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 .
Response to Amendment
In response to the amendment received on 12/11/2025:
claims 1-20 are currently pending;
claims 16-20 are withdrawn;
the 112(b) rejection to claim 14 is withdrawn in light of the amendment to the claims; and
all prior art grounds of rejection are withdrawn in light of the amendments to independent claims 1 and 15 that narrowed the claimed coating; however, after updated search and consideration, new grounds of rejection are presented below.
Claim Objections
Claim 12 is objected to because of the following informalities: claim 12 recites “graphenemetallic”, which appears to have a typographical error and should be “graphene metallic”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7, 9 and 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 7 recites “wherein the plurality of functionalized particles include at least one of zinc oxide, copper oxide, zinc phosphate, or hydrated phosphate with metals” appears to not be supported by the specification and drawings or described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the applicant had possession of the claimed invention at the time the application was filed. Claim 1 lines 8-9 recites “wherein the particles are at least one of iron or iron-based” and specification at [0042] discloses “the plurality of functionalized particles… can be formed of varying material configured to conduct and/or dissipate heat and energy, for example an organic/inorganic additive (e.g., graphene metallic additive, for example, iron or iron-based, e.g., an iron alloy, steel, and the like)”. It appears that a mixture of “at least one of iron or iron-based” and “at least one of zinc oxide, copper oxide, zinc phosphate, or hydrated phosphate with metals” is not supported by the specification for the claimed “plurality of functionalized particles”. Accordingly, one of ordinary skill in the art would not understand that the applicant is in possession of the claimed limitation at the time the application was filed.
Examiner will treat the recitation as “written”, but suggests amending the claim or respond where in the specification the recitations are supported.
Claim 9 recites “wherein the plurality of functionalized particles include at least one of an organic or an inorganic conductive additive” appears to not be supported by the specification and drawings or described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the applicant had possession of the claimed invention at the time the application was filed. Claim 1 lines 8-9 recites “wherein the particles are at least one of iron or iron-based” and specification at [0042] discloses “the plurality of functionalized particles… can be formed of varying material configured to conduct and/or dissipate heat and energy, for example an organic/inorganic additive (e.g., graphene metallic additive, for example, iron or iron-based, e.g., an iron alloy, steel, and the like)”. It appears that a mixture of “at least one of iron or iron-based” and “at least one of an organic or an inorganic conductive additive” is not supported by the specification for the claimed “plurality of functionalized particles”. Accordingly, one of ordinary skill in the art would not understand that the applicant is in possession of the claimed limitation at the time the application was filed.
Examiner will treat the recitation as “written”, but suggests amending the claim or respond where in the specification the recitations are supported.
Claim 11 recites “wherein the plurality of functionalized particles includes oxidized graphene” appears to not be supported by the specification and drawings or described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the applicant had possession of the claimed invention at the time the application was filed. Claim 1 lines 8-9 recites “wherein the particles are at least one of iron or iron-based” and specification at [0042] discloses “the plurality of functionalized particles… can be formed of varying material configured to conduct and/or dissipate heat and energy, for example an organic/inorganic additive (e.g., graphene metallic additive, for example, iron or iron-based, e.g., an iron alloy, steel, and the like)”. It appears that a mixture of “at least one of iron or iron-based” and “oxidized graphene” is not supported by the specification for the claimed “plurality of functionalized particles”. Accordingly, one of ordinary skill in the art would not understand that the applicant is in possession of the claimed limitation at the time the application was filed.
Examiner will treat the recitation as “written”, but suggests amending the claim or respond where in the specification the recitations are supported.
Claim 12 recites “wherein the plurality of functionalized particles include a graphene metallic additive” appears to not be supported by the specification and drawings or described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the applicant had possession of the claimed invention at the time the application was filed. Claim 1 lines 8-9 recites “wherein the particles are at least one of iron or iron-based” and specification at [0042] discloses “the plurality of functionalized particles… can be formed of varying material configured to conduct and/or dissipate heat and energy, for example an organic/inorganic additive (e.g., graphene metallic additive, for example, iron or iron-based, e.g., an iron alloy, steel, and the like)”. It appears that a mixture of “at least one of iron or iron-based” and “graphene metallic additive” is not supported by the specification for the claimed “plurality of functionalized particles”. Accordingly, one of ordinary skill in the art would not understand that the applicant is in possession of the claimed limitation at the time the application was filed.
Examiner will treat the recitation as “written”, but suggests amending the claim or respond where in the specification the recitations are supported.
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 1-15 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 line 2 recites “coating”. The term “coating” claimed as such is indefinite and misdescriptive See Ex parte Scott 66 USPQ 371. Examiner suggest amending the claim to insert “composition” between “coating” and “disposed” so as to remove the ambiguity as set forth above.
Claim 15 line 4 recites “coating”. The term “coating” claimed as such is indefinite and misdescriptive See Ex parte Scott 66 USPQ 371. Examiner suggest amending the claim to insert “composition” between “coating” and “disposed” so as to remove the ambiguity as set forth above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 recites “wherein the plurality of functionalized particles include at least one of an organic or an inorganic conductive additive”. Claim 1 lines 8-9 recites “wherein the particles are at least one of iron or iron-based” and specification at [0042] discloses “the plurality of functionalized particles… can be formed of varying material configured to conduct and/or dissipate heat and energy, for example an organic/inorganic additive (e.g., graphene metallic additive, for example, iron or iron-based, e.g., an iron alloy, steel, and the like)”. In this instance, the claimed “organic or an inorganic conductive additive” in claim 9 is the broader/genus limitation, and the claimed “iron or iron-based” in claim 1 is the narrower/specie limitation.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 2-6, 8, 10 and 13-14 are rejected due to their dependency on claim 1.
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.
Claims 1, 4, 7-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2023/0115050 A1) (“Ma” hereinafter) in view of Wang et al. (A roadmap review of thermally conductive polymer composites: critical factors, progress, and prospects, AFM journal, 06/15/2023) (“Wang” hereinafter); as evidenced by American Touch Up (Automotive Paint Repair, “What are the differences between… automotive paints? 2023) (“American” hereinafter) with respect to claim 1.
Regarding claim 1, Ma teaches a coating system (see Ma at [0117] teaching a substrate comprising a coating layer applied from any of the powder coating composition described herein), which is taken to meet the claimed coating system, comprising:
a coating disposed on a substrate, wherein the coating is a polymer-based automobile engine paint (see Ma at [0120] teaching powder coating composition may be selected from a wide variety of substrates and combinations thereof… non-limiting examples of substrates include vehicles including… automotive substrates, see Ma at [0008] teaching the powder coating composition comprises a binder… as used herein a “binder” refers to a constituent, film-forming material that holds all coating composition components together in a coating layer upon cure… the binder comprises one or more film-forming resins that can be used to form the coating layer… as used herein, a “film-forming resin” refers to a resin that can form a self-supporting continuous film on at least a horizontal surface of a substrate… the term “resin” is used interchangeably with “polymer,” and the term polymer refers to oligomers, homopolymers (e.g., prepared from a single monomer species), copolymers (e.g., prepared from at least two monomer species), terpolymers (e.g., prepared from at least three monomer species), and graft polymers, see Ma at [0011] teaching non-limiting examples of suitable film-forming resins that form at least a portion of the binder of the powder coating composition include… polyurethanes). The binder/resin/polymer including polyurethane is taken to meet the claimed recitation as evidenced by American (see American at Title evidencing “What are the differences between… Polyurethane… automotive paints?); and
a plurality of functionalized particles within the coating configured to dissipate localized thermal flux from the substrate (see Ma at [0045] teaching the powder coating composition comprises a thermally conductive, electrically insulative filler material… as used herein, the term “thermally conductive, electrically insulative filler” or “TC/EI filler” means a pigment, filler, or inorganic powder that has a thermal conductivity of at least 5 W/m˖K at 25o C… the TC/EI filler material may comprise particles of a single type of filler material or may comprise particles of two or more types of TC/EI filler materials). The TC/EI filler particles as taught by Ma is taken to meet the claimed “plurality of functionalized particles”, the TC/EI filler particles are within the coating since it is a filler, and the TC/EI filler particles are expected to be capable of dissipating localized thermal flux from the substrate because the thermal conductivity of TC/EI filler particles is at least 5 W/mK based on specification at [0046] disclosing the functionalized particles… can have high thermal conductivity… in a specific instance, the functionalized particles… can include a thermal conductivity of 0.3 watts per meter-Kelvin (W/mK) or greater.
Ma does not explicitly teach i) wherein at least a portion of the plurality of functionalized particles are aligned within a passage along a length of the coating, ii) wherein the passage is a path between a coating inner surface and a coating outer surface, and iii) wherein the functionalized particles are at least one of iron or iron-based particles. However, Ma teaches suitable non-limiting examples of TC/EI filler materials includes… metal oxides… carbides… ceramics… for example, the TC/EI filler material may comprise of… zinc oxide… copper oxide… silicon carbide… or any combination thereof (see Ma at [0048])… the TC/EI filler material may have any particle shape or geometry (see Ma at [0050]… suitable TC/EC filler materials include metals… carbon compounds… graphene and graphenic carbon particles (see Ma at [0076]).
Like Ma, Wang teaches a composition comprising polymer and thermally conductive filler materials including metals, graphene, zinc oxide and silicon carbide (see Wang at page 30 section 5 paragraphs 1-2 teaching in conclusion, we holistically review the advancement of thermally conductive polymer composites and outlined a technical roadmap… the key factors that influence its thermally conductive performance can be summarized as: i) thermally conductive filler types (ceramic and carbons were emphatically introduced), ii) the shape, size, aspect ratio, loading, and oriented arrangement of thermally conductive fillers… vi) polymer matrices… for filled thermally conductive polymers, the thermal conductivity of the fillers, the structure of thermally conductive network, and the interface between polymer and fillers strongly influence the thermal conductivity of composites, see Wang at page 5 left column paragraph 3 teaching for filled polymer composites, the increase in thermal conductivity is mainly due to the addition of high thermally conductive fillers, see Wang at page 8 right column paragraph 2 teaching commonly used thermally conductive fillers are metals, ceramics, and carbon materials… the [Symbol font/0x6C] values of common thermally conductive fillers are listed in Table 1, see Wang at page 8, Table 1… Fillers… Fe). Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that Fe (or iron) is a common thermally conductive filler suitable for its intended use. Fe (or iron) filler is taken to meet the claimed iii) “wherein the functionalized particles are at least one of… iron… particles”.
Wang further teaches that ceramic fillers have high thermal conductivity… mainly including carbides, oxides, and nitrides (see Wang at page 8 right column paragraph 3). Wang also teaches the thermal conductivity of the filled thermally conductive composite is also related to the special orientation of the filler in the polymer matrix… the 1D and 2D materials with a high aspect ratio, the magnitude of [Symbol font/0x6C] in the direction of longer dimensions is higher than that along other transverse directions… by aligning these fillers in the length direction, a high [Symbol font/0x6C] value can be achieved with low filler content… at present, there are many methods to achieve the directional arrangement of fillers (see Wang at page 16 section 3.4 paragraph 1)… thermal conductivity coefficient ([Symbol font/0x6C]) (see Wang at Abstract). Moreover, Wang teaches an illustration of thermally conductive paths for composites filled with oriented SiCNW network and randomly dispersed SiCNWs (see Wang at page 9, Fig. 6c, also shown below with Examiner annotation).
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One of ordinary skill in the art would appreciate that there are many methods to achieve the directional arrangement of fillers and a high thermal conductivity coefficient ([Symbol font/0x6C]) value can be achieved by aligning thermally conductive filler materials. Additionally, as illustrated in Fig. 6c above, aligned thermally conductive filler materials within a passage along a length of the coating are shown. These teachings based on Wang are taken to meet the claimed i) “wherein at least a portion of the plurality of functionalized particles are aligned within a passage along a length of the coating”, and ii) “wherein the passage is a path between a coating inner surface and a coating outer surface”.
As such, one of ordinary skill in the art would appreciate that Wang teaches that a high thermal conductivity coefficient ([Symbol font/0x6C]) value can be achieved by aligning thermally conductive filler materials such as Fe, and seek those advantages by aligning the thermally conductive filler materials such as Fe as taught by Wang in the coating composition as taught by Ma.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to align the thermally conductive filler materials such as Fe as taught by Wang in the coating composition as taught by Ma so as to achieve a high thermal conductivity coefficient ([Symbol font/0x6C]) value for the coating composition or composite.
Regarding claim 4, Ma in view of Wang teach the limitations as applied to claim 1 above, and Ma further teaches wherein the coating includes an appearance surface (see Ma at [0116] teaching coatings formed from a single powder coating composition… can be applied at any desired dry film thickness… when multiple powder coating compositions are applied, each composition can be applied to separately provide any of the previously described dry film thickness). One of ordinary skill in the art would appreciate that the coating composition would necessarily have an appearance surface because the dry film coating has a surface.
Regarding claim 7, Ma in view of Wang teach the limitations as applied to claim 1 above, and Ma further teaches wherein the plurality of functionalized particles include at least one of… zinc oxide (see Ma at [0048] teaching suitable non-limiting examples of TC/EI filler materials includes… metal oxides… for example, the TC/EI filler material may comprise of… zinc oxide).
Regarding claim 8, Ma in view of Wang teach the limitations as applied to claim 1 above, and Ma further teaches wherein the plurality of functionalized particles include a thermal conductivity greater than 0.3 W/mK (see Ma at [0045] teaching the “thermally conductive, electrically insulative filler” or “TC/EI filler” means a pigment, filler, or inorganic powder that has a thermal conductivity of at least 5 W/mK at 25oC) (see MPEP 2144.05(I)).
Wang further teaches wherein the plurality of functionalized particles include a stacking angle between 300 and 160o (Wang teaches this limitation as outlined below).
Wang teaches the thermal conductivity of the filled thermally conductive composite is also related to the special orientation of the filler in the polymer matrix… the 1D and 2D materials with a high aspect ratio, the magnitude of [Symbol font/0x6C] in the direction of longer dimensions is higher than that along other transverse directions… by aligning these fillers in the length direction, a high [Symbol font/0x6C] value can be achieved with low filler content… at present, there are many methods to achieve the directional arrangement of fillers (see Wang at page 16 section 3.4 paragraph 1)… thermal conductivity coefficient ([Symbol font/0x6C]) (see Wang at Abstract).
As such, one of ordinary skill in the art would appreciate that aligning conductive filler materials as taught by Wang is a result effective variable that could be optimized so as to provide a high thermal conductivity coefficient ([Symbol font/0x6C]) value for the coating composition or composite as taught by Ma.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized aligning conductive filler materials as taught by Wang so as to provide a high thermal conductivity coefficient ([Symbol font/0x6C]) value for the coating composition or composite as taught by Ma so as to arrive at the claimed “wherein the plurality of functionalized particles include a stacking angle between 300 and 160o”.
Regarding claim 9, Ma in view of Wang teach the limitations as applied to claim 1 above, and Ma further teaches wherein the plurality of functionalized particles include at least one of … an inorganic conductive additive (see Ma at [0045] teaching the “thermally conductive, electrically insulative filler” or “TC/EI filler” means a pigment, filler, or inorganic powder… the TC/EI filler material may comprise… inorganic material). The TC/EI filler is taken to meet the claimed limitations.
Regarding claim 10, Ma in view of Wang teach the limitations as applied to claim 1 above, and Ma further teaches wherein the plurality of functionalized particles are between one nanometer and two micrometers in size (see Ma at [0051] teaching the particles of TC/EI filler material may have a reported average particle size in at least one dimension of 0.01 microns (or 10 nanometer) to 500 microns) (see MPEP 2144.05(I)).
Regarding claim 11, Ma in view of Wang teach the limitations as applied to claim 1 above, and Wang further teaches wherein the plurality of functionalized particles includes oxidized graphene (see Wang at page 8, Table 8 teaching fillers… GO (or graphene oxide)).
Regarding claim 13, Ma in view of Wang teach the limitations as applied to claim 1 above, and Ma further teaches wherein the plurality of functionalized particles include plates (see Ma at [0072] teaching the TC/EI material may have any particle shape or geometry… for example, the TC/EI filler material may be… platy).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Wang as applied to claim 1 above, and further in view of Werner (US 2008/0164635 A1) (“Werner” hereinafter).
Regarding claims 2-3, Ma in view of Wang teach the limitations as applied to claim 1 above, and Ma further teaches wherein the substrate is at least one of… metal (claim 2) (see Ma at [0121] teaching the substrates… can be… metallic).
Ma in view of Wang do not explicitly teach that i) the substrate is integrated with a bore for air flow (claim 2), and wherein the substrate is a vehicle intake manifold (claim 3). But Ma teaches the substrate coated with the powder coating composition may be selected from a wide variety of substrates and combinations thereof… non-limiting examples of substrates include vehicles… including automotive substrates (see Ma at [0120])… as used herein, “vehicle” or variations thereof include, but are not limited to… aircraft, and/or land vehicles… the shape of the substrate can be in the form of a sheet, plate, bar, rod or any shape desired (see Ma at [0123])… the substrates, including any of the substrates previously described, can be metallic or non-metallic (see Ma at [0121])… non-metallic substrates include… polymeric… plastic (see Ma at [0122]).
Like Ma, Werner teaches coated vehicular parts (see Werner at [0064] teaching the article is an automobile part having two or more components, for example… an air intake module… with a different surface finish, see Werner at [0005] teaching components of machinery, e.g. parts of motor vehicles… are increasingly made of thermoplastic material, see Werner at [0062] teaching a thermoplastic article of two or more components with different surface finishes in different surface zones, see Werner at [0047] teaching the finish applied to the surface of the first thermoplastic part is applied by a technique selected from painting… electroplating…). The air intake module vehicular part is taken to meet the claimed i) the substrate is integrated with a bore for air flow (claim 2), and wherein the substrate is a vehicle intake manifold (claim 3).
As such, one of ordinary skill in the art would appreciate that Werner teaches that an air intake module vehicular part may have different surface finishes in different surface zones. Additionally, it is within the ability of one skilled in the art, with the benefit of the teaching of Werner to choose an air intake module vehicular as the substrate as taught by Ma.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to choose an air intake module vehicular as taught by Werner as the substrate as taught by Ma because it is within the ability of one skilled in the art to choose the vehicular part with surface finishes.
Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Wang as applied to claims 1 and 4 above, and further in view of Han et al. (US 2019/0040514 A1) (“Han” hereinafter); as evidenced by Li et al. (US 2017/0362691 A1) (“Li” hereinafter) with respect to claim 5.
Regarding claim 5, Ma in view of Wang teach the limitations as applied to claims 1 and 4 above, but Ma in view of Wang do not explicitly teach wherein the appearance surface has a surface roughness between 15 and 35 microns Ra/Sa.
Like Ma, Han teaches coated vehicular parts (see Han at [0010] teaching an engine block defining an engine cylinder bore coated by the method disclosed).
Han also teaches superior adhesion strength of the thermal spray coating to the substrate is produced by implementing the following specifications prior to coating onto the cylinder bore activated surfaces… about 10 µm Ra (or between 9 and 15 µm) (see Han at [0005]), wherein Ra is an average two dimensional surface roughness as evidenced by Li (see Li at [0024]). Han further teaches the step of texturing the inner surface including texturing the inner surface until the inner surface exhibits a range of average three dimensional roughness (Sa) between 9 and 15 µm (see Han at [0009])… average roughness is referred to as Sa, which is the average surface roughness evaluated over the complete three dimensional surface (see Han at [0027]).
Additionally, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
As such, one of ordinary skill in the art would appreciate that Ra and Sa as taught by Han is a result effective variable that could be optimized to provide the desired surface roughness because it is “the normal desire of scientists or artisans to improve upon what is already generally known” and “to discover the optimum or workable ranges by routine experimentation".
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the Ra and Sa as taught by Han in the coating composition as taught by Ma so as to provide the desired surface roughness and arrive at the claimed “wherein the appearance surface has a surface roughness between 15 and 35 microns Ra/Sa” because it is “the normal desire of scientists or artisans to improve upon what is already generally known” and “to discover the optimum or workable ranges by routine experimentation".
Regarding claim 14, Ma in view of Wang teach the limitations as applied to claim 1 above, and please see claim 5 rejection based on Han as it is incorporated herein. Ma in view of Wang do not explicitly teach wherein the coating system includes the coating in an alternating curvature configuration.
However, Han teaches Fig. 2A (shown below)… schematically illustrates the substrate surface activation and/or micro surface texture 20 of the treated or prepared surface of the cylinder wall 14 (see Han at [0023]). The micro surface texture 20 shown below is taken to meet the claimed “wherein the coating system includes the coating in an alternating curvature configuration” based on specification at [0040] disclosing in the example illustrated in FIG. 2A, the coating 20 is shown in a partial side cross-sectional view having an appearance surface and surface roughness configured in a wrinkle pattern, where the wrinkle pattern includes an undulated surface including alternating ridges 24 and valleys 26 with consistent widths W and/or an alternating curvature configuration.
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the Ra and Sa as taught by Han in the coating composition as taught by Ma so as to provide the desired surface roughness and arrive at the claimed “wherein the coating system includes the coating in an alternating curvature configuration” because it is “the normal desire of scientists or artisans to improve upon what is already generally known” and “to discover the optimum or workable ranges by routine experimentation".
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Wang and Han as applied to claims 1 and 4-5 above, and further in view of Werner.
Regarding claim 6, Ma in view of Wang and Han teach the limitations as applied to claims 1 and 4-5 above, and please see claim 5 rejection based on Werner as it is incorporated herein. Ma in view of Wang and Han do not explicitly teach wherein the surface roughness can be surface patterned with a matte finish.
However, Werner teaches for aesthetic reasons, it is often desired to impart different surface colors or finishes to different surface areas… such as for example… a matte finish (see Werner at [0006]), which is taken to meet the claimed “wherein the surface roughness can be surface patterned with a matte finish”.
The claimed “wherein the surface roughness can be surface patterned with a matte finish” is being treated as being taught by Ma in view of Wang, Han and Werner because there is no evidence indicating that the claimed limitations are critical, absent new and unexpected results based on the teaching of Werner that a matte finish is chosen for aesthetic reasons. Additionally, it is within the ability of one skilled in the art, with the benefit of the teachings of Ma in view of Wang, Han and Werner to choose an appropriate surface finish.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Wang as applied to claim 1 above, and further in view of Goyal et al. (Thermal properties of the hybrid graphene-metal nano-micro-composites: Applications in thermal interface materials, Appl. Phys. Lett, 2012) (“Goyal” hereinafter).
Regarding claim 12, Ma in view of Wang teach the limitations as applied to claim 1 above, and Ma teaches suitable TC/EI filler materials include… graphene and graphenic carbon particles (see Ma at [0076]). However, Ma in view of Wang does not explicitly teach wherein the plurality of functionalized particles include a graphene metallic additive.
Ma teaches a non-limiting example of a hybrid binder of the powder coating composition is a binder comprising… an epoxy functional polymer (see Ma at [0020]). As mentioned, Ma teaches the TC/EI filler material may comprise organic or inorganic material and may comprise particles of a single type of filler material or may comprise particles of two or more types of TC/EI filler materials (see Ma at [0045])… suitable TC/EI filler materials include metals such as… silver… carbon compounds such as… graphene and graphenic carbon particles (see Ma at [0076]).
Like Ma, Goyal teaches thermally conductive graphene filler in an epoxy polymer binder (see Goyal at Abstract teaching the authors report on synthesis and thermal properties of the electrically conductive thermal interface materials with the hybrid graphene-metal particle fillers… the unusually strong enhancement of thermal properties was attributed to the high intrinsic thermal conductivity of graphene, strong graphene coupling to matrix materials, and the large range of the length-scale–from nanometers to micrometers–of the graphene and silver particle fillers, see Goyal at page 1, right column paragraph 2 teaching to prepare the hybrid graphene-metal-epoxy composites, we dispersed the graphene solution in the silver epoxy). The hybrid graphene-metal-epoxy composite is taken to meet the claimed “wherein the plurality of functionalized particles include a graphene metallic additive”.
As such, one of ordinary skill in the art would appreciate that Goyal teaches that hybrid graphene-metal particle fillers form unusually strong enhancement of thermal properties, and seek those advantages by adding hybrid graphene-metal particle fillers as the TC/EI filler material in the coating composition as taught by Ma.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add hybrid graphene-metal particle fillers as taught by Goyal as the TC/EI filler material in the coating composition as taught by Ma so as to form unusually strong enhancement of thermal properties of the electrically conductive thermal interface materials.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Ma in view of Li and Wang; as evidenced by American.
Regarding claim 15, Ma teaches a vehicle propulsion system (see Ma at [0120] teaching powder coating composition may be selected from a wide variety of substrates and combinations thereof… non-limiting examples of substrates include vehicles including… automotive substrates), which is taken to meet the claimed vehicle propulsion system, comprising:
having a body (see Ma at [0120] teaching non-limiting examples of substrates include vehicles including… automotive substrates). Automotive substrates necessarily comprises a body; and
a coating system coupled to the body, the coating system including a coating disposed on the body (see Ma at [0117] teaching a substrate comprising a coating layer applied from any of the powder coating composition described herein, see Ma at [0120] teaching powder coating composition may be selected from a wide variety of substrates and combinations thereof… non-limiting examples of substrates include vehicles including… automotive substrates), including
wherein the coating is a polymer-based automobile engine paint (see Ma at [0008] teaching the powder coating composition comprises a binder… as used herein a “binder” refers to a constituent, film-forming material that holds all coating composition components together in a coating layer upon cure… the binder comprises one or more film-forming resins that can be used to form the coating layer… as used herein, a “film-forming resin” refers to a resin that can form a self-supporting continuous film on at least a horizontal surface of a substrate… the term “resin” is used interchangeably with “polymer,” and the term polymer refers to oligomers, homopolymers (e.g., prepared from a single monomer species), copolymers (e.g., prepared from at least two monomer species), terpolymers (e.g., prepared from at least three monomer species), and graft polymers, see Ma at [0011] teaching non-limiting examples of suitable film-forming resins that form at least a portion of the binder of the powder coating composition include… polyurethanes). The binder/resin/polymer including polyurethane is taken to meet the claimed recitation as evidenced by American (see American at Title evidencing “What are the differences between… Polyurethane… automotive paints?); and
a plurality of functionalized particles within the coating configured to dissipate localized thermal flux from the substrate, and the plurality of functionalized particles have a thermal conductivity greater than 0.3 W/mK (see Ma at [0045] teaching the powder coating composition comprises a thermally conductive, electrically insulative filler material… as used herein, the term “thermally conductive, electrically insulative filler” or “TC/EI filler” means a pigment, filler, or inorganic powder that has a thermal conductivity of at least 5 W/m˖K at 25o C… the TC/EI filler material may comprise particles of a single type of filler material or may comprise particles of two or more types of TC/EI filler materials) (see MPEP 2144.05(I)). The TC/EI filler particles as taught by Ma is taken to meet the claimed plurality of functionalized particles, the TC/EI filler particles are within the coating since it is a filler, and the TC/EI filler particles are expected to be capable of dissipating localized thermal flux from the substrate because the thermal conductivity of TC/EI filler particles is at least 5 W/mK based on specification at [0046] disclosing the functionalized particles… can have high thermal conductivity… in a specific instance, the functionalized particles… can include a thermal conductivity of 0.3 watts per meter-Kelvin (W/mK) or greater, and
at least a portion of the plurality of functionalized particles are sheets (see Ma at [0072] teaching the TC/EI filler material may have any particle shape or geometry… for example… platy… flake-shaped… and any combination thereof). Platy and/or flake-shaped is taken to meet the claimed “sheets” because both shapes can be interpreted as sheets. Alternatively, MPEP states that “the court held that the configuration… was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed… was significant” (see MPEP § 2144.04.IV.B). In this instance, a person of ordinary skill in the art would have found the claimed “sheets” found obvious absent persuasive evidence that the particular configuration of the claimed “functionalized particles” was significant.
Ma does not explicitly teach i) wherein at least a portion of the plurality of functionalized particles are aligned within a passage along a length of the coating, ii) wherein the passage is a path between a coating inner surface and a coating outer surface, and iii) wherein the functionalized particles are at least one of iron or iron-based particles. However, Ma teaches suitable non-limiting examples of TC/EI filler materials includes… metal oxides… carbides… ceramics… for example, the TC/EI filler material may comprise of… zinc oxide… copper oxide… silicon carbide… or any combination thereof (see Ma at [0048])… the TC/EI filler material may have any particle shape or geometry (see Ma at [0050]… suitable TC/EC filler materials include metals… carbon compounds… graphene and graphenic carbon particles (see Ma at [0076]).
Like Ma, Wang teaches a composition comprising polymer and thermally conductive filler materials including metals, graphene, zinc oxide and silicon carbide (see Wang at page 30 section 5 paragraphs 1-2 teaching in conclusion, we holistically review the advancement of thermally conductive polymer composites and outlined a technical roadmap… the key factors that influence its thermally conductive performance can be summarized as: i) thermally conductive filler types (ceramic and carbons were emphatically introduced), ii) the shape, size, aspect ratio, loading, and oriented arrangement of thermally conductive fillers… vi) polymer matrices… for filled thermally conductive polymers, the thermal conductivity of the fillers, the structure of thermally conductive network, and the interface between polymer and fillers strongly influence the thermal conductivity of composites, see Wang at page 5 left column paragraph 3 teaching for filled polymer composites, the increase in thermal conductivity is mainly due to the addition of high thermally conductive fillers, see Wang at page 8 right column paragraph 2 teaching commonly used thermally conductive fillers are metals, ceramics, and carbon materials… the [Symbol font/0x6C] values of common thermally conductive fillers are listed in Table 1, see Wang at page 8, Table 1… Fillers… Fe). Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that Fe (or iron) is a common thermally conductive filler suitable for its intended use. Fe (or iron) filler is taken to meet the claimed iii) “wherein the functionalized particles are at least one of… iron… particles”.
Wang further teaches that ceramic fillers have high thermal conductivity… mainly including carbides, oxides, and nitrides (see Wang at page 8 right column paragraph 3). Wang also teaches the thermal conductivity of the filled thermally conductive composite is also related to the special orientation of the filler in the polymer matrix… the 1D and 2D materials with a high aspect ratio, the magnitude of [Symbol font/0x6C] in the direction of longer dimensions is higher than that along other transverse directions… by aligning these fillers in the length direction, a high [Symbol font/0x6C] value can be achieved with low filler content… at present, there are many methods to achieve the directional arrangement of fillers (see Wang at page 16 section 3.4 paragraph 1)… thermal conductivity coefficient ([Symbol font/0x6C]) (see Wang at Abstract). Moreover, Wang teaches an illustration of thermally conductive paths for composites filled with oriented SiCNW network and randomly dispersed SiCNWs (see Wang at page 9, Fig. 6c, also shown below with Examiner annotation).
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One of ordinary skill in the art would appreciate that there are many methods to achieve the directional arrangement of fillers and a high thermal conductivity coefficient ([Symbol font/0x6C]) value can be achieved by aligning thermally conductive filler materials. Additionally, as illustrated in Fig. 6c above, aligned thermally conductive filler materials within a passage along a length of the coating are shown. These teachings based on Wang are taken to meet the claimed i) “wherein at least a portion of the plurality of functionalized particles are aligned within a passage along a length of the coating”, and ii) “wherein the passage is a path between a coating inner surface and a coating outer surface”.
As such, one of ordinary skill in the art would appreciate that Wang teaches that a high thermal conductivity coefficient ([Symbol font/0x6C]) value can be achieved by aligning thermally conductive filler materials such as Fe, and seek those advantages by aligning the thermally conductive filler materials such as Fe as taught by Wang in the coating composition as taught by Ma.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to align the thermally conductive filler materials such as Fe as taught by Wang in the coating composition as taught by Ma so as to achieve a high thermal conductivity coefficient ([Symbol font/0x6C]) value for the coating composition or composite.
Response to Arguments
Applicant’s amendments that narrowed the claimed coating in independent claims 1 and 15 respectively have obviated the previous rejection, specifically based on Dedomenic. However, upon further search consideration, a new ground of rejection is set forth using the references Ma, Wang and Li. Relevant arguments with respect to references Wang and Li are addressed below.
Applicant discusses that Dedomenic, Wang, and Li fail to teach “wherein the coating is a polymer-based automobile engine part” and “the plurality of functionalized particles are aligned within a passage is a path between a coating inner surface and a coating outer surface, and wherein the functionalized particles are at least one of iron or iron-based”… the cited references fail to recognize a coating that can be exposed to high temperature and/or high humidity, which may make control of surface properties of a coating system difficult (see Applicant’s arguments at page 2 paragraph 2 to page 3 paragraph 1).
Examiner acknowledges the arguments and respectfully notes that after updated search and consideration, the claimed recitations have been reasonably met by the combination of Ma, Wang and Li, as outlined above.
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., a coating that can be exposed to high temperature and/or high humidity, which may make control of surface properties of a coating system difficult) 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). Additionally, the coating composition as taught by Ma, Wang and Li is expected to be capable of being exposed to high temperature and/or high humidity, which may make control of surface properties of a coating system difficult. As such, the rejection to independent claims 1 and 15 are maintained.
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.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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