Prosecution Insights
Last updated: May 29, 2026
Application No. 18/561,645

COATING SYSTEM FOR PROTECTING A SUBSTRATE

Final Rejection §103
Filed
Nov 16, 2023
Priority
May 20, 2021 — IT 102021000013169 +1 more
Examiner
AHMED, SHEEBA
Art Unit
1787
Tech Center
1700 — Chemical & Materials Engineering
Assignee
BEDIMENSIONAL S.P.A.
OA Round
2 (Final)
81%
Grant Probability
Favorable
3-4
OA Rounds
4m
Est. Remaining
95%
With Interview

Examiner Intelligence

Grants 81% — above average
81%
Career Allowance Rate
899 granted / 1115 resolved
+15.6% vs TC avg
Moderate +14% lift
Without
With
+14.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
25 currently pending
Career history
1147
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
45.4%
+5.4% vs TC avg
§102
34.1%
-5.9% vs TC avg
§112
8.5%
-31.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1115 resolved cases

Office Action

§103
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. The amendment filed on February 20, 2026 has been entered in the above-identified application. Claim 5 is amended. Claims 1-10 are pending and under consideration. 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. 3. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2012/0021250 A1) in view of Ram (US 2021/0380814 A1). Lee et al. disclose a method of preparing a carbon thin film (equivalent to the coating system of the claimed invention), the method including: forming a polymer layer (equivalent to layer B of the claimed invention) on a substrate (equivalent to layer A of the claimed invention) by using a coating process; and forming a protective layer (equivalent to the substrate of the claimed invention as recited in claim 8) on the polymer layer. The substrate (equivalent to layer A of the claimed invention) may include silicon, a silicon oxide, metal foils, stainless steel, a metal oxide, a highly ordered pyrolytic graphite (HOPG), hexagonal boron nitride (h-BN), a c-plane sapphire wafer, zinc sulfide (ZnS), a polymer substrate, or a combination of at least two of the foregoing (hence meeting the limitations of layer A as recited in claim 1 and meeting the limitations of the pyrolytic graphite layer). The polymer layer (equivalent to layer B of the claimed invention) is formed on the substrate and may include an insulating polymer. The polymer contained in the polymer layer may be polyethylene (PE), polypropylene (PP), polybutene-1 (PB-1), poly 4-methyl-1-pentene, polyvinyl chloride (PVC), polyvinyl fluoride (PVF), polyvinyl amine (PVAm), polystyrene (PS), poly4-vinylphenol (PVP), poly(2-vinylnaphthalene), poly(1-vinylnaphthalene), poly 2-vinyl pyridine, poly 4-vinyl pyridine, polyisobutylene, polyvinylidene fluoride, polyvinylidene chloride, and polyacrylic acid (meeting the limitations of claim 2). The polymer layer is formed providing a first mixture including the polymer and a solvent and mixture may further include at least one additive selected from the group consisting of a cross-linking agent, an acid catalyst, a metal filler, a ceramic filler, and nanoparticles (meeting the limitations of claim 5). Because the amount of the polymer contained in a unit volume of the polymer layer 13 is controlled by regulating the concentrations of the first mixture and/or the second mixture, the thickness of the polymer layer 13 may be controlled, so that the thickness of the carbon thin film 17 may also be controlled. According to the method of preparing a carbon thin film, the thickness of the carbon thin film may be controlled. The protective layer prevents the polymer contained in the polymer layer from being lost by degradation and/or calcination during the heat-treatment. The protective layer (equivalent to the substrate of the claimed invention as recited in claim 8) may include a material such as a metal, a metal oxide, ceramic, a semiconductor oxide, and a semiconductor nitride. For example, the protective layer may include at least one selected from the group consisting of copper (Cu), nickel (Ni), palladium (Pd), gold (Au), silver (Ag), aluminum (Al), molybdenum (Mo), a copper oxide, a nickel oxide, a palladium oxide, an aluminum oxide, a molybdenum oxide, gallium nitride (GaN), silicon nitride (SiN), silicon oxide, and a combination of at least two of the foregoing (meeting the limitations of claims 9 and 10). (See Abstract and paragraphs 0009-0014, 0047-0055, and 0072-0087). Lee et al. do not teach that the polymeric layer comprises 2D flakes. However, Ram discloses hybrid particles having improved electrical conductivity and thermal and chemical stabilities. The disclosed hybrid particles can be used in a conductive paste, a sensor application, for sunlight control, catalytic activity, non-linear optical effect, antibacterial activity, or stretchable electronics applications. Suitable graphene-containing materials include graphene, graphene oxide, carbon nanoparticles including carbon nanotubes, or a combination thereof. Suitable dichalcogenide materials include molybdenum disulphide, molybdenum diselenide, molybdenum ditelluride, tungsten disulphide, tungsten diselenide, tungsten ditelluride, titanium diselenide, titanium disulphide, titanium ditelluride, zirconium disulphide, zirconium diselenide, zirconium ditelluride, tin disulphide, tin diselenide, tantalum disulphide, tantalum diselenide, vanadium tantalum ditelluride, or a combination thereof. The nanoparticle preferably includes a 2-dimensional (2D) layered structure and is also a conducting material. The term “nanoparticle” as used herein refers to any structure whose primary average particle size is less than 1 micron, preferably less than 500 nm, such as less than 350 nm in one dimension. For example, a nanoparticles can comprise a nanowire, nanotube, nanorod, spherical nanoparticle, nanopore, and the like, or combinations thereof. As such, the term nanoparticle can comprise, for example, a nanowire, nanotube, nanorod, spherical nanoparticle, nanopore, or a combination thereof. The nanoparticle can be a 2D (such as a flake). (See Abstract and paragraphs 0009, 0029, and 0030). Accordingly, it would have been obvious to one having ordinary skill in the art to add 2D flakes to the polymer layer taught by Lee et al. given that Ram specifically teaches that 2D flakes such as graphene-containing materials and dichalcogenide materials improve electrical conductivity and thermal and chemical stabilities. With regards to the ratio between the 2D flakes and the polymeric matrix in layer B (as recited in claims 3 and 4), the number of layers (as recited in claim 6), and the aspect ratio of the 2D flakes (as recited in claims 7), the Examiner would like to point out that workable physical properties and concentrations are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties. Response to Arguments 4. Applicant's arguments filed on February 20, 2026 have been fully considered but they are not persuasive. Applicants traverse the rejection of claims 1-10 under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2012/0021250 A1) in view of Ram (US 2021/0380814 A1) and submit that Lee is nonanalogous art. However, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Lee et al. teach the polymer layer is formed providing a first mixture including the polymer and a solvent and mixture may further include at least one additive selected from the group consisting of a cross-linking agent, an acid catalyst, a metal filler, a ceramic filler, and nanoparticles and Ram specifically teaches that 2D flakes such as graphene-containing materials and dichalcogenide materials can be added to compositions to improve electrical conductivity and thermal and chemical stabilities. Conclusion 5. 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. 6. 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SHEEBA AHMED/ Primary Examiner, Art Unit 1787
Read full office action

Prosecution Timeline

Nov 16, 2023
Application Filed
Aug 27, 2025
Non-Final Rejection mailed — §103
Feb 20, 2026
Response Filed
Apr 01, 2026
Final Rejection mailed — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
81%
Grant Probability
95%
With Interview (+14.2%)
2y 10m (~4m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 1115 resolved cases by this examiner. Grant probability derived from career allowance rate.

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