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.
Claims 1, 3-8, and 11 are 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.
Claim 1, recites “A method of use of a composition for construction purposes for the corrosion protection of a steel reinforcement in concrete,” …wherein the method of use of the composition comprises: adding 0.001-2 wt.-% carbon quantum dots to the paint, coating agent, binder, concrete or mortar.”, which renders the claim indefinite. The claimed method of using the composition appears to be a method of creating the composition as a product to be used later as something else. Claims 3-8 are dependent from claim 1.
While not a suggestion of claim language, in the interest of compact prosecution, any method that adds 0.001-2 wt.-% carbon quantum dots to a composition capable of use for corrosion protection of a steel reinforcement in concrete is considered to read on the newly amended claims.
Appropriate correction is required.
Claim 11, recites “A method of use of a composition for construction purposes for the corrosion protection of a steel reinforcement in concrete…wherein the method of use of the composition comprises: adding 0.001-2 wt.-% carbon quantum dots to the paint, coating agent, binder, concrete or mortar.”, which renders the claim indefinite. The claimed method of using the composition appears to be a method of creating the composition as a product to be used later as something else.
While not a suggestion of claim language, in the interest of compact prosecution, any method that adds 0.001-2 wt.-% carbon quantum dots to the claimed composition is considered to read on the newly amended claim.
Appropriate correction is required.
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.
The instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1, 4-6, and 8 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by CN 110759668A to Zhang et al. (hereinafter Zhang), using a machine translation of the description.
Regarding claim 1, Zhang discloses a composition for construction purposes for the corrosion protection of a steel reinforcement in concrete (stone-like paint, para [0010]), wherein the composition is electrically conductive (due to the good conductivity of carbon quantum dots, para [0029]) and the composition is a paint (para [0010]) or coating agent (architectural coating, para [0003]) wherein the method of use of the composition comprises :
adding 1-1.5 wt% carbon quantum dots (CQDs), which falls completely within the instantly claimed range of 0.001 - 2 wt.%, to the paint or coating agent (para [0039]), based on the total weight of the composition.
The preamble of the instant claim recites the intended use limitation “for construction purposes for the corrosion protection of a steel reinforcement in concrete” in ln 1-2. See MPEP 2111.02(II), which states that ‘To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim’. In the instant case, Zhang anticipates the composition and discloses that the composition is crack-resistant stone paint with a protective effect (para [0007]) in the field of architectural coatings (para [0001]-[0003]). Therefore, the Zhang coating is deemed capable of performing the intended use for construction purposes.
Regarding claim 4, Zhang discloses the composition according to claim 1,
characterized in that the composition is liquid (water balance, para [0023]) and cures (forms film after soaking para [0023]) at room temperature for 12-24 hours (para [0049]), which falls within one week.
Regarding claim 5, Zhang discloses the composition according to claim 1, characterized in that the composition contains one or more compounds selected from
the group composed of silicate, silicium dioxide (quartz sand/SiO2, para [0012]), aluminate (para [0016]), aluminosilicate (attapulgite, para [0013] and [0024]),
resin (acrylic, para [0011]), silicone, and organic polymer (fluorosilicone polymer, para [0017]).
Regarding claim 6, Zhang discloses the composition according to claim 5, characterized in that the composition contains at least 78 wt% of the one or more compounds when all are present (lower ranges of para [0011]-[0013], [0016], and [0017]), which falls completely within the instantly claimed range of 30 wt.% of the one or more compounds, based on the total weight of the composition.
Regarding claim 8, Zhang discloses the composition according to claim 1,
characterized in that the carbon quantum dots fluoresce upon stimulation with UV
light (para [0029]) and are expected to emit light in the wavelength band 400 to 600 nm upon said stimulation with UV light as Zhang anticipates the instantly claimed composition and anticipates the claimed carbon quantum dots. See MPEP 2112.01(II) which states that is the composition is physically the same, it must have the same properties. Zhang anticipates the instantly claimed composition and anticipates the claimed carbon quantum dots. Therefore, the Zhang carbon quantum dots are deemed to have the same optical properties including but not limited to fluorescing in the wavelength band 400 to 600 nm upon stimulation with UV light.
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 instant claims contain the transitional phrase “comprising”. See MPEP 2111.03 cited above. This open-ended definition has been taken into consideration in the following rejections.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang.
Regarding claim 3, Zhang discloses the composition according to claim 1 but does not disclose that the composition comprises 0.005-0.5 wt of carbon quantum dots, based on the total weight of the composition. However, see MPEP 2144.05(II)(A), which states that ‘Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical’. It would be obvious to one of ordinary skill in the art to optimize the CQD loading range to facilitate formation of a stone paint with the desired combination of mechanical and aesthetic characteristics (para [0005]-[0006]).
Response to Arguments
Applicant's arguments filed 7/29/26, regarding the 112 rejection, have been fully considered.
The 7/2/26 amendment to claim 3 resolved the issue.
Therefore, the 112(b) rejection of claim 3 has been withdrawn.
The 112(b) rejection of claims 9 and 10 is moot because the claims have been canceled.
Applicant's arguments filed 7/29/26, regarding Zhang, have been fully considered but they are not persuasive. Applicant argues that the reference does not recite “a use for the corrosion protection of steel” as set forth in the newly amended claims. As discussed above, this is an intended use limitation. Zhang anticipates the composition and anticipates the step of adding 0.001 – 2 wt% of carbon quantum dots to a paint or coating agent (para [0039]). Zhang anticipates the composition and method and is therefore deemed capable of performing the intended use “for construction purposes for the corrosion protection of a steel reinforcement”, absent evidence to the contrary.
Applicant has not provided such evidence.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the electrical conductivity and polarization resistance of treated concrete) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The instant claims are not drawn to treated concrete. A method of treating concrete is a different invention.
Applicant further argues that stone and concrete are not comparable and further states that concrete is intrinsically electrolytically conductive. Applicant also argues that Zhang does not teach steel embedded in stone in the form of steel reinforcement. However, as stated above, these are all intended use limitations, “for construction purposes for the corrosion protection of a steel reinforcement”. See MPEP 2111.02(II), cited above. The newly amended claims are drawn to a method of using a composition by adding a particular amount of quantum dots to a paint or coating agent. Zhang anticipates this method step. Zhang anticipates the composition (para [0010]) and the method of using the composition (para [0015] and [0039]) as claimed. The paint composition is electrically conductive due to the quantum dots (para [0029]). The Zhang composition and method anticipate the claimed composition and method of use. Therefore, per MPEP 2111.02(II) cited above, the Zhang composition is deemed capable of the intended use set forth in the claim. Applicant has not provided evidence to the contrary.
Therefore, the 102(a)(1) rejection of claims 1, 4-6, and 8 as anticipated by Zhang stands.
The 102(a)(1) rejection of claims 2, 9, and 10 as anticipated by Zhang is moot because the claims have been canceled.
Applicant also argues that dependent claim 3 depends from claim 1 and therefore incorporates the limitation of the base and any intervening claims. It is agreed that claim 3 is dependent from claim 1, which is rejected over Zhang, as discussed above.
Therefore, the 103 rejection of claim 3 as obvious over Zhang stands.
Allowable Subject Matter
Claim 7 is 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.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, Zhang, teaches a composition comprising the same amount of carbon quantum dots and further comprises an aluminosilicate. However, the aluminosilicate is attapulgite clay which does not contain calcium oxide or alkali oxides as required by the instant claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 6,635,192 B1 to Schwarz teaches alkali containing aluminosilicate as part of an electrically conducting composite. The Schwarz composite does not contain quantum dots.
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.
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
