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 .
Response to Amendment
The amendment and/or arguments submitted on 11/13/2025 is/are being considered by the examiner.
Claims 1-6, 9-20 are pending:
Claims 7-8 are canceled
Response to Arguments
Applicant’s arguments and/or amendments, with respect to 35 USC 112b have been fully considered.
Applicant asserts, page 8-10, that the terms “about” and “substantially” are definite since one of ordinary skill in the art would understand that the terms “allows some amount of deviation” away from “exactly” the numerical value. Further, applicant asserts that the terms “about” and “substantially” are used as terms of approximation and not as terms of degree.
Rejection based on “substantially”
The office agrees with applicant that the term “substantially” is being applied as a term of approximation and not as a term of degree. Instant claim 13 uses “substantially corresponds” as a comparison between the two recited surface areas, which is a comparable claim construction to the MPEP 2173.05(b).III.D guidance that one of ordinary skill in the art would understand “substantially equal”. The rejection of record of claim 13 based on “substantially” is withdrawn.
Rejections based on “about”
The office respectfully disagrees with applicant’s conclusion. Please see the quotation from MPEP 2173.05(B).III.A below. The instant specification, prosecution history, and the prior art fails to provide any guidance as to what range is covered by the term “about” in such a way as to define the use of the term as an approximation as opposed to term of degree. The office explicitly notes that claim 9 recites “at least about 1,500 volts”, which is explicitly the claim construction indicated as invalid. This usage, in combination with the application of “about” with claimed ranges, indicates that the instant terms are used as terms of degree and not as terms of approximation. The rejections of record based on “about” are maintained.
MPEP 2173.05(b).III.A states that “However, in another case, the court held that claims reciting "at least about" were invalid for indefiniteness where there was close prior art and there was nothing in the specification, prosecution history, or the prior art to provide any indication as to what range of specific activity is covered by the term "about." Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991).”
Applicant’s arguments and/or amendments, with respect to 35 USC 103 art rejections have been fully considered and are persuasive. The 35 USC 103 art rejections of record has been withdrawn.
Independent claim 1
Amended to include the indicated allowable subject matter of old claim 8 (claims 1+7+8), and therefore overcomes the rejection of record.
Independent claim 14
Applicant asserts, page 12, that the rejection of record fails to disclosed the amended claim language of instant claim 14.
The office agrees. The office further notes that the office agreed in the interview summary dated 10/08/2025 that an amendment to include the subject matter of the agenda (instant projection subject matter corresponding to agenda item 2) would overcome the rejections of record pending an updated search.
Independent claim 18
Applicant asserts, page 13, that the rejection of record fails to disclosed the amended claim language of instant claim 18.
The office agrees. The office further notes that the office agreed in the interview summary dated 10/08/2025 that an amendment to include the subject matter of the agenda (instant projection subject matter corresponding to agenda item 3 and office suggested claim scope) would overcome the rejections of record pending an updated search.
Dependent claims 2-6, 9-13, 15-17, 19-20
Rejections of the dependent claims under 35 USC 103 are withdrawn due to dependency on their respective independent claim.
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 1-6, 9-13, 15-20 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 1
L9,10,11,11 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 2
L2,2 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 3
L2,2 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 6
L3,3 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 9
L4 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 11
L2,2 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 15
L2,2,3,3 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 16
L4,4 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 17
L5,5,6,7 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 18
L8,8,9,9 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claim 20
L4,4 “about [X]” renders the claim indefinite, as the metes and bounds of the claim are unknown, as it is unknown what to what degree of variation is or is not within the scope of “about [X]”, as two of ordinary skill in the art could reasonably come to two different scope determinations as the claim language, and the specification, fails to provide guidance to those of skill to come to a uniform determination of the claim scope.
Claims dependent on a rejected claim are rejected based on dependency.
EXAMINER'S NOTE
An interview dated 07/06/2026 was conducted with Attorney Brian Cheslek to offer an examiner’s amendment to remove the “about” recitations in the claim language in order to move the instant application to allowance. The attorney indicated that they required authorization from Applicant prior to authorizing the proposed examiner’s amendment, and that the office would be informed by the end of 07/07/2026. The office did not receive any notice from Applicant/Applicant’s Representative, and therefore has moved forward with the instant rejection.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claim 14
The prior art of record fails to anticipate or render obvious the limitations of the claim, and in particular “the coating comprises a thermo-resistive layer that comprises a polymeric portion and a nanostructure portion that includes graphene nano-platelets resulting in at least one projection in the polymeric portion of the thermo- resistive layer,” in combination with the remaining limitations of the claim.
Claim 15-17 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Claim 15-17 would be allowable over art due to dependency, however the dependent and additional 35 USC 112b rejections for the indicated above dependent claims are still pending.
Claim 1-6, 9-13, 18-20 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 1
The prior art of record fails to anticipate or render obvious the limitations of the claim, and in particular “a top layer that comprises a vinyl ester resin, a polytetrafluoroethylene, and ceramic nanoparticles, wherein the ceramic nanoparticles are present at a concentration of between about 70% by weight of the top layer and about 80% by weight of the top layer, the polytetrafluoroethylene is present at a concentration between about 6% by weight of the top layer and about 10% of the top layer, and the vinyl ester resin is present at a balancing concentration for the top layer,” in combination with the remaining limitations of the claim.
Please see Office Action dated 08/13/2025 on page 17 for further details and rational.
Claim 18
The prior art of record fails to anticipate or render obvious the limitations of the claim, and in particular “further wherein additional layers of the coating applied to a surface of the thermo-resistive layer form protuberances that are propagated through the additional layers as a result of graphene nano-platelets.” in combination with the remaining limitations of the claim.
Claims 2-6, 9-13, 19-20 would be allowable over art due to dependency, however the dependent and additional 35 USC 112b rejections for the indicated above dependent claims are still pending.
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 JOHN HUNTER JR whose telephone number is (571)272-5093. The examiner can normally be reached M-F, 9-18.
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, Ibrahime Abraham can be reached at (571) 270-5569. 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.
/JOHN S HUNTER, JR/Examiner, Art Unit 3761
Prosecution Insights