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
Claims 1–9 are pending, wherein claims 5–8 stand withdrawn with traverse.
The Specification has been amended to overcome an objection to paragraphs 0012 and 0013. The objection to the Specification is herein withdrawn.
Claims 2–4 have been amended to overcome objections to the claim language. The objections of claims 2–4 is herein withdrawn.
Claim 9 has been amended to overcome an indefiniteness rejection under 35 U.S.C. 112(b). The 112(b) rejection of claim 9 is herein withdrawn.
Claim 1 has been amended to recite a new limitation which is not explicitly recited in Applicant’s original disclosure. The Examiner acknowledges that this amendment does not constitute new matter; from the outset, Applicants have referred to their invention as “self-priming”, which a person of ordinary skill in the art would understand to mean “not requiring a separate primer layer”. Under MPEP 2163.07, rephrasing the original disclosure is permissible, and does not constitute new matter. The amendment to claim 1 is therefore accepted, but it does not overcome the rejection of claim 1 under 35 U.S.C. 103, as will be explained below.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 recites, “further comprising and Ti”. This is presumed to be a typographical error, because “and” is a conjunctive phrase that would imply two or more species, but only one species (Ti) is recited. Based on Applicant’s Specification, the Examiner believes the claim is only meant to recite “further comprising Ti”, which is how the claim will be interpreted herein.
Appropriate correction is required.
Claim Interpretation
Claim 1 has been amended to recite the limitation “wherein the composition is configured to adhere directly to a metallic substrate without application of a distinct primer composition or primer layer”. The specification does not describe any sort of “configuration” step beyond the simple mixing of recited components and application of the composition to a metallic substrate. Accordingly, the Examiner interprets claim 1 as reciting a self-priming composition which is inherently configured to adhere to a metallic substrate, which means any comparable self-priming composition is also inherently configured to adhere to a metallic substrate.
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:
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 1–4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US-9169402-B2, hereinafter “Lin”, previously cited) in view of Li et al. (CN-108067407-B, hereinafter “Li”, previously cited) and Lee et al. (KR-20160100762-A, hereinafter “Lee”, previously cited).
Regarding claim 1, Lin teaches a coating composition (see generally abstract) which comprises silica sol (col. 1, ll. 54–55), silane (col. 1, l. 55), water (col. 1, ll. 17–19), and a filler comprising silica (col. 2, ll. 62–64; silica is SiO2). Note that the limitations in the preamble, “self-priming” and “non-stick”, are presumed to be met by Lin due to the compositions having the same components. The amounts of each component are discussed below.
Lin fails to explicitly teach the addition of an antibacterial agent, however the inclusion of antibacterial agents in coating compositions is known. Li, for example, teaches a non-stick coating which comprises silver, zinc, copper, or zinc oxide as antibacterial agents (see paragraph 0006). Both Lin and Li teach their coating composition as being applicable to cookware surfaces (see Lin, col. 3, ll. 65–68 continuing to col. 4, ll. 1–2; also see Li, paragraph 0005), so it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Lin by adding an antibacterial agent, such as one from the group taught by Li, as both compositions are in the same field of endeavor. This aligns with KSR Rationale A, which states that it is prima facie obvious to combine prior art elements according to known methods to yield predictable results. As Lin and Li both teach coatings for cookware, and as the inclusion of antibacterial agents in such coatings is known in the art, a person of ordinary skill in the art before the effective filing date of the claimed invention would have had sufficient motivation to modify Lin to include an antibacterial agent as taught by Li, with a reasonable expectation of success due to the fact that Li already demonstrates a successful coating comprising an antibacterial agent.
Regarding the amounts of each component, Lin teaches ranges in parts by weight, from which a percentage can be calculated (see the below table). Lin fails to explicitly teach an amount of water, but does teach that it is present (col. 1, ll. 17–19). Lee teaches a similar non-stick coating (see generally abstract) intended to be used for cookware (see paragraph 0043 and Figure 1) which comprises, inter alia, silica sol, silane, and water (see paragraph 0022). Lee further teaches compositional percentages of each component, and the amount of water disclosed (0.1–10 wt.%; see paragraph 0025) will be taken as a reference for the amount of water used in the composition of Lin.
Component (Lin’s composition as modified by Li and Lee)
Minimum Amount (parts by weight)
Maximum Amount (parts by weight)
Example Embodiment (parts by weight)
Example Embodiment (wt.%)
Target range (from claim 1)
Reference
Silica Sol
100
100
100
30.9
30–35%
Lin
Silane
50
100
100
30.9
20–35%
Lin
Water
Not stated
Not stated
32.4
10.0
10–15%
Lee
Catalyst (Acetic Acid)
0.3
1
0.3
0.1
N/A
Lin
Titanium Powder
5
20
5
1.5
N/A
Lin
Filler (SiO2)
30
50
50
15.4
15–20%
Lin
Silicone Oil
1
5
1
0.3
N/A
Lin
Antibacterial Agent
Not stated
Not stated
5
1.5
1–5%
Li
Pigment
30
40
30
9.3
N/A
Lin
Total
---
---
323.7
100.0
---
---
In the above table, weight percentages of each component disclosed by Lin are calculated by dividing the parts by weight of the component by the total parts by weight (e.g., 100 parts Silica Sol ÷ 323.7 parts total = 30.9 wt.%). All of the above ranges for the components disclosed by Lin can be found in the abstract. The amount of water, as disclosed by Lee, was selected to fall within the range taught by Lee, i.e., 0.1–10 wt.% (see Lee, paragraph 0025). Similarly, the amount of antibacterial agent, as disclosed by Li, was selected to fall within the range taught by Li, i.e., 0.8–10 wt.% (see Li, paragraph 0006). Claim 1 recites a composition comprising the given components, which allows for other components disclosed in Lin’s composition (e.g., silicone oil). As can be seen in the above table, the composition can be adjusted within the disclosed weight ranges to achieve the claimed composition.
There is sufficient motivation to modify the composition of Lin by utilizing an antibacterial component as disclosed by Li, and by utilizing water in an amount disclosed by Lee. As discussed previously, Lin, Li, and Lee all teach non-stick coatings for cookware, which means all three compositions are in the same field of endeavor. Using Lin as a primary reference, a person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to add an antibacterial agent as disclosed by Li, because this is common practice in food-safe coatings, and furthermore would have found it obvious to utilize water in the amount disclosed by Lee because Lin already teaches the use of water, and merely failed to disclose how much of it is used in the composition. The modification of Lin by Lee would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention because Lin and Lee both teach a water-based coating for cookware comprising silica sol and silane, wherein Lee teaches an amount of water in the composition while Lin is silent as to this limitation.
Claim 1 further recites the limitation “wherein the composition is configured to adhere directly to a metallic substrate without application of a distinct primer composition or primer layer.” This limitation is considered to be inherently met by the applied references. Lin explicitly teaches the application of the disclosed coating to metal substrates, including cookware (see col. 3, ll. 60–68 continuing to col. 4, ll. 1–2). Lin does not teach the use of a primer. As Applicants have claimed the composition to be self-priming, any equivalent composition should also inherently be capable of self-priming. The combination of Lin, Li and Lee arrives at the claimed composition, which must therefore have the same properties as the claimed composition, including the ability to adhere to a metal substrate without a primer (see MPEP 2112.01(II): If the composition is physically the same, it must have the same properties). The combination of references as described arrives at the claimed invention, thus rendering it obvious.
Regarding claims 2–4, Lin, as modified by Li and Lee, teaches a self-priming, non-stick, antibacterial coating as claimed in claim 1. Lin further teaches the limitation wherein the composition further comprises pigment (as claimed in claim 2), acetic acid (as claimed in claim 3), and titanium (as claimed in claim 4) (see Lin, Abstract). Similar to the above table, the amounts of each can be adjusted to fall within the claimed ranges, however it is necessary to further modify the composition of Lin by drawing from Lee in order to render the composition obvious, because claims 2–4 depend from claim 1 and therefore inherit its limitations. Lin teaches the amount of silica sol as being fixed at 100 parts (see abstract), while Lee teaches the amount of silica sol as being 10–30 wt.% (see paragraph 0025). Lin also teaches the amount of pigment as being 30–40 parts, while Lee teaches 15–35 wt.% pigment (see paragraph 0025). Finally, the amount of acetic acid disclosed by Lin (0.3–1 part by weight) will always fall below the claimed weight percentage range, but it is sufficiently close to the claimed value to render it obvious under MPEP 2144.05(I), paragraph 2, which states that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. As seen in the below table, Lin teaches up to 1 part by weight acetic acid, which comprises 0.5 wt.% of the composition. This is sufficiently close to the claimed minimum value of 1.0 wt.% to render the claim obvious, as the difference in properties between 0.5 wt.% acetic acid and 1.0 wt.% acetic acid is expected to be negligible, absent any evidence of criticality or unexpected results.
Component (Lin’s composition as modified by Li and Lee)
Minimum Amount (parts by weight)
Maximum Amount (parts by weight)
Example Embodiment (parts by weight)
Example Embodiment (wt.%)
Target range (from claims 1–4)
Reference
Silica Sol
100
100
60
30.0%
30–35%
Lee
Silane
50
100
40
20.0%
20–35%
Lin
Water
Not stated
Not stated
20
10.0%
10–15%
Lee
Catalyst (Acetic Acid)
0.3
1
1
0.5%
1–5%
Lin
Titanium Powder
5
20
5
2.5%
1–5%
Lin
Filler (SiO2)
30
50
30
15.0%
15–20%
Lin
Silicone Oil
1
5
1
0.5%
N/A
Lin
Antibacterial Agent
Not stated
Not stated
3
1.5%
1–5%
Li
Pigment
30
40
40
20.0%
20–25%
Lee
Total
---
---
200
100%
---
---
In the above table, weight percentages of each component disclosed by Lin are calculated by dividing the parts by weight of the component by the total parts by weight (e.g., 40 parts Silane ÷ 200 parts total = 20.0 wt.%). All of the above ranges for the components disclosed by Lin can be found in the abstract. The amounts of silica sol, water, and pigment, as disclosed by Lee, was selected to fall within the ranges taught by Lee (see Lee, paragraph 0025). Similarly, the amount of antibacterial agent, as disclosed by Li, was selected to fall within the range taught by Li, i.e., 0.8–10 wt.% (see Li, paragraph 0006). Claims 2–4 recite compositions comprising the given components, which allows for other components disclosed in Lin’s composition (e.g., silicone oil), as well as components that are not disclosed in Lin’s composition (e.g., antibacterial agent). As can be seen in the above table, the composition can be adjusted within the disclosed weight ranges to achieve the claimed composition.
The composition of Lin, as modified by Lee and Li, renders obvious all of the claimed components and their prescribed amounts. As discussed previously, there is sufficient motivation to combine these references because all three teach non-stick coatings for cookware, meaning they are all in the same field of endeavor. 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 Lin could be modified according to the compositional amounts disclosed by Lee, since both teach silica-sol-based non-stick coatings, and further modified to use an antibacterial agent as disclosed by Li, since this is known in the art and in the same field of endeavor. The proposed modifications to the compositional amounts align with KSR Rationale B, which states that it is prima facie obvious to simply substitute one known element for another in order to obtain predictable results. In the instant case, the silica sol, water, and pigment disclosed by Lin are simply substituted for the silica sol, water, and pigment disclosed by Lee; the components are the same, but the substitution reflects the compositional amounts of each. This substitution would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention because Lin and Lee both teach comparable compositions directed towards the same field of endeavor, and there would be a reasonable expectation of success because both references teach the use of the same components. The combination of references arrives at the claimed invention, thus rendering it obvious.
Regarding claim 9, Lin, as modified by Li and Lee, teaches an article selected from the group consisting of inter alia cookware and household tools, wherein the article is coated with a surface coating comprising the composition of claim 1 (see Lin, col. 3, ll. 65–68 continuing to col. 4, ll. 1–2, teaching the application of the coating to pans and snow shovels, which align with cookware and household tools, respectively). It is also noted that Li and Lee teach such compositions as being applied on cookware (see Li, paragraph n0001; see Lee, paragraph 0038). The modification of Lin by Li and Lee arrives at the composition of claim 1, as discussed in the above rejection of claim 1, and Lin teaches the application of such coating compositions to articles as claimed in claim 9, thus rendering claim 9 obvious.
Response to Arguments
Applicant's arguments filed 04 February 2026 have been fully considered but they are not persuasive.
Applicants argue that the Examiner failed to provide reasoning to combine references. This is not found to be persuasive. In the non-final rejection dated 04 August 2025, the Examiner clearly stated that Lin, Li and Lee are considered to be within the same field of endeavor, because all three references teach non-stick coatings for cookware. The motivation to combine these references stems from the fact that a person of ordinary skill in the art before the effective filing date of the claimed invention would have understood such combinations to be obvious. MPEP 2144(I) states that rationale to modify or combine references does not need to be explicitly stated in the prior art. The Examiner indicated that the modification of Lin by Li would have been obvious because the inclusion of antibacterial agents in cookware coatings is known in the art. The Examiner further indicated that the modification of Lin by Lee would have been obvious because both references teach a similar water-based coating, and Lee merely teaches the amount of water where Lin is silent. Nevertheless, in the above rejections, the Examiner has explicitly indicated the rationales used to justify the combination of references in order to clarify the record.
Applicants argue that none of the references teach or suggest eliminating the primer layer entirely. This is not found to be persuasive. As discussed in the above rejection of claim 1, Lin does not teach a primer layer at all. Lee also does not appear to teach a primer layer. Furthermore, amended claim 1 recites the composition as being “configured to adhere directly”. For prior art to anticipate or render obvious this limitation, it needs to teach a composition that is similarly configured to adhere directly; it does not need to explicitly teach the exclusion of a primer layer. The proposed modification of Lin by Li and Lee arrives at the claimed composition, so it should inherently be “configured” in the same way the claimed composition is. Lin’s composition comprises the same components as claimed in claim 1, except for the antibacterial agent, which is not expected to affect self-priming characteristics of the coating. Lin does not teach the use of a primer, and presumably, Lin’s composition is already inherently capable of self-priming because it comprises the same components as the claimed composition. Applicant’s argument seems to be based on the assumption that all non-stick cookware coatings require a primer, but this is not the case.
Applicants argue that there is no reasonable expectation of success. This is not found to be persuasive. As discussed in the above rejection of claim 1, the inclusion of antibacterial agents in cookware coatings is known in the art. A person of ordinary skill in the art before the effective filing date of the claimed invention seeking to modify Lin to include an antibacterial agent as taught by Li would have had a reasonable expectation of success because such combination is already known in the art. Similarly, the modification of Lin by Lee would have had a reasonable expectation of success because Lin already teaches the inclusion of water, and Lee merely teaches an amount of water in a comparable composition. None of the proposed modifications would have been expected to fundamentally alter the properties of the coating in such a way that it could no longer be used for its intended purpose.
Applicants argue that the references do not disclose or suggest the amended limitation. This is not found to be persuasive. As discussed previously, Lin does not disclose the use of a primer layer, and the combination of Lin, Li and Lee arrives at the claimed composition, which must inherently have the claimed self-priming properties based on Applicant’s disclosure.
Finally, Applicants argue that the non-final rejection is based on impermissible hindsight. This is not found to be persuasive. As stated in MPEP 2145(X)(A), “[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” The Examiner relied on three references within the same field of endeavor which all properly antedate the filing date of the claimed invention. All three references (Lin, Li and Lee) teach the limitations that arrive at the claimed invention, and the motivation to modify and combine the references as needed has been explained in the above claim rejections. This means that a person of ordinary skill in the art before the effective filing date of the claimed invention could have reasonably arrived at the claimed invention without using applicant’s disclosure as a “roadmap”.
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 Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, T, Th, F 6:30-4:30.
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/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731