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 .
Priority
A copy of WO 2022/109281, the publication of PCT/US2021/060108 filed November 19, 2021 is attached. Applicant’s claim to priority of US Provisional 63/116,434 filed November 20, 2020 is acknowledged.
Claim Status
This Office Action is in Response to Applicant’s Remarks and Claim Amendments filed February 2, 2026. In the reply filed July 21, 2025 applicant elected Group I and Species B, claims 1-8 and 10 for prosecution. Claims 9 and 11-18 have a status of “withdrawn”. However, the status identifier of these withdrawn claims in the claims filed February 2, 2026 is “(Previously presented)”.
Claims Filing Date
February 2, 2026
New
19, 20
Withdrawn
9, 11-18
Under Examination
1-8, 10, 19, 20
Withdrawn Abstract Objection
The following objection is withdrawn due to abstract amendment:
Use of legal phraseology, “comprising”.
Response to Remarks filed February 2, 2026
Applicant's arguments filed February 2, 2026 have been fully considered but they are not persuasive.
Butcher in view of Hajdu
The applicant argues Hajdu fails to disclose a powder having an intermediate layer and an outer layer as recited in claim 1 (Remarks p. 11 para. 2).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Butcher in view of Hajdu discloses a powder (Butcher 1:5-9, 3:24-31, 37-38, 51, 4:18) having a copper intermediate layer that advantageously activates or catalyzes electroless deposition of nickel thereon (Hajdu 2:20-26, 3:22-31) and an outer layer of electrolessly deposited nickel (Butcher 2:33-44, 3:24-31, 37-38, 51, 4:18; Hajdu 3:32-33, 54-65). The coating of Hajdu achieves the same property of applicant’s claimed coating of microwave shielding (applicant’s specification [0002]; Hajdu 1:6-13, 2:15-17, 20-32, 41-43). “Expected beneficial results are evidence of obviousness of a claimed invention.” MPEP 716.02(c)(II).
The applicant argues the binder coating in Hajdu is paint applied to a solid substrate enclosure surface such that there is no teaching to modify the magnetic powder of Butcher by applying a paint/fluid organic binder with at least 30% finely divided metallic particles dispersed therein to the graphite cores in order to electrolessly deposit a copper or nickel conductive coating (Remarks para. spanning pp. 11-12).
Both Butcher and Hajdu are directed to coatings that include an outer nickel layer (Butcher 3:24-31, 37-38, 51, 4:18; Hajdu 3:32-33, 54-65). The copper primary layer of Hajdu advantageously activates or catalyzes the electroless deposition of nickel thereon (Hajdu 3:22-26). This advantage is a property of the copper composition of the layer, which supports the obviousness of a copper intermediate layer between the graphite particle and outer nickel layer of the electrically conductive composite powder of Butcher.
Butcher discloses the powder (2:25) uses metal coating techniques such as vapor deposition, chemical precipitation, electroless deposition, etc. (2:40-44), such that one of ordinary skill in the art would understand how to apply a copper intermediate layer to graphite powder to achieve the advantageous effect. In support of the position that it is the copper material that results in the advantage and not the argued applied paint, Hajdu discloses exposing the (deposited copper) metal particles to expose them (3:33-38) to prepare the surface (3:51-53) for nickel electroless deposition (3:54-57).
Furthermore, claim 1 line 5 recites “an intermediate layer coated onto the core of particles”. In arguendo, if the intermediate coating of Butcher were formed by the metallic particle paint of Hajdu, the resulting dispersed metallic particles in between the graphite core and nickel coating read on an intermediate layer.
The applicant argues the fluid organic binder layer having at least 30% finely divided metallic particles has not been identified as having the same electrical resistivity as a coating of the metal (Remarks p. 12 para. 2).
The pending rejection and associated advantages are over the disclosure that copper is a suitable metal to activate or catalyze electroless deposition of nickel thereon (Hajdu 3:22-26). Therefore, the layer deposited between the graphite particle and nickel on the powder of Butcher is copper. This advantage does not require the fluid organic binder argued by applicant.
For the above cited reasons the rejection over Butcher in view of Hajdu 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.
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Butcher (US 3,807,966) in view of Hajdu (US 4,663,240).
Regarding claim 1, Butcher discloses an electrically conductive composite powder (1:5-9), comprising:
a core of particles formed from a material (graphite) having a low density of < 5 g / cm3 (about 2.09 to 2.23 g/cm3) and a high dielectric constant of > 10 (more than 10) (3:24-31, 37-38, 51, 4:18); and
an outer layer (nickel-coated graphite powder) comprising a material having a high corrosion resistance of > -0.2V (about -0.2 to -0.1 V) galvanic potential in seawater as measured via ASTM G82 and oxidation resistance comparable to one of Ni or better (Ni has comparable oxidation resistance to Ni) (3:24-31, 37-38, 51, 4:18).
The limitation of the electrically conductive composite powder being for improving EMI shielding performance has been considered and determined to recite the purpose or intended use of the claimed invention. It does not result in a structural difference between the claimed invention and the prior art, such that the prior art is capable to performing the intended use as recited in the preamble and meets the claim. MPEP 2111.02(II).
Butcher is silent to an intermediate layer coated onto the core of particles, wherein said intermediate layer has an electrical resistivity < 5.90x108 Ohm*m at 200C, and an outer layer that is deposited onto the intermediate layer.
Hajdu discloses improving EMI (RFI) shielding performance (1:6-13, 64-68) using an intermediate layer coated onto a core, wherein said intermediate layer has an electrical resistivity < 5.90x10-8 Ohm*m at 200C (copper, 1.68x10-8 Ohm*m) (2:20-26, 3:22-31) and an outer layer (nickel) that is deposited onto the intermediate layer (copper) (3:32-33, 54-65).
It would have been obvious to one of ordinary skill in the art in the composite powder of Butcher to include an intermediate layer of copper between the graphite core and the nickel outer layer to activate or catalyze the electroless deposition of nickel thereon (Hajdu 3:22-32).
The claimed density, dielectric constant, galvanic potential, oxidation resistance, and electrical resistivity have been considered and determined to recite material properties. The materials of the prior art (graphite core, Butcher 3:24-31, 37-38, 51, 4:18; copper intermediate layer, Hajdu 2:20-26, 3:22-31; nickel outer layer, Butcher 3:24-31, 37-38, 51, 4:18 Hajdu 3:32-33, 54-65) are the same as the materials of applicant’s invention (see below claim 2 and 3 rejections and applicant’s specification [0023]), such that the claimed material properties are satisfied by the disclosure of the prior art.
Regarding claim 2, Butcher discloses the core of particles is at least one selected from the group consisting of graphite, titanium dioxide and silicon carbide (graphite) (3:24-31, 37-38, 51, 4:18).
Regarding claim 3, Butcher in view of Hajdu discloses the intermediate layer is copper (Hajdu 2:20-26, 3:22-31).
Regarding claim 4, Butcher discloses the core of particles has an average particle diameter (D50) of 0.01-100 um (about 0.5 microns to about 200 microns) (3:28-29). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 5, Butcher in view of Hajdu discloses the intermediate layer (copper) has a thickness of 0.05 to 4 um (36 microinches (0.9 um), 126 microinches (3.2 um), 112 microinches (2.8 um), 65 microinches (1.7 um), 11 microinches (0.3 um)) (Hajdu 4:65, 5:15,29, 6:2, 20).
Regarding claim 6, Butcher in view of Hajdu discloses the intermediate layer has a thickness of 1 to 2 um (65 microinches (1.7 um)) (Hajdu 6:2).
Regarding claim 7, Butcher discloses the outer layer (nickel) has a thickness of 100 to 500 nm (about 0.1 microns to about 5.0 microns, about 100 nm to about 5000 nm) (3:29-31). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 8, the claim is directed to the “electrically conductive composite powder” of claim 1. The limitation of the intermediate layer being applied via plating, autoclave, or gas-phase technology has been considered and determined to recite a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability if based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP 2113(I). In the instant case, Butcher in view of Hajdu discloses an intermediate layer (Hajdu 2:20-26, 3:22-31) that reads on the product of claim 1, such that claim 8 is satisfied.
Regarding claim 10, the claim is directed to the “electrically conductive composite powder” of claim 1. The limitation of the outer layer being applied via pack diffusion of an element or elements into the outer layer has been considered and determined to recite a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability if based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP 2113(I). In the instant case, Butcher discloses an outer layer (nickel-coated graphite powder) (3:24-31, 37-38, 51, 4:18) that reads on the product of claim 1, such that claim 10 is satisfied.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Butcher (US 3,807,966) in view of Hajdu (US 4,663,240) as applied to claim 1 above, and further in view of Fustukian (US 3,914,507).
Regarding claim 19, Butcher in view of Hajdu is silent to the outer layer material having a high corrosion resistance of > -0.2V galvanic potential in seawater as measured via ASTM G82 and oxidation resistance better than nickel.
Fustukian discloses nickel-chromium alloy coated graphite composition powder (8:19-20).
It would have been obvious to one of ordinary skill in the art for the Ni coating of Butcher to be a nickel-chromium alloy for corrosion resistance of the core material (Fustukian 2:15-17) and to prevent graphite oxidation (Fustukian 2:22-23).
The outer layer material having a high corrosion resistance of > -0.2V galvanic potential in seawater as measured via ASTM G82 and oxidation resistance better than nickel has been considered and determined to recite a property of the outer layer material. The prior art discloses an outer layer material (nickel-chromium alloy; Fustukian 8:19-20) that is within the scope of applicant’ s invention (claim 20, applicant’s specification [0022]-[0023]), such that the claimed properties of the outer layer material having a high corrosion resistance of > -0.2V galvanic potential in seawater as measured via ASTM G82 and oxidation resistance better than nickel naturally flow from the disclosure of the prior art.
Regarding claim 20, Butcher in view of Hajdu and Fustukian discloses the outer layer comprises a nickel chromium alloy, nickel molybdenum, nickel silicon alloy or tungsten (nickel-chromium alloy) (Fustukian 8:19-20).
Related Art
Tzeng (US 4,678,716)
Tzeng discloses an electrically conductive composite powder (1:50-55) for improving EMI shielding performance (1:5-8, 56-60), comprising: a core of particles of an aluminum silicon alloy (2:1-3, 3:45, 4:11-20); an intermediate layer coated onto the core of particles, wherein said intermediate layer has an electrical resistivity < 5.90x108 Ohm*m at 20°C (intermediate layer is copper) (2:4-6, 3: 44-48); and an outer layer that is deposited onto the intermediate layer, said outer layer comprising a material having a high corrosion resistance of > -0.2V galvanic potential in seawater as measured via ASTM G82 and oxidation resistance comparable to one of Ni or better (outer layer such as nickel can be used) (2:7-10).
Kitagawa (JP H10-088317 machine translation)
Kitagawa discloses improving EMI shielding performance ([0001]) with an intermediate layer (first layer of copper) with a thickness of 0.05 to 4 um, claim 5, and 1 to 2 um, claim 6, (0.5 to 2 um) and an outer layer (second layer of nickel) with a thickness of 100 to 500 nm (0.1 to 0.5 um) (0.2 to 1.0 um) ([0007]-[0008]).
Kawasumi (US 4,309,457)
Kawasumi discloses graphite powder in the center, a Cu coating layer, and an outer layer of Ag (5:17-33).
Malshe (US 2010/0047546)
Malshe discloses metal-coated non-metallic nano/micro particles ([0014]) with a very thin layer of copper deposited on the surface followed by deposition of nickel because for deposition of nickel a surface which is electrically conducting would be better ([0035]).
Tamaki (US 2015/0047878)
Tamaki discloses an electroconductive particle with an electroconductive layer of copper and a surface layer of nickel or nickel alloy ([0014], [0026]-[0027], Fig. 1), where nickel is hard and copper has low specific resistance ([0018]) and the particle (core) is a resin ([0028]). Tamaki discloses this prevents a decrease in conductivity performance in a storage environment by preventing oxidation/sulfidation and it prevents corrosion/migration in a voltage application use environment ([0035]).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
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/STEPHANI HILL/Examiner, Art Unit 1735