DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
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 99, 101-103, 105, 109, 111, 121-128, 131-143 are pending. Claims 125—128 are withdrawn. Accordingly, claims 99, 101-103, 105, 109, 111, 121-124, 131-143 are under examination.
Claim Rejections - 35 USC § 103
Claim 99, 101-103, 105, 109, 111, 121-122, 131-143 are rejected under 35 U.S.C. 103 as being unpatentable over Campbell et al. (US 2013/0217804) in view of Stolyarov et al. (US 2016/0276056).
Regarding claim 99: Campbell is directed to a composition for producing a coating, the coating composition consisting essentially of a mixture of:
A thermosetting resin of an epoxy resin
The composition comprises a liquid modifier comprising the polyol ([0124] Campbell), wherein the polyol comprises a natural oil including canola oil, ([0145]-[0146] Campbell).
Graphene nanoplatelets are not mentioned, although many different fillers can be included ([0094]).
Stolyarov is directed to a composition for producing a coating (0122]), the composition comprising a mixture of:
A resin including thermosets ([0162])
Non-functionalized graphene nanoplatelets ([0006]-[0007])
The compositions of Stolyarov are used for the same purpose of coatings, (see [0002] Stolyarov and abstract Campbell). One skilled in the art would have been motivated to have selected the graphene nanoplate filler of Stolyarov as the filler of choice in Campbell to modify the polymer composition in a variety of desirable ways. By comparison, the resulting composite may be mechanically stronger, while also exhibiting electrical and thermal conductivity ([0133] Stolyarov). Further, the resulting composition has reduced weight, outstanding mechanical properties and easily machinable ([0173] Stolyarov). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the non-functional graphene nanoplate filler of Stolyarov as the filler of choice in Campbell to arrive at claim 99 of the present invention.
It is noted that the claim recites the transitional phrase “consisting essentially of”, which limits the scope of the claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic of the claimed invention. For the purposes of searching for and applying prior art, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” is construed as equivalent to “comprising” (see MPEP 2111.03).
There is no evidence of record that any additional components in the compositions of Stolyarov would materially affect the basic and novel characteristic of the claimed invention. Therefore, the claimed invention is considered to be properly suggested by Stolyarov.
Regarding claims 101: Suitable polymers include a mixture of an epoxy resin with a silicone resin ([0015]).
Regarding claim 102: The epoxy can be an epoxy functional silicone resin ([0015] Campbell)
Regarding claim 103: The epoxy includes an aliphatic bisphenol A epoxy resin ([0020] Campbell).
Regarding claim 105: The dispersion can comprise 0.1-30% by weight graphene based on the total weight of the composition ([0036] Stolyarov). It follows the concentration will be less than 30% by weight when added to the epoxy composition of Campbell.
Regarding claim 109: The composition comprises 3-20 wt% of the liquid modifier comprising the polyol ([0124] Campbell).
Regarding claim 111: Campbell is directed to a composition for producing a coating, the coating composition comprising a mixture of:
A thermosetting resin of an epoxy resin
A natural oil, e.g. Castor oil, soybean oil, sunflower oil, linseed oil, rapeseed oil, canola oil, palm oil, peanut oil ([0145]-[0146] Campbell).
Graphene nanoplatelets are not mentioned, although many different fillers can be included ([0094]).
Stolyarov is directed to a composition for producing a coating (0122]), the composition comprising a mixture of:
A resin including thermosets ([0162])
Non-functionalized graphene nanoplatelets ([0006]-[0007])
The compositions of Stolyarov are used for the same purpose of coatings, (see [0002] Stolyarov and abstract Campbell). One skilled in the art would have been motivated to have selected the graphene nanoplate filler of Stolyarov as the filler of choice in Campbell to modify the polymer composition in a variety of desirable ways. By comparison, the resulting composite may be mechanically stronger, while also exhibiting electrical and thermal conductivity ([0133] Stolyarov). Further, the resulting composition has reduced weight, outstanding mechanical properties and easily machinable ([0173] Stolyarov). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the non-functional graphene nanoplate filler of Stolyarov as the filler of choice in Campbell to arrive at claim 111 of the present invention.
The dispersion can comprise 0.1-30% by weight graphene based on the total weight of the composition ([0036] Stolyarov). It follows the concentration will be less than 30% by weight when added to the epoxy composition of Campbell, which at least overlaps the claimed amount. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
It is noted that the claim recites the transitional phrase “consisting essentially of”, which limits the scope of the claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic of the claimed invention. For the purposes of searching for and applying prior art, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” is construed as equivalent to “comprising” (see MPEP 2111.03).
There is no evidence of record that any additional components in the compositions of Stolyarov would materially affect the basic and novel characteristic of the claimed invention. Therefore, the claimed invention is considered to be properly suggested by Stolyarov.
Regarding claim 121: A thermosetting epoxy resin is disclosed in Campbell.
Regarding claim 122: A substrate at least partially covered is disclosed ([0003] Campbell).
Regarding claim 131: Campbell is directed to a composition for producing a coating, the coating composition consisting essentially of a mixture of:
A thermosetting resin of an epoxy resin
The composition comprises a liquid modifier comprising the polyol ([0124] Campbell), wherein the polyol comprises a natural oil including canola oil, ([0145]-[0146] Campbell).
Graphene nanoplatelets are not mentioned, although many different fillers can be included ([0094]).
Stolyarov is directed to a composition for producing a coating (0122]), the composition comprising a mixture of:
A resin including thermosets ([0162])
Non-functionalized graphene nanoplatelets ([0006]-[0007]), and
(II) A copper salt and/or a curing agent (equivalent to a hardener) are disclosed in Campbell ([0067] abstract Campbell).
The compositions of Stolyarov are used for the same purpose of coatings, (see [0002] Stolyarov and abstract Campbell). One skilled in the art would have been motivated to have selected the graphene nanoplate filler of Stolyarov as the filler of choice in Campbell to modify the polymer composition in a variety of desirable ways. By comparison, the resulting composite may be mechanically stronger, while also exhibiting electrical and thermal conductivity ([0133] Stolyarov). Further, the resulting composition has reduced weight, outstanding mechanical properties and easily machinable ([0173] Stolyarov). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the non-functional graphene nanoplate filler of Stolyarov as the filler of choice in Campbell to arrive at claim 131 of the present invention.
It is noted that the claim recites the transitional phrase “consisting essentially of”, which limits the scope of the claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic of the claimed invention. For the purposes of searching for and applying prior art, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” is construed as equivalent to “comprising” (see MPEP 2111.03).
There is no evidence of record that any additional components in the compositions of Stolyarov would materially affect the basic and novel characteristic of the claimed invention. Therefore, the claimed invention is considered to be properly suggested by Stolyarov.
Regarding claim 132: An epoxy resin is disclosed in Campbell.
Regarding claim 133: The epoxy can be an epoxy functional silicone resin ([0015] Campbell)
Regarding claim 134: The dispersion can comprise 0.1-30% by weight graphene based on the total weight of the composition ([0036] Stolyarov). It follows the concentration will be less than 30% by weight when added to the epoxy composition of Campbell, which at least overlaps the claimed amount. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 135: Natural oil, e.g. Castor oil, soybean oil, sunflower oil, linseed oil, rapeseed oil, canola oil, palm oil, peanut oil are disclosed by Campbell ([0145]-[0146] Campbell).
Regarding claim 136: The composition comprises 3-30 wt% of the liquid modifier comprising the vegetable oil, and therefore the composition can comprise less than 10wt% based on the total weight of the composition.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 137: While claim 137 is further limited to copper powder, titanium nanoparticles, or phosphorous, the limitations of claim 131 are met by Stolyarov. Specifically, it is noted that base claim 137 recites a copper salt and/or a curing agent (equivalent to a hardener) are disclosed in Campbell ([0067] abstract Campbell) in the alternative, and therefore claim 137 does not require copper powder, titanium nanoparticles, or phosphorous in the composition. Claim 137 is therefore obvious in view of the discussion above regarding claim 131.
Regarding claim 138: An amine curing agent is disclosed ([0029] Campbell).
Regarding claim 139: An epoxy resin is disclosed in Campbell.
Regarding claim 140: The dispersion can comprise 0.1-30% by weight graphene based on the total weight of the composition ([0036] Stolyarov). It follows the concentration will be less than 30% by weight when added to the epoxy composition of Campbell, which at least overlaps the claimed amount. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 141: While claim 141 is further limited to the synthetic oil, the limitations of claim 99 are met by Stolyarov. Specifically, it is noted that base claim 99 recites a natural oil in the alternative, and therefore claim 141 does not require synthetic oil in the composition. Claim 141 is therefore obvious in view of the discussion above regarding claim 99.
Regarding claim 142: Natural oil, e.g. Castor oil, soybean oil, sunflower oil, linseed oil, rapeseed oil, canola oil, palm oil, peanut oil are disclosed by Campbell ([0145]-[0146] Campbell).
Regarding claim 143: Fatty alkyl groups are grafted to the epoxy thermosetting resin as illustrated at [0045] Campbell. Further, the oil displacing agents include glycidyl esters of fatty alkyl groups as in formula (X) ([0079] Campbell).
Claims 123-124 are rejected under 35 U.S.C. 103 as being unpatentable over Campbell and Stolyarov as applied to claim 121 above, and further in view of Virtanen et al. (US 2017/0260402).
Regarding claims 123-124: The cured compositions can be used in watercraft vehicles ([0115] Campbell), although a substrate of claim 123 is not specifically mentioned.
Virtanen discloses the coatings are used for vehicles, boats, ships, oil and gas pipes, and windmill blades ([0083] Virtanen). One skilled in the art would have been motivated to have coated a substrate of the substrates in Virtanen for coating that can be used effectively for the protection of substrates against corrosion. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have coated a substrate of the substrates in Virtanen.
Response to Arguments
Applicant's arguments filed 2/27/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 9-10 Remarks) the presently recited compositions now recite consisting essentially of the recited components. Stolyarov’s compositions require the use of a very particular set of dispersants to avoid therein described challenges and shortcomings. Thus, one skilled in the art would not be motivated to remove dispersants from Stolyarov’s composition. Any combination of Campbell and Stolyarov would result in a composition that requires more components than is permissible to be included in the presently claimed composition. Virtanen cannot disclose the claimed composition, and Yang does not qualify as prior art.
This argument is not found persuasive since while It is noted that the claim recites the transitional phrase “consisting essentially of”, which limits the scope of the claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic of the claimed invention. For the purposes of searching for and applying prior art, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” is construed as equivalent to “comprising” (see MPEP 2111.03).
There is no evidence of record that any additional components in the compositions of Stolyarov would materially affect the basic and novel characteristic of the claimed invention. Therefore, the claimed invention is considered to be properly suggested by Stolyarov. Therefore, there is no need to remove the dispersants in Stolyarov. With regards to Virtanen, claims 116-117 have been cancelled.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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