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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 27, 2026 has been entered.
Response to Amendment
The amendment filed April 27, 2026 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 Claims 13-20 remain withdrawn.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 April 27, 2026 have been considered, but they are not fully persuasive. Regarding the applicant’s arguments that:
Amendments to Claim 1 Overcome the previously set forth new matter rejection in view of 112a: The examiner agrees with this assertion. The previously set forth 112a rejection is withdrawn.
The set forth 112b rejection of Claim 1 “zirconium-based” should be withdrawn on the basis that “the coating is supported by ample guidance in the specification and is clear and definite under section 112”: The examiner respectfully disagrees with this assertion and maintains that the previously set forth 112b rejection and interpretation is appropriate on the basis that “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. While the examiner appreciates that a narrower interpretation is desired by the applicant, in view of paragraph [0098] of the applicant’s specifications, these limitations are not currently claimed. As such, the interpretation, as set forth above in view of the Broadest Reasonable interpretation of “zirconium-based” is deemed appropriate and sustained in this action.
Tabata does not teach the limitations of the independent claim as amended or remedy the deficiencies of Schiffarth in view of the amendments: The examiner agrees with this assessment. As a result, a modified rejection is provided in the section regarding claim 1 in view of Schiffarth in view of Wang.
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 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.
Claim Rejections - 35 USC § 103
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 view of Wang (CN 201214685Y):
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 wherein the coating composition is subjected to thermal treatment ( “curing procedure” Col 2 Lines 62) the applied coating composition such that the one or more zirconium compounds form a zirconium-based coating on the surface (“Zirconium Oxide” also known as Zirconia is disclosed as a component of the coating Col. 4 Line 65 and thus is part of the final coating).
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 formed from one or more zirconium compounds
However, Wang does teach a process for forming a protective coating (“coating” [002]) on an electrode where “Zirconium Oxychloride” [002] is disclosed as a part of the coating composition which is a precursor to Zirconia which suggests that a reaction to form a coating using this precursor is known in the art.
Therefore, it would be obvious to one of ordinary skill in the art to modify the art of Schiffarth to replace the preformed Zirconia as taught by Schiffarth with the Zirconium Oxychloride as taught by Wang which can inherently reacts to form a Zirconia when heated in order to “bring long service life” (Abstract) to the electrode.
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).
Alternatively: Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 201214685Y) in view of Schiffarth et al. (US Patent No. 4,063,931):
Regarding Claim 1: Wang teaches a method of protecting an electrode with a zirconium based coating (containing “Zirconium Chloride” [006]) , the method comprising: applying coating composition onto a surface of at least part of an electrode (“preparation method [012] for forming a protective “electrode coating” [006]) the zirconium-based coating composition comprising one or more zirconium compounds (“Zirconium Chloride” [006]) and a liquid carrier ( “liquid layer” [011]), and wherein the coating composition is subjected to thermal treatment ( “putting it in an oven…for drying and curing” [012]) the applied coating composition such that the one or more zirconium compounds form a zirconium-based coating on the surface, said zirconium -based coating comprising a Zirconia formed from the one or more zirconium compounds (the “Zirconium Chloride” is heated as a part of the curing process and thus will inherently react to form Zirconia from the initial compounds)
Wang does not teach that the electrode in question is “graphite containing
However, it would be obvious to one of ordinary skill in the art to replace titanium electrode of Wang with the graphite containing electrode as taught by Schiffarth et al as it has been held that graphite containing electrodes are well known in the art and substituting known equivalents for the same purpose (in this case to be coated) requires only routine skill in the art. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958)
Regarding Claim 2: Wang as modified by Schiffarth further teaches that the liquid carrier comprises water (Schiffarth “The liquid carrier, usually water” Col. 2 Lines 64-70)
Regarding Claim 3: Wang as modified by Schiffarth further teaches that the graphite-containing electrode (Schiffarth Electrode Contains Graphite Col 2 Lines 1-15) is at least partially disposed in an electric arc furnace during the applying (Schiffarth electrode is partially disposed in the electric arc furnace during coating application Col 2 Lines 1-15).
Regarding Claim 4: Wang as modified by Schiffarth further teaches that at least a portion of the applying occurs during operation of the electric arc furnace (Schiffarth Portion of applying occurs during operation of electric arc furnace Col 2 Lines 1-15).
Regarding Claim 6: Wang as modified by Schiffarth further teaches that the method further comprising inserting at least a portion of the electrode into an arc furnace after the applying (Schiffarth-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 Wang (CN 201214685Y) in further in view of Lai (US Pub No. US 2020/0119360 A1)
Regarding Claim 5: Schiffarth as modified by Wang 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 Wang 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 Wang (CN 201214685Y) in further in view of Konica (JP 5565454B2).
Regarding Claims 7 and 8: Schiffarth as modified by Wang 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 Wang 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 Wang (CN 201214685Y) n view of Ozaki (US App Pub No. 2020/0303229 A1).
Regarding Claim 9: Schiffarth as modified by Wang 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 Wang 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 Wang (CN 201214685Y) in view of Waki (US Pub. No. 2007/0231610 A1):
Regarding Claim 10: Schiffarth as modified by Wang 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 Wang 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 Wang (CN 201214685Y) in view of Guangdong University (CN App Pub. CN110247014A):
Regarding Claim 11: Schiffarth as modified by Wang 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 Wang according to the limitations taught by Guangdong University in order to achieve “excellent long-term…stability” [23]).
Regarding Claim 12: Schiffarth as modified by Wang 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 Wang according to the limitations taught by Guangdong University in order to improve the performance of the protective coating.
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 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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/SOLAN OLIVA/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761
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