binder. This would result in a graphite:water ratio of 0.1:79.92 (or approximately 1.25 g/L graphite as determined by the examiner) and a binder:water ratio of 19.98:79.92 (or approximately 250 g/L as determined by the examiner). The examiner notes that the overlap between the graphite lateral size of McMullin et al. and that as claimed is prima facie obvious such that the graphite of McMullin et al. can be considered “nanographite”. See MPEP 2144.05(I). McMullin et al. further teaches inclusion of organometallic compounds in an amount of as low as 0.001 weight percent [0152-0153]. The examiner notes that the organometallic amount of McMullin et al. overlaps with the instantly claimed range, which is prima facie obvious. See MPEP 2144.05(I).
McMullin et al. does not expressly teach that said graphite is in in the form of flakes as claimed. Tamashausky discloses graphite is particularly effective in the form of flakes as a coating additive [p.70]. Therefore, it would have been obvious to one of ordinary skill to modify the method of McMullin et al. to specifically using nanographite flake because flake graphite is an effective coating additive as taught by Tamahausky.
McMullin et al. does not expressly teach a steel substrate composition as claimed. ASM Handbooks discloses that it is well known to utilize commercially available carbon steel for consumer goods [p.200]; wherein said carbon steel can be rolled and have a designation of 1095 having a composition as shown in table 1 below [table1 “hot-rolled and cold-rolled steel sheet”]. Therefore, it would have been obvious to one of ordinary skill to select 1095 steel as it is commercially available and useful for consumer goods as taught by ASM Handbooks. The examiner notes that the overlap between the steel composition of ASM Handbooks and that of the instant claim is prima facie obvious. See MPEP 2144.05(I). It is particularly noted that the optional elements as claimed are optional and thus not required.
The suggested aforementioned prior art above therefore suggests a steel substrate as claimed having a coating as claimed. However, the aforementioned prior art does not expressly teach that the steel substrate is a slab, billet, or bloom as claimed.
Qian et al. discloses a method of applying a protective coating onto steel workpieces [0002]; wherein said coating can be applied to a steel workpiece prior to steel workpiece processing to protect from oxidation and carburization during processing such as heat treatment, forging, hot rolling, etc. while also not materially affecting said heat treatment, forging, hot rolling, etc. processes [0002-0006, 0015, 0018]. The examiner submits that a steel substrate would be recognized by one of ordinary skill in steel metallurgy to exist in the form of a slab/billet/bloom prior to the above-mentioned processing steps as these are well known, intermediate forms of steel. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by performing coating specifically to a billet or bloom for the above-mentioned benefits as taught by Qian et al. and as would have been recognized by one of ordinary skill. Qian et al. further discloses that the coating can utilize a binder of sodium silicate as a high temperature binder [0019]. Therefore, it would have been obvious to one of ordinary skill to modify the method of McMullin el al. and ASM Handbooks by utilizing sodium silicate as a high temperature binder as taught by Qian et al
Alternatively, Radyuck et al. teaches that it is a known endeavor to provide protective coatings for steel billets in order to avoid metal loss during heating and metal forming [p.1]. Therefore, it would have been obvious to modify the method of the aforementioned prior art by applying the coating of the aforementioned prior art to a steel billet such that corrosion protection can be achieved to avoid metal loss during metal forming as taught by Radyuck et al. The aforementioned prior art and Radyuck et al. do not expressly teach that the coating includes a binder as claimed. Parashar et al. discloses that corrosion coatings for steel can be made using alkali silicates such as sodium silicate as simple, suitable binders such that film curing and properties can be desirably controlled [p.1-2]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing a sodium silicate binder for the aforementioned benefits taught by Parashar et al.
Table 1.
Element (wt.%)
Claim 33 (wt.%)
ASM Handbooks, 1095 (wt.%)
C
0.31 – 1.2
0.9 – 1.04
Si
0.1 – 1.7
0.1 – 0.25
Mn
0.15 – 1.1
0.3 – 0.5
P
0 – 0.01
0 – 0.04
S
0 – 0.1
0 – 0.05
Cr
0 – 1
0
Ni
0 – 1
0
Mo
0 – 0.1
0
Optionally at least one of:
Nb
B
Ti
Cu
Co
N
V
0 – 0.05
0 – 0.003
0 – 0.06
0 – 0.1
0 – 0.1
0 – 0.01
0 – 0.05
0
0
0
0
0
0
0
Fe & impurities
Balance
Balance
Regarding claim 34, the aforementioned prior art discloses the method of claim 33 (see previous). McMullin et al. further teaches a drying step after coating [0164].
Regarding claim 35, the aforementioned prior art discloses the method of claim 33 (see previous). McMullin et al. further teaches an embodiment wherein coating performed with conventional spray coating [0211].
Regarding claims 37-38, the aforementioned prior art discloses the method of claim 33 (see previous). McMullin et al. does not expressly teach a C amount of the graphite. However, absent a specific teaching to the contrary, one of ordinary skill would understand the graphite of McMullin et al. to be pure graphite, which meets the instantly claimed C amounts since pure graphite contains only carbon. The examiner further notes that the mere purity of a product (ie. graphite) by itself does not render the product unobvious absent concrete evidence to the contrary. See MPEP 2144.04(VII).
Regarding claim 39, the aforementioned prior art discloses the method of claim 33 (see previous). McMullin et al. further teaches that the binder can be included in an amount of 3 to 99.999 weight percent of the total coating, and the graphite can be included in an amount of up to 5 weight percent of the coating total [0051-0053]. McMullin et al. further teaches that water solvent can be included in an amount of up to 90% of a continuous phase with the rest being a binder [0096-0097]. The examiner notes that these ratios overlap the instantly claimed ratio amounts, which is prima facie obvious. See MPEP 2144.05(I). Accordingly, as an example of said overlap, it is noted that the coating composition can contain 99.9% continuous phase and 0.1% graphite, 80% of said continuous phase being water with the remaining 20% as a binder. This would result in a graphite:water ratio of 0.1:79.92 (or approximately 1.25 g/L graphite as determined by the examiner) and a binder:water ratio of 19.98:79.92 (or approximately 250 g/L as determined by the examiner).
Regarding claims 40-41 and 56, the aforementioned prior art discloses the method of claim 33 (see previous). As stated above, McMullin et al. further teaches inclusion of organometallic nanoparticles in an amount of as low as 0.001 weight percent [0152-0153]. The examiner notes that the organometallic amount of McMullin et al. overlaps with the instantly claimed range, which is prima facie obvious. See MPEP 2144.05(I).
Regarding claims 42-43, the aforementioned prior art discloses the method of claim 33 (see previous). McMullin et al. further teaches drying can be performed under heat at 10 to 200 degrees C [0164]. The examiner note that drying with “air” as claimed would naturally flow from drying under heat as taught by McMullin et al. because said heat would naturally have to be conveyed through a medium such as air. The examiner notes that the drying temperatures of McMullin et al. overlap with the instantly claimed range, which is prima facie obvious. See MPEP 2144.05(I).
Regarding claim 53, the aforementioned prior art discloses the method of claim 33 (see previous). McMullin et al. further a coating thickness of 0.1 to 1000 micrometers [0077]. The examiner notes that the overlap between the thickness range of McMullin et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Regarding claim 65, it is noted that the limitations of claim 65 merely combine the limitations of previous claims 33 and 39, in addition to reciting a broader nanographite flake lateral size range of 1 to 60 micrometers and a subsequent heating step as claimed. The examiner considers the aforementioned prior art to meet the limitations of claim 65 for the same reasons as presented relative to claims 33, 39, and 55 above.
Claim(s) 37-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over McMullin et al. (US 2016/0024310) and others as applied to claim 33 above, and further in view of Ashbury (2016, Graphite).
Regarding claims 37-38, McMullin et al. and ASM Handbooks disclose the method of claim 33 (see previous). McMullin el al. and ASM Handbooks do not expressly teach a C amount in graphite as claimed. Ashbury discloses commercially available graphite flake for coatings, wherein said graphite flake is provided with a C purity of up to 99.9% [p.1]. Therefore, it would have been obvious to one of ordinary skill to modify the method of McMullin et al. and ASM Handbooks by utilizing the graphite of Ashbury having an overlapping purity because said graphite is commercially available and can be used for coatings as taught by Ashbury. The examiner notes that the overlap between the graphite purity of Ashbury and that of the instant claim is prima facie obvious. See MPEP 2144.05(I).
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over McMullin et al. (US 2016/0024310) and others as applied to claim 33 above, and further in view of LeGrande (US 6,576,336).
Regarding claim 44, McMullin et al. and ASM Handbooks disclose the method of claim 33 (see previous). McMullin el al. and ASM Handbooks do not expressly teach a drying time as claimed. LeGrande et al. discloses a similar graphite dispersed coating composition for steel substrates for corrosion resistance [abstract, col.2 ln.5-9, col.6 ln.14-16]; wherein said coating formulation is designed to have an excellent dry time of about 20 minutes and can be force dried [col.5 ln.24-26]. Therefore, it would have been obvious to one of ordinary skill to modify the method of McMullin et al. and ASM Handbooks by force drying in a time of 20 minutes because 20 minutes is an excellent dry time as taught by LeGrande et al.
Allowable Subject Matter
Claim 65 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 57 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and the previous double patenting rejections are overcome.
Claim 66 is directed to allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 57 and 66 are directed to a method of coating steel as claimed, wherein the coating includes an organometallic composition as claimed. There is no prior art of record that teaches these features together per the board decision mailed 8/19/2025. Claim 65 is directed to a method of coating steel as claimed, wherein a further step of heating and corresponding weight gain is performed. There is no prior art of record that teaches these features together.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 33-35, 37-44, 53, 56-57, and 66 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,473,609. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlap between the claimed compositional ranges and ranges of the copending application is prima facie obvious. See MPEP 2144.05(I).
Claims 33-35, 37-44, 53, 56-57, and 66 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 31-43 and 48-52 of copending Application No. 16/768,567 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the overlap between the claimed compositional ranges and ranges of the copending application is prima facie obvious. See MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 5/06/2026 regarding the 103 rejections have been fully considered but they are not persuasive.
Applicant argues against the combination of McMullin et al. and Qian et al. in teaching the newly amended limitations of independent claim 33. The examiner notes that these issues were already addressed (previous claims 36, 41, and 55) and affirmed by the board in the decision mailed 8/19/2025. Therefore, applicant’s arguments are moot as they pertain to issues that have already been affirmed by the board. Nonetheless, Qian et al. never requires a particular amount of graphite or sodium silicate, such that it is not proper to conclude that Qian et al. requires 17 to 35 weight percent graphite. Furthermore, alternative rejections over Parashar et al. were previously presented, which applicant has not overcome.
Applicant's arguments filed 5/06/2026 regarding the double patenting rejections have been fully considered but they are not persuasive.
Applicant requests the double patent rejections to be held in abeyance. The examiner notes that this is not proper. Double patenting rejections may be overcome through substantial amendment such as in the case of instant claim 65, or through filing of a terminal disclaimer.
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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