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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 25, 2025 has been entered.
Response to Amendment
The amendment filed November 25, 2025 have been entered. Claims 1-20 remain pending in the application. Claims 13-20 remain withdrawn. Claim 1 is amended. Claims 2-12 are as previously presented. In response to the applicant’s arguments and amendments, a more detailed action is provided.
Response to Arguments
Applicant’s arguments filed November 25, 2025 have been considered, but they are not fully persuasive. Regarding the applicant’s arguments that:
The originally presented 112a rejection of the formerly amended claim 1 “curing the applied coating composition such that the one or more zirconium compounds react to form a zirconium-based coating on the surface” on the basis of new matter should be withdrawn: The examiner appreciates that support for the claims must be drawn from the specifications in their entirety and concedes that one of ordinary skill in the art might infer the reaction between zirconium compounds occurs to form zirconia, with support as cited by the applicant in paragraph [0070] of the specifications. However, the paragraph in question has no mention of the reaction resulting in the formation of zirconia occurring by means of “curing” as presented in the previously amended claims to which the argument is directed. The specifications also lack support for the reaction occurring by means of “thermally cur[ing]” as presented in currently amended claim 1. As a result, a revised 112a rejection on the basis of new matter is provided to address the new limitations of the amendments.
Schiffarth is not appropriate primary reference as “zirconia filler particles do not constitute a “zirconium-based coating”: The examiner respectfully disagrees with this basement. The limitation of Claim 1 “zirconium-based” is interpreted by the examiner by the broadest reasonable interpretation in light of the applicant’s disclosure. Zirconium-based coating is defined in this manner (in light of paragraph [0069] of the applicant’s specifications which states “zirconium-based coating composition comprises, consists of, or consists essentially of one or more zirconium compounds and a carrier liquid such as water or other aqueous carrier” [0069]) as a coating comprising a carrier liquid and a zirconium compound. These limitations are taught by Schiffarth and rejection in view of Schiffarth remains appropriate. Since no additional definitions as to what constitutes “zirconium-based” in terms of amount are claimed, the original grounds of rejection are sustained. A modified rejection is provided to address the additional amendments. Additionally, the claim language “zirconium-based” introduces an issue of indefinite language that is addressed below.
“There is no teaching of “zirconia formation” in Riesop: The examiner respectfully disagrees. As presented previously in prosecution, Riesop explicitly teaches that the reaction of the zirconium compound “after drying creates a Zirconia” [0014]. HoweHowever, in light of the applicants concerns regarding the applicability and viability of the modification of Schiffarth via Riesop at high temperatures, a revised rejection is provided in view of Tabata (US 5,073,689).
Riesop is not analogous art: The examiner respectfully disagrees. MPEP Section 904.01(c) states that “The determination of what arts are analogous to a particular claimed invention… depends upon the necessary essential function or utility of the subject matter covered by the claims, and not upon what it is called by the applicant.” In this case, Riesop uses the reaction of Zirconium precursors into Zirconia for the same function of providing a protective coating for the invention as presented in the previous office action and takes advantage of the reaction to strengthen that coating. HoweHowever, in light of the applicants concerns regarding the applicability and viability of the modification of Schiffarth via Riesop at high temperatures, a revised rejection is provided in view of Tabata (US 5,073,689).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Regarding Claim 1: Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The amended claim 1 adds the additional limitation “the one or more zirconium compounds react to form a zirconium-based coating including zirconia derived from the zirconium compounds when the coating composition is thermally cured” that is not truly supported by the specifications. In the specification paragraph [0082], the applicant presents the following:
“After curing (e.g. drying), any of the zirconium-based coating compositions disclosed herein becomes a zirconium-based coating 18 (Figs. 2 and 3). After curing (e.g. drying), any of the pre-coating compositions become a pre-coating 20 (Fig. 3). The composition of the resulting coating in some modes of practice is expected to be similar or the same as the composition of the coating composition minus the liquid carrier that is lost during curing. However, without being limited by theory, it is believed at least a portion of the one or more zirconium compounds and/or the one or more yttrium compounds decompose under the conditions of high temperature experienced in an arc furnace, perhaps to form one or more zirconium oxide compounds and/or one or more yttrium oxide compounds, respectively…”
However, this section, although it states that “the composition of the resulting coating in some modes of practice is expected to be similar or the same as the composition of the coating composition minus the liquid carrier that is lost during curing”, does not support that the zirconium based-coating reacts to form a zirconia when it is cured. It only implies that the zirconium-based coating may initially possess zirconia and thus present as zirconia upon curing. It only presents theory of a potential reaction from a hypothetical perspective which also fails to support the amended claim limitation.
Additionally, the specification paragraph [0070] presents the following: “In some embodiments, at least one of and in some embodiments each and every zirconium compound of the one or more zirconium compounds is a compound that thermally decomposes, hydrolyses, and/or otherwise reacts to form a zirconia at a temperature between 60 *C and 2,000 *C”
This paragraph identifies the reaction itself of Zirconium compounds into Zirconia by thermal means but makes no mention of curing or thermally curing as claimed.
In light of the specification as a whole, the limitation “the one or more zirconium compounds react to form a zirconium-based coating including zirconia derived from the zirconium compounds when the coating composition is thermally cured” constitutes new matter as the reaction of a zirconium compound into a zirconia by means of “thermally curing” is not explicitly supported by the applicant’s disclosure as exposure to high temperature (thermal exposure) and “curing (e.g. drying)” are presented in distinct contexts and not the same catalytic force for the reaction.
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 1 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. The claim includes the limitation “zirconium-based” which presents an issue of indefiniteness. It is not clear what amount or percentage of zirconium would constitute a coating being “zirconium-based.” For example, would a coating with “20% wt% constitute a coating being “zirconium-based? Would 40wt%? In the absence of a specific definition beyond what is described in the specification [0069], the limitation is interpreted by broadest reasonable interpretation as a coating containing a Zirconium compound.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Schiffarth et al. (US Patent No. 4,063,931) in in view of Tabata (US 5,073,689):
Regarding Claim 1: Schiffarth teaches a method of protecting an arc furnace electrode (Method for protection of graphite electrode Col. 2 Lines 1-24), the method comprising: applying coating composition onto a surface of at least part of a graphite-containing electrode (Method for protection of graphite electrode where material is fused to or applied to the electrode to form a coherent coating of protective material Col. 2 Lines 1-24), the zirconium-based coating composition comprising one or more zirconium compounds (“Zirconium” is disclosed as a component of the coating Col 4 Lines 64-67) and a liquid carrier ( coating may be “mixed with a liquid” Col. 2 Lines 64-70 in which the liquid serves as the liquid carrier), and curing ( “curing procedure” Col 2 Lines 62) the applied coating composition such that the one or more zirconium compounds react to form a zirconium-based coating on the surface (“Zirconium” is disclosed as a component of the coating Col. 4 Line 65 and reacts upon curing to form a zirconium-based coating on the surface).
Schiffarth does not teach that the one or more zirconium compounds react to form a zirconia when the coating composition is thermally cured and that said zirconium-based coating comprising a zirconia.
However, Tabata does teach a “zirconia” layer for reinforcing a heating element in which the one or more zirconium compounds (“zirconium compound” Col 7 Line 25) react to form a zirconia (“convert into zirconia” Col 7 Line 25-26) by thermally (“firing” Col 7 Line 21) curing (“drying” Col 7 Line 20)) and that said zirconium-based coating comprising a zirconia (“after drying forms a zirconia” [0014])
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention to modify the invention of Schiffarth with the reaction by which the zirconium compounds react to form a zirconia as described by Tabata in order to produce an electrode coating with “excellent current-passing exothermic characteristics … and resistance to thermal shock” (Col 2 Lines 19-23)
Regarding Claim 2: Schiffarth further teaches that the liquid carrier comprises water (“The liquid carrier, usually water” Col. 2 Lines 64-70)
Regarding Claim 3: Schiffarth further teaches that the graphite-containing electrode (Electrode Contains Graphite Col 2 Lines 1-15) is at least partially disposed in an electric arc furnace during the applying (electrode is partially disposed in the electric arc furnace during coating application Col 2 Lines 1-15).
Regarding Claim 4: Schiffarth further teaches that at least a portion of the applying occurs during operation of the electric arc furnace (Portion of applying occurs during operation of electric arc furnace Col 2 Lines 1-15).
Regarding Claim 6: The method of claim 1, the method further comprising inserting at least a portion of the electrode into an arc furnace after the applying (Portion of applying occurs before inserting into of electric arc furnace Col 2 Lines 1-15).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Schiffarth et al. (US Patent No. 4,063,931) and Tabata (US 5,073,689) in further in view of Lai (US Pub No. US 2020/0119360 A1)
Regarding Claim 5: Schiffarth as modified by Tabata does not teach that the graphite-containing electrode comprises a curved surface or that the applying of the coating comprises spraying.
However, Lai teaches that the graphite-containing electrode comprises a curved surface (“curved surface” is explicitly disclosed in [0073] Line 4), and wherein the applying comprises spraying (Spraying is explicitly disclosed as an application method for the coating [0019]) the protective coating composition onto at least a portion of the curved surface.
Therefore, it would have been obvious to one of ordinary skill in the art to modify the invention of Schiffarth as modified by Tabata using the limitations taught by Lai in order to streamline the application process and improve adhesion of the coating.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Schiffarth et al. (US Patent No. 4,063,931) and Tabata (US 5,073,689) in further in view of Konica (JP 5565454B2).
Regarding Claims 7 and 8: Schiffarth as modified by Tabata does not teach that the zirconium-based coating composition comprises one or more of zirconium oxychloride and, zirconium acetylacetonate.
However, Konica teaches that the zirconium-based coating composition comprises zirconium acetylacetonate (“zirconium acetylacetonate” is explicitly disclosed as a component of the coating Pg. 4. [11]) and therefore teaches the limitations of claims 7 and 8.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Schiffarth as modified by Tabata to include the limitations as taught by Konica in order to improve the adhesion of the compound to the electrode and improve protection for said electrode.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Schiffarth et al. (US Patent No. 4,063,931) and Tabata (US 5,073,689) in view of Ozaki (US App Pub No. 2020/0303229 A1).
Regarding Claim 9: Schiffarth as modified by Tabata does not teach that the zirconium-based coating composition further comprises one or more yttrium compounds.
However, Ozaki teaches that the protective coating composition further comprises one or more yttrium compounds (“Yttrium” is explicitly disclosed as a component of the coating Pg. 8 [0108])
Therefore, it would have been obvious to one of ordinary skill in the art to modify the invention of Schiffarth as modified by Tabata according to the limitations taught by Ozaki in order to improve the protective properties of the coating.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Schiffarth et al. (US Patent No. 4,063,931) and Tabata (US 5,073,689) in view of Waki (US Pub. No. 2007/0231610 A1):
Regarding Claim 10: Schiffarth as modified by Tabata does not teach that concentration of the one or more zirconium compounds in the zirconium-based coating composition is about 0. 1 mg/mL to about 10 mg/mL.
However, Waki teaches that the concentration of the one of the compounds in the one or more zirconium compounds in the zirconium-based coating composition is about 0. 1 mg/mL to about 10 mg/mL (Coating component has a preferred concentration of 0.1 mg/mL which reads on the limitations of the claim Pg. 8 [0101]).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the invention of Schiffarth as modified by Tabata according to the limitations of Waki in order to achieve the desired protective properties of the coating.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Schiffarth et al. (US Patent No. 4,063,931) and Tabata (US 5,073,689) in view of Guangdong University (CN App Pub. CN110247014A):
Regarding Claim 11: Schiffarth as modified by Tabata does not teach that prior to applying the coating composition onto the surface, applying a bond coating composition onto the surface of at least a part of a graphite-containing electrode, wherein the bond coating composition comprises phytic acid.
However, Guangdong University teaches a protective method in which that prior to applying the coating composition onto the surface (the step in which the surface is “coated” [19]), applying a bond coating composition onto the surface, the bond coating composition comprises phytic acid (“binder” which comprises “Phytic Acid” is disclosed as being comprised on the surface Pg. 2 [11]).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the invention of Schiffarth as modified by Tabata according to the limitations taught by Guangdong University in order to achieve “excellent long-term…stability” [23]).
Regarding Claim 12: Schiffarth as modified by Tabata does not teach that the zirconium-based coating composition further comprises phytic acid.
However, Guangdong University teaches that the coating composition further comprises phytic acid (“Phytic acid” is explicitly disclosed a as a component of the coating Pg. 2 [11]).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the invention of Schiffarth as modified by Tabata according to the limitations taught by Guangdong University in order to improve the performance of the protective coating.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOLAN OLIVA whose telephone number is (571-)272-2518. The examiner can normally be reached Monday-Thursday 7:00-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at (571) 270-8241. The fax phone number for the organization where this application or proceeding is assigned is 571-270-5569.
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/SOLAN OLIVA/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761