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
• Claims 1 and 3-27 are currently pending. Claim 2 is canceled. Claims 14-26 are withdrawn for being directed to a non-elected invention(s). The objection to claim 10 is withdrawn in light of the amendments to the claims. The 35 U.S.C. 112(b) rejections of claims 1-13 are withdrawn in light of the amendments to the claims.
Claim Interpretation
For the purposes of examination, the Examiner is interpreting any filler that contains at least one particle with a size of 50 to 500 nm to read on the claimed phrase “said filler has a particle size in the nanometric order, in a size ranging from 50 nanometers to 500 nanometers.” Since the claimed “particle size” is NOT an average or median particle size, it is the Examiner’s position that the broadest reasonable interpretation of the claimed phrase allows for any filler that contains at least one particle with a size of 50 to 500 nm.
Claim Rejections - 35 USC § 112(a)
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 1, 3-13 and 27 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.
Claims 1, 3, 5, and 8-13 were amended to recite “wt%” units, which is not supported by the original disclosure. There is no support in the original disclosure of the claimed percentages being in terms of wt% or some related mass measurement. Claims 4, 6, 7, and 27 are also rejected by virtue of their dependency on claim 1.
Claim 1 was amended to recite the “filler” to have a particle size ranging from 50 nm to 500 nm. There is no support in the original disclosure of the claimed particle size range being with respect to the filler. At best, Applicants have an example teaching the use of “nanometric barium sulfate” (see Applicant’s specification at para. 0050); however, this does not provide support for the broad types of fillers claimed (e.g., calcium carbonate, boron nitride) or the entire range of 50 to 500 nm as claimed (the example doesn’t provide the exact nm particle size of barium sulfate used). Consequently, a new matter issue arises. Claims 3-13 and 27 are also rejected by virtue of their dependency on claim 1.
The Examiner notes that the claims are examined with the amendments as currently presented, regardless of the new matter issues. See MPEP § 2163.06(I).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US-20230307155-A1) (hereinafter referred to as “Huang”).
Regarding claims 1, 3, 5, 9, Huang teaches a coating configured for application to an electrical cable and/or conductor, to passively enhance heat dissipation (see Huang at para. 0027 and Fig. 1, teaching an outer coating 130 disposed around a conductor layer; also see Huang at para. 0039 and 0071-0072, teaching the outer coating 130 to have a high radiative emissivity, inclusive of thermal radiation, and a high solar reflectivity, reducing the operating temperature of the conductor 100; thus, the outer coating 130 of Huang necessarily corresponds to the claimed “coating”), the coating comprising:
• a filler, the filler being present in said coating in a range from 10 wt% to 70 wt% (15 wt% to 50 wt%, regarding claim 3), wherein the filler comprises at least one of Calcium Carbonate, Barium Sulfate, Aluminum Nitride, Boron Nitride, or Beryllium Oxide (see Huang at para. 0082-0084, teaching the outer coating 130 may contain a filler, such as boron nitride, in an amount of less than about 50%, which overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• a binder, the binder being present in said coating in a range from 20 wt% to 80 wt% (30 wt% to 60 wt%, regarding claim 5), said binder configured as a binding element between different components present and forming said coating (see Huang at para. 0088, teaching the outer coating 130 may include a binder in an amount ranging from 10 to 70%, which overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• a surfactant, the surfactant being present in said coating in a range from 0.1 wt% to 10 wt%; said surfactant configured to stabilize the mixture, ensuring a uniform dispersion of the components integrated into said mixture (see Huang at para. 0090, teaching the outer coating 130 may contain a dispersion stabilizer in an amount ranging from 0.1 to 2%, which falls within the claimed range; the dispersion stabilizer of Huang corresponds to the claimed “surfactant”); and
• an anti-settling agent, the anti-settling agent being present in said coating in a range from 0.5 wt% to 10 wt% (0.5 to 5%, regarding claim 9) (see Huang at para. 0086, teaching the outer coating 130 may include an emulsifier to maintain an even dispersion of compounds in a water solution; thus, since the emulsifier of Huang functions to maintain an even dispersion, the emulsifier of Huang necessarily functions as an “anti-settling agent”, i.e., the emulsifier prevents the compounds from settling by maintaining an even dispersion; also see Huang at para. 0086, teaching the emulsifier may be present in the composition in a range of about 2 to about 3%, which falls within the claimed ranges);
• wherein additionally, said filler has a particle size in the nanometric order, in a size ranging from 50 nanometers to 500 nanometers (see Huang at para. 0084, teaching the outer coating 130 may include a filler having a particle size of about 500 nm or less, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; also see the “Claim Interpretation” section above).
Regarding claims 4 and 7, see Huang at para. 0088, teaching the binder may include sodium silicate.
Regarding claim 8, see Huang at para. 0090, teaching the outer coating 130 may contain a dispersion stabilizer in an amount ranging from 0.1 to 2%, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claims 6 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Huang, as applied to claim 1 above, and further in view of Choa et al. (US-20220098463-A1) (hereinafter referred to as “Choa”) and Davis et al. (US-20150235739-A1) (hereinafter referred to as “Davis”).
Regarding claims 6 and 10-13, while Huang teaches the coating according to claim 1 outlined above, Huang fails to explicitly teach the binder as comprising a solvent, wherein the solvent is an organic solvent or water and is present in the binder in a range from 40% to 90% (60 to 85%, regarding claim 11), wherein the inorganic resin is sodium silicate or a polyurethane and is present in the binder in a range from 5% to 30% (15 to 25%, regarding claims 12-13).
However, it is well-known that binders containing sodium silicate may be used in the form of aqueous solutions in similar heat-emissive coating compositions, and that the concentration of the sodium silicate in the binder may range from 15 to 30 wt% (see Choa at para. 0006 and 0080; also see Davis at para. 0032 and 0040). Consequently, if the sodium silicate concentration is 15 to 30 wt%, the water concentration is 70 to 85% (100 – 15 = 85; 100 – 30 = 70).
Huang teaches their binder may include sodium silicate (see Huang at para. 0088).
In this case, the use of aqueous solutions of sodium silicate, in which the sodium silicate is 15 to 30% of the solution and water is 70 to 85% of the solution, is known to be used in similar heat-emissive coating compositions in the art (as exemplified by Choa at para. 0006 and 0080; and Davis at para. 0032 and 0040), and thus the use of such a solution in the composition of Huang would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an aqueous solution of sodium silicate, in which the sodium silicate is 15 to 30% of the solution and water is 70 to 85% of the solution, as the binder in the coating of Huang, as combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
These ranges of 15 to 30% for the sodium silicate and 70 to 85% for the water either fall completely within the claimed ranges or overlap the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Huang, as applied to claim 1 above, and further in view of Yokoki et al. (JP-2011070019-A), with reference to the included machine translation (hereinafter referred to as “Yokoki”).
Regarding claim 27, while Huang teaches the coating according to claim 1 outlined above, Huang fails to explicitly teach the filler as comprising barium sulfate.
However, Yokoki teaches a reflecting composition containing an inorganic filler (see Yokoki at pg. 2, para. 5). Yokoki further teaches the inorganic filler to be reflective, and that taking into account long-term durability, it is particularly preferable to use barium sulfate as the inorganic filler, which is stable against acids and alkalis (see Yokoki at pg. 10, para. 2).
Huang teaches the outer coating 130 may contain one or more reflective additives (see Huang at para. 0090). Huang further teaches generically their outer coating 130 to be a reflective material (see Huang at para. 0072).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use barium sulfate as the reflective additive in the coating of Huang. One of ordinary skill in the art would have been motivated to do so in order to use a reflective additive that is stable against acids and alkalis, ensuring long-term stability of the coating (see Yokoki at pg. 10, para. 2).
Following the above modification, the coating of modified Huang contains both barium sulfate and boron nitride as “fillers” in their composition (e.g., the boron nitride may be used as a heat-radiating filler, see Huang at para. 0089, and the barium sulfate may be used as a reflective additive filler, see Huang at para. 0090).
Response to Arguments
Applicant's arguments filed 09/29/2025 have been fully considered but they are not considered persuasive for at least the reasons mentioned below.
First, Applicants argue the data in their specification shows that nanometric fillers perform better at passively reducing the temperature of coated metal plates (see Applicant’s Remarks at pg. 9-10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
First, the examples in Applicant’s specification are not fully commensurate in scope with the claimed invention. See MPEP § 716.02(d). Applicants use in their examples only barium sulfate, despite claim 1 suggesting the possibility for other fillers such as calcium carbonate and boron nitride (see para. 0046 of Applicant’s specification and claim 1). As such, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the filler included in claim 1.
Moreover, even if claim 1 was amended to only include barium sulfate, Applicants examples are still not fully commensurate in scope with the claimed invention. See MPEP § 716.02(d). Applicants only generically mention the barium sulfate in their examples as being “nanometric,” with no indication as to the exact size. “Nanometric” could refer to values outside the claimed range, e.g., 600 nm. There is no indication that Applicants even tested values within the claimed range. As such, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the filler particle size range of 50 to 500 nm included in claim 1.
Additionally, to establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP § 716.02(d)(II). Applicants only point to a single “micrometric” comparative example, Fig. 6D (see Applicant’s Remarks at pg. 9); however, no comparative example is provided where the nanometer size is below 50 nm. Further, it is unclear which “micrometric” value is even tested, leading to difficulties in comparisons. As such, doubts are raised as to the criticality of the claimed range.
Furthermore, Applicants do not provide the chemical composition of the compounds tested in their examples. Thus, it is unclear whether Applicants’ examples even read on claim 1. For example, it is not clear whether Applicants examples contain 0.1 to 10% of surfactant or 20 to 80% of binder, given that no compositional components are specified. As such, the examples do not sufficiently demonstrate unexpected results for the overall coating of claim 1.
Next, Applicants argue that Huang does not disclose the particle size of the boron nitride component (see Applicant’s Remarks at pg. 10). Applicants further argue that Huang specifically calls out “boron oxide, zinc oxide, cerium oxide, silicone dioxide, and titanium dioxide” as materials that “can act as an emissivity agent to improve radiation of heat from the outer coating 130” but does not do so for the claimed calcium carbonate, barium sulfate, aluminum nitride, boron nitride, or beryllium oxide (see Applicant’s Remarks at pg. 10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The claims do not necessitate calcium carbonate, barium sulfate, aluminum nitride, boron nitride, or beryllium oxide to have a particle size in the nanometric order. The claims simply require the broad “filler” to have such a particle size. Huang teaches their filler may have a particle size of 500 nm or less (see Huang at para. 0084). Accordingly, in view of the “Claim Interpretation” section outlined above, Huang reads on the particle size limitation, given that Huang teaches at least one “filler” particle in the composition with a nanometer particle size. Alternatively, boron nitride is explicitly taught by Huang to be a heat-radiating component (see Huang at para. 0089), which is the same function as the fillers taught by Huang, i.e., filler which acts “as an emissivity agent to improve the radiation of heat from the outer coating 130” (see Huang at para. 0082). Consequently, Huang reasonably teaches boron nitride for use as a heat-radiating filler in the claimed composition, and thus, with the taught particle size of 500 nm or less (see Huang at para. 0084).
Next, Applicants argue Huang further fails to disclose the claimed filler compounds with the claimed particle size as allowing for improved passive heat dissipation (see Applicant’s Remarks at pg. 10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Nothing in the claims necessitates the filler compounds specifically to be heat radiating. Further, Huang explicitly teaches boron nitride may be used as a heat-radiating component in their coating (see Huang at para. 0089).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Nakamura et al. (JP-2010181825-A) teach a photosensitive composition containing an inorganic filler (see Nakamura at Abstract).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731