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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 6, 8, and 10 depend on claim 3 and, therefore, are also rejected.
Claim 3 recites the limitation "the dispersing agent" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the unneutralized cationic salt" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 6, 8, 10, 18, 20-21, 28-30, 33, 35-38, 41, 46, and 50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukuda et al (JP 2012036315).
With regards to claim 1, Fukuda teaches a resin (a resin is type of binder and, thus, reading on a binder) composition for electrodeposition that contains ceramic fine particle (0001) (as applicants cite in the specification as reading on a thermally conductive, electrically insulative, filler material).
With regards to claim 2, Fukuda teaches the amount of conductive particle to be 5 to 40% (0008).
With regards to claims 3 and 50, Fukuda teaches the coating composition to be basic wherein the resin is a basic resin (0008) and further teaches the addition of an acid to disperse the composition (0010).
The phrase “the cationic electrodepositable coating composition is formed by a method…film forming polymer.” is considered to be a product-by-process claim. The process steps do not have any weight. The product formed, therefore, does not depend on the process in which it is formed.
“[E]ven though product-by-process claims are lim-ited by and defined by the process, determination of patentability is based on the product itself. The patent-ability 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). MPEP 2113.
With regards to claims 6, 8, and 10, Fukuda teaches the addition of a phosphoric acid (0062).
With regards to claim 18, Fukuda teaches the electrodeposition paint to be water-based (0064).
With regards to claim 20, Fukuda teaches the filler to include ceramic (0001), silicon oxide, silicon nitride, aluminum oxide, aluminum nitride, beryllium oxide, magnesium oxide, zirconium oxide, or boron nitride (0014).
With regards to claims 21 and 36, Fukuda teaches the thermal conductivity of the particles to be 5 to 1,000 W/mK (0025) and the volume resistance to be >10^6 Ωcm (reading on >10^4 Ωm) (0085 table 1).
With regards to claim 28, Fukuda teaches the pigment to include graphite (a known fire retardant compound) (0074).
With regards to claim 29, Fukuda teaches a resin (a resin is type of binder and, thus, reading on a binder) composition for electrodeposition that contains a pigment such as graphite (a known fire retardant compound) (0074).
With regards to claim 30, Fukuda teaches the amount of solids in the composition to be 8 to 15% (0054) and a viscosity of 20,000 mPa·s (0075) reading on greater than 2 cP.
With regards to claim 33, Fukuda teaches the composition to be used for coatings (title).
With regards to claim 35, Fukuda is silent on the dielectric strength at a film thickness of 25 microns. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the dielectric strength are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claim 37, Fukuda teaches the composition to be coated on a substrate (0060).
With regards to claim 38, Fukuda is silent on the use of the composition on a substrate that includes a battery.
However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties and function relating to the use on a battery are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claim 41, Fukuda teaches the composition to be applied using electrodeposition coating (0067).
With regards to claim 46, Fukuda teaches the composition to be applied using electrodeposition coating (0067) and is silent on the coating loss. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the claimed tests are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claims 1-3, 6, 8, 10, 18, 20-21, 28-30, 33, 35-38, 41, 46, and 50 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zawacky et al (US 2020/0399479).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With regards to claim 1, Zawacky teaches an electrodepositable coating composition (abstract) with a film forming binder an electrically conductive particles (abstract).
With regards to claim 2, Zawacky teaches the amount of particles to be at least 25% (abstract).
With regards to claim 3, Zawacky teaches the composition to be cationic that comprises a cationic salt (0027).
With regards to claim 6, Zawacky teaches the composition to contain a dispersing aid (0057).
With regards to claims 8 and 10, Zawacky teaches the addition of a phosphoric acid (0034).
With regards to claim 18, Zawacky teaches the composition to contain water (0009).
With regards to claim 20, Zawacky teaches the particles to include ceramic particles or boron nitride (0012).
With regards to claim 21, Zawacky is silent on the thermal conductivity and volume resistivity of the particle and composition respectively. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the claimed tests are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claims 28 and 29, Zawacky teaches an electrodepositable coating composition (abstract) with a film forming binder, electrically conductive particles (abstract) and a pigment such as zinc oxide (0057).
With regards to claim 30, Zawacky teaches the total solids to be 20-30% (0061) and is silent on the viscosity of the composition. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the claimed tests are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claim 33, Zawacky teaches an electrodepositable coating composition (abstract) with a film forming binder (0057) that is partially cured (0007), electrically conductive particles (abstract) and a pigment such as zinc oxide (0057).
With regards to claims 35 and 36, Zawacky is silent on the dielectric strength and thermal conductivity of the composition. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the claimed tests are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claim 37, Zawacky teaches the coating of the composition on at least a portion of the substrate (0071).
With regards to claim 38, Zawacky is silent on the composition being used for a battery. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the claimed tests are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claim 41, Zawacky teaches the coating to be electrodeposited on the substrate (0058).
With regards to claim 46, Zawacky is silent on the coating loss. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the claimed tests are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claim 50, Zawacky teaches composition to include a cationic salt group-containing film-forming polymer (0027).
Conclusion
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763