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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 16, 2026 has been entered.
Response to Amendment
The amendment and response filed on January 16, 2026 has been entered. Claims 1, 3-16, and 18-20 are pending.
Claim Objections
Claim 10 is objected to because of the following informalities. Claim 10 is dependent upon claim 1. Thus, the terms “at least one graphene comprising lithium (GO-M)”, “at least one binder B”, and “at least one silane compound SC” have antecedent basis from independent claim 1. Accordingly, the term “the” should be insert before these terms in claim 10.
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, 3-6, 8-16, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kamar et al (US Pub 2020/0165410).
Regarding claim 1, 3, 9, and 18, Kamar discloses a composition comprising a graphene oxide [0039] comprising a monovalent lithium ion [0056], a binder, i.e. thermoset resin, (claim 1), and a solvent [0013]. Kamar discloses that the graphene oxide component can be present in an amount from 0.05 to 5 total weight percent of the thermoset resin [0053], but does not specifically disclose the amount of the graphene oxide component present in the total weight percent of the entire coating composition. MPEP 2144.05, states that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In the instant application, it would have been obvious to one of ordinary skill in the art to have discovered the claimed ranges for the graphene oxide material through routine experimentation based on the disclosure that the GO-M imparts electrostatic and electroconductivity properties to the coating and the skilled artisan’s knowledge of how the amount of the GO-M material in the coating would affect the coatings electrostatic and electroconductivity properties. Moreover, the amount of solvent used would directly affect the wt.% of solids present, i.e., GO-M. It would have been obvious to one of ordinary skill in the art to have discovered the claimed ranges for solvent component through routine experimentation based on the disclosure that solvent amounts affect the viscosity properties of a coating composition. Further, during application of the coating material the solvent is removed (claim 14) so it would follow that at some point during application of the coating material the amount of GO-M in the coating would necessarily approach in an amount disclosed as being in the thermoset resin binder material. Thus, at least when an amount towards the lower end of the disclosed range, i.e., 0.05 wt.%, is used, the amount of GO-M would necessarily overlap with the presently claimed range.
Regarding claim 4, the binder can be a polyester (claim 9, [0055]).
Regarding claims 5 and 19, the binder is disclosed to be present in an amount of 18.5 weight percent [0030].
Regarding claim 6, it is noted that a silane is an optional component in the coating composition of claim 1 and claim 6 does not positively require that it is present. That is, claim 6 does not recite language such as the language used in other claims, such as claims 5 and 7, that require that the optional silane is present in the coating. Moreover, Kamar discloses a silane having the general formula (I), i.e., 3-aminopropyltrimethoxysilane and 3-aminopropyltriethoxysilane, is disclosed as a surface activating agent for microspheres that are included in the coating [0033].
Regarding claim 8, water can be used as the solvent [0073].
Regarding claim 10-12, Kamar does not specifically disclose preparing a first dispersion containing the GO-M and a solvent and then adding it to a second binder containing mixture. However, Kamar does disclose a final composition that includes all of the claimed components. It would have been obvious to have mixed the claimed components in any order to provide a final composition containing the claimed components, including adding the binder and/or silane to the mixture after a GO-M dispersion is formed. It would have been obvious to one of ordinary skill in the art to have prepared the GO-M dispersion first, motivated by the desire to optimize the properties of the GO-M prior to adding it to the binder mixture.
Regarding claims 13 and 14, the claimed process steps and resulting product is disclosed in Kamar (claim 12).
Regarding claim 15, since the composition of Kumar is same as the presently claimed composition, the use of the Kumar composition would inherently be capable of providing corrosion resistance. See MPEP 2112.
Regarding claim 16, see rationale above for claim 13. Specifically, these additional process steps are disclosed in Kamar (claim 12).
Allowable Subject Matter
Claims 7 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. None of the prior art documents of record disclose the claimed coating composition comprising a silane compound within the claimed ranges.
Response to Arguments
Applicant's arguments filed October 07, 2025 have been fully considered but they are not persuasive.
The claim objection and prior art rejections over Chavali et al. are withdrawn in view of the present amendment and arguments.
The arguments with respect to the Kamar rejection are not persuasive for the following reasons. Specifically, it is argued that Kamar’s component includes a moiety M-FA, wherein M-FA is selected from the group of metallic fatty acid salts including one or more of calcium, magnesium and zinc, and other metals that chelate to carboxyl groups with a 2+ valency state, whereas the graphene oxide component as claimed does not include such a moiety and looks molecularly very different from Kamar’s component. This argument is not commensurate in scope with the claims. Claim 1 recites “at least one graphene oxide comprising lithium” which does not exclude other components being present in the graphene oxide, such as the moieties disclosed in Kamar’s lithium containing graphene oxide component. That is, Kamar discloses a composition that comprises at least one graphene oxide comprising lithium and; thus, reads on the presently claimed graphene oxide component.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781