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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 May 2026 has been entered.
Response to Amendment
The amendment filed 15 May 2026 is accepted. Claims 1, 2, 4–11, 13, 14, 19, 20, 24, 25, 30, 32, 35 and 36 are pending, wherein claims 19, 24, 25, 30, and 32 stand withdrawn with traverse. Claims 3, 12, 15–18, 21–23, 26–29, 31, 33 and 34 have been canceled by this or a previous amendment.
In the Final Rejection mailed 05 December 2025, claim 21 was objected to for an informality. The cancelation of claim 21 renders this objection moot.
Claims 1, 2, 4–11, 13, 14, 20, 34 and 35 were rejected under 35 U.S.C. 103. Claims 20 and 35 have been amended, warranting new grounds of rejection. Claim 34 has been canceled, rendering the rejection of claim 34 moot. No amendments have been made to overcome the 103 rejections of the other listed claims.
Claim 36 has been introduced as a new claim depending from claim 1. It finds support in at least pg. 11, ll. 32–34 of the originally filed disclosure, and thus does not contain new matter. Entry of claim 36 is accepted.
Claim Objections
Claim 36 is objected to because of the following informalities: “passed on total weight of the composition” should read “based on the total weight of the composition” (emphasis added). Appropriate correction is required.
Claim Interpretation
The following previously cited claim interpretations are pertinent to the present rejection, and thus shall be repeated for clarity of the record:
Claim 1 recites a composition for coating an overhead conductor. Pursuant to MPEP 2111.02, preamble statements reciting intended use limitations are not given patentable weight unless the intended use conveys specific structural or compositional limitations. For purposes of examination, any sufficiently similar composition shall be considered analogous to the present invention, regardless of whether or not the composition is explicitly taught to be applied toward coating an overhead conductor.
Claims 13 and 14 each recite optional limitations. The broadest reasonable interpretation of these claims is determined in view of the positively recited limitations, not the optional limitations. If the limitations are not required to establish the metes and bounds of the claimed invention, then they are also not required to render the claims anticipated or obvious over the prior art.
Claim 35 recites the limitation “wherein the composition does not comprise metallic zinc”. Metallic zinc is considered to be distinct from zinc ions, and thus a person having ordinary skill in the art would understand this limitation to solely limit the inclusion of metallic zinc, while further understanding that zinc ions may still be part of the recited composition. This is further supported by page 13, ll. 1–20, which recite a plurality of pigments that include ionic zinc. Therefore, claim 35 will be interpreted as only excluding metallic zinc, and not ionic zinc.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4–10, 13, 14 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al. (WO 2019088155 A1, hereinafter “Fukuda”, previously cited).
Regarding claim 1, Fukuda teaches an anti-rust composition with excellent corrosion resistance (see paragraph 0001), which is capable of being used to coat an overhead conductor (see the above Claim Interpretation section), comprising:
at least 70 weight percent of a binder which comprises a solvent and, inter alia, organically modified silica (see paragraph 0028 teaching the composition as comprising organic solvents and alkyl silicate condensate, which is an organically modified silica; see paragraph 0034 teaching the content of alkyl silicate condensate as being 10–30 wt.% based on the non-volatile content of the composition; see paragraph 0081 teaching the content of solvent as being 25–50 wt.%; solvent, being a volatile component, is not included in the total mass of the non-volatile content of the composition; the non-volatile components comprise 50–75 wt.% of the composition [i.e., 100 wt.% minus the solvent content], which means the content of silica relative to the total composition mass is actually 10–30 wt.% of 50–75 wt.%, or 5–22.5 wt.%; Applicants claim a total binder concentration of at least 70 wt.%, wherein the binder comprises a solvent and silica, so Fukuda’s equivalent binder concentration is 30–72.5 wt.% [solvent concentration + silica concentration]; see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Fukuda further teaches an anti-corrosion agent, wherein the anti-corrosion agent is selected from, inter alia, an inhibitor pigment and a sacrificial pigment (see paragraph 0055 teaching rust-inhibitor pigments including zinc phosphate and calcium phosphate; also see paragraph 0037 teaching the use of metallic zinc powder as a sacrificial pigment). Fukuda therefore teaches each and every limitation of claim 1. Thus, claim 1 is rendered prima facie obvious.
Regarding claim 2, Fukuda teaches the composition of claim 1, and further teaches the limitation wherein the composition comprises 5 to 25 wt.% of, inter alia, organically modified silica (see paragraph 0034 teaching alkyl silicate condensate as preferably comprising 10–30 wt.% based on the non-volatile content; also see the above rejection of claim 1, wherein this concentration was determined to be equivalent to 5–22.5 wt.% relative to the total composition mass, which falls within the claimed range; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 4, Fukuda further teaches the limitation wherein the binder comprises a solvent and silica or organically modified silica (see paragraph 0028 teaching the use of organic solvents and alkyl silicate condensate, which is an organically modified silica; while Fukuda does not explicitly group these components together as a “binder”, they are present in the overall composition and fulfill the same role as the claimed binder).
Regarding claim 5, Fukuda fails to explicitly teach the limitation wherein the composition comprises 1 wt.% or less of water. Fukuda does not explicitly teach the use of water in the composition, but it is used to synthesize the alkyl silicate condensate (see paragraph 0099). 5 parts by mass are mixed with the silica precursor to form component A (the alkyl silicate condensate), and then component A is mixed with component B at an approximately 1:1 ratio (see Table 3), which means the water content can be no more than 2.5 wt.%. However, since the silica precursor undergoes hydrolysis to form the sol-gel coating, the water is being consumed to drive the reaction. Therefore, while Fukuda fails to explicitly teach residual water content, it can be surmised that the amount of remaining water is negligible. This is further supported by Fukuda’s statement that zinc in the composition may react with water to form white rust (see paragraph 0072), which teaches away from having residual water since the formation of rust would hinder the anti-corrosive capabilities of the coating. Thus, while Fukuda is silent as to the residual water content, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ensure there is less than 1 wt.% residual water in order to ensure the coating functions as intended.
Regarding claim 6, Fukuda further teaches the limitation wherein the composition comprises at least 80 wt.% binder (see the above rejection of claim 1, wherein Fukuda is shown to teach 30–72.5 wt.% binder, which is sufficiently close to the claimed value to support a prima facie obviousness rejection; see MPEP 2144.05(I) regarding the obviousness of overlapping ranges; also see MPEP 2144.05(II), which states differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence of criticality of the claimed range).
Regarding claim 7, Fukuda further teaches the limitation wherein the composition comprises from 2 to 6 wt.% anti-corrosion agent (Fukuda teaches a variety of agents that can serve as anti-corrosive agents [see paragraph 0028], but specifically refers to pigment C as including anti-rust pigments [see paragraph 0051]; Fukuda teaches embodiments in which pigment C is present in an amount of from 0.1 to 8 wt.%, relative to the mass of the nonvolatile content [see paragraph 0054]; as discussed above, the non-volatile content ranges from 50–75 wt.% of the overall composition, and so the concentration of pigment C relative to the entire composition is 0.1–8 wt.% of 50–75 wt.%, or 0.05–6 wt.%, which overlaps with the claimed range; see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 8, Fukuda further teaches the limitation wherein the binder comprises a solvent (see paragraph 0078 teaching a plurality of organic solvents), but fails to explicitly teach the content of silica relative to the precursor. Fukuda teaches the reaction of a precursor (ethyl silicate 40, paragraph 0099) in the formation of alkyl silicate condensate, but fails to indicate the degree to which the reaction proceeded. However, Fukuda’s composition is substantially similar to what is claimed, and Applicants’ specification indicates the hydrolysis reaction only proceeds until it is 70–95% complete (see specification, pg. 22, ll. 6–9), and further indicates that 100% completion would result in a solid film of silica which could not be applied as a coating. A person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Fukuda’s composition must still be flowable, given its subsequent use as a coating (see paragraph 0109). Furthermore, although Fukuda is silent as to the amount of precursor remaining, the similarity to the claimed composition would strongly suggest that the reaction proceeds to the same degree as claimed, i.e., 70–95 wt.%, with 5–30 wt.% precursor remaining, which overlaps with the claimed ranges of 70–90 wt.% silica relative to 10–30 wt.% residual precursor (see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 9, Fukuda further teaches the limitation wherein the inhibitor pigment is selected from the group consisting of, inter alia, zinc phosphate and/or calcium phosphate (see paragraph 0055; although Fukuda does not explicitly use the term “inhibitor pigments” when describing these components, they are inherently serving this role, as a chemical and its properties are considered inseparable [see MPEP 2112.01(II)]).
Regarding claim 10, Fukuda further teaches the limitation wherein the sacrificial pigment is selected from the group consisting of, inter alia, metallic zinc (see paragraph 0037 teaching the use of metallic zinc dust; while Fukuda does not explicitly use the term “sacrificial pigment”, zinc dust is inherently serving this role, as a chemical and its properties are considered inseparable [see MPEP 2112.01(II)]).
Regarding claims 13 and 14, Fukuda further teaches the limitation wherein the anti-corrosion agent is selected from (as claimed in claim 13), or is (as claimed in claim 14), an inhibitor pigment (see paragraph 0055 teaching the use of components that are considered inhibitor pigments; also see the above rejection of claim 9, wherein Fukuda is shown to teach several of the claimed inhibitor pigments; see the above Claim Interpretation section regarding optional limitations).
Regarding claim 36, Fukuda fails to explicitly teach the limitation wherein the composition comprises the solvent in an amount of 60 to 80 weight percent based on the total weight of the composition (see paragraph 0081 teaching the solvent concentration as 25–50% by mass). However, absent any evidence of criticality of the claimed range, differences in concentration will not generally support the patentability of subject matter encompassed by the prior art (see MPEP 2144.05(II)). A person having ordinary skill in the art could have reasonably arrived at the claimed solvent concentration through routine optimization, and thus claim 36 is prima facie obvious in view of Fukuda.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuda as applied to claim 1 above, and further in view of Zhang et al. (J. Coat. Technol. Res. 2016, 13(1), 11–29, hereinafter “Zhang”, previously cited).
Regarding claim 11, Fukuda teaches the composition of claim 1, but fails to explicitly teach the composition as containing a superhydrophobic agent. Zhang teaches a review of superhydrophobic coatings with anti-corrosive properties (see generally abstract), wherein modified ZnO nanoparticles were mixed with superhydrophobic polysiloxane (see pg. 17, col. 2, ll. 9–18 teaching the use of fluorinated polysiloxanes). Fukuda teaches a preferential use of zinc oxide (see paragraph 0061), and Zhang teaches the mixture of modified zinc oxide with superhydrophobic polysiloxane to achieve superior anticorrosive performances (see pg. 17, col. 2). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Fukuda could be modified according to Zhang to achieve a composition with enhanced anticorrosive properties. The motivation supporting this combination most closely aligns with KSR Rationale C, which states it is prima facie obvious to use a known technique (Zhang’s incorporation of superhydrophobic fluorinated siloxanes) to improve similar devices, methods or products (Fukuda’s anticorrosive coating composition) in the same way (both references teach anticorrosive coatings comprising zinc oxide, and there is no teaching in either reference to suggest that the two disclosures are incompatible, so the results of the proposed modification are predictable). The proposed modification arrives at the claimed invention, and thus claim 11 is rendered prima facie obvious.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuda and Hack et al. (US 2012/0021232 A1, hereinafter “Hack”).
Regarding claim 20, Fukuda teaches a coating comprising, inter alia, organically modified silica, and an anti-corrosion agent, wherein the anti-corrosion agent is selected from, inter alia, an inhibitor pigment (see Fukuda, paragraph 0028, wherein component A is organically modified silica and component D is an inhibitor pigment; also see the above rejection of claim 1).
Fukuda fails to explicitly teach the limitation wherein the coating comprises a matrix of organically modified silica. Fukuda does teach the use of organically modified silica, which would assemble into a 3D network to some degree, but it is unclear if this network expands the entire coating as a matrix would, or if there are only localized matrices in the dried coating. Applicants state that the claimed matrix phase is formed by a sol-gel process (see specification, pg. 6, ll. 28–30), and although Fukuda does not explicitly refer to a sol-gel synthesis, alkyl silicate condensate is produced via a process that appears to be a sol-gel synthesis (see paragraph 0099 teaching the dissolution and hydrolysis of precursors; the fact that the resulting product is called “condensate” indicates that the hydrolyzed precursors polymerize into a 3D network). Based on this, it can be surmised that Fukuda’s composition is likely a 3D matrix.
Hack additionally teaches an anti-corrosive coating for metal substrates (see generally abstract), wherein the coating is explicitly taught to be a sol-gel matrix comprising SiO2, Al2O3, and ZrO2 (see Hack, paragraph 0034; two of these compounds are explicitly recited in the composition of Fukuda as well: see Fukuda, paragraph 0051 teaching the use of silica [SiO2] and aluminum oxide [Al2O3]). Furthermore, Hack teaches the sol-gel matrix as being anti-corrosive, containing corrosion-inhibiting silane compounds (see paragraph 0027). Hack also teaches the covalent bonds within the sol-gel matrix as providing higher stability and more uniform distribution of anti-corrosive components (see paragraph 0017). A person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Fukuda can be modified according to Hack to explicitly use a full 3D matrix. The motivation supporting this combination most closely aligns with KSR Rationale G, which states it is prima facie obvious for some teaching, suggestion or motivation in the prior art (Hack’s teaching of higher stability and more uniform dispersion within a full 3D sol-gel matrix) to lead a person having ordinary skill in the art to modify the prior art reference or to combine prior art reference teachings (Fukuda’s at least partial 3D sol-gel product) to arrive at the claimed invention, if there is a reasonable expectation of success (both references teach substantially similar compositions to be used for the very same purpose, and there is no teaching in either reference to suggest that they are incompatible, so one of ordinary skill in the art could have arrived at the claimed invention with a reasonable expectation of success). The proposed modification is further motivated by MPEP 2144.06, which states it is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. As Fukuda and Hack both teach substantially similar coatings produced by a sol-gel process to be used as an anticorrosive protective coating on metal substrates, it is prima facie obvious to combine their teachings to arrive at a composition to be used as an anticorrosive protective coating on a metal substrate.
Regarding the limitations wherein the coating has a thickness of from 30–100 microns and wherein the coating comprises at least 70 wt.% matrix, Hack teaches a coating thickness of from 0.1–100 µm (see Hack, paragraph 0068; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges), and further teaches the composition as comprising, at a minimum, the sol-gel matrix and a corrosion-inhibiting silane compound (see paragraph 0017), wherein the silane compound can be present in a preferable amount of from 1 to 20% by weight (see paragraph 0059), meaning the matrix comprises the remaining 80–99 wt.% (also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges for the broader ranges taught in paragraph 0059). A person having ordinary skill in the art before the effective filing date of the claimed invention, previously motivated to modify Fukuda according to Hack to achieve a full 3D sol-gel matrix, would be further motivated to use Hack’s disclosed coating thickness and matrix proportions. The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Fukuda’s coating thickness and matrix proportions) for another (Hack’s coating thickness and matrix proportions) to obtain predictable results (the motivation to modify Fukuda’s coating composition structure according to Hack has already been established, so the remaining modifications are motivated simply by substituting Hack’s compositional proportions and application thickness, neither of which are expected to be incompatible with Fukuda’s teachings, so the results of the proposed modification are predictable). Fukuda, as modified by Hack, arrives at the claimed invention. Claim 20 is therefore rendered prima facie obvious.
Claims 1 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Hack.
Regarding claim 1, Hack teaches an anti-corrosive composition (see generally abstract), which is capable of coating an overhead conductor, comprising:
at least 70 wt.% of a binder which comprises a solvent and silica (see paragraph 0017 teaching the composition as comprising, at a minimum, the sol-gel matrix and a corrosion-inhibiting silane compound; see paragraph 0059 teaching the silane compound as being present in a preferable amount of from 1 to 20% by weight, meaning the matrix comprises the remaining 80–99 wt.%; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges for the broader ranges taught in paragraph 0059; see paragraph 0034 teaching the inclusion of silica [SiO2] in the sol-gel coating; see paragraph 0038 teaching various organic solvents to be used with the sol-gel; also see paragraphs 0076 and 0077 teaching the sol-gel as being in a mixed solvent of ethanol and isopropanol when applied to a substrate); and,
an anti-corrosion agent, wherein the agent is selected from, inter alia, an inhibitor pigment (see paragraph 0064 teaching various corrosion-inhibiting non-silane compounds [the anti-corrosive silanes taught by Hack do not generally fall into any of the claimed genera, so the non-silane compounds are applied to this limitation]; in particular, Hack teaches the use of zinc 5-nitroisophthalate, strontium aluminum tripolyphosphate, and zinc phosphate, all of which are named by applicants as inhibitor pigments [see claim 9 of the instant application]; compounds recognized as inhibitor pigments will inherently always be able to function as inhibitor pigments in comparable compositions, pursuant to MPEP 2112.01).
Regarding claim 35, Hack teaches the composition of claim 1. Hack further teaches the limitation wherein the composition does not include zinc metal. Hack teaches the use of zinc as a potential substrate to be coated, but zinc metal is not a component of the composition. Therefore, Hack teaches the limitation wherein the composition does not include metallic zinc.
Allowable Subject Matter
Claim 21 was previously indicated to be allowable over the prior art (see Final Rejection mailed 05 December 2025). In the amendment filed 15 May 2026, claim 21 was canceled, and the allowable limitation was incorporated into claim 20. However, based on the Examiner’s present interpretation of Fukuda and Hack in view of claim 20, the at-issue subject matter is no longer considered allowable for the reasons set forth in the above rejection of claim 20. If Applicants can persuasively traverse the rejection of claim 20 through argument or amendment, the subject matter of original claim 21 will once again be allowable over the cited art, and thus claim 20 will be allowable over the cited art, subject to further search and consideration.
Response to Arguments
Applicant's arguments filed 15 May 2026 have been fully considered but they are not persuasive.
Applicants argue that Fukuda does not teach a composition having at least 70% of a binder, as acknowledged by the previous Office Actions. However, as articulated in the present Action, and in Applicants’ Remarks, Fukuda can reasonably be interpreted as teaching up to 65% binder. The Examiner finds this to be sufficiently close to the claimed binder concentration to support a prima facie obviousness rejection, as articulated in the above rejection. Applicants disagree, stating that “nowhere in Fukuda’s fairly vague teachings that can potentially be analyzed to give a maximum binder percent of 65% would have led a skilled worker to a composition that comprised the binder at 70% or more as recited in claim 1”. This is not persuasive. As an initial note, the Examiner does not find Fukuda’s teachings to be vague as they pertain to the at-issue limitation. Fukuda teaches a binder composition of up to 65%, as acknowledged by the Applicants in their present Remarks, and as articulated by the Examiner in the above rejection. Applicants base their arguments on Fukuda’s teachings of Pigment Volume Concentrations, and state that most pigments have densities exceeding 1 g/cm3, and thus a PVC of 60–70 vol.% is equal to more than 60–70 wt.%. They argue that the expected mass percentage of the pigments would be closer to 90 wt.%, which would only leave 10 wt.% for Fukuda’s Component A, and thus a total binder concentration of 60 wt.%. Firstly, the “closer to 90 wt.%” argument appears to be speculation, not a statement based on any explicit teachings in Fukuda. Secondly, as explained in the above rejection, MPEP 2144.05(II) states that concentration differences will not support the patentability of subject matter encompassed by the prior art, absent any evidence of criticality. Applicants have not established criticality of their claimed range. Their Specification, pg. 10, ll. 24–27 clearly states a preferable binder concentration as low as 45 wt.%. Although Fukuda fails to teach the claimed minimum of 70 wt.%, a person having ordinary skill in the art can reasonably arrive at the claimed invention through routine optimization. Therefore, this argument is not persuasive.
Applicants argue that Fukuda fails to meet the limitation of claim 7 wherein the anti-corrosion agent is present in an amount of from 2–6 wt.%, as Fukuda teaches zinc powder as an anticorrosion agent, which is used in amounts of at least 20 wt.% in exemplary embodiments. This is not persuasive. As an initial note, Fukuda teaches a plurality of agents that can be considered anti-corrosive beyond zinc powder. Zinc powder is classified as Component B in Fukuda’s composition, but Component C can also include anti-rust pigments (wherein anti-rust is considered to overlap in scope with anti-corrosive), and Component D can further include anti-corrosive conductive pigments (see Fukuda, paragraphs 0026 and 0029 teaching the various components; see paragraph 0055 teaching anti-rust pigments in Component C; see paragraph 0061 teaching zinc oxide as a preferable pigment in Component D, and see Claim 9 of the present invention listing zinc oxide as a suitable anti-corrosive pigment). So the argument about zinc being used in amount of at least 20 wt.% is a narrow interpretation of Fukuda that ignores the relevant teachings. As explained in the above rejection of claim 7, Fukuda teaches from 0.5–6 wt.% of anti-rust pigments, relative to the total composition weight, which overlaps with the claimed range.
Applicants argue that Hack does not teach a binder comprising silica and solvent, as required by claim 1, because Hack teaches silica nanoparticles in paragraph 0034, not a silica-based binder. This is not persuasive. Claim 1 recites a binder which comprises a solvent and, inter alia, silica. The transitional phrase “comprises” allows for the inclusion of other components. Hack teaches an alkoxysilane condensate binder (see paragraph 0028), silica (see paragraph 0034), and a solvent (see paragraph 0038). Although the binder itself is not silica-based, that is not a requirement of the claim. The claim merely requires that a binder is present, and that it comprises at least silica and a solvent. Therefore, Hack is considered to teach this limitation.
Applicants argue that claim 35 excludes metallic zinc, and thus the Examiner’s arguments that the claim is interpreted as including zinc ions is not well founded, as ions are not metallic solids. This is not persuasive. This is a misreading of the Examiner’s Claim Interpretation. Claim 35 clearly excludes metallic zinc, but the Examiner sought to clarify whether or not this is meant to also exclude ionic zinc. Applicants are correct in arguing that metallic and ionic zinc are fundamentally different; Applicants are allowed to act as their own lexicographers, however, and thus the Examiner must ensure that the exact meaning of their claim language is clear based on the Specification. As the Examiner previously pointed out, Applicants’ Specification includes species which contain ionic zinc. Therefore, claim 35 is interpreted as excluding only metallic zinc, but not excluding ionic zinc. The Examiner did not conclude that Claim 35 includes zinc ions; the Examiner concluded that claim 35 only excludes metallic zinc, while the remainder of the invention may still include zinc ions.
Applicants argue that newly introduced claim 36 requires 60–80 wt.% of solvent, while Fukuda only allows a maximum of 50 wt.% solvent, and thus Fukuda teaches away from the claimed invention. This is not persuasive. For a reference to “teach away” from a particular embodiment, the reference must explicitly criticize, discredit, or otherwise discourage investigation into the invention claimed (see MPEP 2145.X.D.1). The fact that Fukuda only teaches up to 50 wt.% solvent does not discourage a person having ordinary skill in the art from trying higher concentrations of solvent, as Fukuda does not teach any detrimental effects of using more than 50 wt.% solvent. Therefore, Fukuda does not teach away from the claimed invention, and a person having ordinary skill in the art could have still arrived at the claimed invention through routine optimization.
The Examiner believes that all arguments pertinent to the present rejection have been sufficiently addressed. If Applicants feel that any of the Examiner’s rebuttals are unclear or misinterpret the nature of their arguments, they are invited to schedule an interview with the Examiner using the AIR link in the below Conclusion section.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached Tue, Thu, Sat, Sun from 7 AM to 5 PM.
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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
