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 § 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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (CN 105802441) in view of Chen et al. (CN 104356321 A).
Regarding Claims 1-2, Yu discloses a water-based graphene composite coating comprising a water-based resin, 0.01-4 wt.% graphene, water, and a coating additive (para 0009). The water-based resin is an epoxy resin (para 0013). The coating additive is a defoaming agent including dimethyl silicone oil, i.e. polydimethylsiloxane (para 0014).
Yu does not disclose the polydimethylsiloxane having terminal group as claimed.
Chen discloses a water-borne polysiloxane-modified epoxy resin prepared from bisphenol A epoxy resin and divinyl-or monovinyl-terminated polydimethylsiloxane (paras 0011, 0012, 0016, 0020). The polysiloxane-modified epoxy resin is used in a coating (para 0185). Chen discloses that modifying the epoxy resin with the divinyl-or monovinyl-terminated polydimethylsiloxane improves the weather resistance and toughness of the epoxy resin (para 0033).
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Yu to incorporate the teachings of Chen and produce the composite coating of Yu using divinyl-or monovinyl-terminated polydimethylsiloxane as the coating additive. Doing so would improve the weather resistance and toughness of the epoxy resin.
Regarding Claim 3, Yu in view of Chen discloses all the limitations of the present invention according to Claim 1 above. Yu further discloses the graphene is functionalized with an aniline oligomer which has carboxyl functional groups (para 0038).
Regarding Claims 5-6, Yu in view of Chen discloses all the limitations of the present invention according to Claim 1 above. Yu does not disclose or require any bio-based epoxy resin; therefore it would be obvious to produce the coating having no bio-based resin (i.e. less than 30%).
Regarding Claim 7, Yu in view of Chen discloses all the limitations of the present invention according to Claim 1 above. Yu further discloses the graphene composite coating is deposited onto a substrate (para 0058), i.e. part.
Although Yu in view of Chen does not disclose the coating is electrodeposited, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability 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) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Yu in view of Chen meets the requirements of the claimed part, Yu in view of Chen clearly meet the requirements of present claims.
Claims 8-10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Liu et al. (WO 2021/091736) and Chen.
Regarding Claims 8-9, Yu discloses a water-based graphene composite coating comprising a water-based resin, 0.01-4 wt.% graphene, water, and a coating additive (para 0009). The water-based resin is an epoxy resin (para 0013). The coating additive is a defoaming agent including dimethyl silicone oil, i.e. polydimethylsiloxane (para 0014).
Yu does not disclose a bio-based epoxy resin.
Liu discloses curable compositions comprising bio-based epoxy resins (para 0007). The composition also comprises an auxiliary epoxy resin where the ratio of the bio-based epoxy resin to the auxiliary epoxy resin is 20:80 to 80:20 (para 0037). The bio-based epoxy resin has improved mechanical strength and thermal stability while maintaining good toughness and flexibility (para 0006).
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Yu to incorporate the teachings of Liu and produce a coating where 20-80% of the epoxy resin is a bio-based epoxy resin. Doing so would improve mechanical strength and thermal stability while maintaining good toughness and flexibility.
Yu in view of Liu does not disclose the polydimethylsiloxane having terminal group as claimed.
Chen discloses a water-borne polysiloxane-modified epoxy resin prepared from bisphenol A epoxy resin and divinyl-or monovinyl-terminated polydimethylsiloxane (paras 0011, 0012, 0016, 0020). The polysiloxane-modified epoxy resin is used in a coating (para 0185). Chen discloses that modifying the epoxy resin with the divinyl-or monovinyl-terminated polydimethylsiloxane improves the weather resistance and toughness of the epoxy resin (para 0033).
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Yu in view of Liu to incorporate the teachings of Chen and produce the composite coating of Yu using divinyl-or monovinyl-terminated polydimethylsiloxane as the coating additive. Doing so would improve the weather resistance and toughness of the epoxy resin.
Regarding Claim 10, Yu in view of Liu and Chen discloses all the limitations of the present invention according to Claim 8 above. Yu further discloses the graphene is functionalized with an aniline oligomer which has carboxyl functional groups (para 0038).
Regarding Claim 13, Yu in view of Liu discloses all the limitations of the present invention according to Claim 8 above. Yu further discloses the coating further comprises a curing agent (para 0048).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Liu and Chen as applied to claim 8 above, and further in view of Tabuchi et al. (JP 2022031168).
Regarding Claim 11, Yu in view of Liu and Chen discloses all the limitations of the present invention according to Claim 8 above. Yu in view of Liu and Chen does not disclose specific epoxy resin as claimed.
Tabuchi discloses water-based anti-corrosion coating (paras 0001, 0070) comprising novolac epoxy resin (para 0122). This forms a coating having excellent adhesion to a substrate (para 0123).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Yu in view of Liu and Chen to incorporate the teachings of Tabuchi and use a novolac epoxy resin. Doing so would form a coating having excellent adhesion to a substrate.
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Aoki et al. (WO 2017/104554 A1).
Regarding Claim 1, Aoki discloses a dispersant composition that may form a coating (paras 0001, 0206) comprising water (para 0164) as well as component (A) and component (B) (para 0024) where component (B) is an epoxy resin (paras 0146, 0153) and component (A) is modified polysiloxane (i.e. lubricating additive) that includes all side chains as methyl (i.e. polymethylsiloxane), (para 0083) and has functional groups on both ends (para 0083, structure type “2)”) where the functional group includes vinyl or epoxy (para 0089). The composition also comprises a conductive additive that is graphene (paras 0198, 0202).
In light of the overlap between the claimed composition and that disclosed by Aoki, it would have been obvious to one of ordinary skill in the art to produce a coating that is both disclosed by Aoki and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claims 5-6, Aoki discloses all the limitations of the present invention according to Claim 1 above. Aoki does not disclose or require any bio-based epoxy resin; therefore it would be obvious to produce the coating having no bio-based resin (i.e. less than 30%).
Regarding Claim 7, Aoki discloses all the limitations of the present invention according to Claim 1 above, including that the dispersant composition may form a coating (paras 0001, 0206) (i.e. coating a part).
Although Aoki does not disclose the coating is electrodeposited, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability 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) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Aoki meets the requirements of the claimed part, Aoki clearly meet the requirements of present claims.
Response to Arguments
In light of applicant’s amendments filed 10/23/2025, the 35 USC 103 rejections of record is withdrawn. New grounds of rejection are set forth above.
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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787