DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The amendment filed on November 20, 2025 has been entered in the above-identified application. Claims 1 and 19 are amended. Claim 8 is canceled. Claims 1-7 and 9-20 are pending and under consideration.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
3. Claims 1-7 and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Heinzt et al. (US 2010/0126981 A1) in view of Arps et al. (US 2011/0021899 A1).
Heinzt et al. disclose an electrically conductive coating composition is provided for use on aircraft and other substrate surfaces (equivalent to the article transparent to radiofrequency (RF) signals as recited in the claimed invention) to prevent the formation of ice or to melt ice. In cold weather conditions, ice may build up on the surfaces of vehicles, aircraft, and other structures. The buildup of ice on the surfaces of aircraft during flight or while on the ground is of particular concern as ice may accumulate on airfoil surfaces, radomes (meeting the limitations of claim 10), engine inlets, windshields, and the like, resulting in increased weight and drag, an increased demand on engines, and decreased lift. Even a small buildup of ice on the wings and other surfaces of the aircraft can adversely affect flight stability, thus impacting safety. The polymer in the coating (equivalent to the top coat as recited in claim 1 and meeting the limitation that the topcoat comprises a polymer material)
is selected so as to render the surface of the substrate icephobic. By "icephobic," it is meant that the ability of ice to adhere to the substrate surface is reduced. The polymer preferably has hydrophobic properties (meeting the limitations of claim 4) and is selected from a fluoropolymer or a silicone. The conductive coating composition may comprise from about 0.001 to about 5 wt % of the nanomaterial (equivalent to the nanoparticles dispersed throughout the topcoat of meeting the concentration limitations as recited in claim 1). In another embodiment of the invention, a substrate having a resistively heatable film thereon is provided, which film comprises an electrically conductive coating composition comprising a nanomaterial selected from carbon nanotubes, metal nanorods, and functionalized metal nanoparticles. The metal nanoparticles may be functionalized with monomers that undergo condensation or polymerization. The monomer may be linked to the metal nanoparticle through covalent or non-covalent interaction between the monomer and the metal. The hardness scale may be used to determine the appropriate functional group for linking a metal to a monomer. Noble metals such as gold (meeting the limitations of claim 19), silver, and copper are soft and interact strongly with thiols, phosphines, amines, and thiocyanates. The substrate having the film thereon is preferably selected from metal, glass, polymers, elastomers, ceramics, aluminum composites, and carbon fiber composites (meeting the limitations of claim 9). In one embodiment, the substrate may further include a primer coating on the substrate, where the resistively heatable film overlies the primer coating (equivalent to the primer applied to and in physical contact with the substrate and meeting the limitation that the topcoat is applied to and in physical contact with the primer layer). The primer coating preferably comprises an epoxy-based or polyurethane-based coating (meeting the limitations of claim 3) and functions to provide better bonding between the coating composition and substrate. (See Abstract and paragraphs 0001, 0002, 0008, 0011, 0014-0017, 0021, 0025, 0034, 0070, 0071). With regards to the property limitation that the article is transparent to radiofrequency (RF) signals, the Examiner takes the position that such property limitations are inherent in the materials taught by Heinzt et al. given that the chemical composition of the materials and the structure of the article as taught by Heinzt et al. and that of the claimed invention are identical. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In this case, the prior art composition is identical to that of the claimed invention and the new use, new function or unknown property which is inherently present (i.e., the coated article is transparent to radiofrequency (RF) signals and radiofrequency (RF) signals cause the heating of the nanoparticles - induced by the RF signals) in the prior art does not make the claims patentable.
Heinzt et al. doesn’t teach that the nanoparticles are formed from iron oxide.
However, Arps et al. disclose an electrically conductive coating composition that includes a polymeric mixture and an electrically conductive material dispersed within the polymeric mixture. In one embodiment, the electrically conductive material includes inorganic conductive fillers and examples of suitable metals include such as metal micro or nanoparticles, including but not limited to silver, gold, nickel, copper, iron oxide, tin, and mixtures and combinations thereof. In one embodiment, the electrically conductive inorganic filler is dispersed within the conductive coating composition. The amount of inorganic conductive filler included in the coating composition can vary, depending on the need to have sufficient conductive material for the formation of conductive "bridges" within the polymeric matrix and balanced on the other hand with potential adverse impact on the mechanical properties of the coating composition (see Abstract and paragraph 0064).
Accordingly, it would have been obvious to one having ordinary skill in the art to replace the gold nanoparticles taught by Heinzt et al. with the iron oxide nanoparticles taught by Arps et al. given that it is obvious to substitute equivalents known for the same purpose and given that the nanoparticles taught by Arps et al. have sufficient conductive material for the formation of conductive "bridges" within the polymeric matrix without adverse impact on the mechanical properties of the coating composition.
Heinzt et al., as discussed above, also do not teach the size of the nanomaterials or that the primer layer comprises nanoparticles. However, with regards to the particle size, the Examiner would like to point out that workable physical properties such as sizes are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties. With regards to the placement of the nanoparticles, the mere duplication of the nanoparticles in another layer has no patentable significance unless a new and unexpected result is produced.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
4. Claims 1-7 and 9-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 19/092,264 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the instant claims and the scope of the claims of copending Application No. 19/092,264 overlap and therefore, one of ordinary skill in the art would be motivated to prepare and claim the scope of the article of the instant application since the scope of copending Application No. 19/092,264 covers the full scope of the instant claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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/SHEEBA AHMED/ Primary Examiner, Art Unit 1787