DETAILED ACTION
Claims 33-44, 51-53, and 55-66 are pending, and claims 33-44, 51-53, 55-58, and 65-66 are currently under review.
Claims 1-32, 45-50, and 54 are cancelled.
Claims 59-64 are withdrawn.
Claims 65-66 are newly added.
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 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 10/19/2025 has been entered.
Response to Amendment
The amendment filed 10/19/2025 has been entered. Claims 33-44, 51-53, and 55-64, and newly submitted claim(s) 65-66, remain(s) pending in the application.
Claim Rejections - 35 USC § 112
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.
Claims 36 and 51-52 are 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 36 recites a nanographite flake range of 1 to 60 g/L. Claims 51-52 recite ranges of nanographite flake lateral size of 20 to 55 micrometers and 30 to 55 micrometers, respectively. However, these claims depend from independent claim 33, which already recites a nanographite flake range of 1 to 35 g/L and lateral size range of 30 to 55 micrometers. Accordingly, claims 36 and 51-52 fail to further limit the scope of independent claim 33. 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) 33-43, 51-53, 55-56, 58, and 65 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 Qian et al. (CN101696328, machine translation referred to herein) or Radyuck et al. (2015, Experience of application of a heat-resistant coating to protect billets in heating for metal forming).
Regarding claims 33, 36, and 51-52, 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. 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.
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.
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 36 and 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 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 claims 40-41 and 56, the aforementioned prior art discloses the method of claim 33 (see previous). 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 “hot 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 claims 55 and 58, the aforementioned prior art discloses the method of claims 33 and 36 (see previous). McMullin el al. and ASM Handbooks do not expressly teach that the binder has a composition as claimed. Qian et al. discloses a method of applying a protective coating onto steel workpieces [0002]; wherein said 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. Regarding the further limitations of claim 58, McMullin et al. already teaches an overlapping coating thickness as explained above.
Regarding claim 65, it is noted that the limitations of claim 65 merely combine the limitations of previous claims 33, 39, and 55 in addition to reciting a broader nanographite flake lateral size range of 1 to 60 micrometers. 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.
Claim(s) 57 and 66 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 56 above, and further in view of either one of Dura Chemicals (2017, Specialty products DriCAT2700F, cited in IDS filed 1/05/2023) or Schipper et al. (US 6,579,932).
Regarding claim 57, McMullin et al. and ASM Handbooks disclose the method of claim 33 (see previous). McMullin et al. does not expressly teach that coating further contains an additive organometallic composition as claimed. However, the examiner submits that this additive would have been obvious in view of the prior art. Firstly, the examiner notes that the claimed composition merely pertains to the composition of DriCAT as expressly recognized by applicants in the remarks filed 1/04/2023 [p.15]. Accordingly, Dura Chemicals discloses DriCAT 2700F to be a commercially available Mn-based compound which uses less hazardous materials and give higher drying performance than that of the metal alone [p.1]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing DriCAT 2700F, which corresponds to the claimed composition, as a drying additive for the aforementioned benefit as expressly taught by Dura Chemicals. Alternatively, Schipper et al. discloses that it is known to provide protective coating compositions including polyurethane dispersions for desirable properties such as good toughness, adhesion, and durability for protective coatings [col.1 ln.5-20]; wherein said coating composition includes cosolvents such as dipropylene glycol monomethyl ether [col.10 ln.58-65], acids such as 2-ethylhexanoic acid [col.10 ln.1-8], and a siccative such as a manganese salt of a octanoic acid which one of ordinary skill would understand to meet the limitation of C8H16MnO2 [col.11 ln.20-25]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing the composition of Schipper et al. for the aforementioned benefits expressly taught by Schipper et al.
Regarding claim 66, it is noted that the limitations of claim 66 merely combine the limitations of previous claims 33 and 57 in addition to reciting a broader nanographite flake lateral size range of 1 to 60 micrometers. The examiner considers the aforementioned prior art to meet the limitations of claim 66 for the same reasons as presented relative to claims 33 and 57 above.
Claim(s) 55 and 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over McMullin et al. (US 2016/0024310) and others as applied to claims 33 and 36 above, and further in view of Parashar et al. (2001, Ethyl silicate binders for high performance coatings).
Regarding claims 55 and 58, the aforementioned prior art discloses the method of claims 33 and 36 (see previous). The aforementioned prior art does 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. The examiner notes that McMullin et al. already teaches an overlapping coating thickness as explained above (see previous).
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 33-44, 51-53, 55-58, and 65-66 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 33-44, 51-53, 55-58, and 65-66 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 31-42 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 10/19/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach these features. The examiner cannot concur. The examiner notes that the disclosure of the prior art still overlaps with the amended ranges, which is prima facie obvious. See MPEP 2144.05(I). Although the amended ranges are slightly different than the previous claim recitations, they are not patentably distinct from the previously claimed ranges absent concrete evidence or reasoning as to why the amended ranges are significant, which have not been presented. Therefore, the examiner further cannot concur with applicant because the basis of the rejection rationale has already been affirmed by the previous board decision mailed 8/19/2025. See MPEP 2190(II).
The examiner notes that the alternative rejections over Dura Chemicals are made in view of a new, explicit motivation. In other words, although the rejections rely on the same reference which was previously used in the non-final office action mailed 8/07/2023 and reversed by the board decision mailed 8/19/2025, a new motivation and grounds of rejection is made herein using the same reference.
Applicant’s arguments are further moot in view of the new grounds of rejection over Schipper et al. above.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734