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. Claims 1-5 and 8-11 have been amended in the response submitted on March 19, 2026. Claims 1-12 are pending and under consideration.
Claim Rejections - 35 USC § 102
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 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.
3. Claims 1-5 and 7-10 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Woolf et al. (US 2016/0340518 A1).
Woolf et al. disclose lightning strike protective compositions for composite structures wherein the compositions include a binder material capable of dispersing material structures therein and attaching to a surface of a substrate, and a plurality of pigment structures are dispersed in the binder material. The pigment structures include a central layer including an electrically conducting material, and outer layers formed on the central layer, in which the outer layers include an optical absorber material or a dielectric material (meeting the limitation in claim 1 that the flakes in the coating material have a non-conductive coating). The composition (equivalent to the coating material of the claimed invention), can be used as paint, and when attached to the substrate, is capable of providing electrically conductive paths to transfer electrical current from a multi kiloamp electrical discharge within the composition. The pigment structures include an aspect ratio of length to thickness being at least 3:1 or at least 5:1 (meeting the limitations in claim 1 that the flakes are two-dimensional and have a ratio of thickness to average diameter of 1:3 or less). Exemplary paint compositions can include flake pigments containing electrically conductive layers that can have a wide range of colors, as needed for aircraft, and are environmentally and mechanically robust due to the hard layers that can surround the electrically conductive layers and due to the properties of the binder system in which the flake pigments are contained. FIG. 1 shows a diagram of typical aircraft zone locations that differ in lightning strike effects. The different zones of the aircraft are shown in FIG. 1, and for each zone, there is a standard lightning strike test that involves a succession of current components as shown. Zone 1 including Zones 1A, 1B, and 1C constitutes the most severe lightning strike conditions, Zone 2 including Zones 2A and 2B is less severe than Zone 1, and Zone 3 involves current transport but not direct lightning strike (meeting the limitations of claim 10). In some aspects, the material pigment and coating compositions can be configured as paints that include multi-layered flake-shaped pigment with electrically conductive constituents that can provide lightning strike protection over substantial or all parts of a body to which the paint is applied, e.g., including composite aircrafts (meeting the limitations of claim 9). These electrically conductive constituents can include semiconductor materials such as silicon (meeting the limitations of claim 7) and metal materials such as aluminum. In some examples, the exemplary flake-shaped pigments in the paint can be configured to have thicknesses of about 0.2-2 microns (meeting the limitations of claim 2), in which typical flake lateral dimensions can be 5-60 microns (meeting the limitations of claim 3), e.g., preferably 20-40 microns, and typical pigment volume concentrations (PVC) can be 10-30% (meeting the limitations of claim 5), preferably 15-22%. In some embodiments, the composition can be structured to include a flake shaped pigment structure (having a high aspect ratio) in a binder material (e.g., such as paint, including an acrylic based paint binder system (meeting the limitation in claim 1 that the matrix material is polymer-based). The binder material can be used to mix with pigment in order to hold the pigment particles together in the formation of paint. The thicknesses and compositions of the pigment designs provide for a pigment with an electrically conducting section that is flake shaped and also that is colored without the addition of electrically insulating pigment particles. The conducting section can include any number of different types of electrically conductive materials, e.g., such as metals, metallic alloys, mixtures containing metals, and/or semiconductors. For example, preferably metals are employed in the electrically conductive section of the pigment structure, e.g., such as aluminum, copper, chromium, titanium, silver, nickel, iron, alloys thereof or other metals used for thin film coatings. Because these pigments are structured as thin flakes, for example, they tend to be situated in the paint with their flat flake faces parallel to the paint surface (meeting the limitations of claim 4). The use of the disclosed metal flake paint composition can allow customized colors by design of the pigment structure or by blending pigments with different designs into a paint, as well as improve the electrical conductance of the paint (meeting the limitations of claim 8) (See Abstract, Figures, and paragraphs 0002, 0006, 0007, 0015, 0027-0034). With regards to the limitation that the second flakes of the metallic have an infrared emission level of not more than 0.2, the Examiner takes the position that such property limitations are inherent in the flakes taught by Woolf et al. given that the flakes taught by Woolf et al. and that of the claimed invention are identical. All limitations of claims 1-5, 7, 9, and 10 are disclosed or inherent in the above reference.
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.
4. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Woolf et al. (US 2016/0340518 A1) in view of Huang et al. (US 2005/0189060 A1).
Woolf et al., as discussed above, do not teach that their flakes are coated with silicon dioxide (as recited in claim 6).
However, Huang et al. disclose a film formed by admixing a resin and encapsulated metallic flakes. The metallic flakes are encapsulated with a silane in a hydrolyzed condition modified with a surfactant or dispersion agent. The coated metallic flakes are formed by mixing metallic flakes with a silane in a hydrolyzed condition to form a silica layer over the metallic flakes. The silica coated flakes are modified with surfactants or dispersion agents to make "leafing" or "non-leafing" products. A cured coating is formed over the flakes which cannot be washed off with solvents. These cured coated flakes do not form agglomerates even if stored for weeks or months.
Accordingly, it would have been obvious to one having ordinary skill in the art to coat the flakes taught by Woolf et al. with a silica coating given that Huang et al. specifically teach that such a coating cannot be washed off with solvents and prevents the coated flakes from forming agglomerates even if stored for weeks or months.
Response to Arguments
5. Applicant's arguments filed on March 19, 2026 have been fully considered but they are not persuasive.
Applicants traverse the rejection of claims 1-5 and 7-10 under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Woolf et al. (US 2016/0340518 A1) and the rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Woolf et al. (US 2016/0340518 A1) in view of Huang et al. (US 2005/0189060 A1) and submit that the Woolf is directed towards use in radomes, which requires radar transparency and that the claimed coating material is provided for
radar absorption. Applicants further argue that the overlapping flakes in Woolf create a conductive path that precludes the radar-absorptive properties that are expressly recited in claim 1 and that Woolf achieves electrical conductivity through a mandated overlap of the flakes.
First, with regards to the argument that the claimed coating material is for radar absorption and not radar transparency, the Examiner would like to point out that the discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, cannot impart patentability to claims to the known composition.
Second, the instant claims do not positively preclude the presence of overlapping flakes given that claim 1 specifically states that “the first flakes in the coating material are separated from one another in the matrix material and/OR have a non-conductive coating to provide the radar absorption” and the limitation that of “a non-conductive coating” has been met.
Accordingly, the above rejections are maintained.
Conclusion
6. 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.
7. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CALLIE SHOSHO can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787
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