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 .
Election/Restrictions
Applicant’s election without traverse of Claims 1-14 in the reply filed on 12 November 2025 is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 November 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claims 7 and 19 are objected to because of the following informalities.
The phrase “metal or compound” should be written “metal or metal compound.” See, for example, Claims 1,3,5, 6, 10, and 15-17.
Appropriate correction is required.
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 2 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.
Claim 2 recites the limitation “the substrate comprises a carbon.” The limitation is indefinite, because it is not clear whether the phrase “a carbon” omits a word, since “a carbon” seems to use the word “carbon” as an adjective. Examiner considers the limitation to include the interpretation “the substrate comprises carbon.”
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.
Claim(s) 1-9 and 11-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nicolaus et al. (US 2015/0291805) (SURFYNOL 440 Safety Data Sheet. Evonik, Date of first report version: 03/13/2019 is cited as evidence of chemical name ethoxylated acetylenic diol).
Regarding Claims 1,3, and 4 Nicolaus et al. (US’805) teach a method for forming a high temperature coating, the method comprising: applying a barrier coat formulation on a substrate, wherein the barrier coat formulation comprises: mono-aluminum phosphate (also “MALP”); titanium (group four metal); boron carbide (B4C); water; and surfactant (preferred SURFYNOL 440)(Fig. 1, step 22; Claim 3; [0091-0095]); and heat treating the barrier coat formulation to form an oxidation-resistant coating layer (Fig. 1, step 24). Additionally, US’805 provides evidence that the melting point is higher than 800 ℃, since the coating withstands oxidation when it is exposed to temperatures of 850 to 1200 C [0117-0125]. In addition, a Safety Data Sheet for the composition under the trademark SURFYNOL 440 is provided as evidence that it comprises ethoxylated acetylenic diol, a fact that Applicant’s specification also acknowledges at [0030].
Regarding Claim 2, US’805 teaches that the substrate comprises carbon, including C/C composite (Abstract; [0086,0100]).
Regarding Claims 5-6, US’805 teaches that the mono-aluminum phosphate comprises from about 67% weight percent of the barrier coat formulation, the group four metal or metal compound comprises about 11 weight percent of the barrier coat formulation, the boron carbide comprises about 16 weight percent of the barrier coat formulation, water comprises about 4 weight percent (4.7%) of the barrier coat formulation, and the surfactant comprises 1 weight percent of the barrier coat formulation [0105-0109].
Regarding Claim 7, US’805 teaches that at least some of the group four metal or metal compound has a grain size of about 20 micron [0107]; in other words at least some of the group four metal or metal compound, includes a powder with that a maximum size of 20 micron.
Regarding Claim 8, US’805 teaches applying a phosphate-based penetrant antioxidant underlayer (Fig. 1, Step 16; [0088]).
Regarding Claim 9, US’805 teaches heat treating the penetrant antioxidant underlayer prior to applying the barrier coat formulation (Fig. 1, step 18; [0089]).
Regarding Claim 11, US’805 teaches that the heat treatment is at a temperature of 650 C [0212].
Regarding Claim 12, US’805 teaches that the heat treatment extends for a duration of 10 hours [0110,0144,0187].
Regarding Claim 13, US’805 teaches applying the barrier coat formulation comprises brushing or spraying [0097,0104].
Regarding Claim 14, US’805 teaches applying the barrier coat formulation at a thickness of from about 20 micron to 150 micron (0.02 mm to 0.15 mm) [0098].
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nicolaus et al. (US 2015/0291805) (SURFYNOL 440 Safety Data Sheet. Evonik, Date of first report version: 03/13/2019 is cited as evidence of chemical name ethoxylated acetylenic diol).
Regarding Claim 10, US’805 teaches a single coating composition comprising all the components in a single composition; in other words, the components are clearly mixed together. US’805 fails to expressly teach such procedures as adding components specifically to an acid-resistant vessel or continuous mixing. However, these details are conventional (e.g. continuous mixing with magnetic stirrers or other automated mixers and mixing/ stirring in conventional glass, such as borosilicate glass). Regarding the recited order of adding components, an order of adding and mixing components is not considered patentable, absent evidence of unexpected results. MPEP 2144.04.IV.C. Thus, it would have been obvious to modify the process of US’805 by adding and mixing the components of the known mixture of components in any order, including the recited order, or simultaneously by routine and conventional steps of continuous mixing in conventional acid-resistant processing vessels.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mazany et al. (US 2004/0213906) (oxidation inhibiting coating of carbon-carbon composite with a barrier coating, including titanium compound, and boron carbide and another composition including water, monoaluminum phosphate, and ethoxylated acetylenic diol (SURFYNOL 44)).
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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