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 Amendments and Arguments
Applicant’s amendments and arguments, filed February 18 2026, with respect to the rejection(s) under 35 U.S.C. 103 in view of Ito et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant argues that Ito’s disclosure of a perfluoropolyether does not meet the claimed perfluoroalkoxy polymer powder as the instant specification discloses that the claimed material is a pulverulent, high-melting thermoplastic polymer powder with a defined particle size and melting point (instant specification para. [0014]-[0015]). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., particle size, melting point, and wherein coatings may be formed by melting and fusing the individual polymer particles) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is the position of the Office that the powder component (Abstract) which may be a fluorine resin powder ([0040]) or a powder treated with a perfluoropolyether ([0043]) reads on the breadth of the claimed perfluoroalkoxy polymer powder as claimed.
Applicant also argues that the claimed particle-level wetting and adhesion behavior would not be present inherently based on the teachings of Ito. Applicant points to the instant specification para. [0011] which discloses that the film-forming liquid “functions as a bonding agent between the perfluoroalkoxy polymer particles and the carbon black particles” and, as a result, the particles of the perfluoroalkoxy polymer powder “are not uniformly coated with carbon black but instead also have uncoated places” which enables the composite material to be charged in an electric field. However, it remains the position of the Office the portions of the instant specification cited by Applicant do not identify a feature that results in the claimed effect outside of the presence of the claimed components in the claimed amount. That is, the instant specification (pg. 4, ln. 27-36) suggests that the presence of the film-forming liquid in an amount sufficient to wet the particles of perfluoroalkoxy polymer powder promotes adhesion of the particles of the carbon black powder to the surface of the perfluoroalkoxy polymer powder. As Ito teaches that the composition comprises a higher alcohol having 12 to 20 carbon atoms ([0062]) (i.e., a film-forming liquid which is preferably an unbranched or branched aliphatic hydrocarbon compound having a polar functional group according to the instant specification pg. 5, ln. 10-11) in an amount (0.01 wt% to 2 wt% ([0063])) that substantially overlaps with the claimed range, the effect applicant discloses and/or claims is found to be necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Applicant argues that Comparative Example 1a of the instant specification presents evidence that a mixture of perfluoroalkoxy polymer powder and carbon black without the claimed film-forming liquid is unsuitable for forming layers on metal surfaces. However, this is not persuasive as it teaches that the composition comprises a higher alcohol having 12 to 20 carbon atoms ([0062]) (i.e., a film-forming liquid which is preferably an unbranched or branched aliphatic hydrocarbon compound having a polar functional group according to the instant specification pg. 5, ln. 10-11) in an amount (0.01 wt% to 2 wt% ([0063])) that substantially overlaps with the claimed range. It is also noted that the composition of Ito does not appear to be unsuitable for electrostatic spraying as Ito explicitly contemplates that the composition may be sprayed electrostatically (Abstract, [0184]). Accordingly, the rejection of record in view of Ito et al. is maintained.
Claim Rejections - 35 USC § 103
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.
Claims 1, 2, and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (US20200155423, hereinafter referred to as “Ito”).
As to Claim 1: Ito teaches a coating composition for electrostatic spraying applications comprising:
a powder component (Abstract) which may be a fluorine resin powder ([0040]) or a powder treated with a perfluoropolyether ([0043]) (i.e., a perfluoroalkoxy polymer powder),
said powder component may also comprise a carbon black ([0034]), and
a higher alcohol having 12 to 20 carbon atoms ([0062]) (i.e., a film-forming liquid which is preferably an unbranched or branched aliphatic hydrocarbon compound having a polar functional group according to the instant specification pg. 5, ln. 10-11),
Ito further teaches that the higher alcohol which reads on the claimed film-forming liquid is present in an amount of 0.01 wt% to 2 wt% ([0063]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Ito suggests, that the overlapping portion is a useable range for an amount of an alcohol-based film-forming liquid for coating composition intended for electrostatic spraying of fluoropolymer and carbon black components to form a coating with, inter alia, suppressed color unevenness ([0063]).
Ito does not teach wherein “the film-forming liquid at least partially wets the surfaces of the particles of the perfluoroalkoxy polymer powder, and the particles of the carbon black powder adhere to the film-forming liquid and/or the particles of the perfluoroalkoxy polymer powder”
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the instant specification pg. 4, ln. 27-36 suggests that the presence of the film-forming liquid in an amount sufficient to wet the particles of perfluoroalkoxy polymer powder promotes adhesion of the particles of the carbon black powder to the surface of the perfluoroalkoxy polymer powder). Therefore, the claimed effects and physical properties, i.e. the film-forming liquid at least partially wets the surfaces of the particles of the perfluoroalkoxy polymer powder, and the particles of the carbon black powder adhere to the film-forming liquid and/or the particles of the perfluoroalkoxy polymer powder, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 2: Ito teaches the composite material of claim 1 (supra).
Ito teaches that the composition may comprise a branched or unsaturated higher alcohol (Abstract and [0062]), wherein said alcohol group is construed to meet the claimed “unbranched or branched aliphatic hydrocarbon compound having a polar functional group.”
As to Claim 4: Ito teaches the composite material of claim 1 (supra).
Ito further teaches that the carbon black may be an inorganic coloring pigment ([0034]) (i.e., a pigment black).
As to Claim 5: Ito teaches the composite material of claim 1 (supra).
Ito further teaches that component (c) which may be carbon black ([0034]) may be present in an amount of 0.1 mass% or more and 15 mass% or less in the spraying composition ([0049]), which overlaps with the claimed range. This range overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Ito suggests, that the overlapping portion is a useable range for an amount of carbon black within an electrostatic spraying composition suitable for functioning as a pigment additive.
As to Claim 6: Ito teaches the composite material of claim 1 (supra).
Ito further teaches that the powder component may comprise a carbon black ([0034]), which is construed as having a higher conductivity than that of the fluororesin of Ito. It is noted that the instant specification notes that it is known that carbon black powders are electrically conductive (pg. 4, para. 3). Accordingly, a person having ordinary skill in the art would interpret the carbon black powder additive of Ito as meeting the claimed limitation of wherein the composite material comprises “at least one additive having a thermal conductivity higher than the thermal conductivity of the perfluoroalkoxy polymer.”
Allowable Subject Matter
Claims 3, 7, 15, and 16 are allowed.
The following is a statement for the indication of allowable subject matter: the closest prior art of record, Ito et al. (US20200155423, hereinafter referred to as “Ito”), does not teach or suggest wherein the coating composition is pulverulent and free-flowing. Rather, Ito contemplates a coating/spraying composition for electrostatic spraying applications that comprises 30 to 98 wt% ([0024]) of a substance (a) chosen from the group consisting of water, an alcohol, and a ketone ([0017]). Accordingly, it is the position of the Office that the composition of Ito is not pulverulent or free-flowing based on the finding that including (a) in an amount taught by Ito would form a liquid solution of the components, rather than a pulverulent, free-flowing powder. Furthermore, Ito explicitly contemplates that the higher alcohol ([0062]), which reads on the claimed film-forming liquid based on the definition provided by the instant specification pg. 5, ln. 10-11 (i.e., an unbranched or branched aliphatic hydrocarbon compound having a polar functional group), exhibits a chain length of C12-C20 ([0062]). Therefore, while the composition of Ito reads on the breadth of the claimed film-forming liquid as recited in claims 1 and 2, the higher alcohol of Ito (i.e., an alcohol having a C12-C20 alkyl chain) does not meet the limitations with regard to the film-forming liquid as recited in claims 3, 15, and 16. Furthermore, the prior art as a whole does not motivate the use of an alcohol having an alkyl chain length below C12-C20 (i.e., 1-octanol, aliphatic C3-C10 alcohol, octanol, or heptanol) as an alternative to the higher alcohol of Ito or teach that an such alcohols (i.e., 1-octanol, aliphatic C3-C10 alcohol, octanol, or heptanol) would be suitable equivalents known for the same purpose as the C12-C20 alcohols of Ito.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767